Adobe Inc.

Patent Trials and Appeals Board

Jul 2, 2020

2019002111 (P.T.A.B. Jul. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/827,670 08/17/2015 Zeke Koch P2187-US 4342
108982 7590 07/02/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
HUANG, CHENG-FENG
ART UNIT PAPER NUMBER
2497
NOTIFICATION DATE DELIVERY MODE
07/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ZEKE KOCH, BALDO FAIETA, JEN-CHAN CHIEN,
MARK M. RANDALL, OLIVIER SIRVEN,
PHILIPP KOCH, and DENNIS G. NICHOLSON
____________________

Appeal 2019-002111
Application 14/827,670
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, JEAN R. HOMERE, and
ERIC B. CHEN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9, 10, and 13–22. Appeal Br. 3.
Claims 8, 11, and 12 have been cancelled. Id. at 25–28 (Claims App). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as Adobe Systems, Inc.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Claims 1 and 9 are illustrative of the claimed subject matter
(emphasis, formatting, and bracketed material added):
1. In a digital medium environment for control of content
creation by at least one computing device of a content
creation service, a system comprising:
[A.] a content creation module implemented at least
partially in hardware of a processing system and
computer-readable storage media of the at least one
computing device to expose functionality via a user
interface to create content;
[B.] a fingerprint generation module implemented at least
partially in hardware of the processing system and the
computer-readable storage media of the at least one
computing device to generate a fingerprint of an image
received by the content creation module as part of
creating the content; and
[C.] a licensing module implemented at least partially in
hardware of the processing system and the computer-
readable storage media of the at least one computing
device to[:]
[i.] use the fingerprint to determine whether the
received image is available for licensing via a
content sharing service and
[ii.] output a result of this determination for display by
the content creation module in the user interface
along with the exposed functionality to create the
content and without leaving a display of the
exposed functionality and a display of the received
image in the user interface.
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9. In a digital medium environment for control of content
creation by at least one computing device of a content
creation service, a system comprising:
[A.] a content creation module implemented at least
partially in hardware of a processing system and
computer-readable storage media of the at least one
computing device to expose functionality via a user
interface to create content;

[B.] a watermark identification module implemented at least
partially in hardware of the processing system and the
computer-readable storage media of the at least one
computing device to detect a watermark included in an
image received by the content creation module as part
of creating the content and identify a content sharing
service that corresponds to the detected watermark; and
[C.] a licensing module implemented at least partially in
hardware of the processing system and the computer-
readable storage media of the at least one computing
device to provide an option within a user interface
generated by the content sharing service to license the
image from the identified content sharing service, the
user interface generated by the content sharing service
is displayed within and without navigating away from
the user interface used to create the content by the
content creation module.

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REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Yacobi US 7,047,413 B2 May 16, 2006
Neil US 7,127,106 B1 Oct. 24, 2006
Weiskopf US 2007/0168513 A1 July 19, 2007
Masters US 2016/0180193 A1 June 23, 2016

REJECTIONS
A.
The Examiner rejects claims 1–3 and 15–22, under 35 U.S.C. § 103 as
being unpatentable over the combination of Weiskopf and Masters. Final
Act. 10–18.
Appellant argues separate patentability for claim 1. To the extent that
Appellant discusses claim 15, Appellant merely repeats or references the
arguments directed to claim 1. Appeal Br. 17–19. To the extent that
Appellant discusses claims 2, 3, and 16–22, Appellant merely references the
arguments directed to claims 1, 9, and 15. Appeal Br. 23–24. Such a
repeated argument (or referenced argument) is not an argument for “separate
patentability.” Thus, Appellant does not present separate arguments for
claims 2, 3, and 15–22. We select claim 1 as the representative claim for
this rejection. Except for our ultimate decision, we do not address the merits
of the § 103 rejection of claims 2, 3, and 15–22 further herein.

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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B.
The Examiner rejects claims 5–7, 9, 10, 13, and 14 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Weiskopf, Masters, and
Yacobi. Final Act. 18–26.
Appellant argues separate patentability for claim 9. Appeal Br. 19–
23. We select claim 9 as the representative claim for this rejection.
Appellant does not argue separate patentability for claims 5–7, 10, 13, and
14. To the extent that Appellant discusses claims 5–7, 10, 13, and 14,
Appellant merely references the arguments directed to claims 1 and 9.
Appeal Br. 23. Such a referenced argument is not an argument for “separate
patentability.” Except for our ultimate decision, we do not address the
merits of the § 103 rejection of claims 5–7, 10, 13, and 14 further herein.
C.
The Examiner rejects claim 4 under 35 U.S.C. § 103 as being
unpatentable over the combination of Weiskopf, Masters, and Neil. Final
Act. 18.
To the extent that Appellant discusses claim 4, Appellant merely
references the arguments directed to claims 1, 9, and 15. Appeal Br. 24.
Such a repeated argument (or referenced argument) is not an argument for
“separate patentability.” Thus, the rejection of this claim turns on our
decision as to claim 1 (from which claim 4 depends). Except for our
ultimate decision, we do not address the merits of the § 103 rejection of
claim 4 further herein.

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OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments.
A. Claim 1
A.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
First, there is no description in Masters of any method or
system that determines whether a received image is available for
licensing. . . .
Second, as Masters fails to describe or suggest
determining “whether the received image is available for
licensing . . . ,” the feature of outputting “a result of this
determination for display . . . with the exposed functionality . . .
without leaving a display of the exposed functionality and a
display of the received image . . . ” by logical consequence, also
does not exist. All a user in Masters does is view items
advertised for sale by a retailer or internet store from various
perspectives before making a purchase decision. . . .
Weiskopf fails to cure the deficiency of Masters.
Weiskopf describes a method or system of “enabling a content
provider and its users to easily manage licenses . . . for selected
or provided content.” [See Weiskopf at ¶ [0014] (emphasis
added).] To that end, Weiskopf uniquely identifies content
provided to users by digital identifiers or fingerprints and notifies
the user if he is currently licensed to use the content, whether his
previous license has expired, whether a license to use the selected
content is unavailable, and if content that is similar to the one the
user is interested in licensing is available. [See Id.] While
Weiskopf’s system determines whether a customer has licensed
content that has been provided to him, there is no description or
suggestion of a system or method with the content creation
module, fingerprint generation module, and licensing module
functioning as recited in claim 1.
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Appeal Br. 13–14.
We are unpersuaded by Appellant’s argument. Appellant does not
address the actual reasoning of the Examiner’s rejection. Instead, Appellant
attacks the Masters reference singly for lacking a teaching that the Examiner
relied on a combination of Weiskopf and Masters to show. In particular, the
rejection does not rely on Masters for teaching the “whether the received
image is available for licensing . . . ” (Appeal Br. 13) aspect disputed by
Appellant. Rather, the Examiner relied on Weiskopf to show “a licensing
module . . . to use the fingerprint to determine whether the received image is
available for licensing via a content sharing service” (Final Act. 10), and
relied on Masters to show it was known to output a result . . . for display by
the content creation module in the user interface along with the exposed
functionality to create the content and without leaving a display of the
exposed functionality and a display of the received image in the user
interface (Final Act. 11). The Examiner then reasoned that it would have
been obvious to modify the content licensing of Weiskopf to include
functionality from Masters’ content creation. Final Act. 11. One cannot
show nonobviousness by attacking references individually when the
rejection is based on a combination of references. In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413,
425 (CCPA 1981) (explaining the relevant inquiry is whether the claimed
subject matter would have been obvious to those of ordinary skill in the art
in light of the combined teachings of those references).
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A.2.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
Additionally, the user in Masters views a preview image of the
shoe rack––likely temporarily––in order to help him make a
purchase decision. [See Masters at ¶ [0095].] As such, the user
also cannot be said to “create content” as recited in claim 1.
Appeal Br. 13 (emphasis added).
We note that Masters states:
As previously described, augmented reality techniques
can be used to present a modified version of a received image
to a user. This modified version of the received image may
illustrate how the recommended item can be used with items
illustrated in the received image.
Masters ¶ 40 (emphasis added).
In some cases, the image generator 358 creates a new image
based on the received image and the one or more models of items.
In other cases, the image generator 358 may modify the received
image by replacing portions of the received image or overlaying
one or more models of items over portions of the received image.
Masters ¶ 42 (emphasis added).
We are unpersuaded by Appellant’s argument. Contrary to
Appellant’s argument, we determine that Masters does “create content” as
required by claim 1.
A.3.
Further, Appellant raises the following argument in contending that
the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
[R]egarding the motivation to combine the references, the
Examiner asserts that:
It would have been obvious to one having ordinary
skill in the art before the effective filing date of the
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claimed invention to combine the teachings of
Masters with the disclosure of Weiskopf. The
motivation/suggestion would have been to use[]
augmented reality to preview how an item may be
used in conjunction with another item in a particular
context.
Office Action, p. 11. The motivation, however, fails to have the
requisite rational underpinning to support the legal conclusion of
obviousness. In particular, the Examiner’s motivation fails to
address the features recited in claim 1 entirely, stating simply that
“an item may be used in conjunction with another item in a
particular context.” [See Office Action at p. 11.] Such a
statement could be applied literally to any field, technology, or
concept.
Appeal Br. 15–16 (emphasis added).
We are unpersuaded by Appellant’s argument. Although initially
Appellant quotes the Examiner’s entire motivation statement, Appellant then
highly truncates that statement and asserts that highly truncated motivation
“fails to have the requisite rational underpinning.” As with the Keller-type
argument discussed above, this form of argument does not address the actual
reasoning of the Examiner’s rejection.
A.4.
Furthermore, Appellant raises the following argument in contending
that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
[W]hile Weiskopf may discuss licensing images, the Examiner's
interpretation of Weiskopf as teaching “whether . . . [a] received
image is available for licensing via a content sharing service . . . ”
conflicts with the Examiner's interpretation of “ . . . a result of
this determination ... ,” which also relates to determining
“whether . . . [a] received image is available for licensing . . . . ”
In other words, the Examiner has conflicting interpretations of
the same feature recited in claim 1. Such conflicting
interpretations cannot be reconciled.
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Masters also fails disclose creating content as recited in
claim 1 because claim 1 requires outputting “ . . . a result of this
determination along with the exposed functionality to create the
content . . . ” Instead, Masters simply enables a user to view a
preview image of an item as part of a 3D model prior to making
a purchase decision.
Reply Br. 6.
[T]he motivation to combine Weiskopf and Masters lacks a
rational underpinning needed to support an obviousness
conclusion. Previewing how one item is used with another item
says nothing about how or why a determination of “whether . . .
[a] received image is available for licensing via a content sharing
service . . . ” is performed. This feature of claim 1 also provides
a distinct advantage that is absent from the cited references –
enabling a user to interact with a content creation service, obtain
images for licensing, and using these images to create content.
Reply Br. 8.
As to Appellant’s above assertions, we are not persuaded that the
Examiner erred. These Reply Brief arguments were not previously argued
in the Appeal Brief, or newly raised by the Examiner in the Answer. Rather,
these are belated arguments that reasonably should have been raised in the
original Appeal Brief.
In the absence of a showing of good cause by Appellant, we decline to
consider an argument raised for the first time in the Reply Brief, as the
Examiner has not been provided a chance to respond. See 37 C.F.R.
§ 41.41(b)(2) (2012); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000)
(noting that an argument not first raised in the brief to the Board is waived
on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010)
(informative) (explaining that arguments and evidence not timely presented
in the principal brief will not be considered when filed in a reply brief,
absent a showing of good cause explaining why the argument could not have
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been presented in the principal brief); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”). Appellant has
provided no showing of good cause.
B. Claim 9
B.1.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 9 under 35 U.S.C. § 103.
There is no description in Masters of any method or
system that is designed to “provide an option . . . to license . . .
[an] image.” [See Claim 9.]
Appeal Br. 20.
This argument repeats the argument made as to claim 1. We are
unpersuaded by Appellant’s argument for the reasons already discussed
above as to claim 1.
B.2.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 9 under 35 U.S.C. § 103.
Yacobi fails to disclose or suggest a licensing module as recited
in claim 9. Instead, Yacobi’s specification discusses in detail the
manner in which its watermarking process improves on the
traditional spread-spectrum watermarking.
Appeal Br. 21.
We are unpersuaded by Appellant’s argument. As discussed above,
Appellant does not address the actual reasoning of the Examiner’s rejection.
Instead, Appellant attacks the Yacobi reference singly for lacking a teaching
that the Examiner relied on a combination of Weiskopf, Masters, and Yacobi
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to show. In particular, the rejection does not rely on Yacobi for teaching the
“licensing module” (Appeal Br. 21) aspect disputed by Appellant. Rather,
the Examiner relied on Weiskopf to show “a licensing module . . . to provide
an option generated by the content sharing service to license the image from
the identified content sharing service” (Final Act. 21), and relied on Masters
to show it was known to use a content creation module and a display content
(Final Act. 22), and relied on Yacobi to show it was known to use a
watermark identification module (Final Act. 23). The Examiner then
reasoned that it would have been obvious to modify the content licensing
of Weiskopf to include functionality from Masters’ content creation (Final
Act. 22) and from Yacobi’s watermarking (Final Act. 23).
Again, one cannot show nonobviousness by attacking references
individually when the rejection is based on a combination of references.
Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425 (explaining the relevant
inquiry is whether the claimed subject matter would have been obvious to
those of ordinary skill in the art in light of the combined teachings of those
references).
B.3.
Further, Appellant raises the following argument in contending that
the Examiner erred in rejecting claim 9 under 35 U.S.C. § 103.
Additionally, the user in Masters likely temporarily views a
preview image of a shoe rack ( one that is likely already licensed
or authorized) in order to make a purchase decision. [See Masters
at ¶ [0095].] As such, the user does not “create content” as
recited in claim 9.
Appeal Br. 20–21 (emphasis added).
As above, we note that Masters states:
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As previously described, augmented reality techniques
can be used to present a modified version of a received image
to a user. This modified version of the received image may
illustrate how the recommended item can be used with items
illustrated in the received image.
Masters ¶ 40 (emphasis added).
In some cases, the image generator 358 creates a new image
based on the received image and the one or more models of items.
In other cases, the image generator 358 may modify the received
image by replacing portions of the received image or overlaying
one or more models of items over portions of the received image.
Masters ¶ 42 (emphasis added).
We are unpersuaded by Appellant’s argument. Again, contrary to
Appellant’s argument, we determine that Masters does “create content” as
required by claim 9.
B.4.
Furthermore, Appellant contends that the Examiner erred in rejecting
claim 9 under 35 U.S.C. § 103(a) because:
[R]egarding the motivation to combine the references, the
Examiner asserts that:
It would have been obvious to one having ordinary
skill in the art before the effective filing date of the
claimed invention to combine the teachings of
Yacobi with the combined teaching of Weiskopf
and Masters. The motivation/suggestion would
have been to facilitate rights enforcement of digital
goods using watermarks.
[See Office Action at p. 23.]
The motivation, however, fails to have the requisite
rational underpinning to support the legal conclusion of
obviousness. Specifically, the motivation fails to state a reason
why the skilled artisan would combine the references in a manner
that to yield the features recited in the claim 9. . . .
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The Examiner’s motivation fails to adequately discuss the
features recited in claim 9. Instead, it generically states that the
motivation would have been to “facilitate rights enforcement of
digital goods using watermarks.” [See Office Action at p. 23.]
Such a motivation lacks the requisite rational underpinning to
support an obviousness conclusion because it entirely fails to
address why one of ordinary skill in the art would combine
Weiskopf, Masters, and Yacobi to design a system that displays
images and features in the manner recited in claim 9. Such
features have the distinct advantage allowing a user to “remain
in the context of the content creation service and obtain images
available for licensing for inclusion as part of the content,” which
is achievable primarily because of the way in which the content
creation module, water identification module, and licensing
module recited in claim 9 operate in conjunction with one
another. [See Application at ¶¶ [0018], [0070], and [0072].]
Appeal Br. 22–23 (emphasis added).
We are unpersuaded by Appellant’s argument. Again, Appellant
truncates the Examiner’s motivation statement and asserts the truncated
motivation “fails to have the requisite rational underpinning.” First,
Appellant fails to acknowledge the first part (the motivation to combine
Weiskopf and Masters) of the overall motivation. Final Act. 22. Then
Appellant partially truncates the second part (the motivation to combine
Weiskopf/Masters and Yacobi) of the overall motivation by not including
the citation to the Abstract of Yacobi. Final Act. 23. As before, this form of
argument does not address the actual reasoning of the Examiner’s rejection.

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CONCLUSION
The Examiner has not erred in rejecting claims 1–7, 9, 10, and 13–22
as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejections of claims 1–7, 9, 10, and 13–22 as being
unpatentable under 35 U.S.C. § 103 are affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 15–22 103 Weiskopf, Masters 1–3, 15–22
5–7, 9, 10,
13, 14
103 Weiskopf, Masters,
Yacobi
5–7, 9, 10,
13, 14

4 103 Weiskopf, Masters,
Neil
4
Overall
Outcome

1–7, 9, 10,
13–22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED