Ex Parte Anglin et al

Patent Trial and Appeal Board

Mar 14, 2018

12761230 (P.T.A.B. Mar. 14, 2018)

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.
12/761,230 04/15/2010 Hugh W. Anglin 098888-1018 1712
99103 7590 03/16/2018
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
VANNI, GEORGE STEVEN
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUGH W. ANGLIN, HUGH L. BRUNK, JEREMY CATTONE,
WILLIAM C. HEIN III, ERIC C. HUDSON, KEVIN C. JONES,
KENNETH L. LEVY, TYLER J. MCKINLEY, PHILIP R. PATTERSON,
BURT W. PERRY, GEOFFREY B. RHOADS,
PHILLIP ANDREW SEDER, and STEVEN W. STEWART
Appeal 2016-001860
Application 12/761,230
Technology Center 1600
Before MAHSHID D. SAADAT, FRANCISCO C. PRATS, and JEFFREY
N. FREDMAN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 22, 28—34, 36, 37, and 39-42.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Digimarc Corporation.
App. Br. 2.
2 Claims 2, 19—21, 25, 27, 35, and 38 have been cancelled and claims 3—18,
23, 24, and 26 have been withdrawn from consideration. App. Br. 4.
Appeal 2016-001860
Application 12/761,230
STATEMENT OF THE CASE
Exemplary claims 1 and 29 under appeal read as follows:
1. A method comprising:
receiving, at a first processing device, a
steganographically-encoded content object, wherein the
steganographically-encoded content object comprises
watermark information embedded in luminance information;
processing the steganographically-encoded content object
to yield a processed content object, wherein the processing
comprises:
applying lossless compression to luminance values
included in the luminance information to form a
compressed block of information;
time-stamping the compressed block of
information; and
encrypting the time-stamped compressed block of
information, wherein a time at which the compressed
block of information is time-stamped forms the basis for
an expected period of time by which a second processing
device is to receive the encrypted timestamped
compressed block of information; and
sending the encrypted time-stamped compressed block of
information to the second processing device.
29. A method comprising:
receiving a processed content object from a first
processing device;
receiving a time stamp associated with the processed
content object;
checking the time stamp to ensure the time stamp is
within a predetermined expected period; and
decoding, via a processor, plural-bit data
steganographically encoded in the processed content object.
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REFERENCES and REJECTIONS
Claims 29, 30, 39, and 42 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Schipper et al. (US 5,764,770; June 9, 1998) (“Schipper”).
See Ans. 3—6.
Claims 29, 30, 31, 39, 40, and 42 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Schipper and Tso et al. (US
6,247,050 Bl; June 12, 2001) (“Tso”). See Ans. 6-10.
Claims 1, 22, 28—34, 36, 37, and 39-42 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Schipper, Tso, and Rubin et al. (US
6,601,772 Bl; Aug. 5, 2003) (“Rubin”). See Ans. 11-16.
Claims 1, 22, 28—34, 36, 37, and 39-42 stand rejected on the ground
of nonstatutory obviousness-type double patenting as being unpatentable
over claims 1—4 ofU.S. Patent No. 7,822,969. See Ans. 17—18.
Claims 1, 22, 28—34, 36, 37, and 39-42 stand rejected under 35 U.S.C.
§ 101 as not being directed to patent eligible subject matter.3 See Ans. 18—
21.
ANALYSIS
Section 102 Rejection
First, Appellants contend, the cited portions of Schipper do not
disclose “checking the time stamp to ensure the time stamp is within a
predetermined expected period,” as recited in claim 29. App. Br. 13. More
specifically, Appellants contend that Schipper’s teachings in columns 7 and
8 relate to image authentication which includes information about location,
3 The Examiner added this rejection as a “New Ground of Rejection” in the
Answer.
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Application 12/761,230
angular orientation, and time of image formation, but do not amount to
teaching the disputed claim limitation. App. Br. 13. Additionally,
Appellants contend similar teachings in columns 10, 11, and 15 of Schipper
describe comparing position information from the digital frame with stored
information, which is not the same as the claimed step of checking the time
stamp and determining “the time stamp is within a predetermined expected
period.” App. Br. 14.
In response, the Examiner finds:
Schipper teaches the inclusion of “information on time of
image formation” as well as using that information for the
purpose of “authentication.” The recited “checking” reads on
the “authentication” and “substantially agree” of Schipper, and
the recited “predetermined expected period” reads on the
“digital frame” of Schipper (col. 8, first paragraph; col. 10, third
paragraph; col. 11, first paragraph; col. 15, third paragraph;
abstract; Figures 1 and 8), as cited in the rejection, wherein the
“digital frame” of Schipper includes “permanent[ly]” stored,
reference information (col. 14, 2nd to last para.).
Ans. 21.
We agree with Appellants that the Examiner erred in finding Schipper
discloses “checking the time stamp to ensure the time stamp is within a
predetermined expected period.” Based on a further reading of the
reference, we find Schipper’s cited portions at best disclose various
components that may be used to perform the recited functions, but fail to
disclose performing the recited functionalities. As asserted by Appellants
(App. Br. 13), disclosure of “information on time of image formation” does
not sufficiently teach the disputed claim limitation. Therefore, we agree
with Appellants that the Examiner’s conclusion of anticipation is based on
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misinterpretation of Schipper, rather than identifying the disputed claim
features in the reference teachings.
Accordingly, we do not sustain the 35 U.S.C. § 102(b) rejection of
claim 29, independent claim 39, and claims 30 and 42 dependent therefrom
as anticipated by Schipper.
Section 103 Rejection
The Examiner relies on Schipper for teaching a method of message
delivery recited in independent claims 29 and 39 and additionally finds Tso
discloses transmitting compressed data and decompressing the file to the
original format. See Ans. 6—10. Similarly, the Examiner finds Rubin and
Tso teach luminance information, filtering luminance information, and
capturing content with a cell phone, as recited in claim 1. See Ans. 11—16.
Based on our discussion of Schipper and because the Examiner has not
identified any teachings in Tso or Rubin to make up for the deficiencies of
Schipper, we do not sustain the 35 U.S.C. § 103(a) rejections of claims 29,
30, 31, 39, 40, and 42 over the combination of Schipper and Tso and of
claims 1, 22, 28—34, 36, 37, and 39-42 over the combination of Schipper,
Rubin, and Tso.
Obviousness-type Double Patenting Rejection
Appellants have not identified any errors in the Examiner’s findings
regarding the double patenting rejection. “If an appellant fails to present
arguments on a particular issue — or, more broadly, on a particular rejection
— the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential). Accordingly, we summarily affirm the
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Examiner’s rejection on the ground of non-statutory obviousness-type
double patenting.
Section 101 Rejection
Independent claim 1 recites a method for “receiving,. . ., a
steganographically-encoded content object” and “processing the
steganographically-encoded content object to yield a processed content
object,” which includes “encrypting [a] time-stamped compressed block of
information,” as well as “sending the encrypted time-stamped compressed
block of information” and is, therefore, directed to one of the four statutory
categories of patentability enumerated by 35 U.S.C. § 101 (process,
machine, manufacture, or composition of matter). The Examiner finds
claims 1, 22, 28-34, 36-37 and 39-42 are “directed to an abstract idea and
not significantly more.” Ans. 19. Focusing on the recited steps, the
Examiner further finds the claimed process steps of claim 1 “are directed to
the abstract idea of processing information including ‘receiving . . .,’
‘processing . . .,’ ‘applying . . .,’ ‘encrypting . . .’ and ‘sending . . that
involve “only manipulation of data, obtaining and comparing intangible
data, and/or execution of an algorithm to implement mathematical
relationships and/or formulas.” Id. (citing Spec. 12:15—21, 16:4—8).
Additionally, the Examiner relies on similar claims discussed in related court
decisions and finds claim 1 does not include any of the elements identifies in
examples of eligible claims in those holdings. Ans. 20.
Appellants contend the Examiner erred in finding claim 1 is not
directed to patent eligible subject matter (see Reply Br. 5—9). Appellants
argue that, contrary to the Examiner’s assertion, the claim is not directed to
an “abstract idea” because the claimed elements “do not include or recite a
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mathematical formula or algorithm. Rather, these operations are a
computer-centric process that is used to help identify situations in which
sensitive information is not received in a timely fashion. Such situations can
be indicative of fraud, tampering, faulty hardware, etc.” Reply Br. 6. With
respect to the Examiner’s finding that the claim is directed to manipulation
of data, Appellants argue the recitation of “time-stamping the compressed
block of information” cannot be characterized as such because “the time-
stamping is specifically done such that a ‘time at which the compressed
block ... is time-stamped forms the basis for an expected period of time by
which a second processing device is to receive the encrypted time-stamped
compressed block. Reply Br. 6—'7.
Appellants argue the Examiner erred. Section 101 of the Patent Act
provides “[wjhoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.” 35 U.S.C. § 101. That provision ‘“contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v. CLSBank Int’l,
134 S. Ct. 2347, 2354 (2014) (quoting Assn for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[w]hat else is there in the claims before us?” To answer that
question, we consider the elements of each claim both
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individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. We have described
step two of this analysis as a search for an “‘inventive concept’”
—i.e., an element or combination of elements that is “sufficient
to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.”
Alice Corp., 134 S. Ct. at 2355 (citations omitted).
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016); Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
The Federal Circuit has explained in determining whether claims are
patent eligible, “the decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen— what prior cases were about, and which way they were decided.”
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016). Further, “examiners are to continue to determine if the claim recites
(i.e., sets forth or describes) a concept that is similar to concepts previously
found abstract by the courts.” Amdocs, 841 F.3d at 1294 n.2 (citation
omitted).
Regarding Alice step one, the Federal Circuit has “treated collecting
information, including when limited to particular content (which does
not change its character as information), as within the realm of abstract
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ideas.” Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet
Patents, 790 F.3d at 1348-49; OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC
v. Wells Fargo Bank, Natl Ass n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). “In
a similar vein, we have treated analyzing information by steps people
go through in their minds, or by mathematical algorithms, without more,
as essentially mental processes within the abstract-idea category.” Elec.
Power, 830 F.3d at 1354 (emphasis added); see also In re TLI Commc ’ns.
LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). “And we have
recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.” Elec. Power, 830 F.3d at 1354 (emphasis added);
see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed. Cir.
2014).
The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellants’ arguments (Reply Br. 6—7), the claims are similar to the claims
of Electric Power, and are focused on the combination of abstract-idea
processes or functions. See Elec. Power, 830 F.3d at 1354. For example,
claim 1 is directed to receiving or collecting information (“receiving, at a
first processing device, a steganographically-encoded content object”),
analyzing information (“processing the steganographically-encoded content
object to yield a processed content object,” “encrypting the time-stamped
compressed block of information . . .”), and presenting information
(“sending the encrypted time-stamped compressed block of information to
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the second processing device”). See Elec. Power, 830 F.3d at 1353.
Independent claims 29, 33, 34, and 39, as well as the dependent claims, are
directed to similar functions or processes and Appellants have not shown
such claims are directed to other non-abstract functions or processes. For
example, with respect to independent claim 29, Appellants assert similar
arguments discussed above with respect to claim 1. See Reply Br. 8.
Regarding Alice step two, Appellants have not shown the claims in
this case require an arguably inventive set of components or methods, or
invoke any assertedly inventive programming. See Elec. Power, 830 F.3d at
1355. In particular, Appellants’ assertion that the claimed “computer-centric
operations involve time-stamping of information with a particular timestamp
for a particular purpose” (Reply Br. 8) is unpersuasive, because Appellants
do not even show how the claims utilize more than conventional computer
capabilities and manipulation of data. Further, contrary to Appellants’
arguments (Reply Br. 6—8), the claims are similar to the claims of Electric
Power, because they do not require any nonconventional computer, network,
or display components, or even a “non-conventional and non-generic
arrangement of known, conventional pieces,” but merely call for
performance of the claimed information collection, analysis, and display
functions on generic computer components and display devices. See Elec.
Power, 830 F.3d at 1355; see also Claim 1 (reciting “a processing device”
and “a second processing device”).
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
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computers and networks are “insufficient to pass the test of an inventive
concept in the application” of an abstract idea. See Elec. Power, 830 F.3d at
1355. Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1, 22, 28—34, 36, 37 and 39-42
under 35 U.S.C. § 101.
DECISION
We affirm the Examiner’s decision to reject claims 1, 22, 28—34, 36,
37 and 39-42 under 35 U.S.C. § 101 and obviousness-type double patenting.
We reverse the anticipation and obviousness rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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