Ex Parte Conwell

Board of Patent Appeals and Interferences

Jun 16, 2009

09670113 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM Y. CONWELL
____________

Appeal 2009-000153
Application 09/670,113
Technology Center 2600
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Decided:1 June 16, 2009
____________

Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
JOHN A. JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

ON REQUEST FOR REHEARING

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000153
Application 09/670,113

2
Appellant requests that we reconsider our decision of March 9, 2009
where we affirmed the Examiner’s rejections of (1) claims 3, 5, 16, 18-20,
and 23 under 35 U.S.C. § 102, and (2) claims 10-15 and 17 under 35 U.S.C.
§ 103.2
We have reconsidered our decision in light of Appellant’s arguments
in the Request for Rehearing, and we find no error therein. We, therefore,
decline to make any changes in the prior decision for the following reasons.
Appellant contends that we erroneously interpreted the recited term
“watermark” as including a bar code in reaching our decision. (Req. 2.)
According to Appellant, a watermark is imperceptible and therefore escapes
notice (i.e., the senses do not perceive it). But Appellants contend that,
unlike a watermark, a bar code is conspicuous and therefore perceived. (Id.)
Appellants emphasize that a watermark’s very presence is hidden, unlike a
visually-perceptible bar code. (Req. 2-3.)
Appellant also contends that while a watermark and bar are both
carriers of information with an underlying “payload” (i.e., the conveyed
information), these “carriers” differ in terms of their perception. That is, a
watermark is an imperceptible carrier of information, whereas a bar code is
perceptible. (Req. 4.)
But these arguments are not commensurate with the scope of the term
“watermark” given its broadest reasonable interpretation in light of the
Specification. In our decision, we found that the Specification “implicitly
defined the term ‘watermark’ to mean an embedded machine-readable code

2 In our decision, we also reversed the Examiner’s rejection of claims 8, 9,
22, 24, and 25 under § 103. (Decision 18-20.) That reversal, however, is
not germane to the rehearing request.
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Application 09/670,113

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that is imperceptible or nearly imperceptible to the user, yet may be detected
through an automated detection process.” (Decision 9; emphasis altered.)
In light of this definition, we held that while Li’s bar codes “may be
overtly and conspicuously emblazoned on their corresponding documents. . .
their underlying information and functional instructions are not.” (Decision
10.) We concluded that “[t]hese underlying encoded instructions and
information associated with their respective barcode fully meet a
‘watermark’ as claimed.” (Decision 11.)
Based on the record before us, we see no reason to disturb that
holding. It is undisputed that the underlying information and functional
instructions associated with Li’s bar codes constitute, at least in part,
machine-readable code. It is also undisputed that the underlying information
and functional instructions would be imperceptible or nearly imperceptible
to the user. As such, the underlying information and functional instructions
fully comport with the definition of “watermark” as we indicated in our
decision.
In reaching this conclusion, we recognize that a printed bar code is a
carrier of information as Appellant argues (Req. 4). And we further
recognize that a watermark can serve the same function. But nothing in the
claim precludes a bar code’s underlying information and functional
instructions as constituting a “watermark” even if such a watermark was
“carried” by a perceptible bar code. In this situation, the underlying
information and functional instructions would still fully comport with the
definition of a “watermark,” namely an embedded machine-readable code
that is imperceptible or nearly imperceptible to the user, yet detectable via an
automated detection process. In any event, the bar code’s underlying
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information and functional instructions themselves can function as an
information “carrier” since they too provide a “payload” in the form of data
and messages that, among other things, control various functions of remote
devices (e.g., computer 62). (See Decision 6-7 (FF 11-13); see also id. at
10-11.)
In reaching our conclusion, we acknowledge the non-precedential
decision, Ex parte Hannigan, No. 2007-4254, slip op. at 14 (BPAI 2008)
(non-precedential), where another panel of this Board held that a bar code is
not equivalent to a digital watermark since a watermark is hidden from the
user, and a bar code is not hidden. Since that decision is not precedential,
however, we are not bound by its holding.3 Nevertheless, in our decision,
we did not say that Li’s bar code itself is a watermark. Indeed, we
recognized that Li’s bar code is overt and conspicuous. (Decision 10.)
Rather, we simply held that the bar code’s underlying information and
functional instructions in Li fully meet the definition of a “watermark” as
noted above. (See Decision 10-11.)
Lastly, as we indicated in our decision (Decision 9 n.5), our
interpretation fully comports with In re Nuijten, 500 F.3d 1346, 1348 (Fed.
Cir. 2007), reh’g en banc denied, 515 F.3d 1361 (Fed. Cir. 2008) and cert.
denied, 129 S. Ct. 70 (2008). While Appellant argues that the Nuijten court
indicated that “the consumer of watermarked content desirably should not be

3 See Standard Operating Procedure 2 (Rev. 7), Board of Patent Appeals and
Interferences, at 2, available at
http://www.uspto.gov/web/offices/dcom/bpai/sop2.pdf (noting that any
publicly-available Board opinion that (1) does not expressly indicate that the
opinion is binding precedent of the Board, or (2) is not identified as binding
precedent on the Board’s website is deemed to be nonprecedential).
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Application 09/670,113

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able to distinguish between watermarked and unwatermarked versions”
(Req. 8; emphasis altered), it is by no means a requirement. Indeed,
Appellant’s definition of “watermark” noted above specifying that the
embedded machine-readable code is “imperceptible or nearly imperceptible”
(emphasis added) all but confirms this point.
In any event, by merely looking at the document 50 (and its bar code
45) in Li, we do not see how users would be able to distinguish the particular
watermark associated with a particular bar code without a machine. See
Decision 5-7 (FF 7-15). In that sense, users would not be able to distinguish
a watermarked version (i.e., a document containing a specific watermark)
from an “unwatermarked” version (i.e., a document that does not contain
that specific watermark). See id.
In summary, while we find that Li’s bar code is not a watermark, the
bar code’s underlying information and functional instructions nonetheless
fully meet a “watermark” given its broadest reasonable interpretation in light
of the Specification.

CONCLUSION
For the foregoing reasons, we have granted Appellant’s request to the
extent that we have reconsidered our decision of March 9, 2009, but we deny
the request with respect to making any changes therein.

Appeal 2009-000153
Application 09/670,113

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

REHEARING DENIED

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