Ex Parte Hein et al

Patent Trial and Appeal Board

Apr 30, 2013

11371374 (P.T.A.B. Apr. 30, 2013)

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.
11/371,374 03/07/2006 William C. Hein III 098888-1915 4176
99103 7590 04/30/2013
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
CHEN, WENPENG
ART UNIT PAPER NUMBER
2665
MAIL DATE DELIVERY MODE
04/30/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM C. HEIN, III and TYLER J. MCKINLEY

___________

Appeal 2010-010902
Application 11/371,374
Technology Center 2600
____________

Before ERIC B. CHEN, BRYAN F. MOORE, and LARRY J. HUME,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-17, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to an automated batch identifier
registration system and an embedding system for media signals (e.g., image,
video and audio files). The batch identifier registration system enables a
user to submit a request for a batch of unique identifiers to be embedded in
media signals. In response to a user request, the batch registration system
verifies the accuracy of the request, sends a confirmation, allocates
identifiers, creates corresponding entries in a registration database, and
creates embedder files used in a batch embedding process. A watermark
embedder system automatically embeds identifiers supplied in the embedder
files into corresponding media signal files. (Abstract.)
Claims 1, 11, 12, 16, and 17 are exemplary, with disputed limitations
in italics:
1. A method of performing identifier registration
comprising:
establishing a connection between a client computer and a
registration process, the registration process employing a processor
configured in accordance with software instructions read from a
physical memory;
providing authentication information to the registration process;
submitting a registration request to the registration process; and
receiving, at the client computer, an embedder control file,
including media signal identifiers and embedder instructions.

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11. A computer readable medium having software for
performing the method of claim 1.

12. A method of performing identifier registration
comprising:
establishing a connection between a registration system and a
client process, the client process employing a processor configured in
accordance with software instructions read from a physical memory;
receiving authentication information from the client process to
authenticate a user;
receiving a registration request from the client process;
allocating a set of identifiers to media signal files based on the
registration request;
constructing an embedder control file, including media signal
identifiers and embedder instructions; and
sending the embedder control file from the registration system
to the client process, to enable the client process to embed a media
signal in accordance with the embedder instructions.

16. A watermark embedder including a processor configured
by program instructions stored in a physical memory, the configured
processor operable to:
receive, from a remote registration system, an embedder
control file specifying a set of identifiers, associated embedder
instructions and corresponding media signal files,
automatically embed a first identifier from the embedder
control file in a corresponding first media signal file according to the
associated embedder instructions,
and automatically embed a second identifier from the embedder
control file in a corresponding second media signal file according to
the associated embedder instructions.

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17. A media signal identifier registration server comprising:
a network interface for receiving ID registration requests, the
requests including a list of media signal files and information to be
linked with the media signal files via data embedded in the media
signal files;
a batch registration loader for creating records in a registration
database corresponding to identifiers for each of the media signal
files;
a batch registration extractor for reading the registration
database and creating an embedder control file, including identifiers, a
corresponding list of media signal files, and
embedding instructions for controlling embedding of the
identifiers in the media signal files.

Claims 11 and 15 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 11 and 15 stand rejected under 35 U.S.C. §112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention.
Claim 17 stands rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claim 34 of
commonly owned co-pending Application No. 10/053,488.
Claims 1-5 and 7-17 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Rhoads (U.S. Patent No. 7,003,731 B1; Feb. 21, 2006).
1

1
Appellants do not present any arguments with respect to the rejection of:
(i) claims 11 and 15 under 35 U.S.C. §112, second paragraph; (ii) claim 17
under the judicially created doctrine of obviousness-type double patenting;
and (iii) claims 1-5 and 7-17 under 35 U.S.C. § 102(e) as being anticipated
by Rhoads. Thus, any such arguments are deemed to be waived.
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Claims 1-5 and 11-17 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Shinoda (European Patent Application EP 0936531 A2;
Aug. 18, 1999.)
Claims 7-10 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Shinoda.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shinoda and Takai (U.S. Patent No. 6,024,287; Feb. 15, 2000).
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Shinoda and Okamoto (U.S. Patent No. 6,377,946 B1; Apr. 23, 2002).

ANALYSIS
§ 101 Rejection
We are persuaded by Appellants’ arguments (App. Br. 7) that
dependent claims 11 and 15 comply with 35 U.S.C. § 101 as statutory
subject matter.
The Examiner found that both dependent claims 11 and 15 “include[]
a word-version of the software algorithm stored in a floppy disk” and
“[b]efore the word-version is converted to a computer executable file, each
of them is a non-functional species of the claims.” (Ans. 4.) Thus, the
Examiner concluded that claims 11 and 15 were directed towards non-
statutory subject matter. (Id.) We do not agree.
Claims 11 and 15 recite a “computer readable medium” and
accordingly, such claims are directed to the patent-eligible subject matter
class of “manufacture” under 35 U.S.C. § 101. Although claims 11 and 15
are patent-eligible, the Examiner has provided insufficient evidence to
support a finding that these claims embrace a judicially recognized
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exception (i.e., laws of nature, physical phenomena, and abstract ideas). See
Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010) (“The Court’s precedents
provide three specific exceptions to § 101’s broad patent-eligibility
principles: ‘laws of nature, physical phenomena, and abstract ideas.’”)
(quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)).
Therefore, we do not agree with the Examiner that the computer
readable medium of claims 11 and 15 are not eligible as statutory subject
matter.
Accordingly, we do not sustain the rejection of dependent claims 11
and 15 under 35 U.S.C. § 101.

§102 Rejection – Shinoda
Claims 1, 3-5, and 11
We are unpersuaded by Appellants’ arguments (App. Br. 9-10; see
also Reply Br. 3-5) that Shinoda does not describe the limitation “an
embedder control file, including media signal identifiers and embedder
instructions,” as recited in independent claim 1.
The Examiner found that the mark ID 601 and the mark management
server address 602 of Shinoda collectively correspond to the claimed “media
signal identifiers.” (Ans. 9-10; Shinoda, ¶ [0017], fig. 6.) The Examiner
also found that attaching the mark image to a Web page of Shinoda
corresponds to the claimed “embedder instructions.” (Ans. 10; Shinoda,
¶ [0019].) We agree with the Examiner.
Shinoda relates to a “system for searching for multimedia data based
on fixed-pattern data such as a mark mounted in the multimedia data”
(¶ [0001]), for example, embedding an electronic watermark or logo on a
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Web page (¶ [0004]). Figure 5 of Shinoda illustrates an example of
information embedded in a mark image, which includes a mark ID 601 and a
mark management server address 602. (¶ [0017].) Thus, Shinoda discloses
the limitation “media signal identifiers.” Shinoda also explains that a
WWW server 102 includes a mark acquiring program 30144 which receives
a mark image, and passes the mark image to a Web page creating
program 30143 that “attaches this mark image to a created Web page to
create a marked Web page.” (¶ [0019]). Thus, because the Web page
creating program 30143 attaches the mark image to the Web page, Shinoda
teaches the limitation “embedder instructions.”
Appellants argue the “[n]o ‘embedder control file’ including
‘embedder instructions’ is provided to his WWW server 102” but
“Shinoda’s mark management server 103 provides a file (logo) that has
already been watermarked.” (App. Br. 9 (emphasis in original).) Similarly,
Appellants argue that “[a] JPEG file, or other logo, is not ‘inherently
instructions’ that it be attached to a web page.” (Reply Br. 4.) However, the
Examiner found that the mark ID 601, the mark management server
address 602 and attaching the mark image to a location specified on a Web
page collectively correspond to the claimed “embedder control file.”
(Ans. 9-10.)
Appellants also argue that “[t]he former (ID 601) is an identifier of the
watermarked object (logo)” and “[t]he latter is the network address of the
mark management server 103,” but “[n]either is an identifier of the Web
page.” (Reply Br. 4.) However, this argument is not commensurate in scope
with claim 1, because the claim does not expressly require the “media signal
identifiers” to identify a Web page.
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Therefore, we agree with the Examiner that Shinoda describes the
limitation “an embedder control file, including media signal identifiers and
embedder instructions,” as recited in independent claim 1.
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 102(e). Claims 3-5 and 11 depend from independent claim 1, and
Appellants have not presented any substantive arguments with respect to
these claims. Therefore, we sustain the rejection of claims 3-5 and 11 under
35 U.S.C. § 102(e) for the same reasons discussed with respect to
independent claim 1.

Dependent Claim 2
We are unpersuaded by Appellants’ arguments (App. Br. 11; see also
Reply Br. 5) that Shinoda does not describe the limitation “submitting the
embedder control file to a watermark embedder at the client computer,
which automatically embeds a set of media signal files with corresponding
identifiers according to the embedder instructions in the embedder control
file,” as recited in dependent claim 2.
The Examiner found that the mark acquiring program 30144 of
Shinoda, which transmits a mark image to a Web page, corresponds to the
limitation “submitting the embedder control file to a watermark embedder at
the client computer, which automatically embeds a set of media signal files
with corresponding identifiers according to the embedder instructions in the
embedder control file.” (Ans. 10; Shinoda, ¶ [0014]). We agree with the
Examiner.
Figure 3 of Shinoda illustrates a block diagram of an internal
configuration of a WWW server 102. (¶ [0008].) The WWW server 102 of
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Shinoda includes a Web page creating program 30143 and a mark acquiring
program 30144. (¶ [0014].) “The mark acquiring program 30144 issues a
mark transmission request to the mark management server 103 in response
to a request from the Web page creating program 30143, and passes an
acquired mark image to the Web page creating program 30143.” (Id.) Thus,
because both the Web page creating program 30143 and the mark acquiring
program 30144 are configured within the WWW server 102 of Shinoda,
Shinoda describes the limitation “submitting the embedder control file to a
watermark embedder at the client computer, which automatically embeds a
set of media signal files with corresponding identifiers according to the
embedder instructions in the embedder control file.”
Appellants argue that “[i]n Shinoda, the watermark embedder is in the
mark management server 103” and “Shinoda’s mark management server
watermarks the logo before it is provided to the WWW server 102.” (App.
Br. 11.) Accordingly, Appellants argue, “[i]n the claimed arrangement . . . it
is the latter device [WWW server 102] that does the watermarking.” (Id.)
However, as discussed previously, the WWW server 102 includes the mark
acquiring program 30144 and the Web page creating program 30143.
(¶ [0014].) Because “[t]he mark acquiring program 30144 issues a mark
transmission request to the mark management server 103 . . . and passes an
acquired mark image to the Web page creating program 30143” (¶ [0014]),
the mark image is attached in the WWW server 102.
Therefore, we agree with the Examiner that Shinoda describes the
limitation “submitting the embedder control file to a watermark embedder at
the client computer, which automatically embeds a set of media signal files
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with corresponding identifiers according to the embedder instructions in the
embedder control file,” as recited in dependent claim 2.
Accordingly, we sustain the rejection of dependent claim 2 under 35
U.S.C. § 102(e).

Claims 12 and 15
We are unpersuaded by Appellants’ arguments (App. Br. 13-14; see
also Reply Br. 5-6) that Shinoda does not describe the limitation “allocating
a set of identifiers to media signal files based on the registration request,” as
recited in independent claim 12.
The Examiner found that embedding the mark ID 601 and the mark
management server address 602 of Shinoda for a particular mark image
corresponds to the limitation “allocating a set of identifiers to media signal
files based on the registration request.” (Ans. 11-12, 27; ¶ [0018].) We
agree with the Examiner.
Claim 12 recites “allocating a set of identifiers . . .” (emphasis added).
Appellants’ Specification states that “[t]he batch registration loader 106 uses
the information contained in the user’s uploaded batch registration request
file to automatically allocate (register) watermark identifiers in a
registration database 108” (emphasis added). (Spec. 5:25-27.) However,
this disclosure does not expressly provide a definition for the term
“allocate.” One relevant plain meaning of “allocate” is “to apportion for a
specific purpose.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 30 (10th
ed. 1999).
Shinoda explains that “the mark acquiring program 30144 issues a
request to the mark management server 103 to send a mark to be attached to
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the created Web page” such that “the mark creating program 20143 embeds
the mark ID 601 and the mark management server address 602 in the
requested mark image.” (¶ [0018].) Because the mark image is requested
from the mark management server 103, such that the mark creating
program 20143 embeds the mark, this mark is apportioned for the specific
purpose of embedding in the Web page. Thus, Shinoda discloses the
limitation “allocating a set of identifiers to media signal files based on the
registration request.”
Appellants argue that “[w]hile the Office should apply the broadest
reasonable interpretation to the term ‘allocating . . . ,’ the Office’s present
interpretation of ‘allocating . . .’ is believed to be unreasonable.” (App.
Br. 13.) However, as discussed previously, the claim limitation “allocating a
set of identifiers” is broad enough to encompass the mark acquiring
program 30144, which issues a request for a mark image, and the mark
creating program 20143, which embeds the mark ID 601 and the mark
management server address 602.
Therefore, we agree with the Examiner that Shinoda describes the
limitation “allocating a set of identifiers to media signal files based on the
registration request,” as recited in independent claim 12.
Accordingly, we sustain the rejection of independent claim 12 under
35 U.S.C. § 102(e). Claim 15 depends from independent claim 12, and
Appellants have not presented any substantive arguments with respect to this
claim. Therefore, we sustain the rejection of claim 15 under 35 U.S.C.
§ 102(e) for the same reasons discussed with respect to independent
claim 12.

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Dependent Claim 13
We are unpersuaded by Appellants’ arguments (App. Br. 14) that
Shinoda does not describe the limitation “database records corresponding to
the set of identifiers,” as recited in dependent claim 13.
The Examiner found that the mark management DB 2021 of Shinoda
corresponds to the claimed “database records corresponding to the set of
identifiers.” (Ans. 13; Shinoda, ¶ [0018].) We agree with the Examiner.
Shinoda explains that “the mark creating program 20143 registers the
mark ID 501 of the dispensed mark image, and the URL 502 and the page
name 503 of the requested Web page in the mark management DB 2021.”
(¶ [0018].) Thus, Shinoda describes the limitation “database records
corresponding to the set of identifiers.”
Appellants argue that “[t]he claim ends with the phrase ‘. . . media
signal files into which the identifiers are to be embedded,’” but “the Office
has mapped ‘embed’ to the act of attaching a marked image (logo) to a web
page.” (App. Br. 14 (emphasis in original).) Accordingly, Appellants argue,
“the ‘media signal files’ must be the web page.” (Id.) Contrary to
Appellants’ arguments, the Examiner found that the mark image of Shinoda
corresponds to the claimed “media signal files.” (Ans. 28; see also Ans. 11.)
Therefore, we agree with the Examiner that Shinoda describes the
limitation “database records corresponding to the set of identifiers,” as
recited in dependent claim 13.
Accordingly, we sustain the rejection of dependent claim 13 under 35
U.S.C. § 102(e).

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Dependent Claim 14
We are unpersuaded by Appellants’ arguments (App. Br. 15-16; see
also Reply Br. 6-7) that Shinoda does not describe the limitation “a network
address of a network resource associated with a corresponding media
signal,” as recited in dependent claim 14.
The Examiner found that the URL 502 and the page name 503 for a
requested Web page of Shinoda corresponds to the claimed “a network
address of a network resource associated with a corresponding media
signal.” (Ans. 13, 29; Shinoda, ¶ [0018].) We agree with the Examiner.
Shinoda explains that “the mark creating program 20143 registers the
mark ID 501 of the dispensed mark image, and the URL 502 and the page
name 503 of the requested Web page in the mark management DB 2021.”
(¶ [0018].) Thus, Shinoda describes that limitation “a network address of a
network resource associated with a corresponding media signal.”
Appellants argue that “the claim requires that the ‘network address’ be
an address of ‘a network resource associated with a corresponding media
signal’” but “[u]nder the Office’s construction, all logos (media signals)
have the same network address (i.e., referring back to mark management
server 103).” (App. Br. 16; see also Reply Br. 6-7.) However, Figure 2 of
Shinoda illustrates multiple mark management servers 103 and accordingly,
Shinoda teaches the limitation “a network resource associated with a
corresponding media signal.”
Therefore, we agree with the Examiner that Shinoda describes the
limitation “a network address of a network resource associated with a
corresponding media signal,” as recited in dependent claim 14.
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Accordingly, we sustain the rejection of dependent claim 14 under 35
U.S.C. § 102(e).

Independent Claim 16
We are unpersuaded by Appellants’ arguments (App. Br. 17-18; see
also Reply Br. 7) that Shinoda does not describe the limitations “a processor
configured by program instructions stored in a physical memory” and “a
remote registration system,” as recited in independent claim 16.
The Examiner found that the processor 3012 and the memory 3013
associated with the WWW server 102 of Shinoda corresponds to the claimed
“processor” and “physical memory.” (Ans. 30; Shinoda, fig. 3.) The
Examiner also found that that the mark management server 103 of Shinoda
corresponds to the claimed “remote registration system.” (Ans. 14; Shinoda,
¶ [0010].) The Examiner further found that the mark image of Shinoda
corresponds to the claimed “media signal files.” (Ans. 14; Shinoda,
¶ [0012].) We agree with the Examiner.
As discussed previously, Figure 3 of Shinoda illustrates a block
diagram of an internal configuration of a WWW server 102. (¶ [0008].)
The WWW server 102 of Shinoda includes a processing unit 301 with a
processor 3012. (¶ [0014].) Thus, Shinoda describes the limitation “a
processor configured by program instructions stored in a physical memory.”
Furthermore, Figure 1 of Shinoda illustrates an information search system
(¶ [0008]), which includes WWW servers 102 and mark management
servers 103 (¶ [0010]). Thus, Shinoda describes the limitation “a remote
registration system” because Figure 1 of Shinoda illustrates that the mark
management servers 103 is distant from the WWW servers 102.
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Appellants argue that “[t]he Office again maps the claimed ‘remote
registration system’ to Shinoda’s mark management server 103” and “also
maps the memory and the processor noted in the claim preamble to the
memory and processor in the mark management server 103.” (App. Br. 17.)
Accordingly, Appellants argue, “[t]he limitation ‘remote’ has been read-out
of the claim; the mark management server is receiving the alleged embedder
control file from itself.” (Id.) However, the Examiner found that the
processor 3012 and the memory 3013 associated with the WWW server 102
correspond to the claimed “processor” and “physical memory” (Ans. 30) and
found that the mark management server 103 of Shinoda corresponds to the
claimed “remote registration system” (Ans. 14, 30).
Appellants also argue that “the Office has now made clear that it
construes the ‘media signal files’ to be Shinoda’s Web page” however,
“Shinoda’s Web server 102 . . . does not receive Web pages from Shinoda’s
mark management.” (Reply Br. 7.) Contrary to Appellants’ arguments, the
Examiner found that the mark image of Shinoda corresponds to the claimed
“media signal files.” (Ans. 14.)
Therefore, we agree with the Examiner that Shinoda describes the
limitations “a network address of a network resource associated with a
corresponding media signal,” as recited in independent claim 16.
Accordingly, we sustain the rejection of independent claim 16 under
35 U.S.C. § 102(e).

Independent Claim 17
We are unpersuaded by Appellants’ arguments (App. Br. 19; see also
Reply Br. 8) that Shinoda does not describe the limitation “a list of media
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signal files and information to be linked with the media signal files via data
embedded in the media signal files,” as recited in independent claim 17.
The Examiner found that the mark images associated with the mark
management database DB 2021 of Shinoda correspond to the claimed “a list
of media signal files.” (Ans. 15, 31-32; Shinoda, ¶ [0016], fig. 5.) The
Examiner also found that the Web page URL 502 of Shinoda corresponds to
the claimed “information to be linked with the media signal files.” (Ans. 31;
Shinoda, ¶ [0016].) We agree with the Examiner.
Figure 5 of Shinoda illustrates a table of a data structure for a mark
management DB 2021. (¶ [0008].) Shinoda explains that “[e]ach record in
the mark management DB 2021 is composed of a mark ID 501; a Web page
URL 502 and a page name 503.” (¶ [0016].) Because the mark
management DB 2021 of Shinoda stores records for multiple mark images
(see fig. 5), Shinoda discloses the limitation “a list of media signal files.”
Shinoda further explains that “[t]he Web page URL 502 is the URL of a
Web page to which the mark is attached.” (¶ [0016].) In addition, “the mark
acquiring program 30144 issues a request to the mark management
server 103 to send a mark to be attached to the created Web page” which
“includes a mark ID, a Web page URL and a page name.” (¶ [0018].) Thus,
Shinoda describes that limitation “information to be linked with the media
signal files via data embedded in the media signal files.”
Appellants argue that “it is not clear what the Office is construing as
the required ‘list of media signal files,’ nor as the ‘information to be linked
with the media signal files via data embedded in the media signal files.’”
(App. Br. 19.) However, the Examiner found that multiple requests for mark
images, including a mark ID 501, a Web page URL 502, and a page
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name 503, as illustrated in Figure 5, corresponds to the claimed “list of
media signal files.” (Ans. 32.) Furthermore, Shinoda explains that the
request to the mark management server 103 “includes a mark ID, a Web
page URL and a page name.” (¶ [0018].)
Therefore, we agree with the Examiner that Shinoda describes the
limitation “a list of media signal files and information to be linked with the
media signal files via data embedded in the media signal files,” as recited in
independent claim 17.
We are further unpersuaded by Appellants’ arguments (App. Br. 19-
20; see also Reply Br. 8-9) that Shinoda does not describe the limitations “a
batch registration loader” and “a batch registration extractor,” as recited in
independent claim 17.
The Examiner found that Figure 5 of Shinoda, which illustrates
multiple mark IDs, Web page URLs and page names, and the mark creating
program 20143 of Shinoda collectively correspond to the claimed “batch
registration loader” and “batch registration extractor.” (Ans. 32; see also
Ans. 18-19; Shinoda, ¶ [0018], fig. 5.) We agree with the Examiner.
As discussed previously, Shinoda explains that “[e]ach record in the
mark management DB 2021 is composed of a mark ID 501; a Web page
URL 502 and a page name 503.” (¶ [0016].) Because the mark
management DB 2021 of Shinoda stores records for multiple marks (see
fig. 5), Shinoda describes a “batch” of marks. Also discussed previously,
Shinoda explains that “the mark creating program 20143 registers the mark
ID 501 of the dispensed mark image, and the URL 502 and the page
name 503 of the requested Web page in the mark management DB 2021.”
(¶ [0018].) Thus, Shinoda describes “a batch registration loader for creating
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records in a registration database corresponding to identifiers for each of the
media signal files.” Also discussed previously, Shinoda explains that “the
mark acquiring program 30144 issues a request to the mark management
server 103 to send a mark to be attached to the created Web page” such that
“the mark creating program 20143 embeds the mark ID 601 and the mark
management server address 602 in the requested mark image.” (¶ [0018].)
Thus, Shinoda describes the limitation “a batch registration extractor for
reading the registration database and creating an embedder control file.”
Appellants argue that the “Final Rejection treats this claim limitation
[of a batch registration loader] with only a brief reference that does not map
the recited claim elements to any aspects of Shinoda’s teachings.” (App.
Br. 19-20.) Similarly, Appellants argue that Shinoda “does not teach an
extractor for reading a database and creating an embedder control file.”
(App. Br. 20.) Contrary to Appellants’ arguments, the Examiner found that
the records for multiple mark images, as illustrated in Figure 5 of Shinoda,
along with the mark creating program 20143 of Shinoda, correspond to the
claimed “batch registration loader” and “batch registration extractor.”
(Ans. 32; see also Ans. 18-19.)
Therefore, we agree with the Examiner that Shinoda describes the
limitations “a batch registration loader” and “a batch registration extractor,”
as recited in independent claim 17.
Accordingly, we sustain the rejection of independent claim 17 under
35 U.S.C. § 102(e).
2

2
Because we agree with the Examiner that independent claim 17 is
anticipated by Shinoda, we do not reach the issue raised by Appellants
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§103 Rejection – Shinoda
We are unpersuaded by Appellants’ arguments (App. Br. 22) that
Shinoda would not have rendered obvious dependent claim 7, which
includes the limitation “the client computer establishes a connection with the
registration process by extracting information from a watermark on a
physical object and using that information to establish the connection.”
The Examiner found that the client terminal 101 of Shinoda, which
includes a search processing program 40143 and displays the mark image on
an output device 403, corresponds to the claimed “establishes a connection
with the registration process by extracting information from a watermark on
a physical object and using that information to establish the connection.”
(Ans. 16; ¶¶ [0015], [0021].) The Examiner acknowledged that the WWW
server 102 does not “extract[] information from a watermark on a physical
object.” (Ans. 16.) The Examiner concluded that “[i]t would have been
obvious . . . to include client terminal 101 as a client computer for
automatically embedding watermarks . . . .” (Ans. 17.) We agree with the
Examiner.
Shinoda explains that a search processing program 40143 issues a
search request to the mark management server 103 (¶ [0015]), such that
“[t]he search processing program 40143 of the client terminal 101 edits the
received information with its display/edit processing, and displays the edited
information on the output device 403” (¶ [0021]).
The modification of Shinoda is based on incorporating the known
search processing program 40143 of client terminal 101, including

regarding the additional cumulative rejection of claim 17 under 35 U.S.C.
§ 103(a).
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displaying the mark image on the output device 403, into the known WWW
server 102, to yield predictable results. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007). Thus, we agree with the Examiner (Ans. 17) that
modifying Shinoda to incorporate the search processing program 40143 of
the client terminal 101 into the WWW server 102 would have been obvious.
Appellants argue that “while a watermarked logo may appear ‘on’ a
physical object (the physical output device, display screen 403), the Shinoda
watermark is not extracted ‘from’ a physical object.” (App. Br. 22.)
However, the claim language “extracting information from a watermark on a
physical object” is broad enough to encompass a mark image displayed on
the output device 403.
Thus, we agree with the Examiner that Shinoda would have rendered
obvious dependent claim 7, which includes the limitation “the client
computer establishes a connection with the registration process by extracting
information from a watermark on a physical object and using that
information to establish the connection.”
Accordingly, we sustain the rejection of dependent claim 7 under
35 U.S.C. § 103(a). Claims 8-10 depend from claim 7, and Appellants have
not presented any additional substantive arguments with respect to these
claims. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Therefore, we sustain the rejection of claims 8-10 under 35
U.S.C. § 103(a), for the same reasons discussed with respect to dependent
claim 7.
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§103 Rejection – Shinoda and Takai
We are unpersuaded by Appellants’ arguments (App. Br. 25) that the
combination of Shinoda and Takai would not have rendered obvious
dependent claim 6, which includes the limitation “authentication information
is provided in part by extracting information from a watermark embedded in
an identity card.”
The Examiner acknowledged that Shinoda does not disclose the
limitation “a watermark embedded in an identity card” and therefore, relied
upon Takai for teaching an ID card with an embedded electronic watermark.
(Ans. 17.) The Examiner concluded that “[i]t would have been obvious . . .
to apply Takai’s teaching to embed authentication information in an ID card
as an enhanced authentication means to Shinoda . . . .” (Ans. 17.) We agree
with the Examiner.
Takai relates to a card recording medium for recording data
containing identification information and an image of a holder. (Abstract.)
In one embodiment, Takai explains that “[t]he electronic watermark is
generated from the mentioned items of the ID card, and embedded into a
photograph to be printed.” (Col. 4, ll. 1-3.)
The combination of Shinoda and Takai is nothing more than
incorporating the known method of Takai for applying an electronic
watermark to an ID card with the known method of Shinoda for embedding
watermarks via WWW servers, to yield predictable results. See KSR, 550
U.S. at 416. Thus, we agree with the Examiner (Ans. 17) that modifying
Shinoda to apply an electronic watermark to an ID card of Takai would have
been obvious.
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Appellants argue that “[c]laim 1, however, relates to a method of
performing identifier registration; it does not relate to card authentication”
and thus, “Takai is not from the field to which claim 1 relates.” (App.
Br. 25.) However, Appellants’ Specification explains that “[t]he invention
relates to . . . encoding information into media signals” (Spec. 1:11-12) and
that digital watermarking is commonly applied to documents (Spec. 1:16-
21). Similarly, Takai describes generating electronic watermarks and
embedding such watermarks into a photograph of an ID card. (Col. 4, ll. 1-
5.) Thus, Takai is from the same field of endeavor as Appellants’ claimed
invention because both relate to the digital watermarking of documents (e.g.,
photographs). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Appellants also argue that “only by impermissible hindsight would an
artisan have considered combining Takai with Shinoda.” (App. Br. 25.)
However, as discussed previously, the combination of Shinoda and Takai is
based on either combining known elements to achieve predictable results.
Thus, we agree with the Examiner that the combination of Shinoda
and Takai would have rendered obvious dependent claim 6, which includes
the limitation “authentication information is provided in part by extracting
information from a watermark embedded in an identity card.”
Accordingly, we sustain the rejection of dependent claim 6 under 35
U.S.C. § 103(a).

DECISION
The Examiner’s decision to reject claims 1-17 is affirmed.
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).
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AFFIRMED

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