Ex Parte Levy

Patent Trial and Appeal Board

Mar 6, 2014

11614921 (P.T.A.B. Mar. 6, 2014)

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.
11/614,921 12/21/2006 Kenneth L. Levy P1245 1118
23735 7590 03/06/2014
DIGIMARC CORPORATION
9405 SW GEMINI DRIVE
BEAVERTON, OR 97008
EXAMINER
KHAKHAR, NIRAV K
ART UNIT PAPER NUMBER
2167
MAIL DATE DELIVERY MODE
03/06/2014 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 KENNETH L. LEVY
____________

Appeal 2011-009471
Application 11/614,921
Technology Center 2100
____________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1-18 (App. Br. 3).
Examiner entered a rejection under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is Digimarc Corporation (App. Br. 3).
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STATEMENT OF THE CASE
The claims are directed to a method of associating a content object
with metadata, one or more computer readable media on which is stored
instructions, which when executed by one or more processors, perform acts
of associating a content object with metadata, and a system for associating a
content object with metadata. Claims 1, 15, and 16 are representative and
are reproduced in the Claims Appendix of Appellants’ Brief.
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Ferrel2 and Orleth.3
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion that the combination of Ferrel and Orleth suggest “receiving a
content identifier for a content object from among a set of content
identifiers” and “providing a unique bounding identifier for the set of
content identifiers” as is required by Appellant’s claimed invention?
FACTUAL FINDINGS (FF)
FF 1. According to Appellant’s Specification the term “‘content’ . . . refers
to pictures, music, movies and all of their sundry creative brethren which
collectively might fall under the grand umbrella named ‘creative works’”
(Spec. 1: 10-12).
FF 2. “[A] given creative work can be thought of as an entity or ‘content
object’” (id. at l. 11).
FF 3. “Metadata generally refers to information associated with a content
object” (id. at ll. 19-20).

2 Ferrel et al., US 5,907,837, May 25, 1999.
3 Orleth et al., US 2004/0215754 A1, Oct. 28, 2004.
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FF 4. Appellant’s method associates
[A] content object with metadata us[ing] a combination of a
content identifier and a bounding identifier to enable handling
of disparate sets of content identifiers for content objects with
potentially conflicting content identifiers. The method receives
a content identifier for a content object from among a set of
content identifiers. In provides a unique bonding identifier for
the set of content identifiers. This unique bonding identifier is
used in combination with the content identifier to form a
globally unique identifier for the content object.
(Spec. 10: 8-13; see Ans. 12.)
FF 5. Ferrel’s “invention relates to information retrieval systems and more
particularly, to a system and method for indexing, querying and retrieving
information in an on-line network” (Ferrel, col. 1, ll. 12-15).
FF 6. One aspect of Ferrel’s
[I]nvention is, in a computer network, an indexing system of a
title having a title layout and content, wherein said title layout
includes search objects, each of said title layout, content and
search objects having an associated object identifier, and said
content having search properties, the system comprising: an
index server receiving the title; a catalog database containing
tables associating object identifiers with other information
including search properties; an index service executing on the
index server and accessing the catalog database; and a database
server storing index associations between the search properties
and object identifiers provided by the index service.
(Ferrel, col. 4, ll. 44-56; see Ans. 4 (wherein Examiner finds that Ferrel
suggests “an object identifier being provided by the index service”).)
FF 7. Ferrel suggests that
[A] globally unique identifier (GUID) can be used in OLE
object oriented environments to identify an object with a unique
string of characters. Normally, unique GUIDs are produced by
concatenating the time, date and network card serial number of
the computer at the time that the object is created. By using
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this method, it is virtually impossible for two objects to receive
the same GUID. Thus, each object in the system can be
identified, linked to, retrieved, and so forth by use of the
object's GUID.
(Ferrel, col. 15, ll. 1-10; see Ans. 4 (wherein Examiner finds that Ferrel
suggests “using a combination of the content identifier and the unique
bonding identifier to form a globally unique identifier for the content object
. . . [by] referring to the generation of a GUID using time, date, and network
card serial number”).)
FF 8. With reference to Ferrel’s TABLE 3, Examiner finds that Ferrel
suggests “associating the globally unique identifier with a metadata source
to enable routing of an entity that supplies the globally unique identifier to
the metadata source” (Ans. 4).
FF 9. Examiner finds that “Ferrel does not appear to explicitly disclose:
receiving a content identifier for a content object from among a set of
content identifiers” and relies on Orleth to make up for this deficiency (id.).
FF 10. Orleth suggests that
[W]hen a version of driver for a shared peripheral device is
initially stored upon the centralized driver store . . . a suitable
unique identifier name [may, as an alternative to a “strong
name”, be] generated, when the driver is stored, based upon
metadata (e.g., a version number, a timestamp, checksum, etc.)
extracted from one or more files associated with the particular
driver version.
(Orleth 2-3: [0028]; see Ans. 4 (where Examiner finds that Orleth suggests
“receiving a content identifier for a content object from among a set of
content identifiers . . . [by] referring to an identifier name being generated
based upon metadata (e.g., a version number, a timestamp, checksum,
etc.”).)
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ANALYSIS
Appellant’s claimed invention requires, inter alia, receiving of a
content identifier for a content object from among a set of content identifiers
and providing a unique bounding identifier for the set of content identifiers,
wherein the combination of the content identifier and unique bounding
identifier form a globally unique identifier for the content object (see
Appellant’s Claims 1, 15, and 16; see also FF 4).
Based on the combination of Ferrel and Orleth, Examiner concludes
that, at the time Appellant’s invention was made, it would have been prima
facie obvious to “modif[y] the system of Ferrel with the timestamp-based
identifiers from Orleth, because Ferrel discloses the use of generating a
GUID by a combination of timestamp and network card serial number”
(Ans. 5 (emphasis added); see generally FF 5-10). In this regard, Examiner
asserts that “[i]t is a reasonable interpretation of the definition of ‘unique
bounding identifiers’ to include the use of the NIC serial number of Ferrel,
because of the similarity between such a serial number and the given list of
potential bounding identifiers” (Ans. 13).
Appellant contends that “Ferrel teaches that the adapter card serial
number is concatenated with a time/date to form a unique object identifier
called a GUID” (App. Br. 8). In this regard, Appellant contends that
The act of concatenating the network card serial number with
time/date to generate a GUID does not provide a bounding
identifier for the set of content identifiers because the network
card serial number is not provided for a set of content identifiers
(in other words, time/date data is not a set of content identifiers
as claimed).
(Id. (emphasis added).) Examiner failed to explain how Ferrel’s unique
bounding identifiers, which includes a network card serial number relate to
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Appellant’s requirement for a unique bounding identifier for a set of content
identifiers (see Ans. 5 and 13; Cf. Appellant’s claims 1, 15, and 16).
Appellant further contends that Orleth fails to make up for this
deficiency in Ferrel (id.). In this regard, Appellant contends that “[t]here is
no teaching [in Orleth] that th[e] generation of an identifier from extracted
metadata [(i.e. information, such as version number, timestamp, checksum,
etc., associated with a content object, such as a software driver)]
encompasses receiving a content identifier for a content object from a set of
content identifiers because there is no indication of a set of content
identifiers in” Orleth (id. at 9; FF 3). As Appellant explains, Orleth’s
[E]xamples of metadata . . . such as version number, a
timestamp, checksum, etc. do not correspond to the set of
content identifiers as claimed because these listed items are not
taught as a set of content identifiers (instead, it’s only metadata
for one driver), and there is no clear teaching that generating an
identifier from this metadata includes the act of receiving a
content identifier for a content object from a set of content
identifiers.
(App. Br. 9; Reply Br. 2 (“Orleth’s method of generating an identifier for a
software driver from data in its files does not suggest th[e] missing aspect of
claim 1 because it is not teaching receiving a content identifier for a content
object from among a set of content identifiers as claimed”).) While
Examiner emphasizes that “the aspect of Ferrel that is intended to read on
the claimed ‘content identifiers’ is the time stamp,” Examiner fails to refute
Appellant’s contention that a time stamp does “not correspond to the set of
content identifiers as [set forth in Appellant’s] claims[s]” (Ans. 13; Cf. App.
Br. 9).
On balance, we find that the preponderance of evidence on this record
falls in favor of Appellant. Examiner recognizes that Ferrel fails to suggest
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“receiving a content identifier for a content object from among a set of
content identifiers and relies on Orleth to make up for this deficiency” (FF
9). However, as Appellant explains, the portion of Orleth relied upon by
Examiner fails to suggest a set of content identifiers, as required by
Appellant’s claims, because the version number, timestamp, checksum, etc.
suggested by Orleth “are not taught as a set of content identifiers,” but
instead represent “only metadata for one driver” (App. Br. 9; see also Reply
Br. 2; see FF 9-10). In sum, Examiner failed to establish an evidentiary
basis on this record to support a conclusion that the combination of Ferrel
and Orleth suggest “receiving a content identifier for a content object from
among a set of content identifiers” and “providing a unique bounding
identifier for the set of content identifiers” as is required by Appellant’s
claimed invention.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion that the combination of Ferrel and Orleth suggest
“receiving a content identifier for a content object from among a set of
content identifiers” and “providing a unique bounding identifier for the set
of content identifiers” as is required by Appellant’s claimed invention. The
rejection of claims 1-18 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Ferrel and Orleth is reversed.

REVERSED

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