Ex Parte Molaro

Patent Trial and Appeal Board

Dec 19, 2013

10392627 (P.T.A.B. Dec. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte DONALD JOSEPH MOLARO
____________________

Appeal 2011-005446
Application 10/392,627
Technology Center 2400
____________________

Before: JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/392,627

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellant’s claimed invention is generally related to digital content
distribution. (Spec. 1).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method for marking digital content comprising:

receiving a request from a user to deliver a piece of
digital content to said user, wherein said piece of digital content
comprises a plurality of frames;

responsive to said request, retrieving said piece of digital
content from a memory component;

responsive to said request, embedding a datum in said
piece of digital content to generate an equivalent piece of digital
content, wherein said datum identifies said user in said
equivalent piece of digital content, wherein said datum is
embedded in less than all of said plurality of frames, and
wherein said datum authenticates said user; and

delivering said equivalent piece of digital content to said
user.

REFERENCES
Grimmer U.S. Pat. No. 5,774,552 Jun. 30, 1998
Wu U.S. Pat. No. 6,285,775 B1 Sep. 4, 2001
Levy U.S. Pat. App. Pub. No. 2002/0052885 Al May 2, 2002
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Muratani U.S. Pat. No. 6,901,515 B1 May 31, 2005
Miyazaki U.S. Pat. No. 6,912,512 B2 Jun. 28, 2005
Bruce Schneier, Applied Cryptography, Second Edition: Protocols,
Algorithms, and Source Code in C, pages 31-32 (1996) (“Schneier”).

REJECTIONS
Claims 1, 2, 9-13, 20-23, and 30-32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Levy and Muratani.
Claims 3-5, 14-16, 24-26, and 36 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Levy, Muratani, and Wu.
Claims 6, 17, 27, and 33-35 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Levy, Muratani, and Grimmer.
Claims 7, 18, and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Levy, Muratani, and Schneier.
Claims 8, 19, and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Levy, Muratani, and Miyazaki.

ANALYSIS
With respect to independent claims 1, 12, and 23, Appellant relies on
the same argument for each of the three independent claims. Therefore, we
select independent claim 1 as the representative claim and will address
Appellant’s arguments thereto. (App. Br. 11). Appellant contends
independent claim 1 recites “responsive to the request, embedding a datum
in the piece of digital content to generate an equivalent piece of digital
content,” and “first a request to deliver a piece of digital content is received
and subsequent thereto a datum is embedded within the piece of digital
content to generate an equivalent piece of digital content.” (App. Br. 11).
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The Examiner maintains that the Levy reference discloses a request
for content in paragraph [0031] and that embedded data will be added at the
time of creation or purchase in paragraph [0068]. (Ans. 18). We agree with
the Examiner that the Levy reference teaches a wide range of watermarking
and purchase of content in paragraph [0068]. Additionally, we agree with
the Examiner that paragraph [0083] teaches updating and changing the
embedded data in some fashion and that it would have been obvious to one
of ordinary skill in the art when users purchase enhanced rights. Moreover,
paragraph [0107] describes marking a file with the user’s ID during a
download, then if the user attempts to add to the file sharing system, the
system knows the user and informs them how the user can and cannot use
the file. We conclude these teachings throughout the Levy reference suggest
the claimed “embedding a datum in said piece of digital content to generate
an equivalent piece of digital content, wherein said datum identifies said
user in said equivalent piece of digital content, wherein said datum is
embedded in less than all of said plurality of frames, and wherein said datum
authenticates said user.” We further conclude that any modification or
watermarking of the original piece of digital content generates a
resulting/equivalent piece of digital content. Appellant further contends that
paragraphs [0147] and [0031] do not teach or suggest embedding data in
response to a request (App. Br. 11-12), but Appellant does not address the
further reasoning set forth by the Examiner.
Appellant contends that one would not be motivated to modify the
teachings of the Levy reference with the Muratani reference since they are
different and address different problems. (App. Br. 12-13). We disagree
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with Appellant and find the general allegation does not address the specific
teachings of the Levy reference as identified by the Examiner.
Appellant has elected not to file a Reply Brief to further respond to
the Examiner’s additional clarifications in the responsive arguments
regarding the argued limitations which were not made in the appealed non-
final office action. Therefore, Appellant has not shown error in the
Examiner’s conclusion of obviousness of representative independent claim
1, and we sustain the rejection of representative independent claim 1 and
independent claims 12 and 23 grouped therewith along with their dependent
claims not specifically argued. (App. Br. 13). See 37 C.F.R.
§ 41.37(c)(1)(vii).
With respect to dependent claims 10, 21, and 31, Appellant contends
that the Levy reference does not teach or suggest “determining that a piece
of digital content is an unauthorized copy of an equivalent piece of digital
content.” (App. Br. 13-14) (emphasis omitted). We disagree with
Appellant’s contention and find that the teachings of the Levy reference in
the paragraphs discussed above teach the marking, use, and determination of
the user ID and rights. Therefore, we sustain the rejection of representative
claim 10 and dependent claims 21 and 31 grouped therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).
With respect to dependent claims 11, 22, and 32, Appellant contends
that the watermark disclosed by the Levy reference is not associated with
any specific user. (App. Br. 14). We disagree with Appellant’s contention
and find that the teachings of the Levy reference in the paragraphs discussed
above teach the marking, use, and determination of the user ID and rights
which would include identifying the user and determining that the user is
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authorized or not authorized. Therefore, we sustain the rejection of
representative claim 11 and dependent claims 22 and 32 grouped therewith.
See 37 C.F.R. § 41.37(c)(1)(vii).
With respect to dependent claims 3, 14, and 24, Appellant repeats the
express teachings of the Wu reference and contends that the Wu reference
embeds a watermark into the digital content in every frame of the MPEG
format which fails to teach or suggest performing the digital watermark
process upon an intra-coded frame (I-frame) of the piece of digital content in
the claimed fashion. (App. Br. 15-16). The Examiner maintains “nowhere
in the cited section [of the Wu reference] does it say anything about
embedding the watermark into every frame of the MPEG format.” (Ans.
21). The Examiner additionally maintains that the Levy reference further
discloses the use of watermarks spaced at a number of frames. (Ans. 21).
We agree with the Examiner and disagree with Appellant’s general
allegation. Therefore, we sustain the rejection of representative dependent
claim 3 and dependent claims 14 and 24 grouped therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).
With respect to dependent claims 4, 15, and 25, again Appellant
contends that the Wu reference embeds the watermark into every frame and
teaches away from the recited limitations. (App. Br. 16-17). The Examiner
disagrees and contends that the combination of the Wu and Levy references
would have enabled the receiver to authenticate the stream and determine
which portions are missing or have been altered. (Ans. 22-23). We agree
with the Examiner and find the Appellant’s general allegation and teaching
away argument does to not show error in the Examiner’s conclusion of
obviousness of representative dependent claim 4.
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With respect to dependent claims 5, 16, and 26, again Appellant
contends that the Wu reference embeds the watermark into every frame and
teaches away from the combination. (App. Br. 17-18). The Examiner
disagrees and contends that the combination of the Wu and Levy references
would have enabled the receiver to authenticate the stream and determine
which portions are missing or have been altered. (Ans. 24-25). We agree
with the Examiner and find the Appellant’s general allegation and teaching
away argument does to not show error in the Examiner’s conclusion of
obviousness of representative dependent claim 5.
With respect to dependent claim 36, Appellant contends that the Wu
reference embeds the watermark into every frame and teaches away from the
combination. (App. Br. 18). The Examiner disagrees and contends that the
combination of the Wu and Levy references would have enabled the receiver
to authenticate the stream and determine which portions are missing or have
been altered. (Ans. 25). We agree with the Examiner and find the
Appellant’s general allegation does to not show error in the Examiner’s
conclusion of obviousness of representative dependent claim 36.
With respect to dependent claims 6, 17, and 27, Appellant repeats the
portions of the reference relied upon by the Examiner and presents a general
allegation that the Grimmer reference fails to teach or suggest “confirming
the identity of the user by using a digital certificate.” (App. Br. 19)
(emphasis omitted). The Examiner further details the combination of
teachings (Ans. 26-27), and Appellant does not respond with a Reply Brief.
Therefore, we sustain the rejection of representative dependent claim 6 and
claims 17, 27, and 33-35 grouped therewith.
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With respect to dependent claim 7, 18, and 28, Appellant contends
that the Schneider reference fails to remedy the failures of the combination
of the Levy and Muratani references. (App. Br. 21-22). We find Appellant’s
argument to be a general allegation of patentability which is unpersuasive in
showing error in the Examiner’s conclusion of obviousness of representative
dependent claim 7.
With respect to dependent claim 8, 19, and 29, Appellant contends
that the Miyazaki reference fails to remedy the failures of the combination of
the Levy and Muratani references. (App. Br. 23). We find Appellant’s
argument to be a general allegation of patentability which is unpersuasive in
showing error in the Examiner’s conclusion of obviousness of representative
dependent claim 8.

CONCLUSION
The Examiner did not err in rejecting claims 1-36 under 35 U.S.C.
§ 103(a).

DECISION
The Examiner’s decision rejecting claims 1-36 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).

AFFIRMED

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