Ex Parte Rekiere

Patent Trial and Appeal Board

Nov 17, 2014

11189907 (P.T.A.B. Nov. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOSEPH REKIERE
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Appeal 2012-006591
Application 11/189,9071
Technology Center 2600
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Before ULRIKE W. JENKS, ROBERT A. POLLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to document
management systems and methods. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Background
The Specification discloses embodiments “to manage printed
documents at the page level.” Spec. ¶ 9.

1 According to Appellant, the real party in interest is Hewlett-Packard
Development Company, LP. App. Br. 1.
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[E]ach page of a document can be printed with a unique
watermark used to associate that document page with its status.
When a page is copied, the watermark can be identified and
associated with data indicating that the document page has been
copied. The copy can also include a unique watermark
associating the copied document page with a particular person
responsible for the copy. Before a document page (copy or
original) is destroyed, its watermark can be recognized and
associated with data indicating its destruction.
Id.
The Claims
Claims 1–14 and 24–30 are on appeal.2 Claim 1 is representative and
reads as follows:
1. A document management method comprising:
for each page of a print job to be produced, generating
and merging a watermark with that page, wherein the
watermark merged with each given page of the print job is
unique with respect to all other watermarks merged with all
other pages of the print job; and
for each watermark merged with a page of the print job,
associating, in a database, data identifying that watermark with
data identifying the particular page of the print job with which
that watermark is merged,
wherein the data identifying the watermark maintained
within the database does not include data encoded within the
watermark itself.
App. Br. 8 (Claims App’x) (emphasis added).

2 Appellant does not appeal the rejections of claims 15–23 under 35 U.S.C.
§ 101 and 35 U.S.C. § 103 (App. Br. 1). Accordingly, we summarily affirm
these rejections. See MPEP § 1205.02 (“If a ground of rejection stated by
the examiner is not addressed in the appellant’s brief, that ground of
rejection will be summarily sustained by the Board.”).
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The Rejections
1. The Examiner maintains that claims 1–5, 8, 24–27, 29, and 30 are
unpatentable under 35 U.S.C. § 103(a) over Yamashita3 in view of
Brundage.4
2. The Examiner maintains that claims 6, 7, 9–14, and 28 are
unpatentable under 35 U.S.C. § 103(a) over Yamashita in view of
Brundage and Maeshima.5
DISCUSSION
1. Yamashita in view of Brundage
Appellant argues that this rejection should be reversed based on the
limitations in independent claim 1. See App. Br. 4–6. Accordingly, we limit
our analysis to the rejection of claim 1 in making our determinations below.
The Examiner initially found that Yamashita teaches each of the
limitations of claim 1 except for the requirement that the data identifying the
watermark maintained in the database does not include data encoded within
the watermark. Non-Final 4. However, in response to Appellant’s
arguments, the Examiner finds that Yamashita discloses that location
information related to a watermark may not be embedded within the
watermark and is stored using another means. Ans. 5. The Examiner also
finds that Brundage discloses that the location information may include an
index or identifier used to find information in a database and it would “be
obvious to one of ordinary skill[] . . . to modify the location information as

3 Yamashita et al., US 2006/0098236 A1, published on May 11, 2006.
4 Brundage et al., US 7,249,257 B2, issued on July 24, 2007.
5 Maeshima et al., US 2006/0001898 A1, published on Jan. 5, 2006.
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taught in [Yamashita] to include index or identifiers so that they can be used
to find data or information within the database.” Id. at 6.
The dispositive issue with respect to this rejection is whether the
Examiner has established a prima facie showing that the proposed
combination of Yamashita and Brundage discloses the claim requirement
that “the data identifying the watermark maintained within the database does
not include data encoded within the watermark itself.”
Principles of Law
In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of the claim is described or
suggested by the combination of prior art references or would have been
obvious based on the knowledge of those of ordinary skill in the art. In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
Analysis
Appellant argues that this rejection should be reversed because the
combination of Yamashita and Brundage does not teach or suggest the
limitation of claim 1 requiring that the data identifying the watermark in the
database is not encoded within the watermark itself.6 See App. Br. 4–6;
Reply Br. 3–4.

6 Appellant also asserts that the Examiner improperly raised a new ground
of rejection in the Answer, and thus, Appellant argues that this new ground
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The Examiner takes the position that Yamashita “clearly explains that
the location information which identifies the location of the watermark
within the database” may or may not be embedded within the watermark and
may be stored using another means. Ans. 5. The Examiner finds that
“[t]herefore when the location information is stored using another means
during printing, it is not embedded in the photo itself or the watermark itself
and therefore it is not part of the watermark itself.” Id.
The Examiner relies on Brundage to supply the use of an index or
identifier embedded in a watermark that is used to find information in a
database. See Ans. 6. The Examiner concludes that “it will be obvious to
one ordinary skilled [sic] in the art at the time the invention was made to
modify the location information as taught in Yasmashita [sic] to include
index or identifiers so that they can be used to find data or information
within the database.”
For the reasons set forth below we find that the Examiner’s
conclusion that this limitation is taught by the proposed combination of
Yamashita and Brundage is not supported by a preponderance of the
evidence of record.
Yamashita discloses methods of embedding information in photo data.
See Yamashita, Abstract. One embodiment includes generating location
information and identification information for each photo, the identification
information uniquely identifies each photo and the location information

of rejection should be ignored. Reply Br. 1–2. However, an Examiner may
include a new ground of rejection in the Answer and in response, Appellant
may either request that prosecution be re-opened or maintain the appeal. 37
C.F.R. § 41.39 (2011). Appellant has chosen to maintain the appeal.
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indicates the storage location for the photo data. Id. at ¶¶ 166, 168. The
identification information is embedded as a watermark in the photo data and
the photo data is stored in the location indicated by the location information.
Id. at ¶ 167, 169. When the photo is printed it includes the watermark
“constituting the identification information.” Id. at ¶ 173. Yamashita also
discloses that the location information may or may not be embedded as a
watermark in the photo data. Id. at ¶ 238.
Brundage discloses a method of embedding watermarks into areas of a
map. See Brundage col. 4, ll. 16–17. Each watermark includes a payload
providing area or location identifying information as well as other
information. Id. at col. 4, ll. 28–47. Brundage discloses that the location
information may include an index or identifier that may be extracted from
the watermark and used to interrogate a database to find physical coordinates
or location information. Id. at col. 4, l. 66–col. 5, l. 11.
We find that the Examiner has not sufficiently explained how the fact
that location data in Yamashita may not be embedded in the watermark
teaches or suggests the claim requirement that “the data identifying the
watermark maintained within the database does not include data encoded
within the watermark itself.” Specifically, we agree with Appellant that
Yamashita’s location information is not “data identifying the watermark” as
required by the claim. The location information is only related to the
watermark in that it provides the location where the identification
information is stored, and it is this identification that is embedded within the
watermark itself. See Reply Br. 3.
We also find that the Examiner has not sufficiently explained how the
combination of Yamashita and Brundage teach or suggest this claim
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requirement. We do not find anything in the cited portion of Brundage that
would lead one of ordinary skill in the art to modify Yamashita to achieve
the claimed method, specifically with respect to the requirement that data
identifying the watermark is not encoded within the watermark. The
Examiner does not sufficiently explain how this proposed modification
makes the claim limitation at issue obvious. Finally, to the extent the
Examiner initially argued that this disclosure in Brundage teaches or
suggests this claim limitation, we are not persuaded. The Examiner has not
identified any data identifying the watermark in Brundage that is not also
embedded within the watermark itself.
Based on the foregoing, we find that the Examiner has failed to
establish a prima facie case of obviousness, and thus, we reverse this
rejection.
2. Yamashita in view of Brundage and Maeshima
The Examiner does not rely on Maeshima to cure the deficiency in the
rejection based on Yamashita and Brundage. We therefore find that the
Examiner has not established a prima facie case of obviousness with respect
to claims 6, 7, 9–14, and 28 for the same reasons articulated with respect to
the rejection of claim 1, as described above. Accordingly, we reverse this
rejection.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1–
14 and 24–30.
REVERSED

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