Ex Parte Samtani et al

Patent Trial and Appeal Board

Jun 8, 2016

12245605 (P.T.A.B. Jun. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/245,605 10/03/2008
23735 7590 06/10/2016
DIGIMARC CORPORATION
9405 SW GEMINI DRIVE
BEAVERTON, OR 97008
FIRST NAMED INVENTOR
Rajan Samtani
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl428-R 4388
EXAMINER
HUANG, TSAN-YU J
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/10/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
dl-patentnotice@digimarc.com
lisa. par kin son @digimarc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJAN SAMTANI, JOEL R. MEYER, and RA VIK. SHARMA
Appeal2014-003376 1
Application 12/245,6052
Technology Center 3700
Before: MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-7 and 21-25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
June 28, 2013), the Reply Brief ("Reply Br.," filed Jan. 27, 2014), the
Examiner's Answer ("Ans.," mailed Nov. 26, 2013), the Final Office Action
("Final Act.," mailed Sept. 28, 2012), and the Specification ("Spec.," filed
Oct. 3, 2008).
2 According to the Appellants, the real party in interest is Digimarc
Corporation. Appeal Br. 3.
Appeal2014-003376
Application 12/245,605
STATEMENT OF THE CASE
The Appellants' invention is directed generally to "steganography,
data hiding, content fingerprinting and content identification," and
particularly to "a process for generating a unique copy of a content item by
varying the properties of the master copy." Spec. i-fi-f l, 23.
Claims 1 and 7 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal (bracketing
added for reference):
1. A method of serializing a content item comprising:
[a] analyzing a master copy of the content item stored in
an electronic memory to determine parameters for embedding a
master copy watermark in the content item, the master copy
watermark conveying digital information within the content item
that is common for copies of the content item; and
[b] from a master copy of the content item stored in an
electronic memory, generating a unique copy of the content item
by altering the master copy watermark, the alterations forming a
pattern that comprises a unique copy watermark; and storing the
unique copy in an electronic memory, the unique copy including
the master copy watermark and the pattern comprising the unique
copy watermark.
Appeal Br. 10 (Claims App.).
REJECTIONS
Claims 1---6 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1---6 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
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Appeal2014-003376
Application 12/245,605
Claims 1-7 and 21-25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Levy (US 2006/0062426 Al, pub. Mar. 23, 2006)
and Lofgren (US 2002/0154144 Al, pub. Oct. 24, 2002).
ANALYSIS
Non-Statutory Subject Matter
The Examiner finds that claims 1---6 are directed to non-statutory
subject matter because "based upon consideration of all of the relevant
factors with respect to the claims as a whole, the claims are directed to
abstract idea and are therefore rejected as ineligible subject matter." Final
Act. 5. The Examiner appears to consider only one factor in making the
determination as to whether the claims recite a patent eligible process under
35 U.S.C. § 101-the "Machine-or-Transformation Test" set forth in
Bilksi v. Kappas, 561 U.S. 593 (2010). Id.
While the machine-or-transformation test is a useful tool, it is not the
only test to determine whether a claim is statutory under 35 U.S.C. § 101.
Because the Examiner only applies the machine or transformation step
without making an ultimate finding of the nature of the abstract idea at issue,
we are constrained to reverse the Examiner's rejection of claims 1---6 under
35 U.S.C. § 101. 3
3 As noted, the Examiner applied Bilski at the time of the action. Although
the Supreme Court has since further clarified the framework for determining
whether a claim is patent-eligible under 35 U.S.C. § 101 in Alice Corp. Pty.
Ltd. v CLS Banklnt'l., 134 S. Ct. 2347 (2014), we do not address the
framework outlined by Alice.
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Application 12/245,605
Indefiniteness
The Examiner determines that claim 1, and thus also dependent claims
2---6, are indefinite under 35 U.S.C. § 112, second paragraph, because it is
unclear whether the unique copy of "the unique copy including the master
copy watermark" in limitation [b] refers to the unique copy of the content
item or the unique copy watermark. Final Act. 8; see also Ans. 6.
The Appellants contend the claim is not indefinite because the term
"the unique copy ... is clearly referring back to the unique copy of the
content item." Appeal Br. 6.
A decision on whether a claim is indefinite under 35 U.S.C. § 112
requires a determination of whether those skilled in the art would understand
what is claimed when the claim is read in light of the specification. Power-
One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir. 2010). A
claim is indefinite if that claim, "read in light of the [S ]pecification ... and
the prosecution history[] fail[ s] to inform, with reasonable certainty, those
skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S.Ct. 2120, 2124 (2014). In determining whether a
claim is indefinite, "we employ a lower threshold of ambiguity when
reviewing a pending claim for indefiniteness than those used by post-
issuance reviewing courts." Ex parte Miyazaki, 89 USPQ2d 1207, 1211
(BP AI 2008) (precedential). Our precedential Miyazaki decision "hold[ s]
that if a claim is amenable to two or more plausible claim constructions, the
US PTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite." Id.
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Application 12/245,605
We do not agree with the Examiner's determination that the claims
are indefinite because it is not clear whether "the unique copy" refers to the
content item or the watermark. When read in context of the claim, we agree
with the Appellants that one of ordinary skill in the art would be able to
understand that the "unique copy" in question refers to the unique copy of
the content item. See Appeal Br. 6; see also Reply Br. 5.
Thus, we do not sustain the Examiner's rejection of claims 1---6 under
35 U.S.C. § 112.
Obviousness
Claims 1 and 7
The Appellants argue independent claims 1 and 7 as a group. See
Appeal Br. 8. We select claim 1 as representative. Claim 7 recites
substantially similar limitations to claim 1, and thus stands or falls with
claim 1. See 37 C.F.R. 41.37(c)(l)(iv) (2014).
The Appellants contend the Examiner's rejection of claim 1 is in error
because Lofgren does not teach
alter[ing] a master copy watermark, the alterations forming a
pattern that comprises a unique copy watermark, in which the
resulting unique copy of the content item includes both the
master copy watermark and the pattern comprising the unique
copy watermark, as recited in combination with other elements
of claim 1.
Appeal Br. 7. The Appellants further argue that when properly interpreted,
the claim limitation requires that "[ t ]he act of altering takes the master copy
watermark as input and generates a unique copy including the master copy
watermark and a pattern comprising a unique copy watermark." Reply
Br. 6. Thus, the Appellants argue, "the combined teachings of Levy and
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Appeal2014-003376
Application 12/245,605
Lofgren do not teach all of the element of claim 1," that the "Examiner is
breaking the claim into separate functions that do not reasonably relate to the
actual claim language," and that "Levy does not teach the claimed altering
because instead of altering a master copy watermark, two new watermarks
are embedded." Id. at 6-7.
The Appellants' arguments are not persuasive at least because they are
arguments against the art individually when the Examiner relies on the
combination of Levy and Lofgren to teach the limitation. The Examiner
finds Levy teaches generating a unique copy of the content item from a
stored master copy, and storing the unique copy, the unique copy including
the master copy watermark and a pattern comprising the unique copy
watermark. Final Act. 9; see also Ans. 6-7. The Examiner finds Lofgren
teaches altering a master copy watermark, the alterations forming a pattern
that comprises a unique copy watermark. Final Act. 10. The Examiner
determines it would be obvious to combine the known technique of Lofgren
of altering a master copy watermark, forming a pattern that comprises a
unique copy watermark to Levy's invention because it would yield
predictable results and resulting in an improved invention that improves the
overall security. See id. The Examiner thus establishes a prima facie case of
obviousness as the Examiner has provided articulated reasoning with
rational underpinning to support a legal conclusion of obviousness. See KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Appellants do not present persuasive evidence why the
Examiner's findings or reasoning are in error. The Appellants do not present
adequate evidence that the Examiner's finding that Levy teaches the
generating as partially claimed is in error. Rather, the Appellants argue that
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Application 12/245,605
neither Levy nor Lofgren discloses "how to take a master copy watermark
and alter it to achieve the resulting master copy and unique copy watermark
pattern structure recited in claims 1-7." Reply Br. 7. The Appellants'
argument that the Examiner's finding that Lofgren teaches altering a master
copy watermark to form a pattern that comprises a unique copy watermark is
in error is unpersuasive. See Appeal Br. 7-8; see also Reply Br. 7. The
Specification does not does not define a "pattern" such that having a "pattern
comprising the unique copy watermark" excludes Lofgren's altering of the
original watermark, for example by changing bits, to create a new unique
identifier, i.e., an altered watermark pattern. See Lofgren i-f 39; see also
Spec. i-fi-1 15 ("this method does provide an imperceptible variation of the
content that creates a unique copy, and the unique copy watermark is
conveyed in this variation") and 25 ("[t]he unique copy watermark is
conveyed in a pattern of properties of the instances of the master copy
watermark"). Thus, the Appellants do not provide adequate evidence why
Lofgren's altered watermark does not meet the claim limitation.
Furthermore, although the Appellants argue that the Examiner
"break[ s] the claim into separate functions that do not reasonably relate to
the actual claim language" (Reply Br. 6), the Appellants do not present
adequate evidence why the Examiner's reasoning for combining Levy and
Lofgren, i.e., using Lofgren's known technique, is in error. See KSR, 550
U.S. at 417 ("[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.").
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Thus, we are not persuaded of error on the part of the Examiner in
rejecting claim 1 as unpatentable over Levy and Lofgren, and we sustain the
rejection. We also sustain the rejection of claim 7 as it falls with claim 1.
Claim 2
The Appellants contend the rejection of dependent claim 2 is in error
because Lofgren, upon which the Examiner relies, mentions altering the
original watermark, but not that the alterations comprise variations in
embedding the master copy watermark, as claimed. Appeal Br. 8. We
agree. Although the Examiner cites to Lofgren at paragraph 39 as teaching
variations (Final Act. 11 ), it is not clear what variations in embedding the
Examiner finds in Lofgren as teaching the limitations. The Examiner does
not adequately show how Lofgren discloses the alterations comprising
variations in embedding the watermark.
Thus, we are persuaded of error on the part of the Examiner in
rejecting claim 2 as unpatentable over Levy and Lofgren, and we do not
sustain the rejection.
Claims 3 and 22
The Appellants contend the rejection of claim 3 is in error because
Lofgren at paragraph 39, upon which the Examiner relies, does not teach
variations in a property of the master copy watermark. Appeal Br. 8. We
disagree. Lofgren at paragraph 39 discloses altering the watermark by, for
example, changing a message bit, i.e., a property of the watermark. The
Appellants have not shown why changing the bit is not a variation in a
property of the watermark.
Claim 22 recites a substantially similar limitation to that of claim 3,
with the exception of the locations being determined through analysis of the
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Application 12/245,605
master copy of the content item. Appeal Br. 11, Claims App. The
Appellants contend the rejection of claim 22 is in error because "[t]he Office
has not provided any basis for establishing that this aspect of claim 22 [of
alterations comprising variations in a property of the watermark that is
embedded at locations through analysis] is taught in the cited art." Appeal
Br. 9. However, the Appellants disregard the Examiner's finding that
Lofgren teaches the recited limitation at paragraph 39 (Final Act. 11) and
have not shown why this finding is in error.
Thus, we are not persuaded of error on the part of the Examiner in
rejecting claims 3 and 22 as unpatentable over Levy and Lofgren, and we
sustain the rejection.
Claims 4. 5. 23. and 24
The Appellants contend the rejection of claims 4, 5, 23, and 24 is in
error because "[ t ]he Office has offered no prior art citations for this aspect of
claim[s] 4 [and 5], and therefore, has not established a prima facie case of
obviousness." Appeal Br. 8. However, the Appellants disregard the
Examiner's finding that Levy teaches the recited limitations at paragraph 7
(Final Act. 11) and have not shown why these findings are in error.
Thus, we are not persuaded of error on the part of the Examiner in
rejecting claims 4, 5, 23, and 24 as unpatentable over Levy and Lofgren, and
we do not sustain the rejection.
Claim 21
The Appellants do not present any arguments against the rejection of
claim 21. Thus, we are summarily affirm the rejection of claim 21.
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DECISION
The Examiner's rejection of claims 1-6 under 35 U.S.C. § 101 is
REVERSED.
The Examiner's rejection of claims 1-6 under 35 U.S.C. § 112 is
REVERSED.
The Examiner's rejection of claims 1, 3-7, and 21-25 under 35 U.S.C.
§ 103(a) is AFFIRMED.
The Examiner's rejection of claim 2 under 35 U.S.C. § 103(a) is
REVERSED.
No time period of taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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