Ex Parte Sarraf et al

Patent Trial and Appeal Board

Oct 9, 2012

10342704 (P.T.A.B. Oct. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MOHSEN SARRAF and
MOHAMMAD HOSSEIN ZARRABIZADEH
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Appeal 2010-006373
1

Application 10/342,704
Technology Center 2600
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Before JEAN R. HOMERE, ST JOHN COURTENAY III, and JOHNNY A.
KUMAR, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1
The real party in interest is Alcatel-Lucent USA, Inc. (App. Br. 1.)

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 6-21 and 23-26.
2
Claims 1-5 have been canceled. (App.
Br. 4.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method and system for digital watermarking a
video signal (YUV) by inserting the watermarking information on the
chrominance component (UV) of the video signal and not on its luminance
component (Y), thereby reducing the visual perceptibility of the
watermarked video signal. (Spec. 1, ll. 21-30.)
Illustrative Claim
Independent claim 6 further illustrates the invention as follows:

6. A method for use in connection with a video signal comprising
the step of inserting additional information within said video signal by
incorporating said additional information only within the chrominance
component of said video signal.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:

2
Claim 22 has been objected to as being dependent upon a rejected claim,
but would otherwise be allowable if rewritten in independent form. (Ans.
15.) Because this claim is not currently rejected, we decline Appellants’
invitation (App. Br. 2) to address in this Opinion the merits of the
Examiner’s objection thereto.
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3
Rao US 6,222,932 B1 Apr. 24, 2001
Reed US 6,590,996 B1 Jul. 8, 2003

Rejections on Appeal
The Examiner rejects the claims on appeal as follows:
1. Claims 19 stands rejected under 35 U.S.C. § 112, second paragraph
as being indefinite for failing to particularly and distinctly claim
the invention.
2. Claims 19 stands rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the enablement requirement.
3. Claims 6-19 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Reed.
4. Claims 20-26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Reed and Rao.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 7-16.
Indefiniteness/Enablement Rejections
Appellants argue that the Examiner erred in concluding that the claim
is indefinite and not enabled. According to Appellants, extracting and
reconstructing a desired signal based on the knowledge of the differing
characteristics between a signal and noise is well known in the art.
Therefore, Appellants submit that one of ordinary skill in the art would have
understood that the recitation of treating the video signal as noise as a way to
recover the additional information therefrom is definite and enabled as set
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forth in claim 19. (App. Br. 7-9.) In response, the Examiner finds that
because the cited limitation is not described in Appellants’ original
disclosure, the ordinarily skilled artisan would not be able to ascertain the
scope of that claim, and the artisan would not be apprised of how to make or
use the invention. (Ans. 17-18.)
On this record, we agree with the Examiner. In particular, we are not
persuaded by Appellants’ argument that the present Specification provides
adequate instruction to enable an ordinarily skilled artisan to reduce the
claimed invention to practice without resorting to undue experimentation.
The “enablement requirement is satisfied when one skilled in the art, after
reading the specification, could practice the claimed invention without
undue experimentation.” AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003) (citation omitted). Whether undue experimentation is
required is a legal conclusion reached by weighing several underlying
factual inquiries. In re Wands, 858 F.2d 731, 736 (Fed. Cir. 1988). Here,
we find that Appellants’ reliance upon prior art knowledge as evidence of
support for the disputed claim language is insufficient to show that the
invention can be made or used without undue experimentation. While the
Examiner’s rejection has not specifically raised such deficiency in the
rejection, we find that the totality of the evidence (or the lack thereof) on this
record weighs in favor of the Examiner’s position. Similarly, Appellants’
reliance upon an allegation of prior art knowledge is insufficient to satisfy
the definiteness requirement because the allegation requires speculation, and
is thereby inadequate to apprise the ordinarily skilled artisan of the scope of
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the claim. In particular, we do not understand how Appellants’ analogy in
the Brief to a “recent Star Trek movie” and “transwarp beaming” provides
evidence to show that the Examiner has erred regarding the rejection under
§ 112, second paragraph. (See App. Br. 8-9). Therefore, because the
Specification is silent as to how to treat the video signal as noise to thereby
recover additional information previously added thereto, we conclude that
the claim is neither enabled nor definite. It follows that Appellants have not
shown error in the Examiner’s indefiniteness and enablement rejections.
Anticipation Rejection
Representative Claim 6
Dispositive Issue: Have Appellants shown that the Examiner erred in
finding that Reed’s disclosure describes incorporating additional
information only within the chrominance component of a video signal, as
recited in claim 6?
Appellants argue that the Examiner erred in finding that Reed
anticipates claim 6 because Reed does not describe the disputed limitations
emphasized above. According to Appellants, Reed discloses inserting
information into the color plane that changes the luminance, as opposed to
inserting such information only into the chrominance component as required
by the claim. (App. Br. 12-14.) In response, the Examiner finds that Reed’s
disclosure of inserting watermark information into a chrominance plane
while keeping the luminance plane unchanged as a way to reduce eye
sensitivity to changes describes the disputed limitations. (Ans. 15-17.)
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6
On the record before us, we agree with the Examiner’s finding of
anticipation. We note at the outset that Appellants’ attempt to distinguish
the claimed additional information inserted in the video signal from the
disclosed watermarked video signal is unavailing. In particular, we find
such argument to be predicated upon the content of the signal, which serves
no apparent function in the claim. Such recitation is directed to non-
functional descriptive material, which is accorded no patentable weight. In a
precedential Opinion, an expanded Board panel held that nonfunctional
descriptive material (sequence data) did not distinguish the claimed
computer-based system from a prior art system that was the same except for
its sequence data. See Ex parte Nehls, 88 USPQ2d 1883, 1887-88 (BPAI
2008) (precedential).
3

Assuming arguendo that such recitation is given patentable weight,
we find nonetheless that Reed discloses inserting the watermark information
into a chrominance plane, a luminance plane or both. (Col. 15, ll. 29-32.)
We further find that Reed discloses that when the watermark information is
inserted into only the chrominance plane (i.e. chrominance changes with no
luminance change), the watermark visibility (i.e., visible artifacts) can be
reduced thereby making changes less perceptible to the sensitive eye at high
frequencies. (Col. 35, l. 40- col. 36, l. 3.) Thus, we find that Reed’s

3
See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative) (aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006) (stating if a
claimed phrase cannot alter how the process steps are to be performed to
achieve the utility of the invention or merely states an intended use or
purpose for the data, it is not entitled to patentable weight.)
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disclosure at least describes inserting the watermark information only into
the chrominance component of the video signal to reduce the visual
perception of the watermark therein. We are therefore satisfied that the cited
disclosure of Reed adequately describes the disputed limitations. It follows
that Appellants have not shown error in the Examiner’s anticipation
rejection of claim 6.
Claims 7-19 not separately argued fall with claim 6. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Obviousness Rejection
Regarding claims 20, 21, and 23-26, Appellants argue that Reed does
not teach selecting a U or V portion of the chrominance component of each
pixel of the video signal to carry the additional information. (App. Br. 14.)
This argument is not persuasive because by disclosing inserting the
watermark information into the chrominance component (UV) of the signal,
as discussed above, Reed teaches that the watermark is inserted in at least
the U or the V portion of the chrominance component. Further, Appellants
argue that while Rao discloses modifying the entire strength of the
watermark image, it does not teach a per-pixel operation, as recited in claims
20 and 24. (Id. 14-15.) This argument is unavailing because Rao discloses
that after determining the strength of a watermark as well as the pixel values
of an image, applying the watermark to the image on a pixel-by-pixel basis.
(Col. 5, ll. 15-29, ll. 36-40.) We find that Reed and Rao disclose prior art
elements that perform their ordinary functions to predictably result in a
system wherein watermark information inserted into at least a portion of a
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chrominance component of a signal based on a pixel-by-pixel application of
the watermark thereon. Therefore, Appellants’ argument that there is
insufficient motivation to combine the cited references (Id. 15) is
unpersuasive. It follows that Appellants have not shown error in the
rejection of claims 20, 21, and 23-26.
DECISION
We affirm the Examiner’s rejections of claims 6-21 and 23-26 as set
forth above.
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

ELD