Ex Parte Van Der Veen et al

Board of Patent Appeals and Interferences

Mar 20, 2012

10557691 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MINNE VAN DER VEEN, AWEKE NEGASH LEMMA, and
ALPHONS ANTONIUS MARIA BRUEKERS
____________________

Appeal 2010-001892
Application 10/557,691
Technology Center 2600
____________________

Before ST. JOHN COURTENAY III, THU A. DANG, and ANDREW J.
DILLON, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a second rejection of
claims 1-18 and 20. Claim 19 has been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
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A. INVENTION
Appellants’ invention is directed to a method of embedding a
watermark into an input signal of a media signal (Spec. 9, ll. 11-12).

B. ILLUSTRATIVE CLAIM
Claims 1 and 18 are exemplary:
Claim 1
1. A method of embedding a watermark into an input signal of
a media signal, the method comprising:

obtaining a plurality of sub-band signals of the input
signal;

filtering a set of sub-band signals with a sub-band filter
having a response associated with the watermark to generate a
set of filtered sub-band signals; and

generating an output signal by combining the set of
filtered sub-band signals.

Claim 18:
18. A computer readable medium including a computer
program, the computer program when executed enabling a
computer to execute the method of claim 1.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lee US 5,687,191 Nov. 11, 1997
Wong US 6,947,509 B1 Sep. 20, 2005

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Claim 18 stands rejected under 35 U.S.C. § 101 as being directed
towards non-statutory subject matter.1
Claims 1-11, 13-17, and 20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Lee.
Claims 12 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee and Wong.

II. ISSUES
The issues are whether the Examiner has erred in finding that:
1. Claim 18 which recites “[a] computer readable medium including a
computer program” is directed towards non-statutory subject matter; and
2. Lee teaches “filtering a set of sub-band signals with a sub-band
filter having a response associated with the watermark to generate a set of
filtered sub-band signals” (claim 1). In particular, the issue turns on whether
Lee’s auxiliary data signal comprises a “watermark” that is “associated
with” a response of a filter.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Lee
1. Lee discloses auxiliary data sub-band samples representing an
auxiliary data signal that are transported in a sub-band-coded compressed
digital audio signal (Abstract), wherein the auxiliary data is embedded and

1 The rejection of claim 18 under 35 U.S.C. § 112 has been withdrawn by
the Examiner and, thus, will not be addressed in this Appeal (Ans. 10-11).
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410 used to filter the digital audio, the auxiliary data signal is provided to a
conventional forward error correction (FEC) encoder 416 (col. 11, ll. 29-35),
and the FEC-encoded auxiliary data signal is provided to a plurality of
modulators 430, 432, 434, and 436, which modulate the data carrier
sub-band samples SP0, SP1, SP2, …, SPN-1 to provide the auxiliary data
sub-band samples SPD0, SPD1, SPD2, …, SPDN-1, respectively (col. 11, ll.
46-52).

IV. ANALYSIS
35 U.S.C. § 101
Appellants contend that the Specification states that “[t]he invention
can be implemented in any suitable form including hardware, software,
firmware or any combination of these” (App. Br. 6). According to
Appellants, “[b]ecause the invention may be implemented on hardware,
software or firmware, … the medium cannot reasonably be interpreted to be
a signal or carrier wave” (App. Br. 8).
However, the Examiner finds that “no recitation of ‘computer
readable medium’ is found in the original disclosure” and thus “the office
can reasonabl[y] interpret the medium to be a signal or carrier wave” (Ans.
3). We agree with the Examiner.
Though Appellants argue that the “computer readable medium” of
claim 18 cannot be a signal or carrier wave “[b]ecause the invention may be
implemented on hardware, software or firmware” (App. Br. 8), claim 18
does not define “computer readable medium.” Though we look to
Appellants’ Specification to find a disclosed meaning of computer readable
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media, as the Examiner points out, “no recitation of ‘computer readable
medium’ is found in the original disclosure” (Ans. 3).
We refer Appellants to the Feb. 23, 2010 “Subject Matter
Eligibility of Computer Readable Media” policy statement by PTO Director
David J. Kappos in the Official Gazette of the USPTO (reproduced in part
below):
The United States Patent and Trademark Office (USPTO)
is obliged to give claims their broadest reasonable interpretation
consistent with the specification during proceedings before the
USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during
patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow). The broadest
reasonable interpretation of a claim drawn to a
computerreadable medium (also called machine readable
medium and
other such variations) typically covers forms of non-transitory
tangible media and transitory propagating signals per se in view
of the ordinary and customary meaning of computer readable
media, particularly when the specification is silent. See MPEP
2111.01. When the broadest reasonable interpretation of a
claim covers a signal per se, the claim must be rejected under
35 U.S.C. § 101 as covering non-statutory subject matter. See
In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)
(transitory embodiments are not directed to statutory subject
matter) and Interim Examination Instructions for Evaluating
Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24,
2009; p. 2.

1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010), available at
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20
This reasoning is applicable here. In particular, we give the term
“computer readable medium” its broadest reasonable interpretation to cover
transitory propagating signals per se.
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Our reviewing court has held that “[a] transitory, propagating signal
[however] . . . is not a ‘process, machine, manufacture, or composition of
matter.’ [These] four categories define the explicit scope and reach of
subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot
be patentable subject matter.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir.
2007). Specifically, signals are “unpatentable … as failing a tangibility
requirement to be ‘manufactures’” because they are not “tangible medi[a].”
Id. at 1366 (emphasis added). Since the broadest reasonable interpretation
of claim 18 covers a signal per se, we see no error in the rejection of the
claim 18 under 35 U.S.C. § 101 as covering non-statutory subject matter.
35 U.S.C. § 102(b)
Claims 1-10, 13-17, and 20
As to representative claim 1, Appellants contend that “the cited
portions of Lee fail to teach or disclose the features of ‘a sub-band filter
having a response associated with the watermark to generate a set of filtered
sub-band signals’” (App. Br. 10) (emphasis omitted). According to
Appellants, “the cited portions of Lee apparently only suggests that auxiliary
data subband [sic] samples and audio data subband samples are multiplexed
together with a video signal into a single multi-channel data stream” (App.
Br. 9).
However, the Examiner notes that “Appellant[s] ha[ve] not disputed
that hidden auxiliary data, as taught by Lee, suffices for teaching the
‘watermark’ limitation” (Ans. 15), wherein “[a] watermark is auxiliary data
that is embedded in other data and can be subsequently be recovered” (Ans.
16). The Examiner explains that “[the term] association [as recited in the
claim] is merely a relationship, so the claim merely requires an interpretation
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of a general relationship between the response of the sub-band filtering and a
watermark” (Ans. 13). The Examiner then finds that Lee discloses that
“each subband [sic] of the auxiliary data subband samples is combined with
the corresponding subband of the audio subband samples” wherein “both the
correspondence in the combinations and the combinations themselves are
associations” (Ans. 15).
To determine whether the Lee teaches “filtering a set of sub-band
signals with a sub-band filter having a response associated with the
watermark” as recited in claim 1, we give the claim its broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997). However, we will not read limitations from the
Specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993).
Claim 1 does not place any limitation on what “association” means,
includes, or represents other than the “response” of a sub-band filter is
“associated with” a “watermark.” We find no error with the Examiner’s
finding that “association” of claim 1 “is merely a relationship” (Ans. 13).
Thus, we give “associated” its broadest reasonable interpretation as any
relationship between a response of a filter and a watermark.
Lee discloses auxiliary data that is embedded and acts as an
identification mark to verify authenticity of copies (FF 1). We agree with
the Examiner (Ans. 13) and, as undisputed by Appellants, we find
“watermark” as recited in claim 1 to read on Lee’s auxiliary data.
Lee also discloses that the auxiliary data is provided to a plurality of
modulators which modulate the data carrier sub-band samples from a
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sub-band filter bank to provide the auxiliary data sub-band samples (FF2).
That is, Lee discloses that the auxiliary data is combined with output from a
sub-band filter to generate a set of filtered sub-band signals. In view of our
claim interpretation above, we find Lee to disclose “filtering a set of sub-
band signals with a sub-band filter having a response associated with the
watermark to generate a set of filtered sub-band signals” as recited in claim
1.
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 1 over Lee. Appellants do not provide
arguments separate from those of claim 1 for independent claim 20 and
claims 2-11 and 13-17 depending from claim 1 (App. Br. 11-12).
Accordingly, claims 2-11, 13-17 and 20 fall with claim 1.
35 U.S.C. § 103(a)
Claims 12 and 18
As for claims 12 and 18 depending from claim 1, Appellants merely
contend that “Wong does not cure the deficiencies of Lee” (App. Br. 12).
However, as noted above with respect to claim 1, we find no deficiencies
with Lee. As such, we also affirm the rejection of claims 12 and 18 over
Lee in view further view of Wong.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claim 18 under 35 U.S.C. § 101, of
claims 1-10, 13-17, and 20 under 35 U.S.C. § 102(b), and of claims 12 and
18 under 35 U.S.C. § 103(a) 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).
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AFFIRMED

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