Ex Parte Anglin

Board of Patent Appeals and Interferences

Nov 30, 2009

10122141 (B.P.A.I. Nov. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HUGH W. ANGLIN
____________

Appeal 2010-000363
Application 10/122,141
Technology Center 1600
____________

Decided: November 30, 2009
____________

Before JOSEPH F. RUGGIERO, HOWARD B. BLANKENSHIP, and
MAHSHID D. SAADAT, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 19-21, 25, 30, and 31. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
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Invention
Appellant’s invention relates to steganographic encoding (digital
watermarking) of content objects (e.g., video or audio data). See App. Br. 4-
5.

Representative Claim
1. A method comprising:
receiving data representing a steganographically encoded
content object;
at a first processing device at a first location, processing the
received data representing the steganographically-encoded content
object a first time to yield a processed content object;
sending the processed content object to a second processing
device at a second, remote location; and
further processing the processed content object on the second
processing device, said further processing including decoding plural-
bit data steganographically encoded therein.

Prior Art
Schipper U.S. 5,764,770 Jun. 9, 1998
Tso U.S. 6,247,050 B1 Jun. 12, 2001

Examiner’s Rejections
Claims 1, 2, 20, 21, 25, 30, and 31 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Schipper.
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Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schipper and Tso.
Claims 24, 26, 32, and 33 have been withdrawn from consideration.
Claim 3-18, 22, 23, 27-29, 34, and 35 have been canceled.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claims 1, 19, 21, and 30. See 37 C.F.R.
§ 41.37(c)(1)(vii).

FINDINGS OF FACT
Schipper
Schipper describes a position determining system (PDS) signal
antenna assembly 15 (Fig. 1) that is attached to a digital camera 13. The
PDS may receive signals from satellite (e.g., Global Positioning System)
sources and determine the location of the camera and the time of receipt of
the signals. The location and time are considered to be “position
information.” Col. 10, ll. 1-29; col. 11, ll. 1-10.
The position information may be encoded into a digital image stored
by the camera. The information may be encoded by, for example, replacing
the least significant bit (LSB) of the pixel value representations for pixels in
a pattern in the image. The change (or replacement) of the LSBs in the
modified digital image will not be detectable by most persons, because the
visual perception of the modified digital image will be substantially the same
as that of the original image. Col. 13, ll. 23-35. The reference further notes
that concealing a message in an image, as by altering the least significant bit
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in a number of pixels to hold the message, is known as steganography.
Col. 7, ll. 33-40.
A digital frame may be downloaded and further processed to extract
the position information from the digital image (e.g., col. 15, ll. 19-45).

PRINCIPLES OF LAW
The claims measure the invention. See SRI Int’l v. Matsushita Elec.
Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution
before the USPTO, claims are to be given their broadest reasonable
interpretation, and the scope of a claim cannot be narrowed by reading
disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Our reviewing court has
repeatedly warned against confining the claims to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc).
“Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed, will
be given broader scope than is justified.’” In re Amer. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Yamamoto, 740
F.2d 1569, 1571 (Fed. Cir. 1984)). “An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” Zletz, 893
F.2d at 322. “Construing claims broadly during prosecution is not unfair to
the applicant . . . because the applicant has the opportunity to amend the
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claims to obtain more precise claim coverage.” American Academy, 367
F.3d at 1364.

Anticipation
“Anticipation requires the presence in a single prior art reference
disclosure of each and every element of the claimed invention, arranged as
in the claim.” Lindemann Maschinenfabrik GMBH v. American Hoist &
Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference. However, this is not an “ipsissimis verbis” test. In re Bond, 910
F.2d 831, 832 (Fed. Cir. 1990).

Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17
(1966).
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

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ANALYSIS
Claim 1 -- § 102(b) Schipper
In an earlier appeal (No. 2006-0590) in this application, the Board
affirmed a rejection of then present claim 1 for anticipation over Schipper.
Appellant argues that the claim was subsequently amended to distinguish
over the reference.
In particular, Appellant argues that claim 1 now recites receiving data
representing a steganographically encoded content object, and that the first
processing device processes the received data representing the
steganographically encoded content object. In Appellant’s view, the claim
distinguishes over Schipper because the camera device in the reference
receives un-encoded imagery, rather than steganographically-encoded
content.
The Examiner does not dispute that the camera device in the reference
fails to receive and process steganographically-encoded content. However,
the Examiner points out that claim 1 recites receiving and processing data
“representing” steganographically-encoded content. The Examiner
considers the “representing” to be broadening language such that the
“received data” is not necessarily limited to content that is
steganographically encoded at the time that the first device receives and
processes the content.
Appellant’s arguments do not persuade us of error in the Examiner’s
reading of claim 1. Appellant’s remarks, to the contrary, appear to be based
on removing the word “representing” from the claim, as if the claim recited
that the data was a “steganographically encoded” content object.
Appellant’s position would thus render the word “representing” to have no
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meaning in claim 1. Moreover, Appellant has not provided a counter-
argument as to how we should interpret the word “representing” in claim 1,
and to what extent the word modifies the “data” recited in the claim.

Claim 21 -- § 102(b) Schipper
Claim 21 was also amended after the prior appeal, in response to a
rejection under 35 U.S.C. § 112, second paragraph. Present claim 21 recites
that the “decision” of claim 20 includes checking the associated time data to
determine if such time data indicates a time “within an expected prior
period.”
Appellant is correct to the extent that Schipper’s description (col. 2,
l. 25 et seq.) of a prior art patent is not sufficient to support a finding of
anticipation. However, Appellant does not respond to further findings set
forth in the Answer (at 12), pointing out that the Schipper system analyzes
PDS signals, which include time signals.
Schipper discloses authenticating images based, in part, on whether
the time associated with the image corresponds to that which is expected
(e.g., col. 15, ll. 35-45). In Schipper’s system, if the time encoded in the
image were to be, for example, substantially greater than a time that is
expected (e.g., a time in the future), the image would be recognized as
invalid and thus not to be authenticated. In view of Appellant’s broadly
claimed “decision” based on determining if the time data “indicates a time
within an expected prior period,” we agree with the Examiner that Schipper
describes an invention within the meaning of instant claim 21.

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Claim 30 -- § 102(b) Schipper
Claim 30 recites that the capturing of data representing
steganographically encoded content uses a first device, which comprises a
“cell phone.”
Schipper refers to a digital image formation means, such as a digital
still or digital video camera (e.g., col. 7, ll. 62-66; col. 15, ll. 46-50).1
However, the rejection does not identify any express or inherent disclosure
of a “cell phone” embodiment in the invention of Schipper, much less a cell
phone capable of capturing images. Nor does the rejection offer extrinsic
evidence to show that any of the “ground-based PDS signal sources”
described in column 16, lines 9 through 14 of the reference refer to
structures appropriate for cellular phone signals.
We agree with Appellant that the rejection of claim 30 fails to set
forth a prima facie case for anticipation. What the rejection lacks is a
showing of a cell phone as a digital image capture device (e.g., a “digital
image formation means”), at the time of invention, that the artisan would
recognize to be a useful substitute for a digital camera as described by
Schipper. Moreover, such a showing would go beyond the constraints for a
finding of anticipation.

1 Schipper purports to incorporate by reference several patents that describe
examples of digital cameras (col. 15, ll. 48-58), which we have not
considered because the Examiner’s rejection relies only on the text that
appears in the Schipper reference.
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Claim 19 -- § 103(a) Schipper and Tso
For the rejection of claim 19, the Examiner adds to Schipper the
teachings of Tso, with respect to compressing files for transfer and
decompressing the files upon receipt (col. 11, ll. 11-25).
Appellant argues that the references do not show prima facie
obviousness of the subject matter of claim 19 because Schipper teaches
steganographic encoding by replacing the LSB of pixel data with position
information. Appellant submits that Tso, on the other hand, teaches
compression techniques that discard data that is not essential to user
perception. Appellant alleges that “an artisan would understand that all
image compression techniques operate by discarding visually superfluous
information,” which would “wreak havoc” with Schipper’s scheme of
encoding information using the LSP of pixel data. Reply Br. 4.
Appellant’s Specification (3:22-25) reveals that in the instant
invention lossless compression can be applied to a block of luminance
values. The disclosure continues, however, to teach that in the alternative
lossy compression can be used (4:4-5), which indicates that some
information can be discarded and not recovered when files are transferred.
The Specification does not provide the details of how one might use lossy
compression yet ensure that all the relevant information remains in the
transmitted file. Appellant’s disclosure thus indicates that the details of how
one might maintain the required information using lossy compression was
within the level of ordinary skill in the art.
Moreover, as the Examiner indicates, Tso does not limit the teaching
with respect to compressing and uncompressing files to any particular
compression scheme. Appellant has not provided evidence in support of the
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allegation that “all” image compression techniques operate by discarding
visually superfluous information.2 More important, perhaps, Appellant has
not shown that one of ordinary skill in the art, in view of the teachings of
Schipper and Tso, would not be able to compress an image file while
maintaining the requisite position information in the file, particularly when
Schipper only describes replacing LSB values as an example for
steganographic encoding of the data.

Conclusion
In view of the foregoing, Appellant is not persuasive of error in the
Examiner’s rejections other than the § 102 rejection applied against claim
30. Because claim 31 depends from claim 30 and is also rejected under
§ 102 over Schipper, we do not sustain the rejection of claims 30 and 31.
However, we sustain the remainder of the Examiner’s rejections.

DECISION
The rejection of claims 1, 2, 20, 21, 25, 30, and 31 under 35 U.S.C.
§ 102(b) as being anticipated by Schipper is affirmed with respect to claims
1, 2, 20, 21, and 25 but reversed with respect to claims 30 and 31.
The rejection of claim 19 under 35 U.S.C. § 103(a) as being
unpatentable over Schipper and Tso is affirmed.

2 Arguments of counsel cannot take the place of evidence in the record. See,
e.g., Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974).
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No time period for 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.
§ 41.50(f).

AFFIRMED-IN-PART

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