Ex Parte Hart et al

Patent Trial and Appeal Board

Sep 24, 2013

12238730 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JOHN J. HART III, RICHARD B. LEVINE, ANDREW R. LEE,
and DANIEL G. HOWARD
1

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Appeal 2011-006348
Application 12/238,730
Technology Center 2400
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Before KRISTEN L. DROESCH, JASON V. MORGAN, and
BARBARA A. PARVIS, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
2

1
SCA IPLA Holdings Inc. is the real party in interest. App. Br. 1.
2
An oral hearing for this appeal was held September 12, 2013.
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STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 14 – 17, 19, and 20. Claims 1 – 13 are indicated as being
allowable, with claims 1, 3, and 6 objected to for informalities. App. Br. 2.
Claim 18 is canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Invention
Appellants invented methods and apparatus for processing title data
watermarked with a code. At least a portion of the title data may be
watermarked at a plurality of locations within the title data with customer
information data, so that the title data provided to a customer includes the
watermark information. See Spec., Abstract.
Exemplary Claim (Emphases Added)
14. A non-transitory computer-storage medium comprising title
data that is watermarked with an identification code, the title
data having at a plurality of locations the identification code
modulated on the title data, with a different modulation scheme
at each of the plurality of locations creating a random
relationship between the identification code and modulation at
each of the plurality of locations, and each of the plurality of
locations being a random location within a group of available
placement locations at which the title data has properties
meeting at least one criterion.
Rejection
The Examiner rejects claims 14–17, 19, and 20 under 35
U.S.C. § 102(b) as being anticipated by Erickson (U.S. 5,765,152; June 9,
1998). Ans. 3.
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ISSUE
Did the Examiner err in concluding that the claim 14 recitations of
“title data that is watermarked with an identification code . . . with a
different modulation scheme at each of the plurality of locations creating a
random relationship between the identification code and modulation at each
of the plurality of locations” are directed to non-functional descriptive
material that is not entitled to patentable weight?
ANALYSIS
The Examiner notes that claim 14, which is directed a non-transitory
computer-storage medium, includes limitations describing title data and a
watermark therein. See Ans. 3. The Examiner correctly finds that Erickson
discloses a non-transitory computer-storage medium (e.g., a CD-ROM or
magnetic disk). See id. (citing Erickson, col. 2, l. 61–col. 3, l. 17). However,
the Examiner does not rely on Erickson to disclose title data and a
watermark therein, as recited in claim 14. Instead, the Examiner finds that
“the title data and watermark therein do not materially affect the medium or
the data within the medium and therefore do not add a functional
relationship. Therefore, these limitations are not given patentable weight and
are merely computer-storage media with data stored on them.” Ans. 3. That
is, the Examiner relies on the doctrine that non-functional descriptive
material is generally not entitled to patentable weight. See In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983); see also Ex parte Nehls, 88 USPQ2d 1883, 1887–90 (BPAI
2008) (precedential); Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI
2005) (informative) (“nonfunctional descriptive material cannot lend
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patentability to an invention that would have otherwise been anticipated by
the prior art”), aff’d, 191 Fed.Appx. 959 (Fed. Cir. 2006) (Rule 36); and Ex
parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005) (informative).
In concluding that the watermarked title data constitutes non-
functional descriptive material, the Examiner identifies guidance from the
Manual of Patent Examining Procedure (MPEP) that “defines ‘functional
descriptive material’ as ‘data structures and computer programs which
impart functionality when employed as a computer component,’” where a
“data structure” is “a physical or logical relationship among data elements,
designed to support specific data manipulation functions.” Ans. 3–4 (citing
MPEP § 2106.01 (8th, rev. 8, July 2010) (citation omitted)). The Examiner
finds that claim 14 is “clearly not related to computer programs” and that the
watermark and title data relationship “is not used to support any data
manipulation functions.” Ans. 4.
Appellants acknowledge that “[t]itle data alone is nonfunctional
descriptive material.” App. Br. 5. However, Appellants contend that
“watermarking the title data with an identification code as claimed imparts
specific structural and functional properties to the data which permits
detection of copying.” Id. “The watermarked title data is no longer just
‘nonfunctional descriptive material’ such as music or video.” Id. In other
words, Appellants argue that the watermarked title data is functional
descriptive material, and “[i]f watermarking is ‘functional descriptive
material,’ the rejection is improper and must be reversed because [the
watermarked title data recitation] has not been given patentable weight.”
Reply Br. 2.
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Appellants contend the claimed watermarked title data is directed to a
data structure representing functional descriptive material because:
the arrangement of “a different modulation scheme at each of
the plurality of locations creating a random relationship
between the identification code and modulation at each of the
plurality of locations” recorded on a medium is analogous to a
data structure on a medium which is clearly functional
descriptive material.
App. Br. 5 (citing In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) and MPEP
§ 2106.01 (8th, rev. 8, July 2010)). Appellants submit that “[t]he
Specification describes that ‘[t]here is a need to watermark title data with
customer information that cannot be removed from the title data, so as to
deter copying of the title data . . . . [Thus] [w]atermarking serves a
functional purpose of ‘a form of anti-piracy protection.’” Reply Br. 3
(citations omitted); see also App. Br. 5 (“watermarking the title data . . .
permits detection of copying”).
Appellants’ proffered arguments and evidence are not persuasive of
error in the Examiner’s findings. In particular, Appellants rely on features
disclosed in the Specification—such as the use of customer information that
cannot be removed from title data and the use of watermark data to deter
piracy—that are not found in the recitations of claim 14. See App. Br. 5;
Reply Br. 3. Moreover, while the Specification states that the disclosed
“watermarking methodology and the watermarking device provide a form of
anti-piracy protection,” Spec. 26, ll. 31 – 32 (emphases added), the
Specification does not disclose employment of the claimed watermarked title
data (i.e., the product of using the disclosed watermarking methodology or
device) as a computer component.
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The claimed watermarked title data merely provide title data from
which an identification code is discernible. Unlike the data structure in
Lowry, the claimed watermarked title data does not dictate how application
programs manage information. See Lowry, 32 F.3d at 1583. Additional
computer components, or possibly just human analysis of the watermarked
title data, could be used to discern the identification code that could identify
the original customer of the watermarked title data. See Spec. 28, ll. 21 – 22.
However, the use of, and even the content of, the identification code fall
outside the scope of claim 14. The identification code, even as a watermark,
is not directed to establishing a functional relationship between the
identification code or title data and a computer, and therefore the
identification code does not distinguish the watermarked title data as being
“functional descriptive material.” See MPEP § 2111.05.III (8th ed., rev. 9,
August 2012).
Appellants further direct our attention to case law to support their
position that “watermarked data with certain properties is functional
descriptive material because it is not a mere arrangement of data and that
information becomes functionally related to the substrate when it is
recorded.” App. Br. 4. We do not agree with Appellants that the authorities
on which they rely show error in the Examiner’s rejection. For example,
Appellants contends that the Board in the non-precedential Ex parte Nuijten
opinion found that embedded supplemental data, such as a watermark, is
functional descriptive material because it is used by a machine. See Reply
Br. 6–7 (citing Ex parte Nuijten, 84 USPQ2d 1335, 1339 (BPAI 2006) (non-
precedential)). Not only is this opinion non-binding on this panel, but the
cited analysis in Ex parte Nuijten is directed to whether a claim to a storage
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medium was directed to statutory subject matter, not to whether recitations
of the claimed invention were entitled to patentable weight. See Ex parte
Nuijten, 84 USPQ2d at 1339. Similarly, Appellants argue that “the
watermarked title recorded on a medium may be considered as a product-by-
process under Warmerdam[, 33 F.3d 1354 (Fed. Cir. 1994)].” App. Br. 5;
see also Reply Br. 7–8. However, as Appellants acknowledge, the product-
by-process analysis in Warmerdam is directed to whether a claim was
definite. See Reply Br. 7; Warmerdam, 33 F.3d at 1361. The Court of
Appeals for the Federal Circuit expressly did not provide an opinion as to
whether the claim met the requirements of being novel and non-obvious
(i.e., as to whether all recitations were entitled to patentable weight). See
Warmerdam, 33 F.3d at 1361.
Based on the record before us, we find no error in the Examiner’s
conclusion that the claim 14 recitations of “title data that is watermarked
with an identification code . . . with a different modulation scheme at each of
the plurality of locations creating a random relationship between the
identification code and modulation at each of the plurality of locations” are
directed to non-functional descriptive material that is not entitled to
patentable weight. Accordingly, we sustain the Examiner’s 35 U.S.C.
§ 102(b) rejection of claim 14, and claims 15–17, 19, and 20, which are not
argued separately. See App. Br. 6; Reply Br. 8.
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DECISION
We affirm the Examiner’s decision to reject claims 14–17, 19, and 20.
TIME PERIOD
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