Ex Parte Lemma

Patent Trial and Appeal Board

Jan 22, 2014

10492568 (P.T.A.B. Jan. 22, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/492,568 04/14/2004 Aweke Negash Lemma NL 010742 9692
7590 01/23/2014
Michael E Marion
US Philips Corporation
Intellectual Property Department
P O Box 3001
Briarcliff Manor, NY 10510
EXAMINER
DEBNATH, SUMAN
ART UNIT PAPER NUMBER
2495
MAIL DATE DELIVERY MODE
01/23/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AWEKE NEGASH LEMMA
____________

Appeal 2011-004874
Application 10/492,568
Technology Center 2400
____________

Before JEFFREY S. SMITH, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-3 and 5-16. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

STATEMENT OF THE CASE
The present invention relates to methods of embedding a host signal
with auxiliary information comprising the steps of filtering the host signal to
produce a modified signal and encoding the auxiliary information within the
Appeal 2011-004874
Application 10/492,568

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modified signal using a cross-correlation technique. See generally Spec. p.
1. Claim 10 is illustrative:
10. A method of decoding auxiliary information from an embedded
host signal comprising:
filtering the embedded host signal to produce a modified signal,
decoding the auxiliary information from the modified signal using a cross-
correlation technique, wherein the filtering reduces the magnitude of at least
one of the following components in the host signal a) low frequency
components, and b) dominant tonal components.

THE REJECTIONS
Claims 10-16 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Petrovic (US 5,940,135).
Claims 1-3 and 5-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Petrovic and Chow (US 4,123,625).

ISSUE
The dispositive issue argued by Appellant is:
Under 35 U.S.C. § 102, has the Examiner erred by concluding that
Petrovic discloses:
wherein the filtering reduces the magnitude of at least one of the
following components in the host signal a) low frequency components, and
b) dominant tonal components
as recited in claim 10?

ANALYSIS
THE ANTICIPATION REJECTIONS
On this record, we find that the Examiner erred in rejecting claim 10.

Appeal 2011-004874
Application 10/492,568

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The Examiner cites Petrovic’s column 4, lines 50 to 55 (and some
other Petrovic passages) for the disputed claim limitation. See Ans. 5. The
cited passages teach “caus[ing] minimal disturbance.” Petrovic 4:50-55.
The Examiner contends that:
The Examiner maintains that in order to cause minimal
disturbance dominant tonal components has to be reduced.
Examiner suggests that Appellant may review at Vokac (Patent
Number: 5,663,727) for clarification. Vokac states: “typical
audio signals, as well as other signals of a similar nature which
are to be analyzed, are not pure single frequency sinusoidal
functions. Such signals usually contain a dominant tone which
has superimposed thereon other frequencies such as those
arising from noise and other effects as well as certain harmonics
as well” (col. 3, lines 52-67). Thus, Vokac clarifies that
dominant signal contains noise. Thus, in order to cause minimal
disturbance (i.e. in order to minimize noise) dominant tonal
components has to be reduced. Furthermore, it should be noted
that Appellant is arguing about “wherein the filtering reduces
the magnitude of at least one of the following components in
the host signal a) low frequency components, and b) dominant
tonal components” which is intended use limitation. A
recitation of the intended use of the claimed invention must
result in a structural difference between the claimed invention
and the prior art in order to patentably distinguish the claimed
invention from the prior art. If the prior art structure is capable
of performing the intended use then it meets the claim. Petrovic
teaches filtering the host signal to produce a modified signal
(“The filter/mask 110 modifies the frequency, period or spatial
content of the host signal” -e.g. see, col. 4, lines 47-62, see also,
FIG. 3, item 110).

Ans. 11-12.

We agree with Appellant that the cited Petrovic passages do not
disclose wherein the filtering reduces the magnitude of at least one of the
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Application 10/492,568

4
following components in the host signal a) low frequency components, and
b) dominant tonal components. See Reply Br. 3-4. The Examiner does not
adequately explain, and we do not see, how the cited Petrovic passages
disclose that claimed limitation. We also agree with Appellant that the
disputed claim limitation further defines what the filtering claim limitation
does to the host signal and therefore, is not merely intended use limitation.
See Reply Br. 4. As a result, the Examiner has not presented sufficient basis
for the rejection under 35 U.S.C. § 102.
Accordingly, we do not sustain the Examiner’s rejection of claims 10,
and claims 11-16, which were rejected on the same ground.

THE OBVIOUSNESS REJECTIONS
We also do not sustain the Examiner’s obviousness rejection of claims
1-3 and 5-9. The Examiner cites an additional reference Chow for those
claims. Because the Examiner does not rely on Chow for the disputed claim
limitation, Chow does not remedy the deficiencies discussed above.

DECISION
The Examiner’s decision rejecting claims 1-3 and 5-16 is reversed.

REVERSED
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