Ex Parte Levy et al

Board of Patent Appeals and Interferences

Jul 28, 2011

10060049 (B.P.A.I. Jul. 28, 2011)

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.
10/060,049 01/28/2002 Kenneth L. Levy P0569 6575
23735 7590 07/28/2011
DIGIMARC CORPORATION
9405 SW GEMINI DRIVE
BEAVERTON, OR 97008
EXAMINER
RAMAN, USHA
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
07/28/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH L. LEVY, TONY F. RODRIGUEZ, and
R. STEPHEN HIATT
____________

Appeal 2009-006303
Application 10/060,049
Technology Center 2400
____________

Before THOMAS S. HAHN, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006303
Application 10/060,049

2
STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 20-28. Appeal Brief 3. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). We affirm.

Exemplary Claim
Exemplary independent claim 20 under appeal reads as follows:
20. An interactive television system for distributing content including
an identifier, said system comprising:

a cable head end to receive the content, the content including an
embedded digital watermark comprising an identifier, said cable head end
comprising:

a digital watermark detector to extract the identifier from data
representing picture or audio portions of the received content;

a bridge to communicate the extracted identifier to a database, the
database including a trigger indexed according to the identifier, said bridge
to receive a corresponding trigger identified in the database as corresponding
to the identifier; and

an inserter communicating with said bridge to insert the trigger into
the received content.

Rejection on Appeal
Claims 20-28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent Number 5,961,603 issued to Kunkel
(“Kunkel”) and U.S. Patent Number 5,822,432 issued to Moskowitz
(“Moskowitz”). Answer 2-8.
Appeal 2009-006303
Application 10/060,049

3
Appellants’ Contention
Appellants contend that Kunkel discloses MPEP [sic] tags that are
“out-of-band” meaning that they are not carried through slight alterations to
audio or video content as in the case with the claimed digital watermarking.
Appeal Brief 5.

Issue on Appeal
Does Kunkel disclose “in-band” data as in the case with the digital
watermarking recited in claim 20?

PRINCIPLE OF LAWS
The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006), In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner can satisfy this test by showing some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
KSR Int’l. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441
F.3d at 988).
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
quotation marks omitted). “[T]he words of a claim ‘are generally given their
ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (internal citations omitted).
Appeal 2009-006303
Application 10/060,049

4
ANALYSIS
We have reviewed the Examiner’s rejection in light of the Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with the Appellants’ conclusion. We concur with the conclusion
reached by the Examiner.
Appellants argue that Kunkel discloses MPEP [sic] tags that are “out-
of-band” meaning that they are not carried through slight alterations to audio
or video content as in the case with the claimed digital watermarking.
Appeal Brief 5. The Examiner responds by stating that Kunkel discloses
inserting the ID tag in a (VBI) of the signal or by inserting in either the
video or live video stream (in the case of analog signal and in the case of a
digital signal) inserting the ID tag data periodically in a data stream
associated with the particular video and audio data stream. Answer 8-9;
Kunkel column 5, lines 36-43.
The Examiner relies upon Kunkel to disclose everything except for
the embedded identifier being a watermark, but relies upon Moskowitz to
disclose the use of a watermark as an embedded identifier. Answer 6.
Appellants further argue: (1) Kunkel teaches away from its
combination with digital watermarking, Appeal Brief 6; (2) the Examiner
employed impermissible hindsight, Appeal Brief 8; (3) the Examiner did not
follow the established framework for applying the statutory language of
§103, Reply Brief 4; (4) the Examiner’s Answer failed to give each claim
limitation its due weight, Reply Brief 5; (5) the Examiner’s Answer suggests
that impermissible hindsight was used, Reply Brief 6; and (6) an artisan
would not read the Kunkel patent to extract from data representing picture or
audio portion of the received content, Reply Brief 7-8.
Appeal 2009-006303
Application 10/060,049

5
From reviewing the record, we conclude that combining Kunkel’s
system for accessing information through a user’s television with
Moskowitz’s teaching of a digital watermarking yields no more than the
predictable result of having a system as claimed. KSR Int'l Co. v. Teleflex
Inc., 550 U.S. at 416-17. Despite Appellants' contentions to the contrary, we
find that the Examiner has not relied on impermissible hindsight, but rather
has provided a rational basis for supporting the obviousness conclusion. See
KSR, 550 U.S. at 418.
Therefore, we will sustain the Examiner’s rejection of independent
claims 20 and 26.
We will also sustain the Examiner’s rejection of dependent claims 21-
25, 27, and 28 for the same reasons we stated above since the Appellants’
arguments are based upon the combination of Kunkel and Moskowitz, which
we have already addressed.

CONCLUSION
The Examiner has not erred in rejecting claims 20-28 as being
unpatentable under 35 U.S.C. § 103(a).
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

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