Ex Parte Lofgren et al

Board of Patent Appeals and Interferences

Mar 17, 2011

10435612 (B.P.A.I. Mar. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/435,612 05/08/2003 Neil E. Lofgren 098888-1790 9060
99103 7590 03/17/2011
Foley & Lardner LLP
150 EAST GILMAN STREET
P.O. BOX 1497
MADISON, WI 53701-1497
EXAMINER
CALLAHAN, PAUL E
ART UNIT PAPER NUMBER
2437
MAIL DATE DELIVERY MODE
03/17/2011 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 NEIL E. LOFGREN, BURT W. PERRY, and JOHN STACH
____________________

Appeal 2009-006172
Application No. 10/435,6121
Technology Center 2400

____________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and CARLA M.
KRIVAK, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Digimarc Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006172
Application 10/435,612

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3, 6, 9-17, and 19-23.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
Appellants’ invention concerns a software program, system, and
method for embedding auxiliary files in a reversible watermark. A user
interface module represents the host data files as a container for the auxiliary
data files, and enables the adding or removing of auxiliary data files from
the reversible watermark (Spec. 3).
Claim 1 is exemplary of the claims on appeal:
1. A computer readable medium on which is stored software for
transforming a host data file carrying host media data into a logical storage
unit for storing auxiliary data files in a reversible watermark embedded into
the host media data, the medium including:
a watermarking module for modifying original values of host media
data elements in the host data file to embed a reversible watermark carrying
auxiliary data files, the reversible watermark enabling the host media data
elements to be restored to the original values; and
a user interface module for representing the host data file as a
container for the auxiliary data files, and enables the adding or removing of
auxiliary data files from the reversible watermark.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Honsinger US 6,278,791 B1 Aug. 21, 2001
Yu US 6,456,726 B1 Sep. 24, 2002
Chang US 6,819,776 B2 Nov. 16, 2004

3 Claims 4, 5, 7, 8, and 18 stand objected to, but would be allowable if
rewritten in independent form. Claims 24-27 and 29 stand allowed.
2
Appeal 2009-006172
Application 10/435,612

Stone US 7,073,065 B2 Jul. 4, 2006
Rhoads US 7,113,615 Sep. 26, 2006

Claims 1-3, 6, and 19-23 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Honsinger.
Claims 1 and 12 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Stone.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Honsinger in view of Chang.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Honsinger in view of Rhoads.
Claims 13-15 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Honsinger in view of Yu.4
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed February 11, 2008), the Reply Brief (“Reply Br.,” filed
August 12, 2008) and the Examiner’s Answer (“Ans.,” mailed June 12,
2008) for their respective details.

ISSUES
Appellants argue, inter alia, that Honsinger does not teach the claimed
user interface module, because Honsinger’s message does not possess the
structural attributes that characterize a data file (App. Br. 5). Appellants
further argue that Honsinger does not teach an interface that enables the
adding or removing of auxiliary data files from a reversible watermark (App.

4 The Examiner has withdrawn the rejection of claim 16.
3
Appeal 2009-006172
Application 10/435,612

Br. 5). Appellants make the same arguments with respect to Stone (App. Br.
8).
Appellants’ contentions present us with the following issues:
1. Does Honsinger teach a user interface module for representing the
host data file as a container for the auxiliary data files, and enabling the
adding or removing of auxiliary data files from a reversible watermark?
2. Does Stone teach a user interface module for representing the host
data file as a container for the auxiliary data files, and enabling the adding or
removing of auxiliary data files from a reversible watermark?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Honsinger
1. Honsinger teaches that a monitor 230 and mouse 231, or other input
device, enables an operator to interface with an image in its digital form. The
processed image may be stored in a memory 218 and/or printed using a
printer 220 (col. 12, ll. 40-44).
2. Honsinger teaches that examples of image meta-data that are not
directly derived from, but are related to, an original image include the
data/time or geographical location of the point of capture, a unique ID
associated with the camera and/or photographer, camera settings used during
the capture process, etc. (col. 1, l. 66 – col. 2, l. 3).
Stone
3. Stone teaches a processor having a user interface 644 having user
controls for controlling the processor (col. 2, ll. 30-31).
4
Appeal 2009-006172
Application 10/435,612

Definition of “data file”
4. A data file is an “[e]lectronic file containing digitized audio/video,
graphic, or text information arranged in a coded form (and a specific file
format) dictated by the program that created it. It can be read or used only by
the same (or a compatible) program, and is distinct from a program file
(which contains executable code).” Businessdictionary.com, definition of
“data file.” http://www.businessdictionary.com/definition/data-file.html.
Retrieved February 28, 2011.

PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
“ Section 103 forbids issuance of a patent when "the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.”

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007). 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, (3) the level of skill in
the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550
U.S. at 407 (“While the sequence of these questions might be reordered in
5
Appeal 2009-006172
Application 10/435,612

any particular case, the [Graham] factors continue to define the inquiry that
controls.”)

ANALYSIS
REJECTION OF CLAIMS 1-3, 6, AND 19-23 OVER HONSINGER
Claim 1 recites, inter alia, “a user interface module for representing
the host data file as a container for the auxiliary data files, and enables the
adding or removing of auxiliary data files from the reversible watermark.”
The Examiner finds that Honsinger teaches the claimed user interface
(Ans. 4). The Examiner further finds that Honsinger’s enumeration of
examples of image meta-data correspond to the “data file” recited in the
claims (Ans. 12).
We disagree with the Examiner’s finding. While Honsinger teaches
that a monitor and mouse, or other input device, enables an operator to
interface with the image in its digital form (FF 1), Honsinger does not teach
any interface capable of “representing the host data file as a container for the
auxiliary data files.” We further find that Honsinger also does not teach the
capability to add or remove auxiliary data files from a reversible watermark.
We further disagree with the Examiner that metadata, such as date,
time, or geographical location where a picture was taken, a unique ID
associated with the camera or photographer, or camera settings used during
image capture (see FF 2), correspond to the recited “data file.” Applying the
dictionary definition of “data file” (FF 4), Honsinger’s metadata is not
disclosed as being arranged in a coded form, or with a specific file format.
We therefore find that Honsinger does not teach storing data files in a
reversible watermark.
6
Appeal 2009-006172
Application 10/435,612

Because we find that Honsinger does not teach a user interface for
representing a host data file as a container for auxiliary data files, or
enabling the adding or removing of auxiliary data files from a reversible
watermark, we find that the Examiner erred in rejecting claims 1-3, 6, and
19-23 under § 102 as being anticipated by Honsinger. We will not sustain
the Examiner’s rejection.
REJECTION OF CLAIMS 1 AND 12 OVER STONE
The Examiner finds that Stone teaches the claimed “user interface
module for representing the host data file as a container for the auxiliary data
files, and enables the adding or removing of auxiliary data files” (Ans. 16).
We disagree. While Stone does teach a user interface having user
controls for controlling a processor 646 (FF 3), Stone lacks any teaching of a
user interface for representing a host data file as a container for auxiliary
data files. We further find that Stone fails to teach enabling the adding or
removing of auxiliary data files from a reversible watermark.
We find that Stone does not teach all the features of the claimed
invention. Therefore, we will not sustain the Examiner’s § 102 rejection of
claims 1 and 12 as anticipated by Stone.
CLAIMS 9-11 AND 13-15 AND 17
As noted supra, we do not sustain the rejection of parent claim 1 as
being anticipated by Honsinger. We have reviewed Chang, Rhoads, and Yu,
and find that they do not remedy Honsinger’s failure to teach the user
interface module as claimed. Accordingly, we will not sustain the rejection
of claims 9-11 and 13-15 and 17, for the reasons expressed with respect to
the § 102 rejection of claim 1, supra.

7
Appeal 2009-006172
Application 10/435,612

CONCLUSION
1. Honsinger does not teach a user interface module for representing
the host data file as a container for the auxiliary data files, and enabling the
adding or removing of auxiliary data files from a reversible watermark.
2. Stone does not teach a user interface module for representing the
host data file as a container for the auxiliary data files, and enabling the
adding or removing of auxiliary data files from a reversible watermark.

ORDER
The Examiner’s rejection of claims 1-3, 6, 9-15, 17, and 19-23 is
reversed.

REVERSED

ELD
FOLEY & LARDNER LLP
150 EAST GILMAN STREET
P.O. BOX 1497
MADISON, WI 53701-1497
8