Ex Parte Lofgren et alDownload PDFBoard of Patent Appeals and InterferencesMar 17, 201110435612 - (D) (B.P.A.I. Mar. 17, 2011) Copy Citation 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. 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