Ex Parte Nguyen et al

Patent Trial and Appeal Board

May 16, 2018

12086373 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/086,373 0210412009
147897 7590
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
05/18/2018
FIRST NAMED INVENTOR
Philippe Nguyen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PF050198 7561
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/18/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE NGUYEN, SEVERINE BAUDRY,
and CORINNE NATUREL
Appeal2016-008160 1
Application 12/086,373
Technology Center 3600
Before JOHNNY A. KUMAR, JASON J. CHUNG, and TERRENCE W.
MCMILLIN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Non-
Final Rejection of claims 1-8 and 10-20. Claim 9 has been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The Appellants name Thomson Licensing as the real party in interest. See
App. Br. 3.
Appeal 2016-008160
Application 12/086,373
Invention
The disclosed and claimed invention on appeal relates to "a method of
watermarking a data set." Spec. 2, 11. 4--5.
Representative Claim
1. A method of watermarking a data set comprising:
first transforming of at least one group of data of the said
set by a first transform into a first group of coefficients in a first
transformation space;
first watermarking of said first group of coefficients
according to a predetermined watermarking process using a first
hardware watermarking module;
generating a first group of watermarking data representing
the modifications induced by the said first step of watermarking
on coefficients of the said first group of coefficients in said first
transformation space;
first projection of said first group of watermarking data
from said first transformation space into a second transformation
space different from said first transformation space to generate a
second group of watermarking data;
second transforming of said at least one group of data by
a second transform into a second group of coefficients in said
second transformation space; and
second watermarking of said second group of coefficients
with said second group of watermarking data using a second
hardware watermarking module.
Rejections
A. Claims 1-8 and 10-20 are rejected under 35 U.S.C. § 101 as being
directed to a judicial exception.
B. Claims 1-8 and 10-20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
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Grouping of Claims
Based on Appellants' arguments (App. Br. 9-14), we decide the
appeal of rejections A and B of claims 1-8 and 10-20 on the basis of
representative claim 1.
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. Regarding rejection A, we disagree with Appellants' arguments
and we adopt as our own: (1) the findings and legal conclusions set forth by
the Examiner in the Non-Final Office Action (id. at 2-8), from which this
appeal is taken, and (2), the corresponding findings, legal conclusions, and
explanations for rejection A, as set forth in the Answer (id. at 9-13), in
response to Appellants' arguments. App. Br. 9-12. However, we reverse
rejection B under§ 112, first paragraph, for the reasons discussed infra. We
highlight and address specific findings and arguments for emphasis in our
analysis below.
Rejection A under§ 101q{Claims1---8 and 10-20
Issue 1: Under § 101, did the Examiner err in concluding claim 1 is
directed to patent-ineligible subject matter?2
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
The Supreme Court, however, has long interpreted § 101 to include an
implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas
are not patentable." See, e.g., Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S.
2 We consider the claims as a whole and give the claim limitations the
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Application 12/086,373
Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal quotation marks
omitted)). In Alice, the Supreme Court set forth an analytical "framework
for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The first step in our analysis is to determine whether the claims at
issue are directed to a patent-ineligible concept, such as an abstract idea. See
Alice, 134 S. Ct. at 2355. If the claims are directed to a patent-ineligible
concept, the second step in the analysis is to "consider the elements of each
claim both individually and 'as an ordered combination' to determine
whether [there are] additional elements [that] 'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79,
78). In other words, the second step is to "search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Id. (brackets in original) (quoting
Mayo, 566 U.S. at 72-73).
In rejecting claims 1-8 and 10-20, the Examiner finds (1) the claims
are directed to "an abstract idea involving a mathematical algorithm" (e.g.,
watermarking a dataset), "consisting of mathematical operations where the
transforming and projection operations would involve matrix arithmetic and
the generation of watermarking data" and that (2) the additional elements in
the claims do not amount to significantly more than the abstract idea because
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these claims require no "more than generic computer functionality." Non-
Final Act. 3--4.
Alice - Step One
Turning now to the first step of the Alice inquiry, Appellants argue
claim 1 "protects a data set by modifying the data by inserting a watermark"
and, as such, does not "recite any mathematical relationship or any other
category of abstract idea." App. Br. 10-11. Appellants' argument is not
persuasive. Reply Br. 5---6. Contrary to Appellants' argument, claim 1 is
directed to an abstract idea involving mathematical calculations on certain
data. As correctly recognized by the Examiner, "claim 1 is clearly directed
towards a judicial exception regarding an abstract idea involving an
algorithm for the transforming and watermarking of data." Ans. 11. See
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344,
1350-51 (Fed. Cir. 2014) (holding that "a process of organizing information
through mathematical correlations ... not tied to a specific structure or
machine" is an abstract idea).
In the Reply Brief, Appellants further argue:
Applicants respectfully assert that media playback (and,
necessarily therefore, rights management and watermarking) is a
core functionality of modem computers. The present invention
provides improvements to watermarking and, thus also, to the
functioning of the computer itself. It is therefore respectfully
submitted that the present claims are not directed to an abstract
idea at all.
Id. at 6 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016)).
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Application 12/086,373
We disagree. Contrary to Appellants' argument, claim 1 does not
recite a specific improvement to the way computers operate, and Appellants
do not present evidence to establish these claims recite a specific
improvement to the computers. See Enfish, 822 F.3d at 1336, 1339.
Appellants also have not demonstrated their claims "improve the way a
computer stores and retrieves data in memory," as the claims in Enfzsh did
via a "self-referential table for a computer database" (see Enfzsh, 822 F .3d at
1336, 1339). Instead, we agree with the Examiner that claim 1
takes inputted data, transforms the data into coefficients,
watermarks the coefficients and then generates watermarking
data. The watermarking data is then projected into a second
transformation space, a second transform is performed and a
second watermarking is performed. Per the disclosure at pages
10 and 11 each of these operations can be described as a
mathematical operation. The claim can also be viewed as similar
in nature to Digitech (Digitech Image Techs., LLC v. Elecs. for
Imaging, Inc., 111 USPQ2d 1717 (Fed. Cir. 2014)) as Digitech
was held to be directed towards a process of taking two data sets
and combining them into a single data set, the device profile.
Ans. 9--10.
For at least these reasons, we conclude representative claim 1 is
directed to an abstract idea (Alice - Step One).
Alice - Step Two
In the second step of the Alice analysis, Appellants contend, inter alia:
[T]he watermark need not be used by any downstream hardware
or process to be useful. Instead, the mere existence of the
watermark helps prevent unauthorized copying and has other
significant benefits. Indeed, in the case of tracking the source of
a leak, it is the explicit hope of the person adding the watermark
that the watermark never be needed in any capacity. In this
manner, the watermark of the present invention provides a
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significant advance in the data protection and anti-counterfeiting
industries. As such, the claims do indeed provide "significantly
more" than an abstract idea, as improvements to the
watermarking of data represent significant advances to another
industry.
App. Br. 11-12.
However, we conclude the nature of Appellants' claims is not
transformed into a patent-eligible application of the abstract idea presented,
because these claims do nothing more than simply instruct the practitioner to
implement an abstract idea of mathematical calculations using a generic
processor. We conclude Appellants' representative claim 1 is directed to a
patent-ineligible abstract concept, and does not recite something
"significantly more" under the second step of the Alice analysis.
Accordingly, for the reasons discussed above, we sustain the Examiner's
rejection A under 35 U.S.C. § 101 of representative claim 1, and grouped
claims 2-8 and 10-20, as being directed to patent-ineligible subject matter in
light of Alice and its progeny. See Grouping of Claims, supra.
Rejection B under pre-AJA § 112, first paragraph (written description)
Our reviewing court guides the written description "must clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane) (internal citation and quotations
omitted). The test is whether the disclosure "conveys to those skilled in the
art that the inventor had possession of the claimed subject matter as of the
filing date." Id. "[A]ctual 'possession' or reduction to practice outside of
the specification is not enough. Rather, ... it is the specification itself that
must demonstrate possession." Id. at 1352; see also PowerOasis, Inc. v. T-
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Mobile USA, Inc., 522 F.3d 1299, 1306--07 (Fed. Cir. 2008) (explaining that
§ 112, first paragraph, "requires that the written description actually or
inherently disclose the claim element") (emphasis added).
[I]t is "not a question of whether one skilled in the art might be
ab le to construct the patentee's device from the teachings of the
disclosure .... Rather, it is a question whether the application
necessarily discloses that particular device." . . . A description
which renders obvious the invention for which an earlier filing
date is sought is not sufficient.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963))
(emphasis added).
In the Non-Final Office Action (id. at 8-12), the Examiner finds
insufficient written description support for the claims 1, 19, and 2 0
language: "hardware watermarking module" because" "no actual
description of any 'physical entity' is present in the disclosure (emphasis
added).
Appellants disagree, and contend, inter alia:
The specification does describe an option for the modules
as being "physically distinguishable units" and "physical
entities" on page 16, lines 4--13, and these units are therefore
clearly physical devices-how else could they be physically
distinguishable? It is therefore supported to have hardware
modules . . . those having ordinary skill in the art would
nonetheless recognize that the inventors had possession of
hardware embodiments.
(Reply Br. 7).
As indicated by Appellants (id.), we find at least page 16, lines 4--13
of the original Specification ties the invention to "physical units" and
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"physical entities" to provide support for the contested hardware
watermarking module.
Therefore, on this record, we find a preponderance of the evidence
supports Appellants' contentions traversing written description rejection B.
App. Br. 10-12; Reply Br. 7. Accordingly, we reverse Rejection B of
claims 1-8 and 10-20, under the written description requirement.
DECISION
We affirm the Examiner's rejection A of claims 1-8 and 10-20 under
35 U.S.C. § 101.
We reverse the Examiner's rejection B of claims 1-8 and 10-20 under
pre-AIA 35 U.S.C. § 112, first paragraph (written description).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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