Ex Parte Oostveen et al

Patent Trial and Appeal Board

Jan 21, 2014

11569199 (P.T.A.B. Jan. 21, 2014)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
11/569,199 11/16/2006 Job Cornelis Oostveen

EXAMINER
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
VEILLARD, JACQUES
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE

1/27/2014 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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOB CORNELIS OOSTVEEN and MAURO BARBIERI1
__________

Appeal 2011-009923
Application 11/569,199
Technology Center 2100
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and ULRIKE W.
JENKS, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
apparatus and method for content item signature matching. The Examiner
has rejected the claims as non-statutory subject matter and/or anticipated.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 Appellants identify the real party in interest as Koninklijke Philips
Electronics N.V. (App. Br. 3.)
Appeal 2011-009923
Application 11/569,199

2
STATEMENT OF THE CASE
The Specification “relates to a method and apparatus for content item
signature matching” (Spec. 1: 2-3). The Specification discloses that the
content item may be “an audio content item, such as an audio clip or a song,
or a video clip with or without associated audio” (id. at 9: 3-5).
Claims 1-17 are pending and on appeal (App. Br. 3). Claim 1 is
illustrative and reads as follows:
1. An apparatus for content item signature matching comprising:
a database comprising signatures for a plurality of content items;
means for determining a match likelihood indication for each of the
plurality of content items, the match likelihood indication of each content
item being indicative of a likelihood of a match between the content item
and an unknown signature;
means for receiving a query signature associated with a content item;
search means for searching the database for a matching signature to
the query signature; and
wherein the search means is operable to search the database in
response to the match likelihood indication of the plurality of content items.
Claims 1-15 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter (Ans. 4).
Claims 1-17 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Schmelzer et al. (US 7,363,278 B2, Apr. 22, 2008) (Ans. 5).
NON-STATUTORY SUBJECT MATTER
The Examiner finds: “Appellant[s’] disclosure page 17, lines 21-22[,
states that] the invention can be implemented in any suitable form including
hardware, software, firmware or any combination of these. However,
preferably, the invention is implemented as computer software running on
one or more data processors and/or digital signal processors.” (Ans. 11.)
The Examiner also finds that this teaching shows “that the invention as
Appeal 2011-009923
Application 11/569,199

3
written in claim 1 is clearly implemented in software” and that therefore “the
device of claim 1 is software per se” (id. at 11-12).
Issue
Has the Examiner set forth a prima facie case that claim 1
encompasses software per se?
Analysis
As noted in the Reply Brief, the USPTO issued Examination
Guidelines indicating that, “by choosing to use a means-plus-function
limitation and invoke § 112, ¶ 6, applicant limits that claim limitation to the
disclosed structure, i.e., implementation by hardware or the combination of
hardware and software, and equivalents thereof. Therefore, the examiner
should not construe the limitation as covering pure software
implementation.” (Supplementary Examination Guidelines for Determining
Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in
Patent Applications, 76 Fed. Reg. 7162, 7168 (Feb. 9, 2011).)
Claim 1 contains language that is presumptively means-plus-function
language. Given the 2011 Supplementary Examination Guidelines, we
conclude that the Examiner has not adequately explained why this language
encompasses software per se.
Conclusion
The Examiner has not set forth a prima facie case that claim 1
encompasses software per se. We therefore reverse the rejection under
35 U.S.C. § 101.
Appeal 2011-009923
Application 11/569,199

4
ANTICIPATION
The Examiner finds that Schmelzer teaches the apparatus of claim 1
(Ans. 5-6). In particular, the Examiner finds that Schmelzer teaches:
means for determining a match likelihood indication for each of
the plurality of content items, the match likelihood indication of
each content item being indicative of a likelihood of a match
between the content item and an unknown signature (e.g., the
method provides a content comparator 242, the function of that
comparator is [to] compare identifiers from the incoming data
stream 202 by query[ing] a database 244 for stored identifiers
for registered copyrighted works, and then determine whether
the incoming data matches with any [archived] content) . . .
(See Schmelzer et al. col.8, lines 14-21; col.11, line 56 through
col.12, line 67, and col.13, lines 1-62).
(Id.)
Appellants argue:
Schmelzer’s disclosure teaches the identification of a file match
based on a known signature (e.g. the known file name, source
IP address, metadata, and watermark). Schmelzer does not
disclose a means for determining a match likelihood indication
for each of the plurality of content items, the match likelihood
indication of each content item being indicative of a likelihood
of a match between the content item and an unknown signature.
(App. Br. 11.)
Issue
Has the Examiner set forth a prima facie case that Schmelzer teaches
determining a match likelihood indication for each of a plurality of content
items, the match likelihood indication of each content item being indicative
of a likelihood of a match between the content item and an unknown
signature?
Appeal 2011-009923
Application 11/569,199

5
Findings of Fact
1. As examples, the Specification discloses that “the means for
determining the match likelihood indication is operable to determine the
match likelihood indication in response to a previous match count for each
signature of at least some of the plurality of content items,” “in response to a
database entry time for each signature of the plurality of content items,” “in
response to a previous time of match for each signature of the plurality of
content items,” “in response to metadata associated with each of the plurality
of content items,” “in response to context information associated with each
of the plurality of content items,” or “in response to content information
associated with each of the plurality of content items” (Spec. 5: 9 to 7: 20).
2. Schmelzer discloses:
Returning to the content comparator 242, its function is to
compare a content identifier (such as, for example, a fingerprint
generated by the fingerprint generator 240) from the incoming
data stream 202 and query the database 244 for stored
identifiers for registered copyrighted works, and then determine
whether the incoming data stream 202 matches with any
archived content.
(Schmelzer, col. 8, ll. 13-19.)
3. Schmelzer also discloses that a “function of the system 326 is to
compare identifiers, preferably including fingerprints, extracted from the
network stream 302 and from registered copyrighted works . . . to determine
whether the network stream 302 contains any registered copyrighted
content” (id. at col. 10, ll. 62-67).
4. In addition, Schmelzer discloses:
FIG. 6 illustrates one embodiment of a hierarchical identity
assessment method 400 that may be used in a CPS [copyright
Appeal 2011-009923
Application 11/569,199

6
protection system] 100, 200, 300. A guiding principle of this
method is to start with less processor-intensive steps to assess
whether the monitored transmission contains a registered
copyrighted work, and then to progress to more processor-
intensive steps only if early steps do not indicate a match.
(Id. at col. 12, ll. 3-10.)
5. In particular, Schmelzer discloses:
[T]he first step 402 is to compare the file name of the sample to
file names of registered copyrighted works contained in a
database. . . . If the file name of the digital sample matches a
name in the database, then a checking comparison step 404 is
preferably performed to compare the file size for the digital
sample to the expected file size of the registered copyrighted
work bearing that name in the database.
(Id. at col. 12, ll. 27-35.)
6. Schmelzer also discloses that, “[i]f the file name and file size do
not both match, then a second assessment criterion involving a history of
unauthorized transactions from a particular source address is preferably
applied” (id. at col. 12, ll. 44-47).
7. In addition, Schmelzer discloses that, “[i]f examination of the
source IP address . . . do[es] not yield a likely match with a registered
copyrighted work, then further assessment criteria using any present
metadata or watermarks are preferably applied” (id. at col. 13, ll. 1-4).
8. Schmelzer also discloses:
If none of the foregoing assessment criteria indicate the likely
presence of a registered copyrighted work, then a content-based
fingerprint for a digital sample may be generated . . . . But even
if one or more of the foregoing assessment criteria indicates a
match with a registered copyrighted work, it may be desirable
to check at least a portion of the matched results with a
fingerprint identification method for validation purposes. That
Appeal 2011-009923
Application 11/569,199

7
is, each of the foregoing assessment criteria provides only a
probability that the unknown content contains a registered
copyrighted work.
(Id. at col. 13, ll. 22-32.)
Analysis
The Specification exemplifies determining the match likelihood
indication based on data that does not depend on the signature that is being
matched with the signatures in the database (Finding of Fact (FF) 1). Thus,
as noted by Appellants, the signature that is being matched, and even its
content item, need not be “known” at the time the match likelihood
indication is determined (App. Br. 12).
Schmelzer discloses a content comparator 242, which “compare[s] a
content identifier . . . from the incoming data stream 202 [by] query[ing] the
database 244 for stored identifiers for registered copyrighted works, and then
determine[s] whether the incoming data stream 202 matches with any
archived content” (FF 2). We agree with the Examiner that a content item in
the data stream can be considered an unknown content item before a match
to a content item in the database is identified (Ans. 12 (see FF 8, which
refers to “unknown content”)). However, we agree with Appellants that the
Examiner has not adequately explained why the identifiers, such as the file
name, file size, IP address, metadata, watermarks, and fingerprints, which
are used by Schmelzer to find a match (FF 2-7), would be considered “an
unknown signature” (claim 1 (emphasis added)).
Conclusion
The Examiner has not set forth a prima facie case that Schmelzer
teaches determining a match likelihood indication for each of a plurality of
Appeal 2011-009923
Application 11/569,199

8
content items, the match likelihood indication of each content item being
indicative of a likelihood of a match between the content item and an
unknown signature. We therefore reverse the anticipation rejection.

REVERSED

cdc