Ex Parte Osawa et al

Patent Trial and Appeal Board

Feb 19, 2016

12305471 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/305,471 12/18/2008
24498 7590 02/23/2016
Robert D. Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
FIRST NAMED INVENTOR
Ryoichi Osawa
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.
PU060102 4760
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
02/23/2016 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):
uspto@technicolor.com
pat. verlangieri@technicolor.com
russell. smith@technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYOICHI OSAWA and MIKE ARTHUR DERRENBERGER
Appeal2013-003979
Application 12/305,471
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
TARA L. HUTCHINGS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 8-15. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
Claim 8 is illustrative:
8. A method for fingerprinting a motion picture file
copy, the method comprising the steps:
determining a number of fingerprints to appear in
the motion picture file copy;
Appeal2013-003979
Application 12/305,471
selecting scenes of the motion picture file copy for
fingerprinting based on the determined number of
fingerprints;
selecting at least one object occurring in each
selected scene;
creating a predetermined number of visible
variations of the at least one object and
applying at least one variation of the at least one
object in the selected scenes to the motion picture file
copy-to add a unique fingerprint to the motion picture file
copy.
Appellants appeal the following rejections:
1. Claims 8-15 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
2. Claims 8-15 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the enablement requirement.
3. Claims 8-15 under 35 U.S.C. § 103(a) as unpatentable over Tehranchi,
Tewfik, and De Souza.
ISSUES
Did the Examiner err in rejecting the claims under 35 U.S.C. § 101
because the Examiner failed to establish that the claims are drawn to an
abstract idea?
Did the Examiner err in rejecting the claims under 35 U.S.C. § 112,
first paragraph, because Appellants' disclosure reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter?
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Appeal2013-003979
Application 12/305,471
Did the Examiner err in rejecting the claims under 35 U.S.C. § 103(a)
because the prior art does not describe selecting scenes for fingerprinting
based on the determined number of fingerprints?
ANALYSIS
Rejection under 3 5 U.S. C. § 101
We will not sustain this rejection of claims 8-15. In explaining this
rejection, the Examiner states that the claims are directed to an abstract idea
because the claims fails to recite the machine that accomplishes the method
steps and fails to identify the material that is being transformed (Ans. 7).
Specifically, the Examiner states that any tie to a machine is representative
of extra-solution activity and the method steps do not transform the
underlying subject matter to a different state or thing. No further analysis is
provided by the Examiner. As such, the Examiner's rejection is based on the
machine-or-transformation test only and does not include a full analysis
under this test.
Before the mailing date of the Examiner's Answer, the Supreme Court
held that a patent claim's failure to satisfy the machine-or-transformation
test was not dispositive of the§ 101 inquiry. Bilski v. Kappas, 561 U.S. 593,
604 (2010). Because the Examiner relies only on the machine-or-
transformation test, and provides no further explanation of why the claims
are directed to an abstract idea, the Examiner has failed to establish a prima
facie case of patent-ineligibility.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 101 of claims 8-15.
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Appeal2013-003979
Application 12/305,471
Rejection under 35 U.S. C. § 112, first paragraph
In support of this rejection, the Examiner finds that Appellants'
disclosure does not disclose selecting scenes of the motion picture file copy
for fingerprinting based on the determined number of fingerprints as
required by claim 8.
The test for compliance with 35 U.S.C. § 112, first paragraph, is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date. In re Alton, 76 F.3d 1168, 1172, 1175-
76 (Fed. Cir. 1996).
Appellants rely on the disclosure at page 17, lines 5-12 as support for
the recitation of selecting scenes step (App. Br. 5). We find that Appellants'
Specification discloses that the number of watermarks are determined based
on the number of unique copies, N, needed for distribution (page 16, lines 9-
11 ). Next the maximum number of scenes, M, that can be watermarked is
determined (page 16, lines 19-20). If the number of watermarks is too many
in one scene because, for instance, it is a simple scene, one can select
watermarks from several scenes (page 16, lines 5-7; page 17, lines 5-12).
We find that the portion of Appellants' Specification relied on for support
for selecting scenes based on the number of watermarks discloses selecting
watermarks, but not selecting scenes. As such, Appellants' Specification
does not reasonably convey that the inventor had possession of a method
including the step of selecting scenes of the motion picture file copy based
on the determined number of fingerprints.
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Appeal2013-003979
Application 12/305,471
Therefore, we will sustain the Examiner's rejection of claims 1-8
under 35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 103(a)
Appellants argue that the prior art does not disclose selecting scenes
of the motion picture copy based on the determined number of fingerprints.
The Examiner relies on paragraphs 10 and 14 of De Souza for teaching
selecting scenes of the motion picture file copy for fingerprinting based on
the determined number of fingerprints. We find that paragraph 10 of
DeSouza discloses a watermark inserter that inserts watermark data into the
media content and a compressor that compresses the media content
containing the watermark but does not disclose selecting scenes based on the
number of watermarks. We find that paragraph 14 of De Souza discloses that
an embedded watermark can relate to several different mechanisms but does
disclose selecting scenes as required by claim 8.
In view of the foregoing, we will not sustain the rejection of claim 8
and claims 9-15 dependent thereon under 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's§ 101 and§ 103 rejections.
We affirm the Examiner's§ 112, first paragraph, rejection.
AFFIRMED
msc
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