Ex Parte Petrovic et al

Patent Trial and Appeal Board

Sep 20, 2016

13324336 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/324,336 12/13/2011 Rade PETROVIC
97075 7590 09/22/2016
Perkins Coie LLP - SDO General
PO Box 1247
Seattle, WA 98111-1247
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.
077058-8037.USOl 8185
EXAMINER
LANIER, BENJAMINE
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
09/22/2016 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RADE PETROVIC, JIAN ZHAO,
and JOSEPH M. WINOGRAD
Appeal2015-003192
Application 13/324,336
Technology Center 2400
Before CATHERINE SHIANG, TERRENCE W. McMILLIN, and
JOYCE CRAIG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 2-5, 8, 9, 11-14, and 16-24, which are all the claims
pending and rejected in the application. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Appeal2015-003192
Application 13/324,336
STATEMENT OF THE CASE
Introduction
The present invention relates to content management. See generally
Spec. 1. Claim 2 is exemplary:
2. A method for improving watermark embedding workflow,
compnsmg:
embedding a watermark into a host content, wherein at
least a portion of payload of the embedded watermark is
generated automatically by a watermark embedder; and
populating a database, only after the embedded host
content has been publicly distributed, to contain, for a first time,
an association between the automatically generated portion of
the payload and metadata, the metadata comprising one or more
descriptive identifiers of the host content that describes an
attribute of the host content wherein populating the database
comprises:
obtaining a copy of the embedded host content after the
embedded host content has been publicly distributed,
extracting the embedded vvatermarks from the publicly
distributed content,
determining the automatically generated portion of the
payload from the extracted watermarks, and
associating the determined value of the automatically
generated portion of the payload with the one or more
identifiers of the host content to populate the database, for a
first time, with the association between the automatically
generated portion of the payload and the metadata and to
thereby postpone establishing the association between the
automatically generated portion of the payload and metadata to
after the embedded host content has been publicly distributed.
References and Rejections
Claims 2, 3, 9, 11, 12, 16, 18-21, and 23 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hollar (US 2007 /0033146 Al, Feb. 8,
2007).
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Application 13/324,336
Claims 4, 5, 8, 13, 14, 17, 22, and 24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hollar and Levy (US 2005/0251683 Al,
Nov. 10, 2005).
ANALYSIS
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below. 1
Anticipation
On this record, we find the Examiner did not err in rejecting claim 2.
Issue 1
Appellants contend the Examiner fails to show Hollar discloses a
method "for improving watermark embedding workflow," as recited in the
preamble of claim 2. See App. Br. 13-14.
If the claim preamble, when read in the context of the entire
claim, recites limitations of the claim, or, if the claim preamble
is "necessary to give life, meaning, and vitality" to the claim,
then the claim preamble should be construed as if in the
balance of the claim. Indeed, when discussing the "claim" in
such a circumstance, there is no meaningful distinction to be
drawn between the claim preamble and the rest of the claim, for
only together do they comprise the "claim". If, however, the
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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Application 13/324,336
body of the claim fully and intrinsically sets forth the complete
invention, including all of its limitations, and the preamble
offers no distinct definition of any of the claimed invention's
limitations, but rather merely states, for example, the purpose
or intended use of the invention, then the preamble is of no
significance to claim construction because it cannot be said to
constitute or explain a claim limitation.
Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed.
Cir. 1999) (emphases added) (citations omitted).
We agree with the Examiner that the preamble is not limiting: "for
improving watermark embedding workflow" is not necessary to give life,
meaning, and vitality to claim 2, which defines a structurally complete
invention in the claim body and uses the preamble only to state a purpose or
intended use for the invention. See Ans. 2-3; Pitney Bowes, 182 F.3d at
1305.
Appellants cite the claim limitation "populating a database ... to
thereby postpone establishing the association between the automatically
generated portion of the payload and metadata to after the embedded host
content has been publicly distributed," but have not persuasively shown how
the preamble constitutes or explains that claim limitation. See App. Br. 14;
Pitney Bowes, 182 F.3d at 1305. To the contrary, we agree with the
Examiner that the claim limitation does not need the preamble for
completeness, and the preamble offers no distinct definition of that claim
limitation, but merely states the purpose or intended use of the invention.
See Ans. 2-3; Pitney Bowes, 182 F.3d at 1305.
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Application 13/324,336
Issue 2
Appellants contend Hollar does not disclose "populating a database,
only after the embedded host content has been publicly distributed, to
contain, for a first time, an association between the automatically generated
portion of the payload and metadata," as recited in claim 2. See App. Br.
15-17. In particular, Appellants assert certain paragraphs of Hollar do not
teach that claim limitation. See App. Br. 15-1 7.
Appellants have not persuaded us of error. In response to Appellants'
arguments, the Examiner provides further findings showing Hollar teaches
the disputed claim limitation. See Ans. 3---6. Among other things, the
Examiner finds Appellants' argument is not directed to the Hollar
embodiment cited by the Examiner. See Ans. 4--5. Appellants fail to
persuasively respond to such findings and, therefore, fail to show error in the
Examiner's findings. See In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991) ("It is not the function of this court [or this Board] to
examine the claims in greater detail than argued by an appellant, looking for
[patentable] distinctions over the prior art.").
Issue 3
Appellants contend Hollar does not disclose "postpone establishing
the association between the automatically generated portion of the payload
and metadata to after the embedded host content has been publicly
distributed," as recited in claim 2. See App. Br. 17. In particular,
Appellants assert Hollar does not teach postponing any operation. See App.
Br. 17.
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Application 13/324,336
Appellants have not persuaded us of error. In response to Appellants'
arguments, the Examiner provides further findings showing Hollar teaches
the disputed claim limitation. See Ans. 6-7. Appellants fail to persuasively
respond to such findings and, therefore, fail to show error in the Examiner's
findings. See Baxter Travenol Labs., 952 F.2d at 391.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claim 2, and independent claims 11, 19,
and 20 for similar reasons.
We also sustain the Examiner's rejection of corresponding dependent
claims 3, 9, 12, 16, 18, 21, and 23, as Appellants do not offer separate
substantive arguments about those claims.
Obviousness
On this record, we find the Examiner did not err in rejecting claim 8.
Issue 1
Appellants contend Levy does note teach "an embedder log," as
recited in claim 8. See App. Br. 20-21. In particular, Appellants argue Levy
teaches a usage log, which is generated by a watermark detector, and cannot
constitute the claimed embedder log. See App. Br. 20-21.
Appellants' argument is unpersuasive because the Examiner relies on
the combination of Hollar and Levy to teach the disputed claim limitation,
Appellants cannot establish nonobviousness by attacking Levy individually.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Specifically,
the Examiner finds-and Appellants do not dispute-Hollar teaches "an
embedder," and Levy teaches a "log." See Non-Final Act. 7; Ans. 7-9.
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Therefore, the Examiner finds Hollar and Levy collectively teach "an
embedder log." See Non-Final Act. 7; Ans. 7-9.
Issue 2
Appellants contend the Examiner has not provided a proper
articulated reasoning for combining the teachings of Hollar and Levy. See
App. Br. 21-22.
We disagree. The U.S. Supreme Court has held "[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int'! Co. v. Teleflex,
Inc., 550 U.S. 398, 416 (2007). Further, "[i]f the claim extends to what is
obvious, it is invalid under § 103" and "the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." Id. at 418-19.
The Examiner has provided articulated reasoning with a rational
underpinning as to why one skilled in the art would have found it obvious to
combine the teachings of Hollar and Levy. See Non-Final Act. 7; Ans. 7-9.
Appellants do not persuasively show why such reasoning is incorrect.
The Examiner's findings are reasonable because the skilled artisan
would "be able to fit the teachings of multiple patents together like pieces of
a puzzle" since the skilled artisan is "a person of ordinary creativity, not an
automaton." KSR, 550 U.S. at 420-21. Appellants do not present adequate
evidence that the resulting arrangements were "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
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step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Accordingly, we agree with the Examiner that applying Levy's log
technique in the Hollar method would have predictably used prior art
elements according to their established functions-an obvious improvement.
See KSR, 550 U.S. a 417.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claim 8, and independent claim 17 for
similar reasons.
We also sustain the Examiner's rejection of corresponding claims 4, 5,
13, 14, 22, and 24, as Appellants do not offer separate substantive arguments
about those claims.
DECISION
We affirm the Examiner's decision rejecting claims 2-5, 8, 9, 11-14,
and 16-24.
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 )(iv).
AFFIRMED
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