Ex Parte Rhoads

Patent Trials and Appeals Board

May 28, 2019

11620999 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/620,999 01/08/2007 Geoffrey B. Rhoads
99103 7590 05/30/2019
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
098888-1957 1347
EXAMINER
WU,YICUN
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY B. RHOADS 1
Appeal2018-004203
Application 11/620,999
Technology Center 2100
Before KAL YANK. DESHPANDE, CHARLES J. BOUDREAU, and
SHARON PENICK, Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-3, 6-10, 14, 16, 17, and 20-28. Claims 4, 5, 11-13,
15, 18, and 19 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b )(1).
We REVERSE.
1 Appellant identifies Digimarc Corporation as the real party in interest.
Appeal Br. 2.
Appeal2018-004203
Application 11/620,999
Invention
Appellant's invention relates to decoding a digital watermark in
ambient audio such as music. Spec. 3 :27-28. The watermark data may
include data fields representing information about the audio, e.g., publisher,
artist, title, date of publication, etc. Id. at 4: 10-16. The watermark data may
also include a unique identifier (UID) serving as an index to a remote
database where information about the audio is stored. Id. at 4: 14--17.
Exemplary Claim
Claims 1, 8, and 23-26 are independent. Claim 1 is exemplary and
reproduced below with italicization added for emphasis:
1. A method comprising:
capturing ambient audio with a microphone;
producing audio data from the ambient audio;
providing the audio data to a processor;
decoding first information from first watermark data
steganographically-encoded in the ambient audio, wherein
decoding the first information comprises:
decoding a unique identifier and a first part of the
first information from a first portion of the ambient
audio; and
decoding the unique identifier and a second part of
the first information from a second, different portion of
the ambient audio;
identifying a database record corresponding to the first
information in a remote database;
decoding a location of where the ambient audio was
captured from second watermark data steganographically-
encoded in the ambient audio, wherein the ambient audio
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Application 11/620,999
steganographically-encoded with the second watermark
originates from a low level white-noise broadcast;
obtaining second, different, information corresponding to
the audio data from the identified database record, wherein the
second information is identified by reference to the first
information; and
initiating a search using a general purpose internet search
engine for information related to the audio using the second
information, wherein the search is initiated with a general
purpose internet search engine without entry of text keywords
by a user and without selection of text keywords by the user,
wherein the search comprises search terms sent to the general
purpose internet search engine, and wherein the search terms
comprise the second information.
Rejection on Appeal
The Examiner rejects claims 1-3, 6-10, 14, 16, 17, and 20-28 under
35 U.S.C. § 103(a) as being unpatentable over Kawamoto (US 7,251,475
B2; iss. July 31, 2007), Ballard (US 5,987,457; iss. Nov. 16, 1999), and
Aijala et al. (US 5,579,124; iss. Nov. 26, 1996) ("Aijala"). Final Act. 3-25.
ANALYSIS
The Examiner finds that Kawamoto teaches the following limitations
as recited in independent claim 1 and similarly recited in independent claims
8 and 23-26:
decoding first information from first watermark data
steganographically-encoded in the ambient audio, wherein
decoding the first information comprises:
decoding a unique identifier and a first part of the
first information from a first portion of the ambient
audio; and
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Application 11/620,999
decoding the unique identifier and a second part of
the first information from a second, different portion of
the ambient audio.
Final Act. 3--4 (citing Kawamoto 6:15-55).
Kawamoto teaches data stored in successive identical "frames," each
of which includes a starting code (element 53) and a music identification
code (element 54) unique to a piece of music. Kawamoto 6: 10-25, 53-55.
Alternatively to the inclusion of a music identification code, the successive
identical frames may incorporate title, artist, album, or other information
relating to the music in each frame. Id. at 6:38--43. The series of identical
frames are incorporated into music using a data hiding technique. Id. at
6:29-55.
Claim 1 recites "decoding first information," which includes "a first
part of the first information" and "a second part of the first information" are
that are decoded. The Examiner finds that Kawamoto teaches "the unique
identifier is decoded based on a first portion of the audio containing a
starting code," and "the unique identifier is decoded based on a second
portion of the audio containing the unique identifier." Final Act. 4
( emphasis added); see also id. at 26. From this, we understand the Examiner
to be mapping the claimed "first portion" to a first portion of one of
Kawamoto's frames, that portion containing starting code 53, and to be
mapping the claimed "second, different portion" to the portion of a
Kawamoto frame that contains music identification code 54.
"decoding"
Appellant first argues that Kawamoto does not teach "decoding."
Appeal Br. 14. According to Appellant, Kawamoto "only describes hiding
information in audio signals, not the 'decoding' of the information." Id.
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Application 11/620,999
(citing Kawamoto 6:29-55). Appellant further argues that Kawamoto never
uses the term "decode" or "decoding," only "hiding information" - which,
Appellant contends, is the opposite of decoding. Id. The Examiner responds
that Kawamoto describes "extracting" the hidden data from music data,
which the Examiner asserts is a decoding process. Ans. 3 ( citing Kawamoto
6:1-25); id. at4-5 (citing Kawamoto Fig. 3, 6:19-25).
We agree with the Examiner that Kawamoto teaches decoding of
information. Kawamoto teaches or suggests that a "series of data" encoded
in music is decoded, e.g., so the music identification code can be used with a
music database to retrieve detailed information relating to the music. See
Ans. 3--4; Kawamoto 6: 17-25, 6:46-63.
"unique identifier, " ''first part of the first information, "
"second part of the first information"
Appellant further argues the Examiner has not identified a "unique
identifier" in Kawamoto and, thus, fails to establish a prima facie case of
obviousness. Appeal Br. 15. Appellant additionally argues that "[i]t is not
clear which (if any)" of Kawamoto's starting code 53 and music
identification code 54 are the claimed "first portion of the ambient audio"
and "second, different portion of the ambient audio." Id.
We agree with Appellant that the Examiner has not shown how
Kawamoto teaches "decoding a unique identifier and a first part of the first
information from a first portion of the ambient audio" and "decoding the
unique identifier and a second part of the first information from a second,
different portion of the ambient audio." See Appeal Br. 14--15. The claims
require decoding a "unique identifier" from both first and second portions of
the ambient audio. The claims also require decoding a respective "part of
the first information" in addition to the "unique identifier" from each of the
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Application 11/620,999
first and second portions of the ambient audio. That is, the claims require
decoding three elements from the two portions of the ambient audio------one is
the "unique identifier" ( decoded from both the first and second parts of the
first information) and the two others are, for each portion, the respective
"part of the first information." But the Examiner does not adequately
explain what the "unique identifier" corresponds to in Kawamoto.
As discussed above, the Examiner cites Kawamoto's starting code 53
as an element (first part of the first information) decoded from the claimed
"first portion of the ambient audio" and Kawamoto's music identification
code 54 as an element (second part of the first information) decoded from
the claimed "second, different portion of the ambient audio." See Final Act.
4, 26; see also Ans. 7. But we are unable to discern from the Examiner's
findings that Kawamoto discloses decoding a "unique identifier," as required
by the claims. We agree with Appellant that "Kawamoto identifies two
codes" (starting code 53 and music identification code 54) and that "[i]t is
not clear which (if any) of these codes is the claimed 'unique identifier"' that
is decoded from each of the first and second parts of the ambient audio. See
Appeal Br. 15.
The Examiner's finding that "decoded audio will always have
multiple portions which are used to read the unique identifier and
information" does not address the question of which element in Kawamoto
teaches or suggests the claimed unique identifier. Answer 7. The Examiner
determines that "since the music identification code is a number uniquely
assigned to particular music, it is considered to be 'unique identifier."' Id.
But the Examiner found that the Kawamoto' s music identification code
( element 54) corresponds to the second part of the first information, and
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does not explain how it can also function as the unique identifier according
to the claim, or how it would be decoded from the first portion of the audio,
which the Examiner finds corresponds to the "portion of the audio
containing a starting code" in Kawamoto. Final Act. 4.
In the Answer, the Examiner additionally cites Aijala' s teachings of
an audio signal encoded with source identifying information and a
geographic area code signal as corresponding to the claimed "first portion"
and "second, different portion" of the ambient audio, respectively. Id. at 7-8
(citing Aijala 5:15-20, 6:35--42). 2
We are unpersuaded that the Examiner's combination of Kawamoto
with Aijala's teachings of an audio signal encoded with source identifying
information and a geographic area code signal satisfies the "decoding" claim
limitations. See Ans. 7-8 (citing Aijala 5:15-20, 6:35--42); see also Final
Act. 5-6 (citing Aijala 3:10-30, 4:45-50, 5:15-20, 6:35--42, claim 97 for
different claim limitations). The cited portions of Aijala teach encoding an
information signal with source identifying information, and notes that
"codes may be assigned based on geographic location." Aijala 5: 10-20,
6:39--41. However, while the source identifying information in Aijala may
teach a unique identifier, the cited portions of Aijala do not teach that the
unique identifier is decoded from a first and a second, different portion of
the audio signal, and, to the extent that the Answer implies that the
2 In the Final Office Action, these portions of Aijala were relied on by the
Examiner for the claim limitation "decoding a location of where the ambient
audio was captured from second watermark data steganographically-encoded
in the ambient audio, wherein the ambient audio steganographically-encoded
with the second watermark originates from a low level white-noise
broadcast." Final Act. 5---6.
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geographic location of Aijala is encoded in a second, different portion of the
audio, we agree with Appellant that the cited portions of Aijala do not teach
or suggest that the Aijala geographic location information is different from
the source identifying information, or is transmitted in a different portion of
the Aijala information signal. See Reply Br. 5.
Accordingly, we do not sustain the Examiner's rejection under
35 U.S.C. § 103(a) of independent claims 1, 8, and 23-26 and dependent
claims 2, 3, 6, 7, 9, 10, 14, 16, 17, 20-22, 27, and 28, which are not argued
separately.
DECISION
TheExaminer'srejectionofclaims 1-3, 6-10, 14, 16, 17, and20-28
under 35 U.S.C. § 103(a) is reversed.
REVERSED
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