Ex Parte Rhoads

Board of Patent Appeals and Interferences

Jun 27, 2011

09574726 (B.P.A.I. Jun. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
09/574,726 05/18/2000 Geoffrey B. Rhoads 098888-1523 9782
99103 7590 06/27/2011
Foley & Lardner LLP
150 EAST GILMAN STREET
P.O. BOX 1497
MADISON, WI 53701-1497
EXAMINER
AGWUMEZIE, CHARLES C
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
06/27/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEOFFREY B. RHOADS
____________

Appeal 2010-004619
Application 09/574,726
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI,
and BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-004619
Application 09/574,726

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 14, 26 to 29, and 91 to 94. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). Appellant appeared
before us for oral hearing on June 7, 2011.

BACKGROUND
Appellant’s invention is directed to a method of digital watermarking
in conjunction with audio, video, imagery, and other media content
(Specification 1).
Claim 1 is illustrative:
1. A method of distributing digital source material comprising:
passing encoded source material to a destination through at least one
intervening steganographic decoder process, the encoded source material
comprising plural-bit auxiliary data steganographically embedded in the
digital source material, the digital source material including visual or audio
signals that are perceptible when output from a device, and the visual or
audio signals including imperceptible modifications to perceptible parts of
the visual or audio signals to embed the plural-bit auxiliary data in the
perceptible parts in a manner that is imperceptible to a user, the
imperceptible modifications adaptively changing values of the perceptible
parts of the visual or audio signals by a varying amount that depends on the
values of the perceptible parts;
within said intervening steganographic decoder process, detecting
encoded source material transmitted thereby; and
crediting a payment in response to said detection of the encoded
source material, in accordance with the plural-bit auxiliary data
steganographically conveyed by the encoded source material.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Hamilton US 5,249,166 Sep. 28, 1993
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Application 09/574,726

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Daniele US 5,444,779 Aug. 22, 1995
Moses US 5,473,631 Dec. 5, 1995
Van Wie US 6,240,185 B1 May 29, 2001
Appellant appeals the following rejections:
1. Claims 1, 8, and 11 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
2. Claims 1, 8, and 11 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
3. Claims 1 to 4, 6 to 9, 11 to 14, and 91 to 94 under 35 U.S.C. § 103(a)
as unpatentable over Van Wie.
4. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Van Wie in
view of Moses.
5. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Van Wie in
view of Hamilton.
6. Claims 26 to 29 under 35 U.S.C. § 102(e) as anticipated by Daniele.
7. Claims 27 and 29 under 35 U.S.C. § 103(a) as unpatentable over
Daniele in view of Hamilton.

ISSUES
Did the Examiner err in rejecting claims 1, 8, and 11 under 35 U.S.C.
§ 112, first and second paragraphs, because the Examiner did not consider
the disclosure of U.S. Patent No. 5,862,260 [hereinafter ‘260 patent]?
Did the Examiner err in rejecting claims 1 to 14 and 91 to 94 under 35
U.S.C. § 103(a) because Van Wie is not prior art?
Did the Examiner err in rejecting claims 26 to 29 under 35 U.S.C. §
102(e) and claims 27 and 29 under 35 U.S.C. § 103(a) because Daniele
Appeal 2010-004619
Application 09/574,726

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provides no relevant teachings regarding altering music signals to insert bits
of data therein?

FACTUAL FINDINGS
Appellant’s Specification states that the present assignee’s work
regarding digital watermarking is reflected in the ‘260 patent (Specification
1).
Page 8, lines 8 to 14, of Appellant’s Specification discloses that in
Appellant’s method, encoding can be perceptually adaptive so that higher
energy encoding is employed where the listener is less likely to perceive the
additional noise introduced by encoding.
Appellant argues that the ‘260 patent has been incorporated by
reference on page 40 of Appellant’s Specification.
The Examiner has not argued that the ‘260 patent in not incorporated
by reference. On page 15 of the Answer, the Examiner considers the
Specification of the ‘260 patent in responding to the Appellant’s arguments
in response to the rejection under the second paragraph of 35 U.S.C. § 112.
The ‘260 patent discloses that the perceptible part of the visual image
or the distributable image is changed by varying amounts depending on the
value of the perceptible part (col. 4, ll. 28 to 30; col. 4, l. 66 to col. 5, l. 14;
col. 8, ll. 11 to 21). Specifically, the ‘260 patent discloses that the
distributed image is dependent on the digital number of the original image
and the composite image.
Daniele discloses a method of utilizing printable glyph or similar two-
dimensionally encoded marks to identify copyrighted documents (Abstract).
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The glyth codes are placed on a page of poetry, plays or music (col. 7, ll. 33
to 44). Daniele does not disclose a method of altering a music signal.

ANALYSIS
Written description
The Examiner found that Appellant’s Specification as originally filed
contains no support for “the imperceptible modification adaptively changing
values of the perceptible parts of the visual or audio signals by a varying
amount that depends on the values of the perceptible parts” as is recited in
claim 1 (Answer 3). We agree with Appellant that this subject matter is
contained in the disclosure of the ‘260 patent as detailed above. Appellant
asserts that the ‘260 patent was incorporated by reference at page 40 of the
Specification. The Examiner has not challenged this assertion. As such, we
will not sustain this rejection of the Examiner.

Indefiniteness
The Examiner found that it is unclear to one of ordinary skill in the art
what is meant by: “the imperceptible modification adaptively changing
values of the perceptible parts of the visual or audio signals by a varying
amount that depends on the values of the perceptible parts”, which is recited
in claim 1 (Answer 4). We agree with Appellant that this subject matter is
clearly explained in the ‘260 patent as detailed above. As such, we will not
sustain this rejection of the Examiner.

Appeal 2010-004619
Application 09/574,726

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Prior art rejections based on the Van Wie reference
Appellant has not addressed the substance of the rejections
based on the teachings of the Van Wie reference. Rather, Appellant argues
that Van Wie has a priority filing date of August 1996, whereas the claims
have priority support at least as early as May 1996 as a result of the priority
to the ‘260 patent. Appellant argues that priority was accorded or should
have been accorded in 2005. Appellant concludes that Van Wie is not prior
art.
The Examiner argues that no priority was accorded and that no
priority will be accorded because in the Examiner’s view, the instant
application was not copending with the application that matured into the
‘260 patent.
We have not found nor we have not been directed to any indication in
the record that the requested priority filing date has been accorded. As such,
on the record before us, the instant application has not been accorded the
filing date of the ‘260 patent. Therefore, Van Wie is prior art.1
As Appellant has not advanced any arguments in regard to substance
of the rejections based on the Van Wie reference, we will sustain these
rejections.

1 Should Appellant desire to challenge the Examiner’s failure to accord
priority in this application, such challenge must take place during any further
prosecution of this application before the Examiner. If the Appellant is
dissatisfied with any future holding of the Examiner on the issue of priority,
Appellant can challenge the holding in a petition to the Director pursuant to
37 CFR § 1.181.
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Application 09/574,726

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Prior art rejections based on the Daniele reference
We will not sustain the Examiner’s rejections of the claims based on
the Daniele reference because we agree with the Appellant that the Daniele
disclosure is directed to glyphs and other two dimensional encoded marks
which encode a document, but does not disclose a method of altering music
signals. While these documents can take the form of a page of music,
Daniele does not disclose altering a music signal by inserting the glyphs.

DECISION
We do not affirm the Examiner’s 112 rejections of claims 1, 8, and 11.
We affirm the Examiner’s prior art rejections of claims 1 to 14 and 91
to 94 based on the Van Wie reference.
We do not affirm the Examiner’s prior art rejections of claims 26 to
29 based on the Daniele reference.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

ORDER
AFFIRMED-IN-PART

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