Ex Parte Samari et al

Patent Trial and Appeal Board

Sep 25, 2013

11677463 (P.T.A.B. Sep. 25, 2013)

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.
11/677,463 02/21/2007 Ravosh Samari 006179.00018 9948
22908 7590 09/26/2013
BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
EXAMINER
TILAHUN, ALAZAR
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
09/26/2013 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 PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte RAVOSH SAMARI and PAYMAAN BEHROUZI
____________________

Appeal 2011-005366
Application 11/677,463
Technology Center 2400
____________________

Before KEVIN F. TURNER, TREVOR M. JEFFERSON, and
STACEY G. WHITE, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
16, 18-33 and 35-49.2 Appellants cancelled claims 17 and 34. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
The claims are directed to digital signatures. Claim 1, reproduced
below with disputed limitations in italics, is illustrative of the claimed
subject matter:
1. A digital signature generation apparatus for generating a
digital signature of an audio segment, comprising:
a polarizer operable to produce a two-state signal having a
bit sequence providing a binary representation of a sampled
audio segment;
an event detector operable to identify at least one event in
the sampled audio segment or in the two-state signal; and
a signature generator operable, on the basis of a
predetermined signature collection pattern specifying a plurality
of offsets from an identified event to select the values of the
respective bits of the bit sequence at the bit positions specified
by the offsets, and on the basis of those values to provide a
digital signature characteristic of the sampled audio segment.

Rejections
The Examiner made the following rejections:
Claims 1-12, 14-16, 18-29, 31-33 and 35-49 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Ellis (U.S. 5,612,729, Mar. 18,

1 Throughout the decision, we make reference to the Appellants’ Appeal
Brief (“App. Br.,” filed Jul. 19, 2010), and Reply Brief (“Reply Br.,” filed
Nov. 29, 2010), and the Examiner’s Answer (“Ans.,” mailed Sep. 28, 2010).
2 The Real Party in Interest is Taylor Nelson Sofres PLC and Media
Evolution Technologies Inc.
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1997), Wong (WO 99/62022, Dec. 2, 1999) and Sakamoto (U.S. 6,272,194,
Aug. 7, 2001). Ans. 5-23.
Claims 13 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ellis, Sakamoto and Hules (U.S. 2007/0056001 A1, Mar.
8, 2007). Ans. 23-24.
Claim 35 is rejected under 35 U.S.C. §101 as being directed to non-
statutory subject matter. Ans. 4.

OPINION
Independent Claim 35 – 35 U.S.C. § 101 Rejection
Issue: Did the Examiner err in finding that claim 35 is directed to
non-statutory subject matter because it recites a “tangible computer-readable
medium” that encompass transitory signals? App. Br. 18-19.
Appellants contend that the Examiner erred because the Interim
Guidelines published by the Office on August 24, 2009, state that “tangible
computer-readable medium” is directed to a tangible embodiment under 35
U.S.C. § 101. App. Br. 18-19. The Examiner answers that adding
“tangible” to “computer-readable medium” encompasses transitory forms of
signal transmissions. Ans. 25.
We disagree with Appellants’ argument and find no error in the
Examiner’s rejection of claim 35. Under the broadest reasonable
interpretation, claim 35, which recites a “tangible computer-readable
medium” and does not expressly exclude “non-transitory” signals,
encompasses transitory embodiments such as signals. See Ans. 25-26; see
also Ex parte Mewherter, Appeal No. 2012-007692 (PTAB May 08, 2013)
(precedential), available at
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http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd2012_007692_preced
ential.pdf. Appellants do not argue that the term has a special meaning nor
that the Specification assigns such a meaning to the claims. See e.g. Spec.
¶ 109; App. Br. 18-19; Mewherter, Appeal No. 2012-007692 at 13-14.
Appellants’ arguments are unavailing as adding the limitation “tangible” to
“computer-readable medium” does not exclude non-transitory signals. See
Mewherter, Appeal No. 2012-007692 at 13-14.3
Based on the foregoing, we sustain the Examiner’s rejection of claim
35 under 35 U.S.C. § 101 as being directed to non-statutory subject matter.

Independent Claims 1 and 18 – 35 U.S.C. §103(a) Rejection
Appellants argue independent claims 1 and 47 together (App. Br. 20,
22) and Appellants argue independent 18, 35 and 36 together (App. Br. 24).
We select independent claims 1 and 18 as representative.

3 In the event of further prosecution, Appellants are not precluded from
amending the claims to overcome the rejection. Relevant guidance is in U.S.
Patent & Trademark Office, Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010) (“A claim
drawn to such a computer readable medium that covers both transitory and
non-transitory embodiments may be amended to narrow the claim to cover
only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by
adding the limitation ‘non-transitory’ to the claim.”); U.S. Patent &
Trademark Office, Evaluating Subject Matter Eligibility Under 35 USC §
101 (August 2012 Update) (pp. 11-14), available at http://
www.uspto.gov/patents/law/exam/101_training_aug2012.pdf (noting that
while “non-transitory” is a viable option for overcoming the presumption
that the media encompass signals or carrier waves, merely indicating that
such media are “physical” or “tangible” will not overcome such
presumption). See Mewherter, Appeal No. 2012-007692 at 13.
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Issue: Did the Examiner err in finding that Wong in combination with
Ellis teaches or suggests “a polarizer operable to produce a two-state signal”
as recited in claim 1? App. Br. 20-21.
Appellants contend that Wong fails to teach or suggest the polarizer
limitation of claim 1 because it fails to teach a “two-state signal having a bit
sequence providing binary representation of a sampled audio segment.”
App. Br. 21. Appellants assert that Wong only shows two separate output
paths (or single state signals) to generate content separate streams that use
binary “1” or “0” and not a two-state polarizer as claimed. App. Br. 20-21
(citing Wong, Fig. 2, 14:21-25).
We are not persuaded by Appellants’ arguments that the Examiner
erred with respect to the teachings of Wong. As the Examiner correctly
notes (Ans. 28-29), Appellants’ descriptions of Wong’s teachings rely on a
limited portion of Figure 2 in Wong. We find that Wong teaches two
outputs that are combined via MUX 250 in Figure 2 to create an output that
includes both the “0” and “1” outputs combined into a single channel based
on a use-based selection signal. Wong, Fig. 2, 14:19-30; see Ans. 28-29.
Indeed, Wong teaches that the combination of the “1” and “0” streams can
be swapped pseudo-randomly, indicating that Wong does not teach two
separate signals but a single two-state signal. See Wong 23:21-24; Ans. 28-
29.
Based on the foregoing, the Examiner did not err in finding that Wong
in combination with Ellis teaches or suggests “a polarizer operable to
produce a two-state signal” as recited in claim 1.

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Issue: Did the Examiner err in finding that Sakamoto teaches or
suggests “an event detector operable to identify at least one event in the
sampled audio data segment or in the two-state signal” as recited in claim 1?
Appellants assert that Sakamoto fails to teach or suggest an event
detector because Appellants’ specification emphasizes the detection of
predetermined events such as sync events that indicate a reversal of
polarization. App. Br. 22-23.
We are not persuaded by Appellants’ arguments for error.
Appellants’ arguments are not commensurate in scope with the claims,
which do not recite “predetermined events” or “sync events.” See Ans. 29-
30. In addition, we find that Sakamoto expressly discusses detection in an
audio bit stream using a sync pattern detection circuit. Sakamoto col. 4, ll.
24-34. Accordingly, the Examiner did not err in finding that Sakamoto
teaches or suggests “an event detector operable to identify at least one event
in the sampled audio data segment or in the two-state signal” as recited in
claim 1.

Issue: Did the Examiner err in finding that Ellis teaches or suggests
“selecting, on the basis of a predetermined signature collection pattern
specifying a plurality of offsets from the detected event, the values of the
respective bits of the bit sequence at the bit positions specified by the
offsets, and on the basis of those values providing a digital signature
characteristic of the sampled audio segment” as recited in independent claim
18? App. Br. 24-25.
Appellants assert that Ellis fails to teach or suggest “the ‘selection’
process of the rejected claims of providing a digital signature by selection of
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the values of respective bits of a bit sequence (provided by the polarizer) at
bit positions specified by a plurality of offsets (from an identified event)” as
recited in the independent claim 18. App. Br. 25. Claims 1 and 47 recite a
similar limitation for a “signature generator” that “select[s] the values of the
respective bits of the bit sequence at the bit positions specified by offsets.”
App. Br. 24 n.iv. Ellis, Appellants argue, only teaches a NOW/THEN,
frequency band-based comparison of audio signals to generate a signature
value for different frequency bands and not the bit location based selection
method claimed. App. Br. 25-26, 27.
The Examiner answers that Ellis teaches generation of a signature
based on a plurality of frequency bands to produce audio signatures. Ans.
11. The Examiner finds that the claimed “plurality of offsets from an
identified event” does not exclude the time-based NOW and THEN values
suggested in Ellis as applied to frames offset in time. Ans. 31 (citing Ellis,
col. 23, ll. 21-59).
Having reviewed Appellants’ arguments, we are not persuaded that
the Examiner erred. Appellants have not responded to the Examiner’s
interpretation of a “plurality of offsets from an identified event.” See Ans.
31; Reply Br. 2-10. We agree with the Examiner (Ans. 11) that Ellis teaches
or suggests creation of a signature for an audio file that produces binary
digital results based on comparing frequency band values that are displaced
in time. Ellis, col. 23. ll. 46-67. We also agree with the Examiner’s findings
that the broadest reasonable interpretation, consistent with the specification,
of “a plurality of offsets from an identified event” used in the “selecting”
limitations encompasses the selection of NOW and THEN values based on
frame offset in time as suggested in Ellis, col. 23. ll. 21-67. Ans. 31. Based
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on the record before us, we find no error in the Examiner’s finding that Ellis
in combination with Wong and Sakamoto teaches or suggests “selecting, on
the basis of a predetermined signature collection pattern specifying a
plurality of offsets from the detected event, the values of the respective bits
of the bit sequence at the bit positions specified by the offsets, and on the
basis of those values providing a digital signature characteristic of the
sampled audio segment” as recited in claims 18.
Based on the foregoing discussion regarding independent claims 1 and
18, we sustain the Examiner’s rejection of independent claims 1, 18, 35, 36
and 47 and their dependent claims 2-12, 14-16, 19-29, 31-33, 37-46, 48 and
49 under 35 U.S.C. §103(a).

Dependent Claims 13 and 30 – 35 U.S.C. §103(a) Rejection
Appellants make no separate arguments for dependent claims 13 and
30, which dependent from independent claims 1 and 18 discussed above.
App. Br. 28. Accordingly, we sustain the Examiner’s rejection of claims 13
and 30 under 35 U.S.C. § 103(a).

DECISION
For the above reasons, the Examiner’s rejection of claims 1-16, 18-33
and 35-49 is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

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AFFIRMED

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