Ex Parte Sasaki

Board of Patent Appeals and Interferences

Dec 3, 2010

10128234 (B.P.A.I. Dec. 3, 2010)

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.
10/128,234 04/24/2002 Minoru Sasaki 5-079US 5934
21254 7590 12/06/2010
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
NOBAHAR, ABDULHAKIM
ART UNIT PAPER NUMBER
2432
MAIL DATE DELIVERY MODE
12/06/2010 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 MINORU SASAKI
____________________

Appeal 2009-005805
Application 10/128,2341
Technology Center 2400
____________________

Before JOSEPH L. DIXON, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL2

1 Application filed April 24, 2002. The real party in interest is Pumpkin
House, Inc. (Br. 1.)
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005805
Application 10/128,234

2
STATEMENT OF THE CASE
Appellant appeals from the Examiner’s rejection of claims 1-24 under
authority of 35 U.S.C. § 134(a). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
The invention at issue on appeal relates to an embedding apparatus
and method for embedding information, an error correction code and a
watermark, in content detecting particular strings of data in a data stream
using a content addressable memory. (Spec. 1:9-12; 3:5-25.)3
Representative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method of embedding information in content,
comprising:
generating first encoded content by attaching an error
correction code to original content; and
generating watermark-embedded encoded content by
executing an embedding operation in which watermark data, of
such data length that the watermark data can be removed from
the watermark-embedded encoded content if decoding
processing is executed using the error correction code, is
embedded in the first encoded content.

3 We refer to Appellant’s Specification (“Spec.”) and Appeal Brief (“Br.”)
filed October 15, 2007. We also refer to the Examiner’s Answer (“Ans.”)
mailed January 2, 2008.
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References
The Examiner relies on the following references as evidence of
unpatentability:
Ehrmann-Patin US 2002/0124174 A1 Sep. 5, 2002
(filed Dec. 31, 2001)

Iwamura US 6,807,285 B1 Oct. 19, 2004
(filed Jan. 29, 1999)

Rejections on Appeal
The Examiner rejects claims 1-8, 11, 12, and 21 under 35 U.S.C.
§ 102(e) as being anticipated by Iwamura.4
The Examiner rejects claims 9, 10, 13-20, and 22-24 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Iwamura and
Ehrmann-Patin.5

4 The Examiner’s statement of the rejection (Ans. 3; Fin. Rej. 3) incorrectly
lists claims 1-8 and 11-24 as rejected under 35 U.S.C. § 102(e) as being
anticipated by Iwamura. The discussion of the rejection, however, only
discusses claims 1-8, 11, 12, and 21. Appellant correctly describes the
grounds of rejection (Br. 2) and does not contest the erroneous statement of
rejection. We, therefore, find this to be harmless error, and correct the
statement of rejection for clarity.
5 The Examiner’s statement of the rejection (Ans. 8; Fin. Rej. 7) incorrectly
lists claims 9 and 10 as rejected under 35 U.S.C. § 103(a) as being
unpatentable over Iwamura and Ehrmann-Patin. The discussion of the
rejection, however, discusses claims 9, 10, 13-20, and 22-24. Appellant
correctly describes the grounds of rejection (Br. 2) and does not contest the
erroneous statement of rejection. We, therefore, find this to be harmless
error, and correct the statement of rejection for clarity.

Appeal 2009-005805
Application 10/128,234

4
ISSUES
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
1. Does the Examiner err in finding that Iwamura discloses
“generating first encoded content by attaching an error correction code to
original content; and generating watermark-embedded encoded content by
executing an embedding operation in which watermark data . . . is embedded
in the first encoded content” as recited in Appellant’s claim 1?
2. Does the Examiner err in finding that the combination of
Iwamura and Ehrmann-Patin would have collectively taught or suggested
“calculating the exclusive-OR between the first encoded content . . . and
watermark data . . . ; and adopting a combination of a code sequence, which
has been obtained by calculation of the exclusive-OR, and the first encoded
content as watermark-embedded encoded content” as recited in Appellant’s
claim 9?

FINDINGS OF FACT (FF)
We adopt the Examiner’s findings in the Answer and Final Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. We also add the following factual
findings:
Appellant’s Specification
1. Appellant describes “content” as including “programs, text
data, still-image data, moving-image data, music (sound) data, data obtained
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by compressing this data, and various information represented by
combinations of this data (multimedia data).” (Spec. 3:26-4:2.)
Iwamura Reference
2. Iwamura describes a system and apparatus “having a digital
watermark embedding function” (col. 5, ll. 1-2) that embeds error-correction
code (ECC) data and watermark data into original (content) data. Iwamura
describes a “digital watermark embedding circuit 204 to which an output
(parity data D3) of the error correction encoding circuit 203, confidential
key information ks, and an output (original image data G and embedding
formation D1 are supplied.” (Col. 5, ll. 23-27.) Iwamura further describes
that “the embedding apparatus 200 can generate the digital watermark image
data G’ (G+D1+D3) embedded with the embedding information D1 and
confidential information D3.” (Col. 7, ll. 26-29.) See Fig. 2.

ANALYSIS
Appellant argues independent claims 1, 6, 11, 12, and 21 as a group
based on representative claim 1. (Br. 14-18.) Appellant also argues
independent claims 9-11, 13, 15, 16, 18, 19, and 22 as a group based on
representative claim 9. (Br. 20-21.)
Appellant presents nominal arguments with respect to dependent
claims 2-5, 7, and 8 (Br. 18-19); and dependent claims 14, 17, 20, 23, and 24
(Br. 22). Appellant, however, merely restates the respective claim
limitations, and asserts that “the feature is not taught or suggested by the
cited references.” (Br. 18-19, 22.) “A statement which merely points out
what a claim recites will not be considered an argument for separate
patentability of the claim.” See 37 C.F.R. § 41.37(c)(l)(vii); 37 C.F.R.
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§ 41.67(c)(l)(vii). Therefore, we select independent claim 1 as
representative of Appellant’s arguments and groupings with respect to the
Examiner’s anticipation rejection, and we select independent claim 9 as
representative of Appellant’s arguments and groupings with respect to the
Examiner’s obviousness rejection. 37 C.F.R. § 41.37(c)(1)(vii). See In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
We have considered only those arguments that Appellant has actually
raised in the Brief. Arguments that Appellant could have made but chose
not to make in the Brief have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of anticipation in the
Examiner’s Answer with respect to representative claim 1. (Ans. 4, 16-18.)
The Examiner also sets forth a detailed explanation of a reasoned conclusion
of obviousness in the Examiner’s Answer with respect to representative
claim 9. (Ans. 8-9, 19-20.) Therefore, we look to the Appellant’s Brief to
show error in the proffered reasoned conclusions. See Kahn, 441 F.3d at
985-86.
Issue 1: The Examiner’s Rejection of Claim 1
under 35 U.S.C. § 102(e)
The Examiner rejects Appellant’s independent claim 1 as being
anticipated by Iwamura (Ans. 4), and provides a detailed explanation why
Appellant’s arguments fail to overcome the Examiner’s anticipation
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rejection (Ans. 16-18). Specifically, the Examiner finds that Iwamura
discloses “attaching an error correction code to original content” (Ans. 4
(citing Iwamura – col. 5, ll. 20-27)), and “embedding . . . watermark data . . .
in the first encoded content” (Ans. 4 (citing Iwamura – col. 5, ll. 15-27; col.
6, ll. 50-65)). The Examiner further finds that:
The second embedding stage of Iwamura corresponds to the
operations recited in the claim 1 of the appellants’ [sic] instant
application. Iwamura discloses that the data D2 (the output of
the first stage of embedding process) which includes the
original image (i.e., original content) is supplied to the error
correction encoding circuit 203. This operation corresponds to
the recited attaching an error correction code to original
content. Afterward the output of the error correction encoding
unit (Data D3 that corresponds to the recited-first encoded
content) is supplied to a digital watermark embedding circuit
(unit 204) to produce the digital watermark image G' (see also
col. 5, lines 21-27). This operation corresponds to the recited
embedding operation in which watermark data is embedded in
the first encoded data.
(Ans. 17.)
Appellant contends that Iwamura does not disclose attaching ECC
data to original content because: (1) “[t]he parity data D3 is not used to
generate first encoded content by attaching an error correction code to
original content, as recited in claim 1” (Br. 14); (2) “Iwamura discloses that
the embedded information (D) is embedded in the original image prior to the
error correction information . . . . [and] [t]hus, Iwamura does not teach or
suggest . . . [that] watermark data is embedded in the first encoded content”
(Br. 15); and thus “the alleged error encoding of Iwamura . . . is not applied
to an original image (original content) itself” (Br. 18 (underline omitted)).
Appellant further contends that “Iwamura discloses an [embedding]
operation which is distinctly different from the present invention.” (Br. 15.)
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Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 1. We agree with the Examiner
that Iwamura discloses the disputed features. We begin our analysis by
construing Appellant’s disputed claim limitations. We give claim
terminology the “broadest reasonable interpretation consistent with the
[S]pecification” in accordance with our mandate that “claim language should
be read in light of the [S]pecification as it would be interpreted by one of
ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004) (citations omitted).
In view of Appellant’s disclosures (FF 1), we find that Appellant’s
recited “content,” “original content,” “error correction code,” and
“watermark data” constitute non-functional descriptive material. The
recitation of “original content” (and content generally), as well as “error
correction code” and “watermark data” correspond to labels or names for
data. These recitations merely recite what the information or data
represents. How data may be named does not functionally change the
underlying method (or apparatus) utilizing the data. The acts of attaching,
embedding, and generating data are the same regardless of how the data may
be named. Merely labelling data as original content, an error correction
code, or watermark data, as opposed to some other unique identifier, does
not further limit the claimed invention either functionally or structurally.
The informational content of the data thus represents non-functional
descriptive material entitled to no weight in the patentability analysis. See
Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d,
No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36) (“wellness-related” data in
databases and communicated on distributed network did not functionally
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change either the data storage system or the communication system used in
the claimed method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008)
(precedential) (discussing non-functional descriptive material). Thus, we
broadly but reasonably construe Appellant’s disputed claim limitation to
simply mean a method comprising generating first encoded data by attaching
data (an error correction code) to original data (content), and generating
second encoded data (watermark-embedded encoded content) by embedding
data (watermark data) in the first encoded data.
As explained by the Examiner, and detailed in the Findings of Fact
section supra, Iwamura describes attaching or embedding ECC data and
watermark data to original data to produce watermark embedded data. (FF
2.) Even if we were to attribute some weight to Appellant’s recitation of
“original content,” arguendo, we agree with the Examiner that Iwamura
discloses the disputed feature. Appellant does not attribute any specialized
meaning to “content” or “original content.” Thus attaching data to some
portion of the original data (e.g., an image) satisfies the claim limitation.
Further, Appellant’s claim does not preclude attaching or embedding data in
addition to the watermark and ECC data to the original content. Therefore,
we find that Iwamura, as explained by the Examiner, explicitly discloses
attaching ECC data to data derived from an original image, and embedding
watermark data therein – see Ans. 17 (FF 2).
We find Appellant’s contrary arguments unpersuasive because, as
explained supra, the arguments are not commensurate with the scope of
Appellant’s claim. For the reasons set forth above, Appellant does not
provide any persuasive evidence or argument that Iwamura fails to disclose,
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teach, and/or suggest the disputed features. Further, Appellant failed to file
a Reply Brief to rebut the findings and responsive arguments made by the
Examiner in the Answer. Thus, based on a broad but reasonable
interpretation of Appellant’s disputed claim limitations in light of
Appellant’s Specification, we find that Iwamura discloses the disputed
limitations of “attaching an error correction code to original content,” and
embedding “watermark data . . . in the first encoded content” as recited in
Appellant’s claim 1.
Appellant does not separately argue claims 2-8, 11, 12, and 21
(supra), and these claims fall with representative claim 1. It follows that
Appellant does not persuade us of error in the Examiner’s anticipation
rejection of claims 1-8, 11, 12, and 21, and we affirm the Examiner’s
rejection of these claims.
Issue 2: The Examiner’s Rejection of Claim 9
under 35 U.S.C. § 103(a)
The Examiner rejects Appellant’s independent claim 9 as being
unpatentable over the combination of Iwamura and Ehrmann-Patin (Ans. 8-
9), and maintains that the obviousness rejection is proper (Ans. 19-20).
Specifically, the Examiner finds that Iwamura describes each of the recited
features of Appellant’s claim 9 claim, except: “Iwamura . . . does not
expressly disclose the use of exclusive OR (XOR) for [the] embedding
process to generate a watermark-embedded encoded content.” (Ans. 8.)
The Examiner relies on Ehrmann-Patin for the teaching of XOR logic (Ans.
8-9 (citing Ehrmann-Patin – ¶¶ [0130]-[0139])) – “Ehrmann-Patin further
discloses the use of [a] XOR operation between the blocks of a content and
the bits of watermark data for embedding watermark data into the original
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content to produce a watermark-embedded content” (Ans. 8-9). The
Examiner further finds “Ehrmann-Patin teaches calculation of exclusive OR
between the source data and the watermark data in both embedding and
extraction operations of watermark data.” (Ans. 20 (citing Ehrmann-Patin –
¶¶ [0132], [0137], [0138]).) The Examiner also provides a rationale for
combining Iwamura and Ehrmann-Patin – because utilizing the XOR
function “would make possible to calculate a percentage of extracted values
which are erroneous” (Ans. 9).
Appellant contends that one of skill in the art would not be motivated
to make the proffered combination of Iwamura and Ehrmann-Patin (Br. 20),
and that the combination of Iwamura and Ehrmann-Patin would not teach
the recited XOR operation because: (1) combining Iwamura with Ehrmann-
Patin would require reversing the embedding process of Iwamura (Br. 20-
21); and (2) Ehrmann-Patin only “uses the XOR operation for purposes of
extracting watermark information” (Br. 21).
Based on the record before us, we do not find error in the Examiner’s
obviousness rejection of claim 9. We agree with the Examiner that Iwamura
and Ehrmann-Patin could be properly combined, and that the combination
would have taught or suggested the disputed features.
Appellant’s claim 9, in relevant part, recites “calculating the
exclusive-OR between the first encoded content . . . and watermark data”
and “adopting a combination of a code sequence, which has been obtained
by calculation of the exclusive-OR, and the first encoded content as
watermark-embedded encoded content.” We broadly but reasonably
construe these limitations to mean, calculating an XOR value of two sets of
data (first encoded content and watermark data) and combining the XOR
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value with the first encoded content. We find, supra, that Iwamura teaches
generating first encoded content by attaching an ECC to original content
data, and that Iwamura further teaches watermark-embedded encoded
content. Ehrmann-Patin, as explained by the Examiner, teaches a digital
watermarking method (Ans. 8; Ehrmann-Patin – ¶¶ [0118]-[0121]),
including an XOR operation between the source data (original content) and
watermark data (Ans. 8-9; Ehrmann-Patin – ¶¶ [0130]-[0138]). Thus, we
find that the combination of Iwamura and Ehrmann-Patin would have
collectively taught or suggested to one skilled in the art the disputed
limitations as recited in Appellant’s claim 9.
Appellant contends that one skilled in the art would not be motivated
to combine Iwamura and Ehrmann-Patin. We note, contrary to Appellant’s
assertions, that both Iwamura and Ehrmann-Patin describe digital
watermarking. We, therefore, find Iwamura to be in the same field of
endeavor as Ehrmann-Patin. Thus, we conclude, as did the Examiner, that it
would have been obvious to an ordinarily skilled artisan at the time of
Appellant’s invention to combine Iwamura and Ehrmann-Patin because
combining Ehrmann-Patin’s teaching of XOR operations for digital
watermarking with Iwamura’s teaching of digital watermarking techniques
utilizing ECC data and key information is tantamount to the predictable use
of prior art elements and techniques according to their established functions
– an obvious improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007). We also find that the Examiner articulates a rationale –
determining error percentages – for combining Iwamura and Ehrmann-Patin
(see Ans. 9) based on “some rational underpinning to support the legal
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conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d
at 988).
We find Appellant’s contrary arguments unpersuasive for several
reasons. Initially, Appellant attempts to attack the references individually,
instead of addressing the combination of references. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (noting that one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references (citing In re Keller, 642 F.2d 413, 425
(CCPA 1981))).
Secondly, we understand Appellant to assert that Iwamura would not
function properly if combined with and Ehrmann-Patin because the
embedding process of Iwamura would be reversed. Appellant
mischaracterizes Iwamura and the combination of Iwamura and Ehrmann-
Patin, in that Iwamura teaches attaching ECC data to source (original
content) data (supra). Additionally, Appellant provides no persuasive
evidence on this administrative record establishing that combining the
references in a functional way would have been beyond the level of skilled
artisans. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”). Moreover,
Appellant’s arguments do not take into account what the collective teachings
of the prior art would have suggested to one of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference; nor is it that the claimed
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invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” (citations omitted)).
Appellant’s argument that the reference combination would not properly
function is nothing more than mere conjecture, and does not amount to
persuasive evidence.
Consequently, Appellant does not provide any persuasive evidence or
argument that the combination of Iwamura and Ehrmann-Patin fails to teach
or suggest the disputed features as proposed by the Examiner. Additionally,
Appellant failed to file a Reply Brief to rebut the findings and responsive
arguments made by the Examiner in the Answer. Thus, based on a broad but
reasonable interpretation of Appellant’s disputed claim limitations in light of
Appellant’s Specification, we find that Iwamura and Ehrmann-Patin would
have collectively taught or suggested, to one of skill in the art, the disputed
limitations of “calculating the exclusive-OR between the first encoded
content . . . and watermark data” and “adopting a combination of a code
sequence, which has been obtained by calculation of the exclusive-OR, and
the first encoded content as watermark-embedded encoded content” as
recited in Appellant’s claim 9. We also find Iwamura and Ehrmann-Patin
would have been properly combinable.
Appellant does not separately argue claims 10, 13-20, and 22-24
(supra), and these claims fall with representative claim 9. It follows that
Appellant does not persuade us of error in the Examiner’s obviousness
rejection of claims 9, 10, 13-20, and 22-24, and we affirm the Examiner’s
rejection of these claims.

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CONCLUSIONS
Appellant has not shown that the Examiner erred in rejecting claims
1-8, 11, 12, and 21 under 35 U.S.C. § 102(e).
Appellant has not shown that the Examiner erred in rejecting claims 9,
10, 13-20, and 22-24 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1-8, 11, 12, and 21
under 35 U.S.C. § 102(e).
We affirm the Examiner’s rejection of claims 9, 10, 13-20, and 22-24
under 35 U.S.C. § 103(a).

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)(v).

AFFIRMED

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