Ex Parte Shih

Board of Patent Appeals and Interferences

Aug 15, 2011

10131171 (B.P.A.I. Aug. 15, 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.
10/131,171 04/23/2002 Yin Lung Shih STL6942 7739
26861 7590 08/15/2011
DAVID K. LUCENTE; SEAGATE TECHNOLOGY LLC
INTELLECTUAL PROPERTY DEPT. - COL2LGL
389 DISC DRIVE
LONGMONT, CO 80503
EXAMINER
SHAW, YIN CHEN
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
08/15/2011 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 YIN LUNG SHIH

____________

Appeal 2009-011406
Application 10/131,171
Technology Center 2400
____________

Before ALLEN R. MACDONALD, KRISTEN L. DROESCH and
BRUCE R. WINSOR, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-011406
Application 10/131,171

2
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1-40, 78, 90 and 100
1
. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
BACKGROUND
Appellant‟s invention is related to a storage device that watermarks
content and provides the watermarked content to a requester. Spec. p. 2,
ll. 8-12.
Claim 1 is illustrative and reproduced below:
In a storage device including a storage media that stores
content, a method for providing a uniquely identifiable
watermarked content, comprising:
receiving a content request for the content from a
requester;
watermarking the content to generate watermarked
content that includes the content in response to the request,
wherein the watermarked content is uniquely identifiable to the
storage device as a result of the watermarking and the storage
device performs the watermarking automatically without a
watermark request from the requester; and
providing the watermarked content to the requester.

The Examiner relies on the following prior art:
Nakano 6,421,450 Jul. 16, 2002
Lee (“Lee „966”) 6,636,966 Oct. 21, 2003
Lee (“Lee”) 6,823,398 Nov. 23, 2004
Kobayashi 6,827,257 Dec. 07, 2004
Hatakeyama 6,873,975 Mar. 29, 2005

1
Claims 41-77, 79-89 and 91-99 have been indicated allowable. Ans. 3.

Appeal 2009-011406
Application 10/131,171

3
Claims 5, 16, 31, 78, 90 and 100 are rejected under 35 U.S.C. § 112,
2
nd
paragraph as indefinite.
Claims 1-5, 9-10, 12-16, 22-24, 26-31, 35-36 and 40 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Nakano and Lee.
Claims 6-8, 11, 17-19, 25, 32-34 and 37-38 are rejected under
35 U.S.C. § 103(a) as unpatentable over Nakano, Lee and Lee „966.
Claims 20-21 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nakano, Lee, Lee „966 and Hatakeyama.
Claim 39 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nakano, Lee and Kobayashi.
ISSUES
Did the Examiner incorrectly find that the watermark or the unique
identifying information “is hard to detect in the watermarked content”
limitation renders the claims indefinite?
Did the Examiner incorrectly find that Nakano or Nakano in view of
Lee describes a storage device that: 1) includes a storage media that stores
content; 2) receives a request for content from a requester; and 3) performs
watermarking?
FINDINGS OF FACT (“FF”)
Nakano
1. Nakano describes, referring to Figure 5 below (numbers from
figure 5 inserted) a first embodiment of an electronic watermark
system in which a processor 501 inputs a stream of original image
data D0 and produces the water-marked MPEG data stream D4 which

Appeal 2009-011406
Application 10/131,171

4
is stored onto a storage medium 504 by the data storage controller
502. Col. 4, ll. 57-61.
Figure 5 is reproduced below:

Figure 5 depicts a first embodiment of a watermark system.
2. In this manner, the authorized medium 504 storing MPEG data
stream D4 into which the selected watermark data DWM is embedded is
manufactured. Col. 4, ll. 63-65.
3. If the processor 501 selects another watermark data, an
authorized medium 504 storing the same MPEG data stream D4 into
which a different watermark data is embedded is easily manufactured.
Col. 4, l. 66-col. 5, l. 2.
4. Nakano describes, referring to Figure 6 below (numbers from
Figure 6 inserted), a second embodiment of the electronic watermark
system in which a processor 601 inputs a stream of original image
data D0 and produces the water-marked MPEG data stream D4 which
is transmitted to a client 604 by the data communication controller
602. Col. 5, ll. 52-55.

Appeal 2009-011406
Application 10/131,171

5
Figure 6 is reproduced below:

Figure 6 depicts a second embodiment of a watermark system.
5. The watermarked MPEG data is distributed depending on a data
transmission request received from the client 604. Col. 5, ll. 52-57.
6. In this manner, MPEG data stream D4 into which the selected
watermark data DWM is embedded is transmitted to an authorized
client 604. Col. 5, ll. 60-62.
7. If the data transmission request is received from another client,
the processor 601 selects another watermark data which is embedded
into the MPEG data which is transmitted to the new client. Col. 5, ll.
60-67.
ANALYSIS
We have reviewed the Examiner‟s rejection in light Appellant‟s
arguments in the Brief that the Examiner has erred. We concur with the
Appellant‟s conclusion that the Examiner erred.

Appeal 2009-011406
Application 10/131,171

6
112, 2
nd
paragraph rejection
Dependent claims 5, 16, 31, 78, 90 and 100 require the unique
identifying information or watermark to be hard to detect in the watermarked
content. The Examiner finds that the claims are indefinite for failing to
further specify the relative degree of how hard the information (or
watermark) is to be detected. Ans. 4.
Appellant directs us to its Specification to illustrate that the watermark
is embedded in the content by imposing slight proprietary variations on the
noise samples of an analog signal so that the noise samples appear as noise
to others but can be recognized by the content owner as the watermark. Br.
10-11 (citing Spec. p. 2, ll. 24-27; p. 6, ll. 23-30; p. 7, ll. 1-9, 11-18). The
definiteness of the claim language is determined based on “whether those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (1986) (citations omitted). We concur with Appellant
that in light of the Specification one with ordinary skill in the art would
understand that the watermark is difficult but not impossible to detect since
an end user it would find it difficult or impossible to detect the watermark
when viewing the content, but a cryptologist could detect the watermark by
running a sophisticated decryption algorithm. Br. 11.
For all these reasons, we do not sustain the rejection of claims 5, 16,
31, 78, 90 and 100 as indefinite.
Prior art rejections
Independent claim 1 recites: “[i]n a storage device including a storage
media that stores content, a method . . . comprising: receiving a content

Appeal 2009-011406
Application 10/131,171

7
request for the content from a requester; watermarking the content . . . and
the storage device performs the watermarking . . . .” Independent claims 12
and 28 recite similar limitations.
The Examiner finds that Nakano describes a watermarking system
that includes a processor 501, watermark data table 104, data storage
controller 502, and data transfer controller 503 and asserts that the
watermarking system is a storage system device because it produces a water-
marked MPEG data stream and stores it onto a storage medium 504 using
the data storage controller 502. Ans. 28 (citing col. 4, ll. 50-53, 57-61; Fig.
5). The Examiner further finds Nakano describes that the watermarking
system receives a content request from a requester because a data
transmission request is received from another client 604 (i.e., requester, host
computer). Ans. 5-6, 28 (citing col. 5, ll. 57-65; Fig. 6).
Appellant argues that Nakano alone or Nakano in view of Lee fails to
teach or suggest a storage device that performs the watermarking. Br. 17.
Appellant argues that Nakano instead describes a processor 501, 601 that
performs the watermarking, which is not a storage device. Br. 17-18.
Appellant further argues that since the Examiner characterized client 604
and processor 601 in Figure 6 as the requester and storage device
respectively, the authorized medium 504 in Figure 5 cannot be part of the
processor 601 or any other aspect of the watermark system in Figure 6. Br.
18.
We agree. Contrary to the Examiner‟s findings, Nakano does not
describe that the watermarking system of Figure 5, including processor 501
that produces a watermarked MPEG data stream and stores it onto a storage

Appeal 2009-011406
Application 10/131,171

8
medium 504, also receives a data transmission request from a client 604
(i.e., requester, host computer). Similarly, Nakano does not describe that the
watermarking system of Figure 6, including processor 601 that receives a
data transmission request from a client 604 (i.e., requester, host computer)
and transmits a water-marked MPEG data stream to the client 604, also
stores the watermarked MPEG data stream onto a storage medium 504.
Instead, Nakano describes two separate embodiments; one in which the
processor 501 sends watermarked data to a storage medium 504, and the
other in which a processor 601 transmits watermarked data to a client 604 in
response to a data transmission request from the client 604. FFs 1-7. As
applied by the Examiner, Lee does not remedy the deficiencies of Nakano.
For all these reasons, we do not sustain the rejection of claims 1-5, 9-
10, 12-16, 22-24, 26-31, 35-36 and 40 as obvious over Nakano and Lee.
Since claims 6-8, 11, 17-21, 25, 32-34 and 37-39 ultimately depend from
independent claims 1, 15 and 28, we do not sustain the rejections of 6-8, 11,
17-21, 25, 32-34 and 37-39 as obvious over the applied art for the same
reasons.

DECISION
We REVERSE the rejection of claims 5, 16, 31, 78, 90 and 100 under
35 U.S.C. § 112, 2
nd
paragraph as indefinite.
We REVERSE the rejection of claims 1-5, 9-10, 12-16, 22-24, 26-31,
35-36 and 40 under 35 U.S.C. § 103(a) as unpatentable over Nakano and
Lee.

Appeal 2009-011406
Application 10/131,171

9
We REVERSE the rejection of claims 6-8, 11, 17-19, 25, 32-34 and
37-38 under 35 U.S.C. § 103(a) as unpatentable over Nakano, Lee and Lee
„966.
We REVERSE the rejection of claims 20-21 under 35 U.S.C. § 103(a)
as unpatentable over Nakano, Lee, Lee „966 and Hatakeyama.
We REVERSE the rejection of claims 39 under 35 U.S.C. § 103(a) as
unpatentable over Nakano, Lee and Kobayashi.

REVERSED

msc