Ex Parte ShihDownload PDFBoard of Patent Appeals and InterferencesAug 15, 201110131171 (B.P.A.I. Aug. 15, 2011) Copy Citation 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 Copy with citationCopy as parenthetical citation