Ex Parte Tam et al

Board of Patent Appeals and Interferences

Jun 11, 2012

09965831 (B.P.A.I. Jun. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAR YAN TAM, KAI FUNG TSANG,
SAI HO KWOK, and SHING CHI CHEUNG
____________

Appeal 2009-014477
Application 09/965,831
Technology Center 2400
____________

Before JOHN A. JEFFERY, BRUCE R. WINSOR,
and JOHN A. EVANS, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 and 3-36, which constitute all the claims pending in this
application. Claim 2 is cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
“[Appellants’] invention relates to methods for embedding data such
as copyright data in digital audio data. The invention further relates to
methods for the provision of advertising material in digital audio data, and to
methods for providing trial versions of digital audio data prior to purchase.”
(Spec. 1:4-7). Claims 18 and 29, which are illustrative of the invention, read
as follows:
18. A watermarked audio signal stored in a memory or
a computer readable medium comprising at least two sections,
each section having audio content and corresponding to a
respective time period of said audio signal, said sections
including a first section which is distorted in a manner
recoverable by means of a key obtainable from audio content in
at least one other section.
29. A method of embedding watermarking data in a
media content signal, comprising the steps of:
(a) incorporating watermarking information into said
media content signal using a robust watermarking technique to
form a watermarked media content signal,
(b) generating distortion in at least a part of said
watermarked media content signal in a manner recoverable by a
key, and
(c) embedding said key in at least a part of said
watermarked media content signal using a fragile data hiding
technique, whereby if said watermarking information is
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corrupted, altered or removed said embedded key is rendered
unobtainable from said media content signal.
The Examiner relies on the following prior art in rejecting the claims:
Downs US 6,226,618 B1 May 1, 2001
Katayama US 2002/0027994 A1 Mar. 7, 2002
(filed Aug. 17, 2001)
Rhoads US 5,636,292 June 3, 1997
Tian US 6,714,683 B1 Mar. 30, 2004
(filed Aug. 24, 2000)
BRUCE SCHNEIER, APPLIED CRYPTOGRAPHY 351-53, 355 (2d ed.
1996).
Claims 18, 19, 21, and 25-28 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Katayama. (Ans. 3).
Claims 1, 5, 8-13 and 15-28 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Downs in view of Katayama. (Ans. 5).
Claims 6, 7, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Downs in view of Katayama and Schneier. (Ans. 10).
Claims 3, 4, 29, 30, and 33-36 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Downs in view of Katayama and Tian. (Ans. 11).
Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Downs in view of Katayama, Tian, and Rhoads. (Ans.
13).
Rather than repeat the arguments here, we make reference to the Brief
(Br. filed Dec. 9, 2008) and the Answer (Ans. mailed Apr. 2, 2009, as
amended Apr. 21, 2009) for the respective positions of Appellants and the
Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
Brief have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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ISSUES
Based on Appellants’ arguments we will decide the appeal by
reference to claims 18, 29, and 31. The pivotal issues presented by
Appellants’ arguments are as follows:
In rejecting claim 18 as unpatentable under 35 U.S.C. § 103(a), did
the Examiner err in finding that Katayama discloses, teaches, or suggests
“[an] . . . audio signal . . . comprising at least two sections, each section
having audio content and corresponding to a respective time period of said
audio signal” (emphases added), as recited in claim 18? 1
In rejecting claim 29 as unpatentable under 35 U.S.C. § 103(a), did
the Examiner err in finding that the combination of Downs, Katayama, and
Tian teaches or suggests:
incorporating watermarking information into [a] media
content signal using a robust watermarking technique to form a
watermarked media content signal,
. . .
embedding [a] key in at least a part of said watermarked
media content signal using a fragile data hiding technique,
whereby if said watermarking information is corrupted, altered
or removed said embedded key is rendered unobtainable from
said media content signal,
as recited in claim 29?
In rejecting claim 31 as unpatentable under 35 U.S.C. § 103(a), did
the Examiner err in finding that the combination of Downs, Katayama, Tian,
and Rhoads teaches or suggests a “media content signal [that] has at least

1 Appellants’ arguments regarding claim 18 present additional issues. We
are persuaded of error regarding the issue discussed herein, which is
dispositive of the appeal as to claim 18. Therefore, we do not reach the
additional issues.
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two sections, said watermarking information is embedded across said at least
two sections and said key is embedded across said at least two sections,” as
recited in claim 31?

ANALYSIS
Claim 18
The Examiner finds that Katayama discloses or teaches (see
Katayama ¶¶ [0078], [0081], [0082], [0084]; Fig. 4b) “[an] . . . audio signal .
. . comprising at least two sections, each section having audio content and
corresponding to a respective time period of said audio signal” (Ans. 6; see
also Ans. 3). The Examiner explains as follows:
Katayama discloses an audio distribution system wherein an
audio signal separated by a band separation filter into a plurality
of frequency bands ([0078] & Figure 4b). The high frequency
section is encrypted in a manner that is decryptable with a key
that is embedded in the basic section of the signal ([0081] &
[0082] & [0086]). Each audio section of Katayama can be
considered to include the time period from beginning to end.
. . . . Using a broad but reasonable interpretation the
entire audio signal can be considered “a respective time
period”.
(Ans. 15; see also Ans. 14).
Appellants contend2 as follows:
Katayama fails to disclose that each section corresponds to a
respective time period of the audio signal. On the contrary, in

2 Appellants’ arguments are directed to the rejection of claim 18 as
anticipated by Katayama (see Br. 13-14) but have been adopted as a portion
of Appellants’ arguments directed to the rejection of claim 18 as obvious
over Downs and Katayama (Br. 21). We consider the obviousness rejection
first -- if claim 18 is not obvious over Downs and Katayama, it is axiomatic
that it is not anticipated by Katayama.
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Katayama, as acknowledged by the Examiner, each audio signal
is separated by a band separation filter into a plurality of
frequency bands (see paragraph 78, Fig. 4B of Katayama). . . .
. . . . Katayama fails to disclose or suggest sectioning of
a signal into two or more sections corresponding to respective
time periods of the signal . . . . Furthermore, none of the other
references cited by the Examiner discloses sectioning of a
signal into two or more sections corresponding to respective
time periods of the signal.
(Br. 13-14; see Br. 21).
We agree with Appellants. Although the Examiner is correct that the
USPTO gives a claim its broadest reasonable interpretation (Ans. 15), that
interpretation must be consistent with the ordinary meaning of the terms
used as they would be understood by one of ordinary skill in the art, see In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). A pertinent definition of
“respective” is “PARTICULAR, SEPARATE,” MERRIAM-WEBSTER’S
COLLEGIATE DICTIONARY 997 (10th ed. 1999). We conclude that the phrase
“each section . . . corresponding to a respective time period” encompasses
sections that correspond to particular or separate time periods and does not
encompass sections that only occupy identical time periods. We find that
this claim construction is consistent with the ordinary meaning of the terms
used and with Appellants’ disclosure (see, e.g., Spec. 8:2-11), see In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989). Furthermore, we note that the claim
construction adopted by the Examiner would, in effect, read “respective” out
of the claim, see In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Accordingly, we find that the Examiner erred in construing claim 18 and in
finding that Katayama discloses or teaches “[an] . . . audio signal . . .
comprising at least two sections, each section having audio content and
corresponding to a respective time period of said audio signal.” Further, as
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pointed out by Appellants (Br. 14), the Examiner has not identified any
persuasive passage in Downs, Tian, Rhoads, or Schneier that cures the
deficiency in the Examiner’s findings regarding the disclosure or teaching of
Katayama.
Therefore, we will not sustain the rejection of independent claim 18
under 35 U.S.C. § 103(a). The rejections of claims 18, 19, 21, and 25-28
under 35 U.S.C. § 102(e) and claims 1, 3-17, 19-28, 35, and 36 under
35 U.S.C. § 103(a) all rely on the same findings regarding the disclosure and
teaching of Katayama which we find to be erroneous. Accordingly, we will
not sustain the rejections of claims 18, 19, 21, and 25-28 under 35 U.S.C.
§ 102(e) and claims 1, 3-28, 35, and 36 under 35 U.S.C. § 103(a).
Claim 29
We have considered Appellants’ arguments (Br. 25-28) regarding
claim 29 in light of the Examiner’s findings (Ans. 11-12) and explanations
(Ans. 16-18). We agree with the Examiner’s findings and explanations as
they relate to claim 29 and adopt them as our own. We highlight and
address certain findings and arguments below for emphasis.
Appellants contend (Br. 25) that Downs does not disclose “embedding
[a] key in . . . [a] watermarked media content signal.” This contention is
unpersuasive because it is not commensurate with the rejection made by the
Examiner. As explained by the Examiner (Ans. 17-18), the Examiner relies
on Katayama, not Downs, for teaching this limitation (see Ans. 11-12).
“[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.” In
re Keller, 642 F.2d 413, 426 (CCPA 1981).
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Appellants further contend that “a person skilled in the art would have
no reason to combine Downs and Katayama” (Br. 26) because Downs
already allows a user to preview a media file and does not need to be
modified to add that functionality from Katayama (id.). This argument is
unpersuasive because, as explained by the Examiner (Ans. 16-17), “the
modification as proposed would eliminate the need to store an entirely
separate section of ‘sample’ audio clips” (Ans. 16). Appellants have not
persuasively refuted the Examiner’s rationale, which we find to be an
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appellants contend that “[t]here is no disclosure in Tian that the
watermark might contain a ‘key’ used for recovering a distorted section of
the media content.” (Br. 27). This argument is unpersuasive because the
Examiner has relied (Ans. 11-12) on the combination of Downs and
Katayama, not Tian, for the disclosure of a key for recovering distorted
sections of media content. See Keller, 642 F.2d at 426.
Appellants contend as follows:
[I]f a person skilled in the art did decide to combine Tian and
Downs, the only likely result is that they would choose to
embed the watermark using a robust or semi-fragile method. . . .
Appellants’ claims provide a signal that has both a robust
watermark and a key embedded using a “fragile data hiding
technique.” . . . It means that if the signal is disrupted in a way
sufficient to corrupt, alter or remove the robust watermark, the
fragile embedded key will certainly be destroyed, making it
impossible to play back the signal in undistorted form.
The information disclosed or suggested in Tian is simply
that robust and fragile watermarking techniques exist. . . .
[N]one of the references suggests, teaches or even hints at the
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synergistic effect of having both a robust watermark and a
fragily embedded key.
(Br. 27).
However, we note that the passage of Tian cited by the Examiner
(Ans. 12; see Tian col. 5, ll. 7-11) describes watermarks designed to
withstand certain forms of transformations (i.e., “robust”) and, in some
circumstances, may be designed to degrade in predictable ways in response
to certain types of transformations (i.e., “fragile”). We find that this would
suggest to a person of ordinary skill in the art utilizing both robust and
fragile techniques in protecting media content. For further emphasis we note
that Tian further explains “the watermark may . . . have two or more
components, some of which are fragile or semi-fragile and some that are
not.” (Tian col. 6, ll. 36-39).
Appellants have not persuaded us of error in the Examiner’s rejection
of claim 29. Therefore, we will sustain the rejection of claim 29 under 35
U.S.C. § 103(a). Appellants have argued the patentability of claims 30, 33,
and 34 relying on the arguments made for the patentability of claim 29. (Br.
28-29). Accordingly, we will sustain the rejections of claims 30, 33, and 34.
Claim 31
Appellants contend that “[t]he Examiner erred in rejecting claims 31
and 32 under 35 U.S.C. § 103(a) as unpatentable over Downs, Katayama,
Tian and Rhoads.” (Br. 30). Appellants rely on the arguments made for the
patentability of claim 29, from which claim 31 depends, as supporting the
patentability of claim 31. These arguments are unpersuasive for the reasons
set forth supra regarding claim 29.
Appellants contend that “Downs does not disclose embedding a key in
audio data as recited in claim 31, nor the embedding of a key across two
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sections of the audio data, with one of the sections being distorted.” (Br.
30). However, the Examiner has relied on Katayama and Rhoads, not
Downs, as teaching these limitations (see Ans. 13). Accordingly, this
contention is not commensurate with the grounds of rejection and is,
therefore, unpersuasive. See Keller, 642 F.2d at 426.
Appellants contend that “Rhoads fails to disclose or suggest
sectioning3 of a watermarked signal or generating distortion as recited in
Appellants’ claims.” (Br. 31). However, the Examiner has relied on
Katayama, Downs, and Tian as teaching the identified limitations, not
Rhoads (see generally Ans. 11-13). Again, the contention is not
commensurate with the grounds of rejection and is unpersuasive.
Appellants’ remaining remarks regarding the patentability of claim 31
paraphrase the recitations of the claim, comment on the claimed invention’s
alleged advantages, and make a general allegation of error, but do not
identify any specific error in the Examiner’s rejection of the claim. They
are, therefore, unpersuasive.
Appellants have not persuaded us of error in the rejection of claim 31
or of claim 32, which was argued together with claim 31. Accordingly, we
will sustain the rejection of claims 31 and 32.

ORDER
The decision of the Examiner to reject claims 29, 30, 33, and 34 under
35 U.S.C. § 103(a) as unpatentable over Downs in view of Katayama and
Tian is affirmed.

3 We note that the recitation of “sections” in claim 31 does not include the
limitations discussed herein with regard to claim 18.
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The decision of the Examiner to reject claims 31 and 32 under
35 U.S.C. § 103(a) as unpatentable over Downs in view of Katayama, Tian,
and Rhoads is affirmed.
The decision of the Examiner to reject claims 18, 19, 21, and 25-28
under 35 U.S.C. § 102(e) as anticipated by Katayama is reversed.
The decision of the Examiner to reject claims 1, 5, 8-13 and 15-28
under 35 U.S.C. § 103(a) as unpatentable over Downs in view of Katayama
is reversed.
The decision of the Examiner to reject claims 6, 7, and 14 under
35 U.S.C. § 103(a) as unpatentable over Downs in view of Katayama and
Schneier is reversed.
The decision of the Examiner to reject claims 3, 4, 35, and 36 under
35 U.S.C. § 103(a) as unpatentable over Downs in view of Katayama and
Tian is reversed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED-IN-PART

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