Ex Parte Winograd et al

Patent Trial and Appeal Board

Apr 14, 2016

13080605 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/080,605 04/05/2011 Joseph M. Winograd
97075 7590 04/18/2016
Perkins Coie LLP - SDO General
PO Box 1247
Seattle, WA 98111-1247
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
077058-8036.US02 2115
EXAMINER
KORSAK, OLEG
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
04/18/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH M. WINOGRAD, RADE PETROVIC, and JIAN ZHAO
Appeal2014-003205
Application 13/080,605
Technology Center 2400
Before ROBERT E. NAPPI, CARLA M. KRIVAK, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-15, 17-20, 22-23, and 25--42. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to content screening based on watermarks
embedded in the content. See Title and Abstract of Appellants'
Specification.
Claim 1 is illustrative of the invention and is reproduced below.
1. A method, comprising:
receiving a device authentication certificate at a first
device from a second device;
Appeal2014-003205
Application 13/080,605
verifying an authenticity of the certificate;
ascertaining capabilities of the second device; and
based on at least the ascertained capabilities of the
second device, determining by the first device an operational
configuration among one or more of the first device, the second
device, a trusted delegated device and a trusted slave device for
conducting watermark extraction and content screening
operations associated with a content, the operational
configuration providing an allocation of resources needed to
perform the watermark extraction and content screening
operations and for fulfillment of a content use policy associated
with an extracted watermark payload.
REJECTIONS AT ISSUE 1
The Examiner provisionally rejected claims 1-15, 17-20, 22-23, and
25--42 based upon non-statutory obviousness-type double patenting over
claims of co-pending US Applications 13/080,593 and 13/080,598.2 Final
Action 7-8.
The Examiner rejected claims 1-15, 17-20, 22-23, and 25--42 under
35 U.S.C. § 102(b) as anticipated by Taistra et aL (US 2006/0075424 Al,
published Apr. 6, 2006). Final Action 3-7.3
1 A rejection of claims 21 and 43 under 35 U.S.C. § 112 second paragraph
(Final Action 2-3) was withdrawn upon cancellation of these claims (Ans.
2).
2 Patent Application 13/080,593 issued as US Patent No. 8,838,977, and
Patent Application 13/080,598 issued as US Patent No. 8,838,978 on
September 16, 2014. Thus, the double patenting rejection is no longer
provisional.
3 Throughout this opinion we refer to the Appeal Brief dated Oct. 7, 2013,
the Reply Brief dated Jan. 14, 2014, the Final Action mailed May 29, 2013,
and the Examiner's Answer mailed Nov. 26, 2013.
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Application 13/080,605
ISSUES
Appellants' arguments, in the Briefs, do not address the Examiner's
rejection of claims 1-15, 17-20, 22-23, and 25--42 based upon obviousness-
type double patenting and thus, have not identified an error in the
Examiner's rejection for us to review. Accordingly, we proforma sustain
the rejection of claims 1-15, 17-20, 22-23, and 25--42 based upon
obviousness-type double patenting.
Anticipation
With respect to the Examiner's anticipation rejection of claims 1-15,
17-20, 22-23, and 25--42, Appellants present several arguments on pages
15-23 of the Appeal Brief and pages 15-26 of the Reply Brief. The issue
raised by these arguments is: Did the Examiner err in finding Talstra teaches
determining an operational configuration providing an allocation of
resources needed to perform watermark extraction and content screening
operations, as required by each of the independent claims 1, 22, and 23?
With respect to claims 2-15, 17-20, and 25--42, Appellants'
arguments provide us with the same issue as the independent claims.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to Appellants'
arguments. Appellants' arguments have persuaded us of error in the
Examiner's anticipation rejection of claims 1-15, 17-20, 22-23, and 25--42.
The Examiner finds determining an operation configuration that
provides allocation of resources needed to perform watermark extraction and
content screening, as required by claims 1, 22, and 23, is taught by Talstra's
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Appeal2014-003205
Application 13/080,605
processing of content via watermark-and license-based rules. Ans. 3, 5, 7
(citing Talstra i-fi-f 19, 26, 51).
Appellants argue although Talstra teaches watermark extraction,
Talstra "describes a static system, without any teachings or suggestions
related to determining an operational configuration ... [for] allocation of
resources for performing the tasks of watermark extraction and content
screening." App. Br. 21-22. We agree with Appellants. The portion of
Talstra relied upon by the Examiner teaches various devices performing
watermark extraction and content screening. The Examiner has not shown
however, nor have we found, that Talstra teaches an allocation of resources
needed to perform watermark extraction and content screening.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1, 22, and 23, and dependent claims 2-15, 17-20, and
25--42 similarly rejected.
DECISION
We sustain the Examiner's rejection of claims 1-15, 17-20, 22-23,
and 25--42 under obviousness-type double patenting.
We do not sustain the Examiner's anticipation rejection of claims 1-
15, 17-20, 22-23, and 25--42.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1-15, 17-20, 22-23, and 25--42. See 37 C.F.R. § 41.50(a)(l).
AFFIRMED
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