Ex Parte Ducharme

Patent Trial and Appeal BoardAug 16, 2016

11864946 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/864,946 0912912007 Paul Ducharme 93253 7590 08/18/2016 Garlick & Markison (VIXS) P.O. Box 160727 Austin, TX 78716-0727 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. VIXS120US 4342 EXAMINER SLOMS, NICHOLAS ART UNIT PAPER NUMBER 2476 NOTIFICATION DATE DELIVERY MODE 08/18/2016 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): MMurdock@texaspatents.com ghmptocor@texaspatents.com bpierotti@texaspatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL DUCHARME Appeal2015-002585 Application 11/864,946 Technology Center 2400 Before JOHN A. JEFFERY, ERIC S. FRAHM, and JOHN D. HAMANN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1-3, 5-10, 12-18, and 20-24. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. STATEMENT OF THE CASE Appellant's invention watermarks video signals based on recovered and original watermark data. In one aspect, the combination of recovered and original watermark data is re-watermarked. See generally Abstract; Spec. 1, 8. Claim 1 is illustrative: 1 . A watermarking module for use in a video encoding system that processes a video signal, the watermarking module comprising: a processing device that includes: Appeal2015-002585 Application 11/864,946 a watermark recovery module that generates recovered watermark data by extracting watermark data from the video signal; a watermark data module that generates original watermark data that includes non-watermark data that is based on the video signal, wherein the non-watermark data includes parental rating information received from a V-chip in response to the video signal; and a watermark generation module, coupled to the watermark data module and the watermark recovery module, that combines the recovered watermark data and the original watermark data and generates a watermarked video signal by re- watermarking to include the combination of the recovered watermark data and the original watermark data. RELATED APPEAL Although Appellant indicates an unawareness of any related appeals (App. Br. 2), 1 this appeal is nonetheless related to the appeal in Application No. 11/864,630 (Appeal No. 2015-002580) as the Examiner indicates. Ans. 2. No decision has yet been mailed in the related appeal. THE REJECTIONS The Examiner rejected claims 1-3, 5, 6, 8-10, 12, 16-18, and 20-22 under 35 U.S.C. Â§ 103(a) as unpatentable over Hollar (US 2006/0195696 1 Throughout this opinion, we refer to (1) the Final Rejection mailed August 28, 2014 ("Final Act."); (2) the Appeal Brief filed October 16, 2014 ("App. Br."); (3) the Examiner's Answer mailed November 13, 2014 ("Ans."); and (4) the Reply Brief (erroneously titled "Appeal Brief') filed December 3, 2014 ("Reply Br."). Although Appellant's briefs are not paginated, we nonetheless refer to their pages in the order that they appear in the record. 2 Appeal2015-002585 Application 11/864,946 Al; Aug. 31, 2006) and Levy (US 2001/0044899 Al; Nov. 22, 2001). Final Act. 3-8. The Examiner rejected claims 7, 13-15, and 24 under 35 U.S.C. Â§ 103(a) as unpatentable over Hollar, Levy, and Ducharme (US 2005/0182948 Al; Aug. 18, 2005). Final Act. 8-11. The Examiner rejected claim 23 under 35 U.S.C. Â§ 103(a) as unpatentable over Hollar, Levy, and Radha (US 2004/0139219 Al; July 15, 2004 ). Final Act. 11. THE OBVIOUSNESS REJECTION OVER HOLLAR AND LEVY The Examiner finds that Hollar discloses the recited watermark recovery and data modules, but does not disclose ( 1) generating recovered watermark data by extracting watermark data from a video signal, or (2) generating a watermark video signal by re-watermarking to include the combination of recovered and original watermark data. Final Act. 3. The Examiner, however, cites Levy for teaching these features in concluding that the claim would have been obvious. Id. 3--4. Appellant argues that Levy does not generate a watermarked video signal by re-watermarking to include the combination of recovered and original watermark data as claimed. App. Br. 5-9; Reply Br. 2-7. Although Appellant acknowledges that Levy integrates two different watermarks in a signal, Appellant emphasizes that Levy's combination occurs after data is watermarked and, therefore, Levy does not re-watermark with the recited combination of recovered and original watermark data. App. Br. 8; Reply Br. 5---6. 3 Appeal2015-002585 Application 11/864,946 ISSUE UnderÂ§ 103, has the Examiner erred in rejecting claim 1 by finding that Hollar and Levy collectively would have taught or suggested re- watermarking to include the combination of recovered and original watermark data? ANALYSIS We begin by noting that the Examiner's findings regarding Hollar are undisputed, as is the cited references' combinability. Rather, this dispute turns solely on the Examiner's reliance on Levy for teaching the recited re- watermarking to include the combination of recovered and original watermark data. Accordingly, we confine our discussion to Levy. We also note, as a preliminary matter, that claim 1 is directed to an apparatus, namely a watermarking module, whose processing device includes three modules that perform active method steps. That is, (1) the watermark recovery module generates recovered watermark data; (2) the watermark data module generates original watermark data; and (3) the watermark generation module combines the recovered and original watermark data and generates a watermarked video signal. Our emphasis underscores the fact that the claim does not recite that these modules are configured to perform these functions, but that they actually perform the functions. But apparatus claims reciting active method steps have been held indefinite under 35 U.S.C. Â§ 112(b ), for such claims raise the question of whether they are infringed by devices that are merely capable of performing the recited function, or that they must actually perform that function. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 4 Appeal2015-002585 Application 11/864,946 F.3d 1377, 1384 (Fed. Cir. 2005); see also Rembrandt Data Technologies, LP v. AOL, LLC, 641F.3d1331, 1339 (Fed. Cir. 2011) (data transmitting device held indefinite for reciting transmitting method step). Nevertheless, the Examiner did not reject claim 1 on this basis, nor will we speculate in that regard here in the first instance on appeal. Rather, we leave this question to the Examiner to consider should prosecution reopen after our decision. We also note that claim 1 recites, quite broadly, that the recited watermark generation module ( 1) combines the recovered and original watermark data, and (2) generates a watermarked video signal by re- watermarking to include the combination of the recovered and original watermark data. Our emphasis on "to include" underscores the fact that the claim does not necessarily require re-watermarking the combination as Appellant contends (Reply Br. 6), but rather that the intended result of generating the watermarked video signal in the manner claimed is merely to include the combination. Compare Reply Br. 6 (arguing that recovered watermark data is first combined with original watermark data, and re- watermarking is performed on this combined data). Nor does the claim require this particular sequence, for nothing in the claim precludes the recited combining and re-watermarking from occurring simultaneously. Therefore, Appellants' arguments based on claim 1 's alleged "necessary temporal ordering" are unavailing, for they are not commensurate with the scope of the claim. Nevertheless, even if claim 1 requires combining the recovered and original watermark data before re-watermarking as Appellant contends (which it does not), the claim still does not require re-watermarking that 5 Appeal2015-002585 Application 11/864,946 combination. The claim is still satisfied by generating a watermarked video signal by re-watermarking elements other than the recited combination, so long as the signal includes the combination. With this construction, we see no error in the Examiner's reliance on Levy for teaching the recited watermarked video signal generation limitation. As shown in Levy's transmarking process in Figure 1, after a first watermark is detected in step 22, an embedded watermark message, such as copy control parameters, content identifiers, etc., can be decoded in step 26. Levy i-fi-122-23. The first watermark signal can then be removed in step 28, and the second watermark encoded using the same embedding process as the first watermark in step 44. Id. i-fi-126, 29. Notably, in this process, the second watermark may add new information that augments the original information embedded in the first watermark by adding additional payload information. Id. i129. Moreover, the message decoded from the first watermark, such as identifiers 40 and copy control parameters 42, are also embedded in the second watermark. Id. i1 40. Accord Ans. 4 (citing Levy i123 which describes this embedded message data). Levy's transmarking functionality, then, at least suggests generating a watermarked video signal by re-watermarking, where the signal includes the combination of recovered and original watermark data. Appellant's contention that Levy does not re-watermark with this combination (Reply Br. 6) is unavailing not only in light of Levy's above-noted functionality, but also because this argument is not commensurate with the scope of the claim as noted previously. 6 Appeal2015-002585 Application 11/864,946 Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2, 3, 5, 6, 8-10, 12, 16-18, and 20-22 not argued separately with particularity. THE OTHER OBVIOUSNESS REJECTIONS We also sustain the Examiner's obviousness rejections of claims 7, 13-15, 23, and 24. Final Act. 8-11. Appellants reiterate similar arguments made in connection with claim 1, and allege that the additional cited references fail to cure those purported deficiencies. App. Br. 9-10; Reply Br. 7. We are not persuaded by these arguments for the reasons previously discussed. CONCLUSION The Examiner did not err in rejecting claims 1-3, 5-10, 12-18, and 20-24 under Â§ 103. DECISION The Examiner's decision rejecting claims 1-3, 5-10, 12-18, and 20- 24 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7