Ex Parte Moskowitz

Patent Trial and Appeal Board

Mar 10, 2015

11895388 (P.T.A.B. Mar. 10, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SCOTT A. MOSKOWITZ
____________________

Appeal 2012-011854
Application 11/895,388
Technology Center 2400
____________________

Before MAHSHID D. SAADAT, JASON V. MORGAN, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/895,388

2
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
32, 33, 35–44, 52, 53, 55–57, and 59–64. Claims 1–31 and 46–51 are
canceled. Claims 34, 45, 54, and 58 are objected to, but are otherwise
indicated as being allowable if rewritten in independent form with all parent
claim recitations. Ans. 2. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
Introduction
Appellant’s invention is related to the protection of digital
information. Spec. ¶ 2. As claimed, the digital information relates to
software designed to provide a specified functionality. See generally Claims
32–45 and 52–64. The software is protected by embedding a watermark
within it. Spec. ¶ 13. The watermark may include license code information
for the software. Id.
Representative claims 32 and 40 are illustrative of the subject matter
on appeal and are reproduced below with the disputed limitations
emphasized in italics:
32. A computer-based method for modifying software,
comprising:
receiving, in a computer having a processor and memory,
software, wherein said software provides a specified
functionality;
embedding a watermark into said software, using said
computer, said watermark encoding at least one first license
code, thereby resulting in a first license code encoded
watermarked software.
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40. An article of manufacture comprising a machine readable
medium, having thereon stored instructions adapted to be
executed by a processor of a computer system, said computer
system including a memory, which instructions when executed
by said computer system result in a process comprising:
said computer system storing a software in said memory;
said computer system receiving licensing information as
an input and using said licensing information in an algorithm to
identify a watermark in said software.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Holmes US 5,287,407 Feb. 15, 1994
Houser et al.
(hereinafter “Houser”)
US 5,606,609 Feb. 25, 1997

The Examiner’s Rejections
1

Claims 32, 33, 35–44, 52, 53, 55–57, and 59–64 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Holmes and Houser. Final
Act. 4–8.

1
The Examiner has withdrawn the rejections of claims 34, 45, 54, and 58.
Ans. 2.
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ANALYSIS
2

Rejections under 35 U.S.C. § 103(a)
Claims 32, 33, 39, 52, 53, 56, 57, 59, 63, and 64
In relevant part, claim 32 requires the step of “embedding a
watermark into [the] software, . . . [the] watermark encoding at least one first
license code . . . .” Claim 32. Appellant contends the “unique identifying
data” of Holmes does not equate to a license code for the software. App. Br.
60–65. Appellant concedes Houser teaches or suggests embedding a
watermark in a document (id. at 65–66) but contends Houser’s teaching does
not extend to software programs. Id. at 65–72. Appellant concludes
“[n]either [Holmes nor Houser] discloses a watermark encoding a license
code embedded software.” Id. at 72.
In response, the Examiner finds “Holmes teaches a software
protection method wherein unique identifying data is embedded into
software.” Ans. 3. The Examiner interprets the unique identifying data as
the claimed license code. Id. Further, the Examiner finds Houser teaches a
“watermark being used to embed information in software such as a file or
video data.” Id. The Examiner concludes “[i]t would be obvious to one of
ordinary skill that the identification information (license code) embedded in
the software as taught by Holmes is embedded using a watermarking process
to make it difficult for the data to be identified or removed [as taught in
Houser].” Id.

2
Throughout this opinion we refer to the Appeal Brief filed May 14, 2012,
the Reply Brief filed August 13, 2012, the Examiner’s Answer mailed on
August 8, 2012, and the Final Office Action (“Final Act.”) having a
notification date of September 20, 2011.
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We agree with the Examiner’s findings and conclusions. Holmes’
invention relates to software protection and, in particular, “combating the
making of unauthorized copies of software.” Holmes, col. 1, ll. 8–9. To
accomplish this objective, Holmes teaches the inclusion of a predetermined
block of data that is included within a master file of software. Id., at col. 3,
ll. 38–46. Information contained in this block (which “contains a
predetermined sequence of code”) includes unique information related to the
file. Id. at col. 3, ll. 45, 56–58. Holmes teaches this information “may
comprise the name of the authorized user” for the file. Id. at col. 3, ll. 58–
59. Such information is consistent with license codes as disclosed in the
Specification. See Spec. ¶ 13 (describing keys being derived from “license
codes or other ownership identification information.”). We therefore concur
with the Examiner that under the broadest reasonable interpretation of
“license code,” as recited in claim 32, Holmes teaches a license code being
embedded into software. Ans. 3.
We are unpersuaded by Appellant’s argument that “Holmes and
Houser are not compatible, and the modification of Holmes in view of
Houser proposed by the examiner is improper.” App. Br. 72. Holmes
teaches positioning the data block containing the license code “anywhere
within the master and copied files . . . [to make it] difficult for an
unauthorized copier to identify and remove the data.” Holmes, col. 4, ll. 1–
4. Houser teaches a watermark that is “difficult-to-forge.” Houser, col. 16, l.
61. We agree with the Examiner that it would have been obvious to an
artisan having ordinary skill in the art to combine the “difficult-to-forge”
watermark of Houser with the embedded license code of Holmes to make it
difficult to identify and remove the data. Ans. 3.
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Additionally, in the Reply Brief, Appellant argues “[t]he rejection in
the Answer is not the rejection in the final office action.” Reply Br. 2.
Appellant contends the Examiner changed positions as to whether Holmes
teaches a watermark. Id. at 2–3. We are unpersuaded the Examiner has set
forth a new grounds of rejection. Based on the same findings as in the final
office action, the Examiner, in the Answer, the Examiner, responds to and
addresses arguments raised by Appellants. Further, we note the issue raised
by Appellants relates to petitionable subject matter and is not for this panel
to address. See 37 C.F.R. § 41.40(a) (“Any request to seek review of the
primary examiner's failure to designate a rejection as a new ground of
rejection in an examiner's answer must be by way of a petition to the
Director”).
For the reasons described supra, we are unpersuaded of Examiner
error and therefore sustain the rejection of claim 32. For similar reasons, we
sustain the rejection of claims 52, 53, 59, 63, and 64 as these claims are
similar in scope to claim 32. See App. Br. 91, 97, and 105. Separate
patentability is not argued for claims 33 and 39, which depend from claim
32, or for claims 56 and 57, which depend from claim 52. For similar
reasons, we sustain the rejection of claims 33, 39, 56, and 57.

Claim 35
Appellant argues claim 35 “relate[s] to the linking of the watermark
encoded first license code with accessing the specified functionality, of the
modified software.” App. Br. 75. We disagree the claim is so narrow. The
language of the claim recites: The process of claim 32, wherein said
watermark is accessible with a key. Appellant contends the disclosure of
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Houser relied upon by the Examiner is “for a different concept, public/
private key encryption” and is different than the key which accesses the
watermark of claim 35. App. Br. 77. We are unpersuaded of Examiner
error. As identified by the Examiner, Houser teaches “a private key and/or a
public key pair may be entered by the user to encrypt information stored
with the electronic document security application and/or information
embedded into an electronic document [i.e., the watermark].” Houser, col.
9, ll. 37–40; Final Act. 5; see also App Br. 65–71 (acknowledging Houser’s
teaching of a watermark). Houser further teaches a password, which may be
equivalent to the private key “serves to prevent unauthorized access to the
various features of the electronic document security application, such as the
signature insertion module 240.” Houser, col. 9, ll. 30–41. Accordingly, we
sustain the Examiner’s rejection of claim 35.

Claims 36 and 60
Claims 36 and 60 include limitations that require the underlying
software functionality be enabled upon the presence or detection of a key, or
other software code. See, e.g., Claim 60 (“software code will provide said
specified underlying functionality only after receipt of said first license
key”). Appellant argues neither Holmes nor Houser teaches or suggests
enabling software functionality based on a license key. App. Br. 80, 98. We
agree. Holmes states the data block containing the identification information
“does not play any part in the function of the software of the master file
itself.” Holmes, col. 3, ll. 41–42. Accordingly, we cannot sustain the
rejection of claims 36 and 60.

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Claim 37
Appellant characterizes claim 37 as defining “a modified software
having a watermark encoding a first license code which is configured to
determine a key from inter alia the license code. App. Br. 82. Appellant
argues “Holmes and Houser are silent regarding license codes and therefore
do not suggest claim 37’s configuration.” Id. As discussed supra, we
concur with the Examiner’s finding that Holmes teaches a license code.
Accordingly, we are unpersuaded of Examiner error and sustain the rejection
of claim 37.
3

Claim 38
Claim 38 depends from claim 32 and adds the limitation “wherein the
step of embedding the software with a watermark is performed during
execution of the software.” Claim 38. Appellant contends the support
identified by the Examiner is unrelated to this limitation. App. Br. 83. We
agree. In the Final Office Action, the Examiner relies on Holmes (col. 3, ll.
38–46) as teaching this limitation. Final Act. 6. The cited passage of
Holmes relates to block of data located within the master file that contains
the unique identifying data. Holmes, col. 3, ll. 38–46. The Examiner has
not shown how this section addresses when the embedding of the data block
occurs relative to execution of the software. Accordingly, we cannot sustain
the rejection of claim 38.

3
We note there is no antecedent basis for “said personalization information”
of claim 37, which depends from claim 35. We recommend the Examiner
ascertain whether a rejection under 35 U.S.C. § 112 ¶ 2 is appropriate.
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Claims 40–44
Independent claim 40 requires using input “licensing information in
an algorithm to identify a watermark in said software.” Claim 40 (emphasis
added). Appellant argues “[n]either Holmes nor Houser disclose using
received licensing information to identify a watermark in software.” App.
Br. 84. Appellant further argues the Examiner fails to adequately explain
how the references disclose this limitation. Id.
In rejecting claim 40, the Examiner relies on the same reasoning as set
forth in the rejection of claim 32. Final Act. 4. No additional support is set
forth in the Answer.
Claim 40 differs in scope from claim 32. Inter alia, claim 40 requires
the use of licensing information to identify a watermark in the software.
This limitation is not present in claim 32. On the record before us, we agree
with Appellant that the Examiner has not demonstrated how this limitation is
taught or suggested by the identified references. Accordingly, we cannot
sustain the rejection of claim 40 or the rejection of claims 41–44 which
depend therefrom.

Claim 55
Appellant argues “nothing in Houser and Holmes suggest [a first
license code is fixed prior to distribution of the software],” as recited in
claim 55. App. Br. 94. We disagree. The Examiner identified, inter alia, a
section of Holmes wherein the unique identification information (i.e., license
code) is incorporated into the copied version of the software. See Holmes,
col. 3, l. 38–col. 4, l. 45; Final Act. 4. Holmes further teaches a series of
steps in implementing his invention wherein the fourth step includes
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releasing the copied file for use. Holmes, col. 4, ll. 21–32. Accordingly, the
rejection of claim 55 is sustained.

Claim 61
Appellant contends the Examiner’s rejection of claim 61 does not
address various limitations of the claim, such as “encoding said first code
resource to form an encoded first code resource,” or an “encoded first code
resource, and a decode resource for decoding said encoded first code
resource” in the software. App. Br. 99–100. The Examiner relies on
reasoning found in the rejections of claims 32 and 43. Final Act. 7. The
Examiner’s findings do not support the combination of Houser and Holmes
teaches or suggests a modified software code comprising an encoded first
code resource and a decode resource for decoding the encoded first code
resource, wherein the decode resource is configured to decode the encoded
first code resource upon receipt of a first license key. Accordingly, we do
not sustain the rejection of claim 61.

Claim 62
Appellant argues “neither Holmes nor Houser disclose or suggest
encoding code interrelationships between code resources of the software.”
App. Br. 103–04. The Examiner bases the rejection of claim 62 on the
reasons set forth in rejecting claims 32 and 61. Final Act. 8. We disagree
the same reasons apply. For example, claims 32 and 61 do not recite
limitations regarding “software code interrelationships between code
resources that result in a specified underlying functionality.” Because the
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Examiner has not shown how the references teach or suggest all the
limitations of claim 62, we do not sustain its rejection.

DECISION
The rejection of claims 32, 33, 35, 37, 39, 52, 53, 55–57, 59, and 63–
64 under 35 U.S.C. § 103(a) is affirmed.
The rejection of claims 36, 38, 40–44, and 60–62 under 35 U.S.C.
§ 103(a) 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)(iv).

AFFIRMED-IN-PART

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