Ex Parte Rhoads

Patent Trial and Appeal Board

Sep 24, 2012

10861317 (P.T.A.B. Sep. 24, 2012)

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.
10/861,317 06/03/2004 Geoffrey B. Rhoads P0994 9367
23735 7590 09/24/2012
DIGIMARC CORPORATION
9405 SW GEMINI DRIVE
BEAVERTON, OR 97008
EXAMINER
KAPLAN, BENJAMIN A
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
09/24/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GEOFFREY B. RHOADS
____________________

Appeal 2010-005939
Application 10/861,317
Technology Center 2400
____________________

Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and
JOHNNY A. KUMAR, Administrative Patent Judges.

DESHPANDE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005939
Application 10/861,317

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STATEMENT OF CASE1
The Appellant seeks review under 35 U.S.C. § 134(a) of a final
rejection of claims 1 and 3-5. Claim 2 has been canceled. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b)(1).
We AFFIRM.

The Appellant invented technologies that combat the unauthorized
distribution and/or use of content. Specification 1:4-6.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added]:
1. A method of qualifying electronic content for rendering on a
first apparatus or by a first user, comprising - in no particular
order:
[1] at the first apparatus, identifying reference data
associated with the first apparatus or the first user;
[2] examining the content for first watermark data;
[3] confirming that the first watermark data is consistent
with said reference data, thereby confirming that the content
was distributed for use by said first user or by said first
apparatus;
[4] examining the content to confirm the absence of any
second watermark data that is additional to said first watermark
data, said second watermark data evidencing possible prior
distribution of said content for use by a different user or by a
different apparatus; and
[5] making a determination concerning qualification of the
content for rendering, based on the foregoing.

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jul. 20, 2009) and Reply Brief (“Reply Br.,” filed Feb. 16, 2010),
and the Examiner’s Answer (“Ans.,” mailed Dec. 16, 2009), and Final
Rejection (“Final Rej.,” mailed Nov. 19, 2008).
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REFERENCES
The Examiner relies on the following prior art:
Kirovski US 2002/0191809 A1 Dec. 19, 2002
Venkatesan US 6,801,999 B1 Oct. 5, 2004
Sai Ho Kwok, Watermark-Based Copyright Protection System Security,
Communication of the ACM, Vol. 46, No. 10 (2003) (“WBCPSS”)

REJECTIONS
Claims 1 and 4-5 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Venkatesan and WBCPSS.
Claim 3 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Venkatesan, WBCPSS, and Kirovski.

ISSUE
The issue of whether the Examiner erred in rejecting claims 1 and 3-5
turns on whether the cited prior art teaches or suggests (1) limitation [4] of
claim 1, (2) the limitations of claim 4, and (3) the limitations of claim 3.

ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellant’s contentions that the Examiner has erred.
We disagree with the Appellant’s conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to the Appellant’s Appeal Brief. We
concur with the conclusion reached by the Examiner. We highlight the
following arguments for emphasis.
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Claims 1 and 4-5 rejected under 35 U.S.C. §103(a) as being unpatentable
over Venkatesan and WBCPSS
The Appellant first contends that the combination of Venkatesan and
WBCPSS fails to teach or suggest “examining the content to confirm the
absence of any second watermark data that is additional to said first
watermark data,” as per limitation [4] of claim 1. App. Br. 8-9 and Reply
Br. 2-3. The Examiner found that WBCPSS describes examining content to
confirm detect the presence of a second watermark and the detection of the
presence of a watermark is functionally the same as detecting the absence of
a watermark. Ans. 9 (citing WBCPSS 100). The Appellant further argues
that checking for the presence of a second watermark sometimes yields
results different than checking for the absence of any second watermark.
Reply Br. 3. The Appellant explains that if WBCPSS content includes a
second watermark within permitted range, WBCPSS does not detect
anything amiss. Reply Br. 3.
We disagree with the Appellant. As found by the Examiner,
WBCPSS is concerned with providing an anti-deadlock strategy for
watermarking content, where a deadlock problem is created when an
attacker inserts an additional watermark in to copyright-protected content.
Ans. 5 and 9 (citing WBCPSS 99-100). That is, a deadlock problem
requires the insertion of a second watermark into content and the detection
of a deadlock problem requires the detection of the second watermark. We
further agree with the Examiner that the detection of a second watermark
necessarily includes the detection of the absence of a second watermark.
Ans. 9. We are not persuaded by the Appellant’s argument that if WBCPSS
content includes two watermarks within a permitted range, WBCPSS does
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not detect anything amiss because WBCPSS is relied upon to disclose the
detection of a second watermark and not for WBCPSS functionality of
detecting watermarks outside of a permitted range. The Appellant has not
provided any further evidence or rationale to rebut the Examiner’s finding
that the detection of the presence of a second watermark includes the
detection of the absence of a second watermark and accordingly, we do not
find the Appellant’s argument persuasive.

The Appellant also contends that WBCPSS concerns a false assertion
of ownership and does not describe “making a determination concerning
qualification of the content for rendering based on the foregoing.” App. Br.
9. We disagree with the Appellant. The Examiner relies on Venkatesan to
disclose this feature. Ans. 3-4 and 11. The Appellant does not provide any
rationale or evidence to rebut the Examiner’s finding that Venkatesan fails to
disclose this feature. As such, the Appellant’s contention does not persuade
us of error on part of the Examiner because the Appellant is responding to
the rejection by attacking the references separately, even though the
rejection is based on the combined teachings of the references.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).

The Appellant further contends that the combination of Venkatesan
and WBCPSS fails to teach or suggest “said second watermark data
evidencing possible prior distribution of said content for use by a different
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user or by a different apparatus,” as per limitation [4] of claim 1. App. Br. 9
and Reply Br. 4. The Appellant specifically argues that WBCPSS is
concerned with a deadlock problem and is not concerned with detecting
possible prior distribution of content for use by a different user or by a
different apparatus. Reply Br. 4. We disagree with the Appellant. As found
by the Examiner, WBCPSS explicitly describes that the presence of a second
watermark is evidence of a conflict between ownership or distribution of
content between one or more parties. Ans. 11. Accordingly, WBCPSS
describes “said second watermark data evidencing possible prior distribution
of said content for use by a different user or by a different apparatus.” As
such, the Appellant’s arguments to the contrary are not found to be
persuasive.
The Appellant additionally contends that the combination of
Venkatesan and WBCPSS fails to teach or suggest “said confirming
comprises confirming that the first watermark data comprises data derived
from said reference data,” as per claim 4. App. Br. 10 and Reply Br. 4-5.
The Appellant specifically argues that Venkatesan describes that a user
obtains a watermark key from a server that identifies a starting point location
in the content, which is different from the watermark comprising data
derived from the reference data. Reply Br. 4-5. We disagree with the
Appellant. As found by the Examiner, Venkatesan describes that a user
downloads a protected object and an electronic license that is
cryptographically signed to an “enforcer” located on the client computer that
includes a watermark key. Ans. 12 (citing Venkatesan 5:30-48). The
“enforcer” examines the protected object to determine whether the object
contains a watermark and the computer determines whether a parameter in
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the in the license matches a value contained in the watermark of the object.
Id. That is, the watermark comprises data from the reference data and is
associated with the enforcer on the client computer. While the Appellant
argues that Venkatesan is concerned with the watermark providing a starting
point location (Reply Br. 4-5), Venkatesan also describes “confirming that
the first watermark data comprises data derived from said reference data.”
As such, the Appellant’s contention regarding the starting point location
identified by a watermark is not found to be persuasive.

Claim 3 rejected under 35 U.S.C. §103(a) as being unpatentable over
Venkatesan, WBCPSS, and Kirovski
The Appellant contends that although Kirovski describes asymmetric
watermarking, Kirovski cannot be incorporated in to Venkatesan. App. Br.
11. We disagree with the Appellant. Specifically, we agree with the
Examiner that the “symmetrical key pairs in Venkatesan et al. would simply
be replaced with the use corresponding asymmetric key pairs shown feasible
by Kirovski et al” (Ans. 13) and such a combination would have predictable
results. The Appellant does not provide any persuasive rationale or evidence
to rebut this finding by the Examiner and accordingly we do not find the
Appellant’s argument to be persuasive.

CONCLUSIONS
The Examiner did not err in rejecting claims 1 and 4-5 under 35 U.S.C. §
103(a) as unpatentable over Venkatesan and WBCPSS.
The Examiner did not err in rejecting claim 3 under 35 U.S.C. § 103(a)
as unpatentable over Venkatesan, WBCPSS, and Kirovski.
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DECISION
To summarize, our decision is as follows.
 The rejection of claims 1 and 4-5 under 35 U.S.C. § 103(a) as
unpatentable over Venkatesan and WBCPSS is sustained.
 The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Venkatesan, WBCPSS, and Kirovski is sustained.

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)(2010).

AFFIRMED

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