Ex Parte Shi et al

Patent Trial and Appeal BoardJan 31, 2014

11252155 (P.T.A.B. Jan. 31, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/252,155 10/17/2005 Yun-Qing Shi 27592-00193-US1 9411 30678 7590 02/03/2014 NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP 1875 EYE STREET, N.W. SUITE 1100 WASHINGTON, DC 20006 EXAMINER YEH, EUENG NAN ART UNIT PAPER NUMBER 2669 MAIL DATE DELIVERY MODE 02/03/2014 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 YUN-QING SHI and GUORONG XUAN ____________________ Appeal 2011-008434 Application 11/252,155 Technology Center 2600 ____________________ Before CAROLYN D. THOMAS, JASON V. MORGAN, and HUNG H. BUI, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejections of claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 The Real Party in Interest is MAK Acquisitions, LLC. Appeal 2011-008434 Application 11/252,155 2 STATEMENT OF THE CASE Appellants’ Invention Appellants’ invention relates to a method and apparatus for lossless data hiding and extracting using an Integer Wavelet Transform (IWT). See Spec., ¶¶ [0036]-[0038] and FIG. 1. FIG. 1 of Appellants’ is reproduced below. FIG. 1 shows Appellants’ method for embedding data into an original image and extracting embedded data therefrom. As shown in FIG. 1, Appellants’ process comprises providing an original image at step 102 and embedding data within the original image, via an Integer Wavelet Transform (IWT) at step 104 to obtain a marked image at step 106. The process is reversed to extract the embedded data at step 108 and restore the original image at step 110. Id. 2 Our decision refers to Appellants’ Appeal Brief filed December 6, 2010 (“App. Br.”); Reply Brief filed April 1, 2011 (“Reply Br.”); Examiner’s Answer mailed February 17, 2011 (“Ans.”); Final Office Action mailed June 15, 2010 (“Final Rej.”); and the original Specification filed October 17, 2005 (“Spec.”). Appeal 2011-008434 Application 11/252,155 3 Claims on Appeal Claims 1, 15-17, 26-28, and 31-33 are the independent claims on appeal. Claims 1, 17, and 28 are representative of the invention,3 as reproduced with disputed limitations emphasized below: 1. A method, comprising: subjecting an original, pixel domain image to an Integer Wavelet Transform (IWT) to obtain a first matrix of IWT coefficients of selected high-frequency subbands; multiplying selected ones of said IWT coefficients by two to obtain multiplied IWT coefficients; and embedding a data bit in a LSB (Least Significant Bit) position of each said multiplied IWT coefficient, thereby providing a marked image. 17. A method, comprising: subjecting a marked pixel domain image to an Integer Wavelet Transform (IWT) to obtain a first matrix of IWT coefficients of selected high-frequency subbands; identifying coefficients in said matrix that contain embedded payload data applied using a histogram shifting method; and extracting data bits from LSB positions of said identified coefficients. 28. A method, comprising: subjecting an original, pixel domain image to an Integer Wavelet Transform (IWT) to obtain a matrix of IWT coefficients located within a plurality of high-frequency sub- bands; selecting at least one of said sub-bands; 3 Appellants submit that independent claims 15, 16, and 33 are analogous to claim 1. See App. Br. 18-19, 24. Similarly, Appellants also submit that independent claims 26 and 27 and analogous to claim 17. See id. at 20-21. Likewise, Appellants further submit that independent claims 31 and 32 are analogous to claim 28. See id. at 23-24. Appeal 2011-008434 Application 11/252,155 4 embedding a payload data bit only in coefficients within said selected at least one subband whose absolute values are less than a threshold (T) by using a histogram shifting method. Evidence Considered The prior art relied upon by the Examiner in rejecting the claims on appeal is: Duarte US 6,463,181 B2 Oct. 8, 2002 Guorong Xuan et al., High Capacity Lossless Data Hiding Based on Integer Wavelet Transform, 2 PROC. 2004 INT’L SYMP. ON CIRCUITS & SYS. II-29 (2004) (Xuan). Jun Tian, Reversible Data Embedding Using a Difference Expansion, 13 IEEE TRANSACTIONS ON CIRCUITS & SYS. FOR VIDEO TECH. 890 (2003) (Tian). Ethan D. Montag & Mark D. Fairchild, Psychophysical Evaluation of Gamut Mapping Techniques Using Simple Rendered Images and Artificial Gamut Boundaries, 6 IEEE TRANSACTIONS ON IMAGE PROCESSING 977 (1997) (Montag). Examiner’s Rejections (1) Claims 1-5, 10, 12, 15-20, and 26-33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Xuan and Tian. Ans. 4-11. (2) Claims 6-9 and 21-23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Xuan, Tian, and Montag. Id. at 12-15. (3) Claims 11, 13, 14, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Xuan, Tian, and Duarte. Id. at 15-17. Appeal 2011-008434 Application 11/252,155 5 ISSUES Based on Appellants’ arguments, the issues on appeal are whether the Examiner has erred in rejecting: (1) claims 1-5, 10, 12, 15-20, and 26-33 under 35 U.S.C. § 103(a) as being unpatentable over Xuan and Tian; (2) claims 6-9 and 21-23 under 35 U.S.C. § 103(a) as being unpatentable over Xuan, Tian, and Montag; and (3) claims 11, 13, 14, 24, and 25 under 35 U.S.C. § 103(a) as being unpatentable over Xuan, Tian, and Duarte. App. Br. 14. In particular, the appeal turns on whether the Examiner’s combination of Xuan and Tian discloses or suggests several limitations of Appellants’ independent claims 1, 17, and 28. Id. at 15-24. ANALYSIS § 103(a) Rejection of Claims 1-16 and 33 With respect to independent claims 1, 15, 16, and 33, Appellants do not dispute the Examiner’s rationale for combining Xuan and Tian. Id. at 15-19. Instead, Appellants simply argue the combination of Xuan and Tian does not teach or suggest “multiplying selected ones of said IWT coefficients by two to obtain multiplied IWT coefficients” and/or “embedding a data bit in a LSB (Least Significant Bit) position of each said multiplied IWT coefficient, thereby providing a marked image” as recited in Appellants’ independent claims 1, 15, 16, and 33. Id. at 15. We do not find Appellants’ argument persuasive. First, as correctly found by the Examiner, Xuan discloses a method for data hiding comprising subjecting an original, pixel domain image to an Integer Wavelet Transform (IWT) to obtain a first matrix of IWT coefficients of selected high frequency subbands. Ans. 4-5 (citing Xuan 29, § 2.1, § 2.2, § 3.1). Xuan further Appeal 2011-008434 Application 11/252,155 6 discloses embedding a data bit in the Least Significant Bit (LSB) position of each selected coefficient which allows the provision of a marked image. Id. at 5 (citing Xuan 29, § 2.2 and FIG. 3). As further correctly found by the Examiner, Tian discloses a method for reversible data embedding comprising an expansion method of multiplying selected coefficients by two and adding an embedded bit at the LSB position of the expanded coefficient. Id. at 6 (citing Tian 891, § II, § III). According to the Examiner, the expansion of the coefficients to embed a bit as taught by Tian is applied to the coefficients of Xuan to disclose the features of claims 1, 15, 16, and 33. Id. Nevertheless, Appellants argue that Tian does not teach or suggest “multiplying selected ones of said IWT coefficients by two to obtain multiplied IWT coefficients” because Tian merely uses the DE technique to reversibly embed a payload into a digital image. App. Br. 15-16. The Examiner responds that the expansion disclosed by Tian operates on the IWT coefficients. Ans. 19. We agree with the Examiner. The DE technique of Tian involves an IWT to obtain values h and l. See Tian 891, § III(A). Consequently, we find that the values h and l are IWT coefficients, and such a finding is consistent with Appellants’ Specification which states an image is subjected “to an Integer Wavelet Transform (IWT) to obtain a matrix of IWT coefficients.” See Appellants’ Spec., ¶ [0037]. Second, the DE technique of Tian provides an expansion to the binary representation of the h IWT coefficients to embed the bit b in the LSB position as follows: h′ = 2 × h + b Appeal 2011-008434 Application 11/252,155 7 Tian 891, § II, § III(B). Therefore, contrary to Appellants’ arguments, we find the expansion disclosed by Tian multiplies IWT coefficients in the manner as recited in Appellants’ independent claims 1, 15, 16, and 33. For the reasons set forth above, Appellants have not persuaded us of error in the Examiner’s rejections of independent claims 1, 15, 16, and 33. Accordingly, we sustain the Examiner’s obviousness rejection of claims 1, 15, 16, and 33. With respect to dependent claims 2-14, Appellants present no separate patentability arguments apart from those presented for independent claim 1. App. Br. 14-18. For the same reasons discussed, we also sustain the Examiner’s obviousness rejection of claims 2-14. § 103(a) Rejection of Claims 17-27 With respect to independent claims 17, 26, and 27, Appellants again do not dispute the Examiner’s rationale for combining Xuan and Tian. Id. at 19-21. Instead, Appellants simply argue the Examiner’s combination of Xuan and Tian does not teach or suggest “extracting data bits from LSB positions of said identified coefficients.” Id. at 20-21. Again, we do not find Appellants’ arguments persuasive. First, as correctly found by the Examiner, Xuan discloses a method for data hiding comprising subjecting an original, pixel domain image to an Integer Wavelet Transform (IWT) to obtain a first matrix of IWT coefficients of selected high frequency subbands. Ans. 8-9 (citing Xuan 29, § 2.1), see also Xuan 29, § 2.2 and 30, § 3. Xuan further discloses identifying coefficients in said matrix that contain embedded payload data applied using a histogram shifting method. Ans. 9-10 (citing Xuan, FIG. 3, 29, § 2.1 and 30, § 3.1). Appeal 2011-008434 Application 11/252,155 8 As further correctly found by the Examiner, Tian discloses a method for reversible data embedding comprising creating a locating map used to identify the location of expansion values containing embedded payload data and extracting data bits from LSB positions of said identified coefficients. Id. (citing Tian 891, § III(A) and 892, § III(C)). Nevertheless, Appellants argue that Tian does not teach or suggest “extracting data bits from LSB positions of said identified coefficients” because Tian proposes retrieving the embedded bitstream by collecting LSBs from all changeable “difference values.” App. Br. 20. The Examiner responds that the expansion disclosed by Tian operates on the IWT coefficients. Ans. 19. We agree with the Examiner for the same reasons discussed above with regard to independent claim 1. We also find the values h and l disclosed in Tian are IWT coefficients, even if they are difference values. The DE technique of Tian further provides an expansion to the binary representation of h IWT coefficients to embed and extract the bit b in the LSB position as follows: h′ = 2 ′ h + b See Tian 891, § II and § III(B). Therefore, contrary to Appellants’ arguments, we find the expansion disclosed by Tian extracts data bits of the identified coefficients in the manner as recited in claims 17, 26, and 27. For the reasons set forth above, Appellants have not persuaded us of error in the Examiner’s rejections of independent claims 17, 26, and 27. Accordingly, we sustain the Examiner’s obvious rejection of these claims. With respect to dependent claims 18-25, Appellants present no separate patentability arguments apart from those presented for independent Appeal 2011-008434 Application 11/252,155 9 claim 17. App. Br. 19-20. For the same reasons discussed, we also sustain the Examiner’s obviousness rejection of claims 18-25. § 103(a) Rejections of Claims 28-32 With respect to independent claims 28, 31, and 32, Appellants do not dispute the Examiner’s rationale for combining Xuan and Tian. Id. at 22-24. Instead, Appellants simply argue that the combination of Xuan and Tian does not teach or suggest “embedding a payload data bit only in coefficients within said selected at least one sub-band whose absolute values are less than a threshold (T) by using a histogram shifting method.” Id. at 22. Again, we are not persuaded. First, as correctly found by the Examiner, Xuan discloses a method for data hiding comprising subjecting an original, pixel domain image to an Integer Wavelet Transform (IWT) to obtain a first matrix of IWT coefficients of selected high frequency subbands. Ans. 4-5, 11 (citing Xuan 29, § 2.1 and § 2.2 and 30, § 3). Xuan further discloses selecting at least one of said subbands. Id. at 6-7, 11 (citing Xuan 29, § 2.2). Xuan further discloses embedding a payload data bit only in coefficients within said at least one subband whose absolute value is less than a threshold by using a histogram shifting method. Id. at 9-10, 11 (citing Xuan, FIG. 3, 29, § 2.1 and 30, § 3.1). As further correctly found by the Examiner, Tian discloses a method for reversible data embedding comprising multiplying by two only those coefficients that have absolute values less than a threshold value. Id. at 8, 11 (citing Tian 891, § A and § B, identifying equation (3)). Nevertheless, Appellants argue that Tian does not teach or suggest the embedding step because Tian proposes operating on difference values Appeal 2011-008434 Application 11/252,155 10 between coefficients rather than the coefficients themselves and no threshold is being applied to the coefficient values. App. Br. 22. We disagree with Appellants for the same reasons discussed above with regard to independent claim 1. We also find the values h and l disclosed in Tian are IWT coefficients. Therefore, contrary to Appellants’ arguments, we find the upper limit required in Tian for the IWT coefficients h operates as the threshold value recited in claims 28, 31, and 32. For the reasons set forth above, Appellants have not persuaded us of error in the Examiner’s rejection of independent claims 28, 31, and 32. Accordingly, we sustain the Examiner’s obviousness rejection of claims 28, 31, and 32. With respect to dependent claims 29 and 30, Appellants present no separate patentability arguments apart from those presented for independent claim 28. Id. at 22-23. For the same reasons discussed, we also sustain the Examiner’s obviousness rejection of claims 29 and 30. CONCLUSION On the record before us, we conclude that the Examiner has not erred in rejecting claims 1-33 under 35 U.S.C. § 103(a).4 4 We note that the instant appeal was filed shortly after the Supreme Court’s opinion in Bilski v Kappos, 130 S.Ct. 3218 (2010). Since the Supreme Court’s decision in Bilski, the Federal Circuit has repeatedly addressed the issue of whether software claims are patent-eligible under 35 U.S.C. § 101 in several cases, including CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (holding that a method for verifying the validity of a credit card transaction over the Internet to be nonstatutory as an abstract idea capable of being performed in the human mind or by a human (Footnote continued on next page.) Appeal 2011-008434 Application 11/252,155 11 DECISION As such, we AFFIRM the Examiner’s final rejections of claims 1-33. 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 bar using a pen and paper) and Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333- 34 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible.” (citation omitted)). Thus, in the event of further prosecution, we leave it to the Examiner to evaluate claims 1-33 for compliance with 35 U.S.C. § 101 in view of Bilski, MPEP revised § 2106.01 (August 2012), and CyberSource Corp. For example, independent claims 1, 15, 16, 17, 26, 27, and 28 do not appear to meet the safe-harbor “machine- or-transformation” (MoT) test of Bilski. Similarly to CyberSource Corp., these claims could also be viewed as an abstract idea capable of being performed in the human mind or by a human using a pen and paper. In addition, claims 16, 27, and 32 could be broadly construed to cover forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when Appellants’ Specification is silent. As such, claims 16, 27, and 32 should also be rejected under 35 U.S.C. § 101 as covering non- statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007); and U.S. Patent and Trademark Office, Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, at 2 (Aug. 2009), available at http://www.uspto.gov/patents/law/ comments/2009-08- 25_interim_101_instructions.pdf; see also David J. Kappos, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).