Ex Parte Winograd et al

Patent Trial and Appeal BoardApr 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. Â§ 134(a) of the rejection of claims 1-15, 17-20, 22-23, and 25--42. We have jurisdiction under 35 U.S.C. Â§ 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. Â§ 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. Â§ 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. 2 Appeal2014-003205 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 3 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. Â§ 41.50(a)(l). AFFIRMED 4