DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments with respect to claims 1 and 4 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “at least one source of video, the source of video configured with executable instructions for embedding in . . .”, and the player of video programmed with instructions to: re-record the first video . . .” in claim 5.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7, 9, 11 and 16 are rejected under 35 U.S.C. 102(a)(1) as anticipated by US 6700989 B1 to Itoh et al (hereinafter ‘Itoh’) or, in the alternative, under 35 U.S.C. 103 as obvious over US 7,050,603 B2 to Rhoads et al (hereinafter ‘Rhoads’).
Regrading claim 1, Itoh discloses a method comprising: rendering, by a set of processors, a re-recorded video of an original video to render a re-recorded video (column 29, lines 58-64, wherein in response to the request for video recording, the content of a copy restriction code (54) is decided by the medium drive 55, and a new video-recording disk, as the re-recorded video of original video, which bears a watermarked moving image 61 and a copy restriction code 62 is created by a video recording device 58 in a case where the video recording is permitted.); identifying, by the set of processors, a watermark in at least one frame of the original video (column 29, lines 51-58, wherein referring to the figure, the moving-image storage medium is set in a medium drive 55 in correspondence with the request for video recording or reproduction. In response to the request for reproducing a moving image stored in the storage medium, compressed data are expanded by an MPEG decoder 56, and the display 59 of the watermarked moving image (53) is presented by a display device 57 in a case where the reproduction is permitted, as identifying the watermark on the display); based at least in part on the watermark, embedding, by the set of processors, in video data of the re-recorded video, a link to the original video, wherein the watermark indicates a re-recording of the original video (column 29, lines 58-64, wherein in response to the request for video recording, the content of a copy restriction code (54) is decided by the medium drive 55, and a new video-recording disk which bears a watermarked moving image 61, inherently as embedded in the video as a link for authentication of the original video, and a copy restriction code 62 is created by a video recording device 58 in a case where the video recording is permitted). I as much as Applicant disagrees with Examiner’s interpretation of embedding of a link to an original video, Rhoads also discloses embedding process to provide a link to an original video (column 5, lines 43-46, wherein the rendering of the linked information can occur on the video display, possibly using picture-in-picture technology so others can still see the original video). Itoh and Rhoads are combinable because they both disclose digital content watermarking. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the embedding process to provide a link to an original video of Rhoad’s method with Itoh’s so that to retrieve a web site associated with the video object via the watermark (column 2, lines 42-44).
Regrading claim 2, in the combination of Itoh and Rhoads, Ito discloses based at least in part on the watermark, providing metadata associated with the original video (column 18, lines 21-29, wherein referring to the figure, when the process has been started, the set of the moving image files of the original copyright holder are accessed at step S21. The set of the files includes the contents of a watermarked moving-image file FA, the file FC storing the watermark control information therein, as well as the control information which is as mentioned at step S18 in FIG. 13, and the file FD in which the parts of the original image hidden by the watermark are saved, as one exemplary metadata associated with the original video).
Regrading claim 3, in the combination of Itoh and Rhoads, Ito discloses based at least in part on the watermark, providing a link to the original video and providing metadata associated with the original video (FIG. 15 is a flowchart showing a process for restoring the watermarked moving image into the original image which is not watermarked, in this manner. Referring to the figure, when the process has been started, the set of the moving image files of the original copyright holder are accessed at step S21. The set of the files includes the contents of a watermarked moving-image file FA, the file FC storing the watermark control information therein, as well as the control information which is as mentioned at step S18 in FIG. 13, and the file FD in which the parts of the original image hidden by the watermark are saved, as exemplary metadata associated and a link to the original frame of the video).
Regrading claim 4, Itoh discloses a system (column 8, lines 42-43, wherein the visible watermark is inserted into the moving image by the watermark insertion system) comprising: at least one source of video, the source of video comprising a processor configured with executable instructions to: embed, in at least one frame of a first video, at least one watermark such that a player of video can re-record the first video to render a re-recording of the first video (column 8, lines 42-43, 52-57, wherein the visible watermark is inserted into the moving image by the watermark insertion system, and wherein a medium drive (for example, a DVD drive) is enabled to permit or bar the video recording or duplication of the moving image, in such a way that a copy restriction code is previously recorded in a control-data storage area within the moving-image storage medium or within communication data.). While Itoh discloses embedding watermark into a re-recorded video image (Fig. 26, item 61), Itoh does not specifically disclose embedding a watermark to point to at least two network locations at which respective earlier versions of the first video can be accessed, wherein the watermark is embedded in at least two different spatial regions of the frame of the first video. Rhoads discloses embed in the re-recording the first video a watermark to point to at least two network locations at which respective earlier versions of the first video can be accessed, wherein the watermark is embedded in at least two different spatial regions of the frame of the first video (column 5, lines 43-46 and column 14, lines 13-23, wherein the rendering of the linked information can occur on the video display, possibly using picture-in-picture technology so others can still see the original video, and wherein the decoder can give the user interface the screen coordinates of areas where a watermark has been detected. Screen areas that correspond to different watermark payloads or different object locations, as embedding into at least two different spatial regions, as specified within a watermark payload can be highlighted in different color or some other graphical indicator that distinguishes watermark enabled objects from unmarked objects and each other. The decoder forwards an object identifier (824), as the watermark, for the video object at the selected location to the server 802, as one network, via a network interface 826, as second network)). Itoh and Rhoads are combinable because they both disclose digital content watermarking. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the embedding process to provide a link to an original video of Rhoad’s system with Itoh’s so that the watermark may act as a dynamic link to a web site that provides information about the object (column 2, lines 33-35).
Regrading claim 5, in the combination of Itoh and Rhoads, Itoh discloses the system comprising the player of video programmed with instructions to: re-record the first video to render a re-recording of the first video; and embed in the re-recording the first video a watermark to point to at least two network locations at which respective earlier versions of the first video can be accessed (Video reproduction apparatus/player of Fig. 26).
Regrading claim 6, in the combination of Itoh and Rhoads, Itoh discloses the wherein the watermark comprises a visible watermark established at least in part by a portion of a frame less than one hundred per cent (100%) of the frame having pixels altered from the first video (column 13, lines 36-41, wherein when the positions ((X1, Y1), (X2, Y2), . . . ) of the left lower points of the pieces of the two-dimensional pattern in all the frames to have the watermark inserted thereinto have been determined, inherently as less than 110% of the frame area, at step S3, the two-dimensional watermark pattern pieces are superposed on the sampled value areas of the original moving image).
Regrading claim 7, in the combination of Itoh and Rhoads, Itoh discloses the wherein the pixels are altered from the first video by shifting a brightness and/or color value of the pixels without disrupting an image shown in the frame (column 20, lines 10-20, wherein It has been described in conjunction with FIG. 10 that the color and tonal density of the information of the copyright indication are fixed. It is also possible, however, to insert copyright indication information of which the tonal density, color, etc. are adjusted. More specifically, after the color and tonal density of an image surrounding the insertion position of the copyright indication information have been decided, the tonal density, color, etc. of the copyright indication information may be adjusted in accordance with the decided results so as not to become excessively conspicuous or so as to become appropriately conspicuous, as disrupting an image).
Regrading claim 9, in the combination of Itoh and Rhoads, Itoh discloses wherein the watermark is repeated in the frame of video in at least two respective regions of the frame (column 7, lines 36-39, wherein it selects the frames at such intervals that, when the watermark information has been inserted into some of the plurality of frames constituting the original image)
Regarding claim 11, in the combination of Itoh and Rhoads, Rhoads discloses wherein the first video comprises a video of real-world activity (column 8, lines 38-41, wherein this process is similar to the one shown in FIG. 4, except that the position of video objects is derived from transmitters 500-504 attached to the real world objects depicted in the video scene and attached to video cameras.).
Regarding claim 16, in the combination of Itoh and Rhoads, Itoh discloses wherein the watermark indicates a re-recording of the first video. Kim discloses wherein the watermark indicates a re-recording of the first video (column 7, lines 51-52, wherein the watermark which is inserted in the present invention, is visually perceivable in a still image, inherently as indicating a copy).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Itoh in view of Rhoads and further in view of US 9,912,986 B2 to Eyer et al (hereinafter ‘Eyer’).
Regrading claim 8, in the combination of Galant, Steinberg and Eyer, Eyer further discloses wherein the pixels altered from the first video establish a quick response (QR) code (column 15, lines 23-38, wherein the metadata 322 could be effectively formatted as a video two-dimensional bar code that is embedded in a corner or at the edge of the displayed video data 316. In addition, the bar code or other formatting of the metadata 322 could be displayed as a part of a small graphical logo icon known as a “bug.” . . . Where printed barcodes are optimized for readout by laser scanners, the type of video barcode used for the metadata 322 is embedded in a digital video signal, which is processed directly by the TV 122 (as pixel luminance or chrominance samples)). Itoh, Rhoads and Eyer are combinable because they all disclose digital content watermarking. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the pixels altered from the first video establish a quick response (QR) code of Eyer’s system with Itoh’s and Rhoad’s in order for the watermark to be the printed barcodes that can be readout by laser scanners (column 15, lines 35-37).
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Itoh in view of Rhoads and further in view of US 2021/0271327 A1 to Topchy et al
Regarding claim 10, Itoh and Rhoads do not specifically disclose, wherein the first video comprises a computer simulation. Topchy discloses wherein the first video comprises a computer simulation (Para [0046], wherein at block 606, the example haptic signal generator 304 generates a surface haptic control signal for the touchscreen 104 based on the texture(s), as simulation). Itoh, Rhoads and Topchy are combinable because they all disclose digital content watermarking. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the first video comprises a computer simulation of Topchy’s system with Itoh’s and Rhoad’s in order to generate a perception or sensation of a texture to a user interacting with screen (Para [0013]).
Regrading claim 12, Itoh and Rhoads do not specifically disclose wherein the player of video is configured with executable instructions for identifying the watermark and based thereon accessing metadata which comprises haptic generation metadata. Topchy discloses the player of video is configured with executable instructions for identifying the watermark and based thereon accessing metadata which comprises haptic generation metadata (Para [0030-0031], wherein he content identifier 302 may parse metadata provided with the visual content that includes parameters, definitions, and/or instructions identifying the content and/or defining the nature of texture(s) associated with the visual content. The content and/or the relevant texture(s) identified by the content identifier 302 are provided to the haptic signal generator 304 to generate a particular surface haptic control signal). Itoh, Rhoads and Topchy are combinable because they all disclose digital content watermarking. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the player of video is configured with executable instructions for identifying the watermark and based thereon accessing metadata which comprises haptic generation metadata of Topchy’s system with Itoh’s and Rhoad’s in order to generate a perception or sensation of a texture to a user interacting with screen (Para [0013]).
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Itoh and Rhoads and further in view of US 11,368,766 B2 to Zhao et al (hereinafter ‘Zhao’)
Regarding claim 13, Itoh and Rhoads do not specifically disclose wherein the player of video is configured with executable instructions for embedding in a copy of the first video a substitute watermark representing a link to the first video, or metadata associated with the first video, along with metadata associated with the copy of the first video. Zhao discloses instructions for embedding in a copy of the first video a substitute watermark representing a link to the first video, or metadata associated with the first video, along with metadata associated with the copy of the first video (column 3, lines 53-59, wherein some systems utilize watermarking techniques to either carry the metadata as part of watermarks that are embedded into the essence of the content (i.e., they become part of the content itself as imperceptible signals) or use embedded watermarks to enable access to a remote server, from which metadata can be recovered). Itoh, Rhoads and Zhao are combinable because they all disclose digital content watermarking. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the embedding in a copy of the first video a substitute watermark representing a link to the first video, or metadata associated with the first video, along with metadata associated with the copy of the first video of Zhao’s system with Itoh’s and Rhoad’s in order to avoid loss of metadata (column 3, lines 51-53).
Regarding claim 14, in the combination of Itoh, Rhoads and Zhao, Zhao discloses wherein the player of video is configured with executable instructions for embedding in a copy of the first video a substitute watermark representing a link to the first video along with metadata associated with the copy of the first video (Column 16, lines 34-39, wherein embedding additional watermarks using the metadata ascertained via fingerprints or watermarks: In some embodiments, additional watermark information can be embedded into the content interval using the metadata that is associated the same interval and ascertained via the first watermarks that are already present in the content, as substitute watermark in a copy).
Regarding claim 15, in the combination of Itoh, Rhoads and Zhao, Zhao discloses wherein the player of video is configured with executable instructions for embedding in a copy of the first video a substitute watermark representing metadata associated with the first video along with metadata associated with the copy of the first video. Kim discloses executable instructions for embedding in a copy of the first video a substitute watermark representing metadata associated with the first video along with metadata associated with the copy of the first video (Column 16, lines 34-39, wherein embedding additional watermarks using the metadata ascertained via fingerprints or watermarks: In some embodiments, additional watermark information can be embedded into the content interval using the metadata that is associated the same interval and ascertained via the first watermarks that are already present in the content, as substitute watermark in a copy).
Regarding claim 17, Itoh and Rhoads do not specifically disclose wherein the watermark indicates information pertaining to at least one influencer associated with a re-recording of the first video. Zhao discloses the watermark indicates information pertaining to at least one influencer associated with a re-recording of the first video. Zhao discloses watermark indicates information pertaining to at least one influencer associated with a re-recording of the first video (column 1, lines 51-55, wherein identification information regarding the owner and producer of the content, as the influencer, timecode identification, copyright information, closed captions, and locations such as URLs where advertising content, as influencer). Itoh, Rhoads and Zhao are combinable because they all disclose digital content watermarking. Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the watermark indicates information pertaining to at least one influencer associated with a re-recording of the first video of Zhao’s system with Itoh’s and Rhoad’s in order to allows applications to run on a TV to provide interactive services e.g. targeted advertising (column 3, lines 64-67).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHERVIN K NAKHJAVAN whose telephone number is (571)272-5731. The examiner can normally be reached Monday-Friday 9:00-12:00 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Lefkowitz can be reached at (571)272-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHERVIN K NAKHJAVAN/ Primary Examiner, Art Unit 2672