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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 8 and 9 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 7 of prior U.S. Patent No. 12,067,994. This is a statutory double patenting rejection.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 and 10-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-17 of U.S. Patent No. 12,067,994. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-7 and 10-19 are broader in scope, and therefore anticipated by, claims 1-6 and 8-17 of U.S. Patent No. 12,067,994.
For example, each element of claim 1 is recited in claim 1 of U.S. Patent No. 12,067,994. Similarly, each element of claim 14 is recited in claim 12 of U.S. Patent No. 12,067,994, and each element of claim 19 is recited in claim 17 of U.S. Patent No. 12,067,994. The remaining claims are anticipated by the corresponding claims in the table below:
Claim of application 18/787,542
Anticipating claim of U.S. Patent No. 12,067,994
1
1
2
2
3
3
4
4
5
5
6
6
7
1
8
1 (Same claim, 101 rejection)
9
7 (Same claim, 101 rejection)
10
8
11
9
12
10
13
11
14
12
15
13
16
14
17
15
18
16
19
17
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-7, 10, and 14-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Voessing et al. (U.S. Patent Application Pub. No. 2009/0076826, hereinafter “Voessing”), in view of Krishnaswamy et al. (U.S. Patent Application Pub. No. 2018/0146370, hereinafter “Krishnaswamy”).
In regard to claim 1, Voessing discloses a method for applying a watermark signal to an audio signal to prevent unauthorized use of audio signals, the method comprising:
receiving an original audio signal (Fig. 1, an original audio input signal AUI is received, paragraph [0038]);
determining a corresponding spectrogram of the original audio signal (an FFT is calculated for each frame of the audio signal, paragraph [0038]);
selecting a phase sequence of fixed frame length and uniform distribution (a phase spread spectrum sequence with a length corresponding to that of the audio signal frames and having a random distribution is selected, paragraph [0038]); and
generating an encoded watermark signal based on the corresponding spectrogram and phase sequence (phase changes are carried out in the frequency domain, then an inverse FFT creates a corresponding watermarked audio signal, paragraphs [0038-0040]).
Voessing does not expressly disclose the audio signal is a speech signal.
Krishnaswamy discloses a method for applying a watermark signal to a speech signal to prevent unauthorized use of speech signals (a watermark is embedded in a speech signal to ensure its authenticity, paragraph [0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the watermarking method of Voessing to a speech signal, because watermarking a speech signal prevents common attach methods used for speech signals, as taught by Krishnaswamy (paragraphs [0011-0013]).
In regard to claim 2, Voessing discloses taking the magnitude of the original audio spectrogram to generate the encoded watermark (the amplitude of the audio signal is used when generating the watermark, paragraph [0064]).
Voessing does not expressly disclose the audio signal is a speech signal.
Krishnaswamy discloses a method for applying a watermark signal to a speech signal to prevent unauthorized use of speech signals (a watermark is embedded in a speech signal to ensure its authenticity, paragraph [0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the watermarking method of Voessing to a speech signal, because watermarking a speech signal prevents common attach methods used for speech signals, as taught by Krishnaswamy (paragraphs [0011-0013]).
In regard to claim 3, Voessing discloses the spectrogram is determined by applying a short-time Fourier transform (STFT) to determine the sinusoidal frequency and phase content of each frame of the original input signal (an FFT determines the amplitude and phase for each of 513 frequency bins, paragraph [0045]).
In regard to claim 4, Voessing discloses applying bit encoding prior to generating the encoded watermark (a bit value modulation stage is used to modulate the phase sequence, paragraph [0038]).
In regard to claim 5, Voessing discloses the bit encoding includes assigning bits based on information about the original audio signal (the frequency ranges used to encode the bit values by phase changes depend on the current state of the audio signal, paragraph [0039]).
Voessing does not expressly disclose the audio signal is a speech signal.
Krishnaswamy discloses a method for applying a watermark signal to a speech signal to prevent unauthorized use of speech signals (a watermark is embedded in a speech signal to ensure its authenticity, paragraph [0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the watermarking method of Voessing to a speech signal, because watermarking a speech signal prevents common attach methods used for speech signals, as taught by Krishnaswamy (paragraphs [0011-0013]).
In regard to claim 6, Voessing discloses the bit encoding is spread out through a subset of frequency bins to allow for detection of the bit encoding in adverse conditions (several watermark data bits are transmitted by using several different random phase vectors spread across the frequencies of each block, paragraph [0059]).
In regard to claim 7, Voessing discloses determining a frequency dependent gain factor based at least in part on a frequency of the original audio signal (see Figs. 6-8, phase change values ASPH vary with frequency, paragraphs [0065-0068]).
Voessing does not expressly disclose the audio signal is a speech signal.
Krishnaswamy discloses a method for applying a watermark signal to a speech signal to prevent unauthorized use of speech signals (a watermark is embedded in a speech signal to ensure its authenticity, paragraph [0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the watermarking method of Voessing to a speech signal, because watermarking a speech signal prevents common attach methods used for speech signals, as taught by Krishnaswamy (paragraphs [0011-0013]).
In regard to claim 10, Voessing does not disclose storing the encoded watermark for authenticating a future speech signal, the encoded watermark defining permissions for use of the future speech signal.
Krishnaswamy discloses storing the encoded watermark for authenticating a future speech signal, the encoded watermark defining permissions for use of the future speech signal (a watermark is stored at the receiver side for authenticating a speaker’s voice, the watermark permitting access to systems, paragraphs [0023-0025]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to store the encoded watermark for authenticating a future speech signal and define permissions for use of the future speech signal, because storing the watermark ensures no playback or mimicry of the user’s speech is used to conduct fraudulent transactions, as taught by Krishnaswamy (paragraph [0025]).
Claim 14 is directed to a non-transitory computer readable medium comprising instructions that cause a processor to perform the operations of claim 1. While Voessing does not expressly disclose a non-transitory computer readable medium, Krishnaswamy discloses implementing the method using computer programs stored in memory (paragraph [0097]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the method of Voessing as instructions stored in a non-transitory computer readable medium, because it would allow the method to be realized by a computer executing the instructions.
In regard to claim 15, Voessing discloses taking the magnitude of the original audio spectrogram to generate the encoded watermark (the amplitude of the audio signal is used when generating the watermark, paragraph [0064]).
Voessing does not expressly disclose the audio signal is a speech signal.
Krishnaswamy discloses a method for applying a watermark signal to a speech signal to prevent unauthorized use of speech signals (a watermark is embedded in a speech signal to ensure its authenticity, paragraph [0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the watermarking method of Voessing to a speech signal, because watermarking a speech signal prevents common attach methods used for speech signals, as taught by Krishnaswamy (paragraphs [0011-0013]).
In regard to claim 16, Voessing discloses the spectrogram is determined by applying a short-time Fourier transform (STFT) to determine the sinusoidal frequency and phase content of each frame of the original input signal (an FFT determines the amplitude and phase for each of 513 frequency bins, paragraph [0045]).
In regard to claim 17, Voessing discloses applying bit encoding prior to generating the encoded watermark (a bit value modulation stage is used to modulate the phase sequence, paragraph [0038]).
In regard to claim 18, Voessing discloses the bit encoding includes assigning bits based on information about the original audio signal (the frequency ranges used to encode the bit values by phase changes depend on the current state of the audio signal, paragraph [0039]).
Voessing does not expressly disclose the audio signal is a speech signal.
Krishnaswamy discloses a method for applying a watermark signal to a speech signal to prevent unauthorized use of speech signals (a watermark is embedded in a speech signal to ensure its authenticity, paragraph [0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the watermarking method of Voessing to a speech signal, because watermarking a speech signal prevents common attach methods used for speech signals, as taught by Krishnaswamy (paragraphs [0011-0013]).
In regard to claim 19, Voessing discloses a method for applying a watermark signal to an audio signal to prevent unauthorized use of the audio signal, the method comprising:
receiving an original audio signal (Fig. 1, an original audio input signal AUI is received, paragraph [0038]);
generating an encoded watermark signal based on the original audio signal (phase changes are carried out in the frequency domain, then an inverse FFT creates a corresponding watermarked audio signal, paragraphs [0038-0040]), and
transmitting an encoded audio signal including the original audio signal and watermark signal (an encoded watermarked audio signal is transmitted to a decoder, paragraphs [0040-0041]).
Voessing does not expressly disclose the audio signal is a speech signal and the encoded watermark signal defining allowed usage of the original audio signal.
Krishnaswamy discloses a method for applying a watermark signal to a speech signal to prevent unauthorized use of speech signals (a watermark is embedded in a speech signal to ensure its authenticity, paragraph [0023]) and the encoded watermark signal defining allowed usage of the original audio signal (a watermark is stored at the receiver side for authenticating a speaker’s voice, the watermark permitting access to systems, paragraphs [0023-0025]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the watermarking method of Voessing to a speech signal, because watermarking a speech signal prevents common attach methods used for speech signals, as taught by Krishnaswamy (paragraphs [0011-0013]), and because defining allowed usage of the original audio signal ensures no playback or mimicry of the user’s speech is used to conduct fraudulent transactions, as taught by Krishnaswamy (paragraph [0025]).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Voessing, in view of Krishnaswamy, and further in view of Shur (U.S. Patent Application Pub. No. 2001/0049788)
In regard to claim 11, Voessing and Krishnaswamy do not disclose adding at least one of a pretty good privacy (PGP) or public key cryptography to the watermark signal.
Shur discloses a method for watermarking audio signals, comprising adding at least one of a pretty good privacy (PGP) or public key cryptography to the watermark signal (a watermark is encrypted using PGP, paragraph [0051]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add at least one of a PGP or public key cryptography to the watermark signal, because the use of such a key protects the watermark data from piracy or tampering, as taught by Shur (paragraph [0051]).
Allowable Subject Matter
Claims 12-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the Double Patenting rejections were overcome by, for example, the filing and approval of a Terminal Disclaimer.
The following is a statement of reasons for the indication of allowable subject matter:
In regard to claims 12-13, Voessing, Krishnaswamy and the additional prior art of record do not disclose or suggest the watermark includes words spoken in the original speech signal, wherein each word is associated with a sequence position. Therefore, claims 12-13 would be allowable if the non-statutory Double Patenting rejections were overcome.
Conclusion
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BLA 2/6/26
/BRIAN L ALBERTALLI/Primary Examiner, Art Unit 2656