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 .
Status of the Claims
Claims 1-20 are presented for examination.
Response to Arguments
Applicant's arguments filed 13 February 2026 have been fully considered but they are not persuasive.
With respect to independent claims 1 and 15, Applicant argues that Perry fails to disclose certain limitations of claim 1. Specifically. Applicant argues that Perry fails to disclose
“determining, based on the request, a subset of frames of the plurality of frames” as Applicant alleges that Perry is silent as to “determining, based on a request from a user device associated with a user account, content comprising a plurality of frames”. Specifically, Applicant alleges that Sec 43 and 47 of Perry fails to disclose “determining, based on a request from a user device associated with a user account, content comprising a plurality of frames”. Examiner notes that Sec 43 and 47 were not relied upon in t he Office Action for the “determining, based on a request from a user device associated with a user account, content comprising a plurality of frames” limitation. Rather, Examiner recited Page 10, Sec 90-91 and Fig 3 in support of this limitation and Applicant has not contested that portion of the Office Action. Accordingly Applicant’s argument is not persuasive as it doesn’t address the rejection as provided. Additionally, Applicant appears to be arguing limitations that have not been claimed with respect to the limitation “determining, based on the request, a subset of frames of the plurality of frames”, by inferring some specific interpretation of the phrase “based on the request” that is not supported by the claim language The phrase “based on” is broad, and in the instant application only requires a loose causal connection, which is met by Perry as identifiers are not inserted until after the request is made. If Applicant desire a more restrictive reading, Applicant is free to claim with specificity how the subset of frames is determined.
Additionally, Applicant argues that Perry fails to discloses adding watermark data to each of the frames of the subset of frames of the plurality of frames, wherein the subset of the plurality of frames comprising the watermark data identifies the user account. Examiner notes that while Sec 19 of Perry only discusses associating the identifier with information about the viewer, that information is described in at least Sec 17 (as well as at Sec 18, 22 and 51), comprising account information about the viewer. This will be updated in the rejection below so as to clarify how Perry discloses the recited element.
As to independent claim 8, Applicant argues that Musser fails to disclose “determining, based on the subset of frames, a user account associated with the watermarked copy of the content”. Musser at Sec 61 clearly meets this limitation, as it determines using the watermarked portion of the user account that is accessing the watermarked content. Similar to the discussion above, Applicant appears to be arguing limitations that are not claimed by interpreting the broad limitation under discussion in a very limited manner.
Applicant’s arguments with respect to the remainder of the claims are of the form that the additional references fail to cure the alleged defects and are not persuasive.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5, 7 and 15-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2022/0312085 by Perry.
As to claim 1, Perry discloses a method comprising:
determining, based on a request from a user device associated with a user account, content comprising a plurality of frames (Perry: Fig 3 – 305; Page 10, Sec 90-91; request is received from a user for streaming video);
determining, based on the request, a subset of frames of the plurality of frames (Perry: Page 4, Sec 43 and Page 5, Sec 47; determination of what frame or set of frames the identifier (watermark) will be added to);
adding watermark data to each of the frames of the subset of frames of the plurality of frames (Perry: Fig 3 – 325; Pages 10-11; Sec 97; Identifiers inserted into stream at selected locations), wherein the subset of the plurality of frames comprising the watermark data identifies the user account (Perry: Page 2, Sec 17-19; “The identifier is associated with information about the viewer”, the information is described as including the user account); and
sending, to the user device, the content comprising the watermark data (Perry: Fig 3 – 345; Page 11; Sec 101; video provided to the user).
As to claim 15, Perry discloses a method comprising:
determining, based on a plurality of requests associated with corresponding user accounts of a plurality of user accounts (Perry: Fig 3 – 345; Page 11; Sec 101; “In some embodiments, Video Source 130 provides encoded video including the same identifier or different unique identifiers to multiple Clients 110”), a plurality of subsets of frames of a plurality of frames of content (Perry: Page 4, Sec 43 and Page 5, Sec 47; determination of what frame or set of frames the identifier (watermark) will be added to);
;
adding, based on the plurality of requests, watermark data to a plurality of copies of the content, wherein each of the copies of the content comprises the watermark data in a different subset of frames(Perry: Page 2, Sec 17-19; “The identifier is associated with information about the viewer”), associated with the corresponding user account, of the plurality of subsets of frames such that the subset of frames used identifies the user account (Perry: Page 2, Sec 19; “The identifier is associated with information about the viewer”);; and
sending, based on the requests, the plurality of copies of the content (Perry: Fig 3 – 345; Page 11; Sec 101; video provided to the users).
As to claims 2 and 16, Perry further discloses wherein the watermark data is the same in each of the frames of the subset of frames (Perry: Page 2, Sec 22; Various embodiments of the invention include a method of providing watermarked video on demand, the method comprising receiving a request for streaming video from a client, identifying a source of the video, and retrieving the video. The method further includes retrieving an identifier, inserting the retrieved identifier in the retrieved video as a watermark, and storing the identifier in association with user account information. The video may be encoded from a first format to a second format and provided to the client.”).
As to claims 3 and 17, Perry further discloses further comprising causing storage of an association of the user account and an indication of the subset of the plurality (Perry: Page 2, Sec 22; Various embodiments of the invention include a method of providing watermarked video on demand, the method comprising receiving a request for streaming video from a client, identifying a source of the video, and retrieving the video. The method further includes retrieving an identifier, inserting the retrieved identifier in the retrieved video as a watermark, and storing the identifier in association with user account information. The video may be encoded from a first format to a second format and provided to the client.”).
As to claims 4 and 18, Perry further discloses wherein the subset of frames of the plurality of frames is unique to the user account among a plurality of user accounts accessing the content (Perry: Fig 3 – 345; Page 11; Sec 101; “In some embodiments, Video Source 130 provides encoded video including the same identifier or different unique identifiers to multiple Clients 110”).
As to claims 5 and 19, Perry further discloses further comprising determining whether the subset of the plurality of frames is associated with one or more additional user accounts, wherein adding the watermark data to each of the frames of the subset of the plurality of frames is based on the subset of frames of the plurality of frames not being associated with the one or more additional user accounts (Perry: Page 4, Sec 43 and Page 5, Sec 47; determination of what frame or set of frames of an unmarked content the identifier (watermark) will be added to).
As to claim 7, Perry further discloses wherein adding the watermark data to each of the frames of the subset of the plurality of frames comprises decoding the content, adding the watermark data to the subset of the plurality of frames of the decoded content, and encoding the content comprising the watermark data.
Claims 8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2001/0224742 by Musser Jr.
As to claim 8, Musser discloses a method comprising:
receiving a watermarked copy of content comprising a plurality of frames (Musser: Pages 5-6, Sec 59; copies of watermarked content are distributed to end users);
determining a subset of frames, of the plurality of frames, that comprises watermark data (Musser; Page 6, Sec 61; watermark identified in media by watermark identifier);
determining, based on the subset of frames, a user account associated with the watermarked copy of the content (Musser; Page 6, Sec 61; watermark recovered and user determined from database); and
sending, based on the determining the user account, an indication of the user account (Musser; Page 6, Sec 61; match recovered and user information identified and recorded).
As to claim 10, Musser further discloses wherein determining the user account comprising querying a datastore of watermarking information, wherein the datastore comprises associations of user accounts with indications of corresponding subset of frames of the plurality of frames (Musser; Page 6, Sec 61; watermark recovered and user determined from database).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 9, 11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2001/0224742 by Musser Jr. in view of U.S. Patent Application Publication No. 2022/0312085 by Perry
As to claim 9, Musser discloses all recited elements of claim 8 from which claim 9 depends.
Musser does not expressly disclose wherein the watermark data is the same in each of the frames of the subset of frames.
Perry discloses wherein the watermark data is the same in each of the frames of the subset of frames. (Perry: Page 2, Sec 22; Various embodiments of the invention include a method of providing watermarked video on demand, the method comprising receiving a request for streaming video from a client, identifying a source of the video, and retrieving the video. The method further includes retrieving an identifier, inserting the retrieved identifier in the retrieved video as a watermark, and storing the identifier in association with user account information. The video may be encoded from a first format to a second format and provided to the client.”).
Musser and Perry are analogous art because they are from the common area of watermarking digital content.
It would have been obvious to one of ordinary skill in the art, at or before the effective filing date of the instant application, to use the identical watermarks of Perry in the system of Musser. The rationale would have been to protect streaming video content (Perry: Page 2, Sec 22).
As to claim 11, Musser discloses all recited elements of claim 8 from which claim 11 depends.
Musser does not expressly disclose wherein the subset of frames of the plurality of frames is unique to the user account among a plurality of user accounts accessing the content..
Perry discloses wherein the subset of frames of the plurality of frames is unique to the user account among a plurality of user accounts accessing the content (Perry: Fig 3 – 345; Page 11; Sec 101; “In some embodiments, Video Source 130 provides encoded video including the same identifier or different unique identifiers to multiple Clients 110”).
It would have been obvious to one of ordinary skill in the art, at or before the effective filing date of the instant application, to use the unique watermarks of Perry in the system of Musser. The rationale would have been for identification purposes (Perry: Page 2, Sec 22).
As to claim 13, Musser discloses all recited elements of claim 8 from which claim 13 depends.
Musser does not expressly disclose wherein sending the indication of the user account comprises sending the indication to one or more of a computing device or a storage device, wherein the computing device is configured to output, based on the indication of the user account, an indication that the watermarked copy of the content is associated with authorized or unauthorized access.
Perry discloses wherein sending the indication of the user account comprises sending the indication to one or more of a computing device or a storage device, wherein the computing device is configured to output, based on the indication of the user account, an indication that the watermarked copy of the content is associated with authorized or unauthorized access (Perry: Page 2, Sec 26; “Upon detecting a watermark in a suspected unauthorized copy of a video, a stored identifier may be compared to the watermark in the suspected video. The identifier, if it matches the watermark, may be used to identify a user to whom the video was provided. The information retrieved using the identifier may further include information about the video. In some embodiments, the watermark includes information about the client. The information may be extracted from a detected watermark in an unauthorized copy of a video and used to identify the client.”).
It would have been obvious to one of ordinary skill in the art, at or before the effective filing date of the instant application, to use the copy detection of Perry in the system of Musser. The rationale would have been to protect the content and identify the client responsible (Perry: Page 2, Sec 26)
As to claim 14, the modified Musser/Perry reference further discloses wherein determining the subset of frames comprises searching at least a portion of the content for the watermark data and updating the subset to include indications of frames comprising the watermark data (Perry: Page 2, Sec 22; Various embodiments of the invention include a method of providing watermarked video on demand, the method comprising receiving a request for streaming video from a client, identifying a source of the video, and retrieving the video. The method further includes retrieving an identifier, inserting the retrieved identifier in the retrieved video as a watermark, and storing the identifier in association with user account information. The video may be encoded from a first format to a second format and provided to the client.”).
Claims 6 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2022/0312085 by Perry in view of U.S. Patent Application Publication No. 2025/0291909 by Fortkort.
As to claims 6 and 20, Perry discloses all recited elements of claims 1 and 15 from which claims 6 and 20 depend.
Perry does not expressly disclose further comprising determining, based on a machine learning model, whether to watermark the content, wherein the machine learning model is configured to one or more of: indicate a risk level associated with the content or indicate whether to watermark the content or not.
Fortkort discloses further comprising determining, based on a machine learning model, whether to watermark the content, wherein the machine learning model is configured to one or more of: indicate a risk level associated with the content or indicate whether to watermark the content or not. (Fortkort: Page 19, Sec 180; “Adaptive key management and anomaly response solutions allow a dynamic watermarking system to react swiftly to evolving security threats. By integrating machine learning models that predict usage spikes or detect shifts in typical user behavior, the system can rotate encryption keys or update watermarking parameters before potential vulnerabilities are exploited. If an AI model forecasts, for instance, that multiple users are scheduled to download high-value content around the same timeframe—perhaps based on historical traffic patterns or blockchain activity spikes—new keys or watermark schemas can be introduced in advance. This proactive approach reduces the risk that an adversary gains control of a key and distributes multiple copies of the same unaltered watermark. Instead, each segment of high-traffic usage receives updated cryptographic elements, limiting how many copies can be linked to any single compromised key.”).
Perry and Fortkort are analogous art because they are from the common area of watermarking digital content.
It would have been obvious to one of ordinary skill in the art, at or before the effective filing date of the instant application, to use the machine learning of Fortkort in the system of Perry. The rationale would have been to take a proactive approach to protection (Fortkort: Page 19, Sec 180).
Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2001/0224742 by Musser Jr. in view of U.S. Patent Application Publication No. 2022/0312085 by Perry further in view of U.S. Patent Application Publication No. 2025/0291909 by Fortkort.
As to claim 12, the modified Musser/Perry reference discloses all recited elements of claim 8 from which claim 12 depends.
The modified reference does not expressly disclose wherein the content is watermarked based on whether a machine learning model one or more of: indicates a risk level associated with the content or indicates to watermark the content..
Fortkort discloses wherein the content is watermarked based on whether a machine learning model one or more of: indicates a risk level associated with the content or indicates to watermark the content. (Fortkort: Page 19, Sec 180; “Adaptive key management and anomaly response solutions allow a dynamic watermarking system to react swiftly to evolving security threats. By integrating machine learning models that predict usage spikes or detect shifts in typical user behavior, the system can rotate encryption keys or update watermarking parameters before potential vulnerabilities are exploited. If an AI model forecasts, for instance, that multiple users are scheduled to download high-value content around the same timeframe—perhaps based on historical traffic patterns or blockchain activity spikes—new keys or watermark schemas can be introduced in advance. This proactive approach reduces the risk that an adversary gains control of a key and distributes multiple copies of the same unaltered watermark. Instead, each segment of high-traffic usage receives updated cryptographic elements, limiting how many copies can be linked to any single compromised key.”).
The modified reference and Fortkort are analogous art because they are from the common area of watermarking digital content.
It would have been obvious to one of ordinary skill in the art, at or before the effective filing date of the instant application, to use the machine learning of Fortkort in the system of the modified reference. The rationale would have been to take a proactive approach to protection (Fortkort: Page 19, Sec 180).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL S MCNALLY whose telephone number is (571)270-1599. The examiner can normally be reached Monday-Friday, 8:30 AM - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey L Nickerson can be reached at (469)295-9235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
MICHAEL S. MCNALLY
Primary Examiner
Art Unit 2432
/Michael S McNally/Primary Examiner, Art Unit 2432