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
This action is being offered to modify and clarify rejections to the claims in response to Applicant’s Pre-Appeal Brief Request.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: In claim 1, Applicant recites “wherein the subset of the plurality of frames comprising the watermark data identifies the user account”. Applicant has argued that it is not the watermark, but the subset of frames itself that identifies the user account. Applicant however, has failed to claim any structure, act or element that would be capable of performing this action, nor is it evident as to how this identification happens. Therein lies the gap between the elements. Claim 1 is rejected on this basis. Claims 2-7 are rejected as inheriting the deficiencies of claim 1 and failing to correct. Claim 8 recites a corresponding method from the perspective of the receiver rather than the sender of claim 1 and the limitation “determining, based on the subset of frames, a user account associated with the watermarked copy of the content” is indefinite under the same rationale. Claim 8 is rejected on this basis. Claims 9-14 are rejected as inheriting the deficiencies of claim 1 and failing to correct
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; At step 305 of Figure 3, a request for streaming video is received by the video server system from a user at a client requesting a specific vide stream. A video stream is a content comprising a plurality of frames. Examiner notes that the phrase “based on the request” is broad, and under its broadest reasonable interpretation, includes any actions that occur as a result of the request occurring. If Applicant intends a narrower reading of this phrase, Applicant should amend the phrase to limit the scope to what it intends. This interpretation of “based on the request” is being used for all instances of the phrase that follow);
determining, based on the request, a subset of frames of the plurality of frames (Perry: Fig 3, 310-325; Page 10, Sec 94 – Page 11, Sec 97; after the request has been made and subsequent to it, the video content is selected, the identifier is received and a determination is made as to the insertion of the identifier. “The identifier(s) may be inserted into each frame, or a subset of the frames”. Examiner notes that even if the identifier is inserted into every frame, that satisfies the claimed limitation, as for any given set, the group of all of the elements of the set is a subset of the set. It is not a proper subset, but it is a subset. If Applicant intends that the insertion not be made to all frames, Applicant should modify the claim language to accurately limit the scope);
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; “n Insert Identifier Step 325, the retrieved identifier(s) are inserted into the retrieved video as a watermark. The identifier is inserted in real time as the video is received and/or delivered to the requesting member of Clients 110. Thus, the identifier may be inserted into a first frame while Client 110A displays a second frame of the streaming video. In various embodiments, the identifier is inserted before preprocessing, during preprocessing, after preprocessing, before encoding, during encoding, after encoding, before post processing, during post processing, and/or after post processing. Multiple identifiers may be inserted into the video. The identifier(s) may be inserted into each frame, or a subset of the frames”), 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. In view of the rejection of claims 1-14 above under 35 U.S.C. 112(b), and under the broadest reasonable interpretation of the claim language, consistent with what is claimed, the sole feature of the plurality of frames that can be used to identify the user is the watermark embedded therein, so the watermark in the subset of the plurality of frames, as described, is being used to identify the user account. Examiner also notes that as every frame of the content could comprise the subset of frames, ); and
sending, to the user device, the content comprising the watermark data (Perry: Fig 3 – 345; Page 11; Sec 101; watermarked video provided to the user).
As to claim 2 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 claim 3 , 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 claim 4 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 claim 5, 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. Examiner notes as above, the phrase “based on a subset of frames” is broad. There is no language in the claim that narrows the interpretation such that reading information in the subset of clams (i.e. the watermark) is not “based on” the subset of frames. Without the frames, the watermark would not be there to be read, thus reading the watermarks are interpreted as being “based on” the subset of frames.); 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.”).
Claim 6 is 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).
Claim 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).
Allowable Subject Matter
Claims 15-20 are allowed.
The following is an examiner’s statement of reasons for allowance:
With respect to independent claim 15, Applicant recites watermarking content by determining, based on a plurality of requests associated with corresponding user accounts of a plurality of user accounts, a plurality of subsets of frames of a plurality of frames of content; 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, associated with the corresponding user account, of the plurality of subsets of frames such that the subset of frames used identifies the user account; and sending, based on the requests, the plurality of copies of the content. None of the art of record, either individually or in reasonable combination discloses this combination of limitations in the context of a watermarking scheme, particularly “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, associated with the corresponding user account, of the plurality of subsets of frames such that the subset of frames used identifies the user account;”.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
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.
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MICHAEL S. MCNALLY
Primary Examiner
Art Unit 2432
/Michael S McNally/Primary Examiner, Art Unit 2432
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