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 .
Double Patenting
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of issued U.S. Patent No. 12,445,696. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims are directed towards the common subject matter.
The claims in the present application define the invention differently from the claims in issued U.S. Patent No. 12,445,696, however they are not patentably distinguishable from the claims in issued U.S. Patent No. 12,445,696. In re White et al., 160 USPQ 417, In re Thorington et al., 163 USPQ 644.
For example, comparing representative claim 1 of the present application with representative claim 4 of issued U.S. Patent No. 12,445,696. Claim 1 of the present application recites: a method comprising (Claim 4 of issued U.S. Patent No. 12,445,696 recites: a method comprising); embedding video content with a watermark including watermark symbols, wherein the watermark symbols replace pixels in the video content with pixels in which luma values are modulated such that the luma value for a 0 bit ("BitO") renders as black and the luma value for a 1 bit ("Bit1") renders as a shade of gray, and wherein the selection of the luma value for bit 1 takes into account the visual impact of watermark embedding (Claim 4 of issued U.S. Patent No. 12,445,696 recites: embedding the video content with a watermark including watermark symbols, wherein the watermark symbols replace pixels in the video content with pixels in which luma values are modulated such that the luma value for a 0 bit ("BitO") renders as black and the luma value for a 1 bit ("Bitt") renders as a shade of gray; andadjusting the 1 bit luma level based on visual quality and said watermark robustness requirements); and extracting video watermark symbols from embedded content, wherein the extracting includes making a prediction of an expected luma value for bit 1 selected during the embedding in order to calculate the threshold used to discriminate bits 0 and 1 (Claim 4 of issued U.S. Patent No. 12,445,696 recites: detecting the watermark by calculating a symbol detection threshold across a segment of a top line of the video).
As the comparison shows the claims recite common subject matter, and the differences relate to variations of the claimed limitations, and the processing is carried out on the data and/or elements in no way affects how the data would be received from an input, processed and output within the context of the claims. Therefore, the substitution of the different variations would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. While claim 4 of issued U.S. Patent No. 12,445,696 includes additional limitations that are not set forth in the instant claim 1, the use of transitional term "comprising" in the instant claim 1 fails to preclude the possibility of additional elements, so that instant claim 1 fails to define an invention that is patentably distinct from claim 4 of issued U.S. Patent No. 12,445,696. Furthermore, the elements of instant claim 1 are fully anticipated by the patented claim, and anticipation is “the ultimate or epitome of obviousness (In re Kalm, 154 USPQ 10 (CCPA 1967), also In re Dailey, 178 USPQ 293 (CCPA 1973) and In re Pearson, 181 USPQ 641 (CCPA 1974)).
Claims 2-12 of the present application recite limitations which are in most cases word for word the same limitations as found in claims 1-3 and 5-19 respectively of issued U.S. Patent No. 12,445,696.
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 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 and 10-12 are rejected under 35 U.S.C. §102(a)(1) as being anticipated by Reed et al. (U.S. Patent Application Publication No. US 2023/0055101 A1) (hereafter referred to as “Reed (‘101)”).
The examiner is providing applicant a copy of U.S. Patent Provisional Application No. 63/234,170 (filed on August 17, 2021) which is the earlier filed provisional application of U.S. Patent Application Publication No. US 2023/0055101 A1.
With regard to claim 1, Reed (‘101) describes embedding video content with a watermark including watermark symbols, wherein the watermark symbols replace pixels in the video content with pixels in which luma values are modulated such that the luma value for a 0 bit ("BitO") renders as black and the luma value for a 1 bit ("Bit1") renders as a shade of gray, and wherein the selection of the luma value for bit 1 takes into account the visual impact of watermark embedding (refer for example to paragraphs [0033], [0054], [0070], [0071], [0086], [0090], [0096], [0098], [0099], [0100] and [0105], where the “reduce the perceptibility of the portion of the one or more video frames” in Reed corresponds to applicant’s “takes into account the visual impact of watermark embedding”); and extracting video watermark symbols from embedded content, wherein the extracting includes making a prediction of an expected luma value for bit 1 selected during the embedding in order to calculate the threshold used to discriminate bits 0 and 1 (refer for example to paragraphs [0095], [0105] and [0110]).
In regard to claim 10, Reed (‘101) describes wherein the embedding further comprises selectively increasing the luma value for bit 1 watermark symbols that change frame to frame, whereby robustness is improved (refer to paragraphs [0033] through [0035], where the “reduce the perceptibility of the portion of the one or more video frames” in Reed corresponds to applicant’s “robustness is improved”).
As to claim 11, Reed (‘101) describes wherein the embedding further comprises selectively increasing the luma value for bit 1 timeoffset watermark symbols, whereby robustness is improved (refer for example to paragraphs [0033] through [0035], where the “reduce the perceptibility of the portion of the one or more video frames” in Reed corresponds to applicant’s “robustness is improved”).
As to claim 12, Reed (‘101) describes embedding video content with a watermark including watermark symbols, wherein the watermark symbols replace pixels in the video content with pixels in which luma values are modulated such that the luma value for a 0 bit ("BitO") renders as black and the luma value for a 1 bit ("Bit1") renders as a shade of gray, and wherein the embedding uses forward error correction to include extra symbols containing redundant data for watermark symbols that change frame to frame, whereby robustness is improved (refer for example to paragraphs [0033], [0054], [0070], [0071], [0086], [0090], [0096], [0098], [0099], [0100] and [0105], where the “reduce the perceptibility of the portion of the one or more video frames” in Reed corresponds to applicant’s “takes into account the visual impact of watermark embedding”); and extracting video watermark symbols from embedded content, wherein the extracting includes detecting and correcting data errors using extra forward error correcting symbols included by the embedding (refer for example to paragraphs [0106], [0107], [0108], [0109], [0111] and [0112]).
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Vestergaard, Eyer, Cain, Hoarty, Brundage, Reed (‘495) and Wan all disclose systems similar to applicant’s claimed invention.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jose L. Couso whose telephone number is (571) 272-7388. The examiner can normally be reached on Monday through Friday from 5:30am to 1:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Bella, can be reached on 571-272-7778. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Center information webpage on the USPTO website. For more information about the Patent Center, see https://www.uspto.gov/patents/apply/patent-center. Should you have questions about access to the Patent Center, contact the Patent Electronic Business Center (EBC) at 571-272-4100 or via email at: ebc@uspto.gov .
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.
/JOSE L COUSO/Primary Examiner, Art Unit 2667
August 21, 2026
