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 .
Claim Interpretation – 112(f)
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:
“conversion unit configured to…”; “parameter generation unit configured to…”; “watermark generation unit configured to…”; and “insertion unit configured to…” in claim 10.
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.
Regarding each “unit” above the corresponding structure described in the specification is a computer/processor implementing the functions as a program/algorithm (paragraphs 43 and 86). Therefore, according to MPEP 2181(II)(B), the entire algorithm associated with the function being performed, as disclosed throughout the originally filed specification (e.g. paragraphs 44-69), is also considered to be included in the structure covered by the interpretation.
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 § 112(b)
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 3-9, 12-18 and 20 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.
Claim 3 recites the limitation "the number corresponding to the number of magnitude peaks of the digital media" in lines 3-4. There is insufficient antecedent basis for either instance of “the number” in this limitation of the claim. Additionally, the limitation is generally vague as it is unclear what the “magnitude peaks of the digital media” is referring to. For the purpose of applying prior art, and until otherwise noted, the Examiner understands these “magnitude peaks” as referring to high frequency bands or areas with a great color change in the image, resulting from frequency conversion, see paragraph 64 of the originally filed specification.
Claims 4-9 are rejected by the virtue of their dependency upon claim 3 rejected above.
Claim 12 recites the limitation "the number corresponding to the number of magnitude peaks of the digital media" in lines 2-3. There is insufficient antecedent basis for either instance of “the number” in this limitation of the claim. Additionally, the limitation is generally vague as it is unclear what the “magnitude peaks of the digital media” is referring to. For the purpose of applying prior art, and until otherwise noted, the Examiner understands these “magnitude peaks” as referring to high frequency bands or areas with a great color change in the image, resulting from frequency conversion, see paragraph 64 of the originally filed specification.
Claims 13-18 are rejected by the virtue of their dependency upon claim 12 rejected above.
Claim 20 recites the limitation "the number corresponding to the number of magnitude peaks of the digital media" in lines 4-5. There is insufficient antecedent basis for either instance of “the number” in this limitation of the claim. Additionally, the limitation is generally vague as it is unclear what the “magnitude peaks of the digital media” is referring to. For the purpose of applying prior art, and until otherwise noted, the Examiner understands these “magnitude peaks” as referring to high frequency bands or areas with a great color change in the image, resulting from frequency conversion, see paragraph 64 of the originally filed specification.
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.
Claims 1, 2 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,313,250 to Moskowitz et al. (“Moskowitz”) in view of USPN 11,646,896 to Crosby et al. (“Crosby”).
As to claim 1, Moskowitz discloses a method of generating media to which a watermark is applied, the method comprising:
converting media data into digital media (Fig. 1, elements 100, 101, 102, 104, 114 and 126; column 3, lines 16-60; column 4, lines 45-63, wherein originating image (“im.std”) correspond to media data and is ultimately converted in to the frequency domain, as the result of applying a Fourier transform, to the form the binary representation of the rounded values of the frequency magnitude “Round |F(u,v)|” corresponding to the “digital media” );
generating a watermark corresponding to a unique parameter (Fig. 1, elements 106, 116, 118 and 120; column 3, line 61 – column 4, line 37, wherein the encrypted signature “ES(u,v)” (i.e. watermark) corresponds to unique parameters of the image); and
inserting the watermark into the digital media and generating a watermarked content (Fig. 1, elements 128-140; column 4, line 64 – column 5, line 26, wherein watermark (ES(u,v)) is inserted into digital media represented by the rounded magnitude “Round |F(u,v)|”),
As indicated by the double strikethroughs above, Moskowitz does not disclose expressly wherein the unique parameter is a physically unclonable function (PUF) value.
Crosby discloses a method of generating media to which a watermark is applied, the method comprising generating a watermark corresponding to a unique parameter and inserting the watermark into a digital media and generating a watermarked content (Figs. 2 and 6; column 20, lines 29-52, wherein a cryptographic signature corresponds the a watermark generated and inserted in to the image data (i.e. digital media)), wherein the unique parameter is a physically unclonable function (PUF) value (column 10, line 45 – column 11, line 14, wherein the cryptographic signature (i.e. watermark) is generated based on a PUF included with hardware logic device (Fig. 1, element 114; column 5, line 54 – column 6, line 38) receiving the image data).
Moskowitz & Crosby are combinable because they are from the same art of image processing, specifically generating a watermark and inserting it into image data.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention to incorporate the technique of generating a watermark corresponding to a PUF value, as taught by Crosby, into the process for generating media to which a watermark is applied as disclosed by Moskowitz.
The suggestion/motivation for doing so would have been to prevent an attacker from determining a private key used for generating a signature/watermark without access to the PUF included with the device (Crosby, column 5, line 54 – column 6, line 38) .
Therefore, it would have been obvious to combine Crosby with Moskowitz to obtain the invention as specified in claim 1.
Regarding claim 2, the combination of Moskowitz and Crosby discloses the method of claim 1, wherein, in the converting, the digital media is a result of converting the media data into a frequency domain by Fourier transform (Moskowitz, Fig. 1, elements 100, 101, 102, 104, 114 and 126; column 3, lines 16-60; column 4, lines 45-63, wherein originating image (“im.std”) correspond to media data and is ultimately converted in to the frequency domain, as the result of applying a Fourier transform, to the form the binary representation of the rounded values of the frequency magnitude “Round |F(u,v)|” corresponding to the “digital media” ).
As to claim 19, Moskowitz discloses
converting media data into digital media (Fig. 1, elements 100, 101, 102, 104, 114 and 126; column 3, lines 16-60; column 4, lines 45-63, wherein originating image (“im.std”) correspond to media data and is ultimately converted in to the frequency domain, as the result of applying a Fourier transform, to the form the binary representation of the rounded values of the frequency magnitude “Round |F(u,v)|” corresponding to the “digital media” );
generating a watermark corresponding to a unique parameter (Fig. 1, elements 106, 116, 118 and 120; column 3, line 61 – column 4, line 37, wherein the encrypted signature “ES(u,v)” (i.e. watermark) corresponds to unique parameters of the image); and
inserting the watermark into the digital media and generating a watermarked content (Fig. 1, elements 128-140; column 4, line 64 – column 5, line 26, wherein watermark (ES(u,v)) is inserted into digital media represented by the rounded magnitude “Round |F(u,v)|”),
As indicated by the double strikethroughs above, Moskowitz does not disclose expressly a computer-readable medium in which a computer program is stored, comprising a command for allowing a processor to perform the method or wherein the unique parameter is a physically unclonable function (PUF) value.
Crosby discloses a computer-readable medium in which a computer program is stored, comprising a command for allowing a processor (Fig. 8; column 22, lines 5-23) to perform a method of generating media to which a watermark is applied, the method comprising generating a watermark corresponding to a unique parameter and inserting the watermark into a digital media and generating a watermarked content (Figs. 2 and 6; column 20, lines 29-52, wherein a cryptographic signature corresponds the a watermark generated and inserted in to the image data (i.e. digital media)), wherein the unique parameter is a physically unclonable function (PUF) value (column 10, line 45 – column 11, line 14, wherein the cryptographic signature (i.e. watermark) is generated based on a PUF included with hardware logic device (Fig. 1, element 114; column 5, line 54 – column 6, line 38) receiving the image data).
Moskowitz & Crosby are combinable because they are from the same art of image processing, specifically generating a watermark and inserting it into image data.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention to store the process as a program on a CRRM and implement it via a processor/computer, and to incorporate the technique of generating a watermark corresponding to a PUF value, as taught by Crosby, into the process for generating media to which a watermark is applied as disclosed by Moskowitz.
The suggestion/motivation for doing so would have been to implement the process easily using a computing device (Crosby, column 21, lines 16-33) prevent an attacker from determining a private key used for generating a signature/watermark without access to the PUF included with the device (Crosby, column 5, line 54 – column 6, line 38) .
Therefore, it would have been obvious to combine Crosby with Moskowitz to obtain the invention as specified in claim 19.
Allowable Subject Matter
Claims 10 and 11 are allowed.
The following is an examiner’s statement of reasons for allowance:
As noted above, limitations of claim 10 invoke interpretation under 112(f), and as such the corresponding structure described in the specification is a computer/processor implementing the functions as a program/algorithm (paragraphs 43 and 86). Therefore, according to MPEP 2181(II)(B), the entire algorithm associated with the functions being performed by each “unit”, as disclosed throughout the originally filed specification (e.g. paragraphs 44-69), is also considered to be included in the structure covered by the interpretation. Therefore, none of the prior art found teach or fairly suggests all the incorporated limitations associated with functions performed by “parameter generation unit” and the “watermark generation unit” disclosed in paragraphs 48-67 of the originally filed specification.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON W CARTER whose telephone number is (571)272-7445. The examiner can normally be reached 8am - 5pm (Mon - Fri).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Villecco can be reached at (571) 272-7319. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON W CARTER/Primary Examiner, Art Unit 2661
