U.S. Patent Office Reverses Rejection of Key Macrovision Invention

MARK TERRY, ESQ.

The Board of Patent Appeals and Interferences reversed a 35 U.S.C. § 102(e) anticipation rejection involving a Macrovision patent application directed to inserting watermarks into video.

The cited reference addressed detecting watermarks, but the examiner did not identify where it disclosed the claimed step of embedding or inserting those watermarks into video.

The Board emphasized that anticipation cannot rest on guesses. A single prior-art reference must disclose every claim limitation, expressly or inherently, and the examiner must explain where each limitation is found.

Because the record required speculation about how the watermarks were embedded, the Board reversed the rejection.

Practical takeaway: During prosecution and examiner interviews, require the examiner to identify the exact disclosure supporting every limitation. A conclusory assertion is not a substitute for a complete anticipation analysis.