Ex Parte Abe et al

Board of Patent Appeals and Interferences

Nov 7, 2011

11219759 (B.P.A.I. Nov. 7, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/219,759 09/07/2005 Yuichi Abe SON-3417 4383
23353 7590 11/07/2011
RADER FISHMAN & GRAUER PLLC
LION BUILDING
1233 20TH STREET N.W., SUITE 501
WASHINGTON, DC 20036
EXAMINER
CHAN, KAWING
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
11/07/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUICHI ABE and TAKAO SASAMURA
____________

Appeal 2010-003639
Application 11/219,759
Technology Center 2800
____________

Before MAHSHID D. SAADAT, KRISTEN L. DROESCH and
GREGORY J. GONSALVES, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
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Application 11/219,759

2
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of a final rejection
of claims 13-38.
1
We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
BACKGROUND
Appellants’ invention relates to an information processing system and
method for providing a wide variety of music in accordance with a user's
preferences. Spec. ¶¶ 0002, 0011; Abs.
Independent claim 13 is illustrative and is reproduced below:
13. An information processing system comprising:
a playback apparatus configured to convert one or a
plurality of items of music material data into music data, one or
a plurality of items of music composition data being used to
convert said one or the plurality of items of said music material
data into said music data,
wherein said one or the plurality of items of said music
composition data is identifiable by a composition ID and said
one or the plurality of items of said music material data is
identifiable by a music ID.
Claims 13-17 and 32-34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Isozaki (U.S. Patent Application Publication No.
2003/0000368 A1) and Ochi (U.S. Patent Application Publication No.
2003/0029304 A1).
Claims 18-20, 25, 26, 31 and 35-38 are rejected under
35 U.S.C. § 103(a) as unpatentable over Isozaki, Ochi and Kanda (U.S.
Patent Application Publication No. 2001/0029832 A1).

1
Claims 1-12 have been cancelled.
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Claims 21-24 and 27-30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Isozaki, Ochi, Kanda and Tohgi (U.S. Patent Application
Publication No. 2004/0159215 A1).
ISSUES
Did the Examiner err in finding that the combination of Isozaki and
Ochi teaches music composition data that is identifiable by a composition
ID?
Did the Examiner err in finding that combination of Isozaki, Ochi and
Kanda teaches data rights management information that establishes
permission for use?
Did the Examiner err in finding that the combination of Isozaki, Ochi,
Kanda and Tohgi teaches including data rights management information that
includes access rights, copying rights and editing rights?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Appeal Brief and arguments in the Reply Brief responsive
to the Examiner’s Answer. We agree with the Examiner’s determination
that the claims are rendered obvious over the applied prior art. We adopt as
our own the findings and reasons set forth by the Examiner in the Final
Office Action (“FOA”) from which this appeal is taken and the reasons set
forth in the Examiner’s Answer in response to the Appeal Brief. We
highlight the following findings of fact and provide the following additional
analysis.
Claims 13-17 and 32-34 rejected over Isozaki and Ochi
The Examiner finds that Isozaki describes a playback apparatus (i.e.,
electronic musical apparatus 1 shown in Fig. 1) configured to convert music
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material data (i.e., performance information) into music data (i.e., musical
tone), music composition data (i.e., performance setting information) being
used to convert the music material data (i.e., performance information) into
the music data (i.e., musical tone). FOA 3; Ans. 3, 7-9 (citing Isozaki ¶
0040). The Examiner further finds that Isozaki describes that the music
composition data (i.e., performance setting information) is identifiable by a
composition ID (i.e., the ID numbers of the electronic musical apparatus)
and which is used to select the music composition data (i.e., performance
setting information). FOA 3; Ans. 3-4, 7-9 (citing Isozaki ¶¶ 0035, 0093).
The Examiner does not rely on Isozaki for describing music material
data that is identifiable by a music ID. FOA 3; Ans. 3-4. Instead, the
Examiner finds that Ochi describes music material data (i.e., song data) that
is identifiable and selectable by a music ID (i.e., a file name). FOA 3; Ans.
4 (citing Ochi ¶¶ 0074, 0077, 0094, 0095). The Examiner determined that it
would have been obvious to one with ordinary skill in the art at the time the
invention was made to modify the teachings of Isozaki with the teachings of
Ochi, since it is known in the art to utilize a file name to identify the music
data of a song so that the desired music data can be selected based on the file
name. FOA 4; Ans. 4.
Rather than addressing the Examiner’s findings related to paragraph
93 of Isozaki, Appellants direct attention to paragraphs 62 and 67 of Isozaki
(not cited by the Examiner) arguing that Isozaki does not disclose, teach or
suggest that the performance setting information (corresponding to the
claimed music composition data) is identifiable by either a source ID
number or a destination ID number. App. Br. 9; Reply Br. 2-5. On this
basis, Appellants argue that Isozaki does not disclose, teach or suggest: (a)
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that the music composition data is identifiable by a composition ID as
recited in independent claim 13; or (b) a composition ID being used to select
the music composition data, as recited in independent claim 32. App. Br.
10; Reply Br. 2-5.
We are unpersuaded by Appellants’ arguments. Consistent with the
Examiner’s findings (FOA 3; Ans. 3-4, 7-9), Isozaki describes that the
performance setting information contains electronic musical apparatus ID
numbers and a user is prompted to enter or select the electronic musical
apparatus ID number of the transmission source (i.e., source ID number) of
the desired performance setting information. ¶ 0093. Isozaki also describes
that after the source ID number is input or selected, the received ID number
of the destination electronic musical apparatus is stored in the "destination
ID number" area corresponding to the input or selected ID number. ¶ 0093.
Isozaki further describes that the source performance setting information
corresponding to the “destination ID number" area corresponding to the
input or selected ID number is read from the storage device and transmitted
to the electronic musical apparatus (i.e., destination electronic musical
apparatus). ¶ 0094. Thus, contrary to Appellants’ arguments, Isozaki
describes that the desired performance setting information is identifiable by
the source ID number and that the source ID number is utilized to select the
desired performance setting information.
We are also unpersuaded by Appellants’ argument that Isozaki does
not disclose, teach or suggest “said one or the plurality of items of said
music composition data being used to convert said one or the plurality of
items of said music material data into said music data” as recited in claim
32. App. Br. 10. Appellants do not sufficiently explain why, contrary to the
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Examiner’s findings (FOA 3; Ans. 3-4), Isozaki does not disclose, teach or
suggest the disputed limitations of claim 32.
Appellants’ argument that Ochi, like Isozaki, fails to disclose, teach or
suggest one or the plurality of items of said music composition data is
identifiable by a composition ID (App. Br. 11) is misplaced. The Examiner
does not rely on Ochi for describing the disputed limitation, but relies on
Isozaki for teaching music composition data that is identifiable by a music
composition ID. (FOA 3; Ans. 3-4). The Examiner instead relies on Ochi to
teach music material data that is identifiable by a music ID. (FOA 3; Ans.
4). Appellants further do not provide a meaningful explanation why Ochi
does not disclose, teach or suggest music material data that is identifiable by
a music ID. App. Br. 11.
For all these reasons, we sustain the Examiner’s rejection of claims
13-17 and 32-34 over Isozaki and Ochi.
Claims 18-20, 25, 26, 31 and 35-38 over Isozaki, Ochi, and Kanda
Appellants separately present substantially identical arguments
directed to claims 18-20 under one heading, claims 25, 26 and 31 under
another heading, claims 35 and 36 under yet another heading, and claims 37
and 38 under still yet another heading. Compare App. Br. 11-14 with App.
Br. 15-18, with App. Br. 18-21 and with App. Br. 21-24. Since the
arguments addressing claims 18-20 are substantially identical to the
arguments addressing claims 25, 26, and 31; claims 35 and 36; and claims
37 and 38; we address all of these claims together. Claim 18 ultimately
depends from claim 13 and recites: “said server receives material data rights
management information from a music material data generation apparatus
and receives composition data rights management information from a music
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composition data generation apparatus”. Claim 19, dependent from claim
18, recites: “said server transmits said music material data to said playback
apparatus when said material data rights management information
establishes permission for use of said music material data by said playback
apparatus.”
The Examiner does not rely on Isozaki or Ochi for describing the
limitations of claims 18 and 19, but instead relies on Kanda. Specifically,
with respect to claim 18, the Examiner finds “[w]ith reference to Figures 1-
2, Kanda discloses a server (1) receives material data rights management
information and composition data rights management information (copyright
information of the music piece data) from a distribution settings database
(33-3) (Paragraph [0090]).” FOA 5; Ans. 5. Regarding claim 19, the
Examiner further finds, referring to Figure 6, that Kanda teaches the “server
(1) transmits track data (music material data and music composition data) to
playback apparatus (user 2-6) when the contents of contract (material data
rights management information and composition data rights management
information) establishes permission for use of the track data by said
playback apparatus (user 2-6) (Paragraphs [0101-0109]).” FOA 6; Ans. 6.
The Examiner further explains that “Kanda shows the copyright information
(Figure 8:S14) as establishing permission for use (Figure 6: contents of
contract-download/upload & Figure 9: valid for 3 months) of track data by
user (user needs to be registered before download/upload music data), and
the contract format (set the copyright information) is received from user
(Figures 6, 8, 9 and paragraphs [0123, 0136]).” Ans. 10.
Appellants argue that the Final Office Action fails to show that
Kanda’s copyright information establishes permission for use of track data
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by users. App. Br. 13. We do not agree. Kanda describes that users, such
as users 2 through 6, can enter into contracts with the management center or
distribution center according to various contract formats 1 through 5. Fig. 6;
¶¶ 0079, 0103-107. For example, the contracts entered into by users 2
through 5 according to contract formats 1 through 4 allow some of the users
to upload and/or download track data and download stereo track data. Fig.
6; ¶¶ 0103-108. If a user has not entered into a contract with the
management center, the user cannot download music piece data from the
management center. Fig. 6; ¶ 109. Kanda describes that a new user at a user
terminal can apply for a contract with the management center through the
internet. Fig. 7; ¶¶ 0122-0131. Kanda also a describes registration process
for project data at the user’s terminal device for user 2, whose contract
according to contract format 1 allows user 2 to upload or send music data to
the management center and create project data. Fig. 8; ¶¶ 0132-0133.
During this process, the project data generating software operating in the
user’s terminal device causes project data to be generated from the user’s
music data, with the generated project data containing track or stereo data
with each track having copyright information. Fig. 8; ¶¶ 0132-0133. Using
this software, user 2 can set copyright information and billing information
(Fig. 8:S14) for the project data or music data to be uploaded or transmitted
to the management center (Fig. 8:S16) using a setting screen of an interface
tool (Fig. 9:91). ¶¶ 0135-0140. Kanda specifically describes, referring to
Figure 9 reproduced below, that user 2 can set the number of times that
copies can be made and also set a time limit for the number of times that
copies can be made.
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Kanda’s Figure 9 is reproduced below:

Figure 9 depicts a setting screen for an interface tool.
Contrary to Appellant’s arguments, since Kanda describes that a user can set
the copyright information including the number of times that copies can be
made and the period of time that this right to copy is valid, Kanda teaches
that the copyright information establishes permissions for use. Appellants’
additional argument that Kanda’s contract formats are not the same as
Kanda’s copyright information (App. Br. 13) is misplaced because the
Examiner does not find that the contract formats are equivalent to the
copyright information. Ans. 5-6, 9-10.
Appellants’ arguments, newly presented in the Reply Brief, that
Kanda fails to disclose, teach or suggest the presence of both a music
material data generation apparatus and a music composition data generation
apparatus (Reply Br. 7), are untimely. Likewise, Appellants also argue for
the first time in the Reply Brief that Isozaki and Kanda fail to show that the
skilled artisan would have relied upon the copyright information of Kanda to
establish permission for using the performance setting information of Isozaki
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is also untimely. Reply Br. 8. Appellants’ arguments are not presented in
response to the Examiner’s Answer to the Appeal Brief. Rather, each of
these arguments could have been raised in the Appeal Brief responsive to the
Final Office Action. Since Appellants’ arguments in the Reply Brief could
have been presented in the Appeal Brief, the arguments are deemed waived
and are not considered. Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI
2010) (informative decision) (“[T]he reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner's rejections, but were not.”).
Appellants’ additional arguments directed to the Tohgi reference
(App. Br. 14, 17-18, 20-21, 23-24) are misplaced since Tohgi is not utilized
as a basis for the rejection of claims 18-20, 25, 26, 31 and 35-38.
For all these reasons, we sustain the rejection of claims 18-20, 25, 26,
31 and 35-38 over Isozaki, Ochi and Kanda.
Claims 21-24 and 27-30 over Isozaki, Ochi, Kanda and Tohgi
Appellants separately present arguments directed to claims 21-24
under one heading and substantially identical arguments addressing claims
27-30 under another separate heading. Compare App. Br. 24-26 with App.
Br. 26-27. Since the arguments addressing claims 21-24 are substantially
identical to the arguments addressing claims 27-30, we address all of these
claims together. Claim 21 ultimately depends from claims 13, 18 and 19
discussed above and further recites: “said material data rights management
information include access rights, copying rights and editing rights.”
The Examiner does not rely on Isozaki or Ochi for describing the
limitations of claim 21, but instead relies on Kanda for teaching access rights
information and copyright information and relies on Tohgi for teaching
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editing rights information. Ans. 7. Appellants argue that the Final Office
Action does not identify where Kanda discloses, teaches or suggests all three
of access rights, copying rights and editing rights and where Tohgi discloses,
teaches or suggests all three of access rights, copying rights and editing
rights. App. Br. 25-27.
Appellants’ arguments are unpersuasive because “[n]on-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.” In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the
rejection is based on the combined teachings of Isozaki, Ochi, Kanda, and
Tohgi; not Kanda alone nor Tohgi alone.
Appellants’ argument, newly presented in the Reply brief, that Tohgi
does not positively recite the presence of editing rights within material data
rights management information, and the presence of editing rights within
composition data rights management information (Reply Br. 8-10), is
untimely. Appellants’ argument is not presented in response to the
Examiner’s Answer to the Appeal Brief. Since Appellant’s argument could
have been, but was not, raised in the Appeal Brief responsive to the Final
Office Action, the argument is waived and is not considered.
For all these reasons, we sustain the rejection of claims 21-24 and 27-
30 over Isozaki, Ochi, Kanda and Tohgi.
DECISION
We AFFIRM the rejection of claims 13-17 and 32-34 under
35 U.S.C. § 103(a) as unpatentable over Isozaki and Ochi.
We AFFIRM the rejection of claims 18-20, 25, 26, 31 and 35-38
under 35 U.S.C. § 103(a) as unpatentable over Isozaki, Ochi and Kanda.
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We AFFIRM the rejection of claims 21-24 and 27-30 under
35 U.S.C. § 103(a) as unpatentable over Isozaki, Ochi, Kanda and Tohgi.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).
AFFIRMED

ELD