Ex Parte Burks

Board of Patent Appeals and Interferences

Mar 25, 2010

10208596 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID PATRICK BURKS
____________

Appeal 2009-004820
Application 10/208,596
Technology Center 2100
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Decided: March 25, 2010
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Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
STEPHEN C. SIU, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-4, 6-9, 12, 13, 16, 17, 19, 20, 22-31, 46-48, and 50,
which are all of the remaining claims in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Invention
Appellant’s invention relates to a system and method for processing
coded video data stored on removable storage media. The system includes a
system manger configured to receive inputs from a user of the system and, in
response to the inputs, to read organizational structure information stored on
a removable storage medium. The system manager is also configured to
identify a set of coded video data stored on the removable storage medium
based on the inputs and the organizational structure information. The
system manager is further configured to retrieve instructions from a
decoding application stored on the removable storage medium and to
transmit the instructions to a processing element configured to receive the
instructions transmitted by the system manager. The processing element is
configured to execute the instructions to decode the set of coded video data
into decoded video data. Abstract.

Representative Claim
17. A method for processing coded video data stored on a
removable storage medium, comprising:
reading organizational structure information stored on a
removable storage medium;
retrieving a set of coded video data from said medium based on
said organizational structure information;
retrieving at least a decompressing/decoding application and a
decrypting/decoding application from said removable storage
medium; and
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decoding said set of coded video data via said
decompressing/decoding application and said decrypting/decoding
application to produce decoded video data.

Prior Art
Oshima 5,526,328 Jun. 11, 1996
Roberts 6,094,219 Jul. 25, 2000

Examiner’s Rejections
Claims 1-4, 6-9, 12, 13, 16, 17, 19, 20, 22-31, 46-48, and 50 stand
rejected under 35 U.S.C. § 103(a) as being as being unpatentable over
Roberts and Oshima.

Claim Groupings
Based on Appellant’s arguments in the Appeal Brief, we will decide
the appeal on the basis of claim 17. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
Did the Examiner err in finding the combination of Roberts and
Oshima teaches “retrieving at least a decompressing/decoding application
and a decrypting/decoding application from said removable storage
medium” as recited in claim 17?

FINDINGS OF FACT
Roberts
1. Roberts teaches a decompression algorithm, written onto a
memory storage diskette along with image data, which can automatically
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determine an appropriate level of compression associated with an image file
and execute decompression efficiently. Col. 5, ll. 50-55.

Oshima
2. Oshima teaches a method of unlocking a key of a given
program in an optical disk such as a CD ROM. Where a command of
starting a program having a number N is received at step 405 (Fig. 148), a
reading process is done to check whether key information of the program is
recorded on a magnetic track at a step 405a. At step 405d, the user inputs
key data or a password, for example, “123456.” If the password is correct,
the method advances to step 405g so that the key data for opening the
program having the number N is recorded on the magnetic track of the
recording medium 2. Col. 84, ll. 33-52.
3. A plurality of game programs are recorded into a CD. Only one
recorded game program has no key and thus can be reproduced freely while
the other game programs are locked by keys. This CD is sold at a price
corresponding to a copyright fee of one game program. The user is
informed of data of the keys by paying an additional fee. The user then may
access the other game programs. Col. 85, ll. 9-16.
4. A copy guard function can be applied in the case where
software such as an operating system (OS) is installed into a number of
machines or personal computers. A portion of a disk stores data of the
maximum number of personal computers into which information is
permitted to be installed from the disk. For example, the data can represent
the maximum number of personal computers into which a first program is
permitted to be installed, such as 5, and the maximum number of personal
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computers into which a second program is permitted to be installed, such as
3. A key unlocking decoder 406 (Fig. 149) outputs data that enables a
program such as an OS to be installed into a hard disk 409 of a first personal
computer 408 via an external interface 14. The data of the ID number
xxxx11 of the personal computer 408 is fed to a CD ROM drive 1a. The ID
data is stored into an n=1 position of the program 1 in the key management
table 404, and is then recorded on a magnetic track 67 of the CD ROM.
Col. 85, ll. 39-61.
5. If the program such as the OS is intended to be installed from
the CD ROM 2a into a second personal computer 408a identified as xxxx23,
a check is made on the key management table 404. As a result of the check,
it is known that four machines remain into which the program is permitted to
be installed. Thus, the installing process is started and executed. The data of
the ID number xxxx23 of the personal computer 408a is stored into an n=2
column in the program 1 in the key management table 404. In such a way,
the program such as the OS can be installed into at most five personal
computers. In the case where the program such as the OS is intended to be
installed into a sixth personal computer, there is no unoccupied column in
the program 1 so that an ID number of the sixth personal computer can not
be recorded. Thus, the program such as the OS is inhibited from being
installed into the sixth personal computer. In this way, illegal copy of the
program such as the OS is prevented. Col. 85, l. 62 to col. 86, l. 20.

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
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(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17
(1966). “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Appellant alleges differences between the invention and the prior art
on pages 7 and 8 of the Appeal Brief without identifying any particular
claim or claims that might be commensurate with the remarks. Based on our
review of the independent claims in light of Appellant’s arguments in the
Appeal Brief, we decide the appeal on the basis of claim 17 alone.
Appellant contends that Roberts does not disclose storing a retrieval
application or multiple decoding applications with image data. Br. 7-8. The
Examiner does not find that Roberts teaches a retrieval application or
multiple decoding applications. The Examiner finds that the combination of
Roberts and Oshima teaches a retrieval application and multiple decoding
applications. Ans. 8-9, 12-16. Therefore, Appellant’s contention that
Roberts does not disclose storing a retrieval application or multiple decoding
applications fails to address the Examiner’s finding.
Appellant contends that Oshima does not teach or suggest a retrieval
application or multiple decoding applications. Br. 8. In particular,
Appellant contends that a secret code decoding program described by
Oshima does not teach a retrieval application or multiple decoding
applications. Br. 8.
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However, the Examiner finds that Oshima teaches a retrieval
application stored on a compact disc that invokes decoding applications and
provides decoded data. The Examiner finds that the copy protection and key
unlocking taught by Oshima permits (or prevents) the use of decoding keys
to decode multiple programs stored on the disk, which teaches a retrieval
application and multiple decoding applications. Ans. 12, 15-16. Appellant
has not responded to the Examiner’s finding.
At pages 9 through 13 of the Brief, Appellant quotes several
independent claims and alleges generally that the combination of Roberts
and Oshima fails to teach the quoted language. However, a statement that
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii). To
the extent that any of the remarks might be construed as arguments for
separate patentability, the remarks are insufficient to show error in the
Examiner’s findings in support of the conclusion of obviousness.
Appellant’s Brief is ineffective in demonstrating error in the Examiner’s
findings or legal conclusions to establish the patentability of the claims on
appeal. See Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BPAI Aug.
10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.

CONCLUSIONS OF LAW
The Examiner did not err in finding the combination of Roberts and
Oshima teaches “retrieving at least a decompressing/decoding application
and a decrypting/decoding application from said removable storage
medium” as recited in claim 17.
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DECISION
The rejection of claims 1-4, 6-9, 12, 13, 16, 17, 19, 20, 22-31, 46-48,
and 50 under 35 U.S.C. § 103(a) as being as being unpatentable over
Roberts and Oshima is affirmed.
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.
§ 41.50(f).

AFFIRMED

msc

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