Ex Parte Costa

Board of Patent Appeals and Interferences

May 9, 2011

10420350 (B.P.A.I. May. 9, 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.
10/420,350 04/22/2003 Pierre Costa T00503 Con_7785-634-01 2768
92384 7590 05/09/2011
AT&T Legal Department - GMG
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
SHAH, AMEE A
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
05/09/2011 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte PIERRE COSTA 8
___________ 9
10
Appeal 2011-005595 11
Application 10/420,350 12
Technology Center 3600 13
___________ 14
15
16
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 17
MICHAEL W. O’NEILL, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
Appeal 2011-005595
Application 10/420,350

2
STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 23, 2010) and Reply Brief (“Reply Br.,” filed February 7,
2011), and the Examiner’s Answer (“Ans.,” mailed November 5, 2010).
Pierre Costa (Appellant) seeks review under 35 U.S.C. § 134 (2002) of 2
a final rejection of claims 1-5, 7, 11-14, 17-28, and 30-34, the only claims 3
pending in the application on appeal. We have jurisdiction over the appeal 4
pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellant invented a way of providing multiple versions of video 6
content. (Specification 1:¶ 0003). An understanding of the invention can be 7
derived from a reading of exemplary claim 1, which is reproduced below 8
[bracketed matter and some paragraphing added]. 9
1. A method comprising: 10
[1] receiving a selection of a version of a movie associated with 11
a rating; 12
[2] identifying data to enable the selected version of the movie 13
to be read from a storage medium; and 14
[3] storing the identified data to a writeable portion of a storage 15
medium 16
to enable 17
only the selected version of the movie of a 18
plurality of different versions of the movie stored 19
in a read-only portion of the storage medium 20
to be read from the storage medium while 21
the identified data is stored in the writeable 22
portion of the storage medium, and 23
Appeal 2011-005595
Application 10/420,350

3
to prohibit other versions of the movie of the 1
plurality of different versions of the movie from 2
being read from the storage medium 3
while the identified data is stored in the 4
writeable portion of the storage medium; 5
[4] wherein while the identified data is stored in the writeable 6
portion of the storage medium, 7
the stored identified data alone 8
enables only the selected version of the movie to 9
be read from the storage medium and 10
the stored identified data alone 11
prohibits other versions of the movie from being 12
read from the storage medium; and 13
[5] wherein each version of the movie of the plurality of 14
different versions of the movie is associated with a different 15
rating. 16
Claims 1-5, 7, 11-14, 17-28, and 30-34 stand rejected under 35 U.S.C. 17
§ 112, first paragraph, as lacking a supporting written description within the 18
original disclosure. 19
ISSUES 20
The sole issue before us is whether the originally filed Specification 21
describes that the stored identified data alone enables only the selected 22
version of the movie to be read from the storage medium and prohibits other 23
versions of the movie from being read from the storage medium. 24
FACTS PERTINENT TO THE ISSUES 25
The following enumerated Findings of Fact (FF) are believed to be 26
supported by a preponderance of the evidence. 27
Appeal 2011-005595
Application 10/420,350

4
Facts Related to Appellants’ Disclosure 1
01. The originally filed Specification does not describe that the 2
stored identified data alone enables only the selected version of 3
the movie to be read from the storage medium and prohibits other 4
versions of the movie from being read from the storage medium. 5
ANALYSIS 6
We are unpersuaded by the Appellant’s argument that the Specification 7
describes that the stored identified data alone enables only the selected 8
version of the movie to be read from the storage medium and prohibits other 9
versions of the movie from being read from the storage medium. Appeal Br. 10
6-11. The Appellant points to ¶’s 13, 26, and 27 for support. While each of 11
these paragraphs describes that the play list enables play back, none of the 12
paragraphs states or even implies that the playlists alone are so enabling. 13
Initially, we are left to wonder how a piece of data alone, i.e. without the 14
aid of any supporting executable code, can do much of anything, let alone 15
enable a selected version to be read. Beyond that, the Appellant, unable to 16
show how the cited portions explicitly support the claim limitation, simply 17
contends that those portions at least imply such. To that end, the Appellant 18
states that “[s]everal observations can be made from the above illustrations 19
of the Applicant’s Specification” (App. Br. 8) and that the illustrations “do 20
not infer or expressly state that more than one instance of a play list is 21
necessary” (App. Br. 9). 22
The Appellant finally points to an embodiment using pointers (App. Br. 23
9-10) and concludes that “[o]ne of ordinary skill in the art would recognize 24
that the use of such pointers . . . would allow the playlist alone to enable 25
Appeal 2011-005595
Application 10/420,350

5
reading the selected version of the movie and prohibit reading of other 1
versions.” App. Br. 10. We find no quarrel with the notoriety of the use of 2
pointers, or with whether such pointers would enable the claimed invention. 3
But the Appellant asks us to find that the obviousness of the use of pointers 4
alone is sufficient to show possession of the claimed subject matter. 5
One shows that one is “in possession” of the invention by 6
describing the invention, with all its claimed limitations, not 7
that which makes it obvious. Id. (“[T]he applicant must also 8
convey to those skilled in the art that, as of the filing date 9
sought, he or she was in possession of the invention. The 10
invention is, for purposes of the ‘written description’ inquiry, 11
whatever is now claimed.”) (emphasis in original). One does 12
that by such descriptive means as words, structures, figures, 13
diagrams, formulas, etc., that fully set forth the claimed 14
invention. Although the exact terms need not be used in haec 15
verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038 16
(Fed.Cir.1995) (“[T]he prior application need not describe the 17
claimed subject matter in exactly the same terms as used in the 18
claims . . . .”), the specification must contain an equivalent 19
description of the claimed subject matter. 20
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) 21
(internal citation omitted). 22
It is the disclosures of the applications that count. Entitlement 23
to a filing date does not extend to subject matter which is not 24
disclosed, but would be obvious over what is expressly 25
disclosed. It extends only to that which is disclosed. While the 26
meaning of terms, phrases, or diagrams in a disclosure is to be 27
explained or interpreted from the vantage point of one skilled in 28
the art, all the limitations must appear in the specification. The 29
question is not whether a claimed invention is an obvious 30
variant of that which is disclosed in the specification. Rather, a 31
prior application itself must describe an invention, and do so in 32
sufficient detail that one skilled in the art can clearly conclude 33
that the inventor invented the claimed invention as of the filing 34
date sought. 35
Appeal 2011-005595
Application 10/420,350

6
Id. at 1571-72. 1
CONCLUSIONS OF LAW 2
The rejection of claims 1-5, 7, 11-14, 17-28, and 30-34 under 35 U.S.C. 3
§ 112, first paragraph, as lacking a supporting written description within the 4
original, is proper. 5
DECISION 6
The rejection of claims 1-5, 7, 11-14, 17-28, and 30-34 under 35 U.S.C. 7
§ 112, first paragraph, as lacking a supporting written description within the 8
original disclosure is sustained. 9
No time period for taking any subsequent action in connection with this 10
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 11
§ 1.136(a)(1)(iv) (2007). 12
13
AFFIRMED 14
15
16
17
18
erc 19
20