Ex Parte Epstein et al

Board of Patent Appeals and Interferences

Mar 5, 2008

09848885 (B.P.A.I. Mar. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MICHAEL EPSTEIN and MARTIN ROSNER
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Appeal 2007-2112
Application 09/848,885
Technology Center 2100
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Decided: March 5, 2008
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Before JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
JOHN A. JEFFERY, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-23. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

Appeal 2007-2112
Application 09/848,885

BACKGROUND
Appellants’ invention relates to the field of consumer electronics and
protection of copy-protected content material, including music (Spec. 1). An
understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below.
1. A system that is configured to receive one or more select
data items of a plurality of data items corresponding to a data
set, comprising:
a verifier that is configured to provide a verification of a
presence of the data set, via:
a first verification of a presence of a select subset of the
plurality of data items, and
a second verification of a receipt of a given proportion of
the plurality of data items, and
wherein the verifier provides the verification of the
presence of the data set if either the first verification or the
second verification occurs.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Serret-Avila 6,785,815 B1 Aug. 31, 2004
Oshima 6,266,299 B1 Jul. 24, 2001

REJECTIONS
Claims 1-7, 18 and 20-23 stand rejected under 35 U.S.C. § 102 as
being unpatentable over Serret-Avila.
Claims 8-17 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Serret-Avila in view of Oshima.
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Rather than reiterate the conflicting viewpoints advanced by the
Examiner and Appellants regarding the above-noted rejections, we make
reference to the Examiner's Answer (mailed March 27, 2006) for the
reasoning in support of the rejections, and to Appellants’ Brief (filed
January 9, 2005) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellants’ Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellants and the
Examiner. As a consequence of our review, we make the determinations
that follow.
35 U.S.C. § 102
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
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inherent in it. . . . Under the principles of inherency, if the prior art
necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343,
1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted).
"Inherency, however, may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations and internal quotation marks omitted).
"[A] prima facie case of anticipation [may be] based on inherency."
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once a prima facie case
of anticipation has been established, the burden shifts to the Appellant to
prove that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977) ("Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product."). See also In re Spada, 911 F.2d
705, 708 09 (Fed. Cir. 1990).
The issue we decide is: Has the Examiner set forth a prima facie case
of anticipation of independent claims 1 and 18?
Here, the Examiner maintains that Serret-Avila teaches both a first
verification of a presence of a selected subset of the plurality of data items as
taught in figures 9A and 9B and a second verification of a receipt of all of
the plurality of data items (figures 10-11), wherein the verifier provides the
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verification of the presence of the data set if either the first verification or
the second verification occurs (figure 11). (Answer 3-4). In the responsive
arguments section of the Brief, the Examiner further details how Serret-
Avila teaches the recited limitations of independent claim 1 (Ans. 8-11).
The Examiner emphasizes that a song which is partitioned as a data set is a
reasonable interpretation by one of ordinary skill in the art as recited in the
language of independent claim 1. The Examiner maintains that Serret-Avila
teaches verifying the presence of each data block/item of a received data set.
The Examiner maintains that this verifying of the presence of each and every
data block of the data set (song) of Serret-Avila verifies the presence of the
whole data set.
The Examiner further maintains that Serret-Avila also discloses
verifying whether the received data set is a valid data set by verifying that
certain data items designated as mark-holders that actually contain strong
watermarks are present, and verifying if these mark-holders exist by
analyzing the content of supposed mark-holders. The Examiner concludes
that by verifying whether the received data set is a valid set, Serret-Avila
also verifies the presence of the data set (Ans. 9).
While we agree with the Examiner's creative interpretation of the
teachings of Serret-Avila with respect to a verification of the presence of a
data set, we cannot agree with the Examiner that this would be a verification
of a presence of a select subset of the plurality of data items.
Rather, we agree with Appellants that the interpretation of Serret-
Avila can only be reasonably interpreted to teach a verification of only those
data sets actually received by the receiver (Br. 5). We cannot agree with the
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Examiner that this would have been a verification of the presence of a select
subset. Therefore, we agree with Appellants, and we find that Serret-Avila
does not teach verifying the presence of the subset, but does teach verifying
the presence of a watermark in a given subset (Br. 6). Therefore, we find the
Examiner's interpretation of the teachings of Serret-Avila to be attenuated
and unreasonable in light of the disclosure of Serret-Avila.
While we agree with the Examiner's various individual interpretations
of discrete portions of the teachings of Serret-Avila for distinct portions of
the claim limitations, we do not find that the totality of the interpretations
advanced by the Examiner are reasonable when the claimed invention is
interpreted as a whole.
Additionally, with respect to the Examiner's interpretation of Serret-
Avila with respect to the claim limitation for verification of the receipt of a
given proportion of a plurality of data items, the Examiner relies upon the
sequential verification of multiple blocks in a larger data set and relies upon
figures 10 and 11 of Serret-Avila (Answer 3-4). Here, the Examiner's
interpretation may be reasonable, but the Examiner has not identified any
express teachings to support this position. In the responsive arguments, the
Examiner identifies figure 11 in the decoding process as teaching the
limitation, but then relies upon the discussion of figure 10 with respect to
partitioning the data into blocks during the encoding process in figure 10
(Ans. 10-11). While we may speculate as to the overall decoding process in
light of the teachings of the encoding process, we find no express teachings
in Serret-Avila concerning receipt of a given portion of a plurality of data
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items, and the Examiner has not specifically identified a reasoned teaching
for this limitation.
Here, it appears that the Examiner has a generalized and segmented
application of the prior art reference to Serret-Avila with respect to the
claimed invention, but we do not find that the teachings of Serret-Avila
clearly teach the whole invention recited in the language independent
claim 1. Therefore, we will not sustain the anticipation rejection of
independent claim 1 and its respective dependent claims 2-7.
With respect to independent claim 18, the Examiner summarily
addresses this claim as the same scope as independent claim 1 (Br. 11). We
similarly find that the Examiner has failed to meet the initial burden of
establishing anticipation of independent claim 18 over Serret-Avila for the
same reasons discussed above. Additionally, we do not find that Serret-
Avila teaches conducting a first test for a presence of an entirety of the data
set based on a receipt of randomly selected sections of the data set as recited
in independent claim 18. Therefore, we will not sustain the anticipation
rejection of independent claim 18 and its dependent claims 20 -23.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
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1443, 1445 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . however, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1741 (2007)(quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
From our review of the teachings of Oshima as applied by the
Examiner concerning the data set identifier, we do not find that the teachings
of Oshima remedy the deficiency noted above with regard to Serret-Avila.
Therefore, we cannot sustain the obviousness rejection of dependent claims
8-17 and 19.
CONCLUSION
To summarize, we have reversed the rejection of claims 1-7, 18, and 20-
23 under 35 U.S.C. § 102, and we have reversed the rejection of claims 8-17
and 19 under 35 U.S.C. § 103(a).

REVERSED

clj

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