Ex Parte Garcia

Board of Patent Appeals and Interferences

Jul 30, 2002

08909545 (B.P.A.I. Jul. 30, 2002)

1 Application for patent filed August 12, 1997, entitled
"Method for Making Copy Protected Optical Discs."
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The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
_______________
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte BEN GARCIA

Appeal No. 2000-0753
Application 08/909,5451

ON BRIEF

Before BARRETT, FLEMING, and SAADAT, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
final rejection of claims 1-17.
We reverse.
Appeal No. 2000-0753
Application 08/909,545
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BACKGROUND
The invention relates to a method for protecting against
unauthorized copying of information on an optical medium which
stores information in a spiral track. A "mark" is placed in a
predetermining location within the spiral track by a special
process. The mark cannot be reproduced except by a LBR (laser
beam recorder) used in mass CD-ROM manufacturing. Verification
of the mark is checked by executable code on the disk.
Claim 1 is reproduced below.
1. A method for protecting against unauthorized
copying of information on an optical medium comprising the
steps of:
a) placing at least one mark at each of at least one
corresponding predetermined location on an optical medium,
which at least one location is within a continuous spiral
track of said optical medium, which mark is incapable of
being reproduced except by a mass reproduction recorder, and
which mark, when read by a device adapted to read data
contained in said continuous spiral track is incapable of
being read, and, thereby prevents writing a copy of said
mark on an optically recordable medium;
b) adding an executable code module to said optical
medium, said executable code module adapted to verify said
at least one mark, and allow access to data and programs on
said optical medium after said verification of said at least
one mark.
The examiner relies on the following references:
Oshima et al. (Oshima '301) 5,761,301 June 2, 1998
(filed November 17, 1995)
Oshima et al. (Oshima '551) 5,805,551 September 8, 1998
(filed April 25, 1997)
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Application 08/909,545
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Claims 1-17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oshima '301 and/or Oshima '551.
We refer to the final rejection (Paper No. 4) (pages
referred to as "FR__") and the examiner's answer (Paper No. 11)
(pages referred to as "EA__") for a statement of the examiner's
rejection, and to the brief (Paper No. 9) (pages referred to as
"Br__") and reply brief (Paper No. 12) for a statement of
appellant's arguments thereagainst.
OPINION
It is the examiner's duty to establish a prima facie case of
obviousness. The way to do this is to point out, with
specificity, where each of the claim limitations are taught or
suggested in the references. Oshima '301 has 43 sheets of
drawings and 42 columns of text and Oshima '551 has 133 sheets of
drawings and 66 columns of text. We do not find the examiner's
general description of the Oshima patents and references to a
couple of figures in each to be of much help in addressing the
particular claim limitations. Nevertheless, we try our best to
read the claims on the references. We start with Oshima '301.
Oshima '301 discloses a copy protection technique. With
reference to the secondary recording process 817 in figure 1, an
anti-piracy copy protection mark is formed in the radial
direction in random locations on completed disks (step 819a);
accurate position information about the mark is read by a
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Application 08/909,545
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measuring means (step 819b); this physical feature information is
encrypted (step 819c); and is recorded as a barcode signal on the
disk by a laser (step 819d).
Claim 1 recites "placing at least one mark at each of at
least one corresponding predetermined location on an optical
medium" (emphasis added). The limitation does not define the
nature of the mark, i.e., it does not describe that the mark is
an area where the format is incorrect (e.g., not an eight-to-
fourteen modulation (EFM) as required industry standard), so the
nonreflective portions of Oshima '301 can be considered a mark
(at least as far as this first limitation goes). Oshima '301
discloses (col. 13, lines 28-31): "Laser markings are formed
at random in the anti-piracy mark formation process at the
factory. No laser markings formed in this manner can be
identical in physical feature." (Emphasis added.) Clearly, a
random location is not a "predetermined location" as claimed.
The examiner does not address this limitation and, thus, the
rejection must fail based on the first phrase of the claim.
Nevertheless, we address all of the claim limitations.
Claim 1 continues, "which at least one location is within a
continuous spiral track of said optical medium." Oshima '301
discloses that the marks are formed by removing the reflective
coating to form a nonreflective portion in a radial direction,
cutting the spiral track at several places (figures 2A-2C;
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Application 08/909,545
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figure 13A-13B; figure 41, marking 9103). Each cut through a
track broadly represents a location within a continuous spiral
track as shown in figures 2C and 2D.
The examiner interpreted "within a continuous spiral track"
as "any location on the disk having a spiral track" (FR2). We
agree with appellant's argument (Br7) that this is an erroneous
interpretation. However, it has not been shown that the mark in
Oshima '301 which cuts across the spiral track several times
(figure 2C) does not have a mark within the spiral track.
The examiner states (EA4; see also EA6):
[A]lthough the references do not disclose the use of placing
at least one mark on at least one location within spiral
data track on the disk, such limitation is merely an
alternative equivalent to placing at least one mark on at
least one location on a concentric track within the disk
data area. Furthermore such limitation is suggested in the
references as illustrated in Oshima et al (301) in
figures 2D and fig 3 showing a marking within a data track
and figs 13A, 13B and 19 showing spiral data tracks on the
disk . . . .
By stating that placing a mark on a spiral data track is an
alternative to placing a mark on a concentric track, it appears
that the examiner finds that Oshima '301 does not disclose a
spiral data track, which finding is clearly erroneous. This
erroneous "difference" appears to be the reason for the
obviousness rejection since no other "differences" are addressed.
As we have found, the mark in Oshima '301 has several locations
which are within the continuous spiral track. The examiner's
finding of a difference which does not exist is harmless error.
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Application 08/909,545
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Appellant argues that Oshima '301 teaches the use of a
physical mark at a physical film level, in a secondary recording
process, rather than the master disk level physical mark (Br7).
The examiner responds that the claims do not require the mark to
be created by the mastering machine and do not recite the process
of how the marks are recorded on the disk (EA6).
The examiner is correct. We find no language in the
limitation at issue, or in claim 1 as a whole, that distinguishes
over placing the mark by a secondary recording process or that
requires the creating the mark at the master disk level.
Appellant has not pointed to any specific limitations in the
claims to support his argument.
Claim 1 continues, "which mark is incapable of being
reproduced except by a mass reproduction recorder." The examiner
finds that "the mark is reproduced by a mass reproduction
recorder (optical head)" (FR2). Appellant argues that the
examiner errs in construing the mass reproduction recorder as an
optical head because a mass reproduction recorder is defined in
the specification at page 5, lines 21-33, as a particular piece
of equipment which is much narrower than an "optical head"
(Br7-8). The examiner responds that "[t]he claims do not exclude
the use of a magnetic head, bar code optical probe..etc. the
claim merely recite[s] the use of a mass reproduction recorder
and not an optical mass reproduction recorder" (EA6-7).
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Application 08/909,545
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As previously observed, the nature of the mark is not
claimed. However, the limitation does require that the mark,
whatever it is, is capable of being reproduced by a mass
reproduction recorder. The examiner has not shown that there is
a device in existence which can reproduce the mark in Oshima '301
and, so, has not shown that this limitation is met. We also
agree with appellant that a mass reproduction recorder has been
described in the specification and that the laser beam recorder
(LBR) structure involves more than simply an optical head as
stated by the examiner. The important thing is that the mark can
be reproduced only by a mass reproduction recorder.
Claim 1 further states "and which mark, when read by a
device adapted to read data contained in said continuous spiral
track is incapable of being read, and, thereby prevents writing a
copy of said mark on an optically recordable medium." The
examiner does address this limitation and has not shown that a
conventional optical reading device cannot read the mark.
Claim 1 recites "adding an executable code module to said
optical medium, said executable code module adapted to verify
said at least one mark, and allow access to data and programs on
said optical medium after said verification of said at least one
mark." The examiner finds that "when the mark is read by a
device (optical head) it prompts the device to stop recording and
reproducing operation, a software within the disk area prompts
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Application 08/909,545
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the user to enter a password, code, ID ..etc in order to verify
whether that entered code" (FR2). Appellant argues that the
present invention does not include a prompt or user entered
password or the like as asserted by the examiner (Br8). It is
argued that the present invention includes an executable code
module which itself verifies the mark located in a spiral track
or data following the track (Br8). The examiner responds that
"Oshima et al (301) column 12 line 60 to column 13 line 14
discloses the use of reading position information using
encryption data to identify the marking position on the disk
meeting appellant's claimed invention" (EA7).
The term "executable code" requires instructions that are
executed, not a mere recorded barcode of marking position
information that is compared by an external program or hardware
as shown in Oshima '301, figure 41. The information recorded in
the barcode in Oshima '301 does not verify the mark or allow
access to data and programs on the optical medium, as claimed.
The examiner's rejection does not address the terminology of
"executable code" or the fact that the executable code on the
optical medium is adapted to perform verification and access
functions.
For the reasons stated above, the examiner has failed to
establish a prima facie case of obviousness. The rejection of
claim 1, and its dependent claims 2-14, is reversed. Claim 15 is
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Application 08/909,545
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similar to claim 1 except that claim 15 recites that the
executable code is "adapted to verify correctness of data
following said mark contained on said optical medium." This
limitation is not taught or suggested in Oshima '301, nor has the
examiner sought to address this limitation. For this reason and
for the reasons stated in the analysis of claim 1, the rejection
of claim 15 and its dependent claims 16 and 17, is reversed.
The examiner's final rejection contains no details of how
Oshima '551 is applied to claim 1. The examiner's answer only
refers to figures 41a and 46 of Oshima '551. Figure 41 is
similar to figure 2 of Oshima '301. Since Oshima '551 is a long
and complicated patent, having some fourteen embodiments, we will
not hunt through it looking for something that might support the
examiner's rejection. It appears that the copy protection of
Oshima '551 (the second embodiment, cols. 22-30) is a variation
of Oshima '301, which uses the location of physical marks on the
disks, and has the same deficiencies as Oshima '301. The
examiner has failed to set forth a prima facie case of
obviousness. Accordingly, the rejection of claims 1-17 over
Oshima '551 is reversed.
We note that the examiner never addressed the patentability
of the dependent claims during prosecution. In response to
appellant's argument in the brief that the examiner had failed to
set forth separate grounds for rejection of these claims with
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Application 08/909,545
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specific reference to the prior art (Br10), the examiner briefly
treats the dependent claims in the examiner's answer (EA7-8).
This constitutes a new ground of rejection and appellant could
have petitioned to have the rejection so labeled and prosecution
reopened. Since we reverse the rejection of the independent
claims, it is not necessary to address the dependent claims.
CONCLUSION
The rejections of claims 1-17 are reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
Appeal No. 2000-0753
Application 08/909,545
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