Ex Parte Hamersley et alDownload PDFPatent Trial and Appeal BoardFeb 8, 201612083273 (P.T.A.B. Feb. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/083,273 04/07/2008 24498 7590 02/10/2016 Robert D, Shedd, Patent Operations THOMSON Licensing LLC 4 Research Way 3rd Floor Princeton, NJ 08543 FIRST NAMED INVENTOR Alan Bruce Hamersley 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PU060062 7184 EXAMINER SHERR, MARIA CRISTI OWEN ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 02/10/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): uspto@technicolor.com pat. verlangieri@technicolor.com russell. smith@technicolor.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAN BRUCE HAMERSLEY, HOLGER HOFMANN, and JOHN MATTHEW TOWN Appeal2013-004443 Application 12/083,273 Technology Center 3600 Before ANTON W. PETTING, NINA L. MEDLOCK, and CYNTHIA L. MURPHY, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Alan Bruce Hamersley, Holger Hofmann, and John Matthew Town (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 1, 4---6, 15, 16, and 19-21, the only claims pending in the application 1 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed August 16, 2012) and Reply Brief ("Reply Br.," filed January 29, 2013), and the Examiner's Answer ("Ans.," mailed January 4, 2013), and Final Rejection ("Final Act.," mailed July 20, 2012). Appeal2013-004443 Application 12/083,273 on appeal. \Ve have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellants invented a way for downloading audio or video content in a secured way for in-home, in-store and factory replication of video content. Specification para. 2. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A DVD recording apparatus comprising: [1] authentication means for authenticating a recordable DVD media; [2] a recorder supplied with content which is preprocessed to include copy protection encryption, modulation encoding, and DVD formatting for recording the content onto recordable DVD media in response to authentication of the recordable DVD by the authentication means so that after recording, the recordable DVD media has properties identical to a DVD-Video Read Only Disc in formatting, logical structure, encoding, readout characteristics, and physical layout. The Examiner relies upon the following prior art: Chikhani US 4,839,657 Montoya US 5,949,688 Kawamae US 6,578, 149 B 1 Fairman US 2003/0155417 Al 2 June 13, 1989 Sept. 7, 1999 June 10, 2003 Aug. 21, 2003 Appeal2013-004443 Application 12/083,273 Nagel US 7 ,080,041 B2 July 18, 2006 Claims 1, 4---6, 15, 16, and 19-21 stand rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention. 2 Claims 1, 4, 5, 15, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fairman and Kawamae. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Fairman, Kawamae, and Chikhani. Claims 16 and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Fairman, Kawamae, and Nagel. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Fairman, Kawamae, and Montoya. ISSUES The issues of definiteness tum primarily on whether the Specification describes supporting structure for a means for authenticating a recordable DVD media. The issues of obviousness tum primarily on whether Kawamae describes creating a DVD that cannot be recorded on further. 2 Appellants argue against a rejection under 35 U.S.C. § 101 (App. Br. 9- 12), but no such rejection is made in the Final Action or subsequent to that action. 3 Appeal2013-004443 Application 12/083,273 FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to Appellants 'Disclosure 01.Appellants cite Specification paragraph 42 as supporting the claim 1 means for authenticating. Reply Br. 6. The only supporting structure described therein is an authentication I ancillary data management subsystem. No structure for implementing the authentication within this black box is described. 02.A DVD that cannot be recorded on further is a DVD-Video Read Only Disc. Spec. para. 21. Facts Related to the Prior Art Fairman 03.Fairman is directed to writing data to media storage devices, and more particularly, to writing data to media storage devices from a content vending machine. Fairman para. 1. 04.Fairman describes a multimedia content vending machine that enables a user to download multimedia data files from a locally stored storage medium within the vending machine to an externally connected media storage device. The multimedia content vending machine includes a user interface, a means for accepting payment, an interface for coupling with the external media storage device, and a network interface for coupling to a 4 Appeal2013-004443 Application 12/083,273 communications network. The multimedia data file to be rented is downloaded with a corresponding expiration time. The external media storage device is capable of invalidating the downloaded multimedia data file once the expiration time has elapsed. Preferably, the multimedia content vending machine and the external media storage device are coupled via an IEEE 1394-2000 serial bus. Fairman para. 14. 05.Fairman describes multimedia data files, stored in a storage medium, which are encrypted. The multimedia data file received by the external media storage device is encrypted and the external media storage device decrypts the multimedia data file for playback. The downloaded encrypted multimedia data file includes a time restriction that limits playback of the multimedia data file by the external media storage device to a specified time frame. Fairman para. 15. Kawamae 06.Kawamae is directed to reproducing video data and audio data, and more particularly to recording data which are arranged to reproduce and/ or record data from/ onto a recording medium based on copy management information. Kawamae 1: 14--19. 07.In the case of reproducing data scrambled according to the corresponding system to each recordable medium, it is necessary to take the step of discriminating the corresponding recording medium to a coming reproduction signal before descrambling the reproduction signal. Kawamae 1 :45-52. 5 Appeal2013-004443 Application 12/083,273 08. The data input read from a DVD is descrambled according to the recorded format. In this descrambling operation, the reproducing unit reads a type of data including a code for indicating a type of the recording medium contained in the data (for example, a code for indicating if the recording medium is dedicated to reproduction or recordable), a code for indicating whether or not the data structure is scrambled, and a code for indicating if the data are video or audio or copy limitation (for example, a code for indicating copy permission, one-generation copy permission, or copy prohibition). Further, for an optical disk, the type of the recording medium may be discriminated on a tracking signal of the disk. Based on the pieces of information read, Kawamae selects the corresponding authenticating unit to the read data for making sure of a person with whom the data is communicated, and key information is sent/received for descrambling purposes. Received data have been scrambled by the key and the data are descrambled using the key so as to protect the data. Kawamae 3:32-54. 09.A first authenticating unit authenticates a reproduction-dedicated recording medium. A second authenticating unit authenticates a recordable recording medium with its copy limited by copy limitation information. A third authenticating unit authenticates a recordable recording medium with no copy limitation by copy limitation information. A CSS authenticating unit is an authenticating means for the DVD drive to the existing CSS (Content Scrambling System). Kawamae 3:55---67. 6 Appeal2013-004443 Application 12/083,273 10.Kawamae describes writing to DVD media. Kawamae 5:5-25. 11.Kawamae describes writing to write once media. Kawamae 5:55- 61. ANALYSIS Claims 1, 4-6, 15, 16, and 19-21 rejected under 35 U.S. C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention We are not persuaded by the Appellants' argument that Specification paragraph 42 supports the function of authenticating a recordable DVD media recited in the means plus function limitation within limitation [ 1]. Reply Br. 6. Appellants do not specify where in this paragraph the support is to be found. The only reference to authentication in the paragraph is "this media 72 is then read, confirmed to be D-DVD media, authentication and serialization data is [sic] then read from the disc for transfer through an authentication I ancillary data management subsystem 97 to the transaction manager 82 for final authentication from the PPSC 42." Id. Thus, the only structure described is an authentication I ancillary data management subsystem. This merely labels the function. This does not recite structure describing how the function is achieved. "For means-plus-function limitations where the disclosed structure is a computer programmed to implement an algorithm, the patent must disclose enough of an algorithm to provide the necessary structure under 35 U.S.C. § 112 i-f 6." In re Aoyama 656 F.3d 1293, 1297 (Fed Cir. 2011). A black box structure supporting a means plus function limitation that fails to describe, even at a high level, how a computer could be programmed to 7 Appeal2013-004443 Application 12/083,273 produce the stn1cture that provides the results described in the box is insufficient to meet the statutory requirements. Id. at 1298. Claims 1, 4, 5, 15, and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over Fairman and Kawamae We are not persuaded by the Appellants' argument that the art fails to describe the claim 1 recorder. 3 No recorder structure per se is recited in the claim, but instead the recorder is defined in terms of its function, viz., "recording the content onto recordable DVD media in response to authentication of the recordable DVD by the authentication means so that after recording, the recordable DVD media has properties identical to a DVD-Video Read Only Disc in formatting, logical structure, encoding, readout characteristics, and physical layout." Claims App. (Claim 1). As the Examiner found, this requires recording data onto a DVD after authentication, and recording that data so the resultant DVD has properties identical to a DVD-Video Read Only Disc in formatting, logical structure, encoding, readout characteristics, and physical layout. And as the Examiner found, Kawamae describes creating a write once DVD, which after the data are put on the disk and the disk is finished, the resultant disk is a DVD-Video Read Only Disc. FF 02, 10, 11. As such, its properties are tautologically identical to a DVD-Video Read Only Disc in formatting, logical structure, encoding, readout characteristics, and physical layout. 3 Whether the art describes the authentication means is not contended. Therefore the lack of a supporting description in the Specification found as to the rejection under 35 U.S.C. § 112, second paragraph does not preclude analysis of the art rejections. 8 Appeal2013-004443 Application 12/083,273 \Ve consider the limitation of "content which is preprocessed to include copy protection encryption, modulation encoding, and DVD formatting" as Appellants argue. App. Br. 13. This content is not part of the recorder structure, but instead is the data the recorder acts upon. Claim 1 is directed to a structural apparatus, not a method containing steps. "[E]xpressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666, 667 (BP AI 1969). Furthermore, "inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 940 (CCPA 1963). Accordingly, having considered this limitation and the Appellants' arguments, we accord no patentable weight to this limitation. The remaining claims are not separately argued. Claim 6 rejected under 35 U.S.C. § 103(a) as unpatentable over Fairman, Kawamae, and Chikhani Appellants argue this rejection based on the parent claim. Claims 16 and 21 rejected under 35 U.S.C. § 103(a) as unpatentable over Fairman, Kawamae, and Na gel Appellants argue this rejection based on the parent claim. 9 Appeal2013-004443 Application 12/083,273 Claim 19 rejected under 35 U.S.C. § 103(a) as unpatentable over Fairman, Kawamae, and Montoya Appellants argue this rejection based on the parent claim. CONCLUSIONS OF LAW The rejection of claims 1, 4---6, 15, 16, and 19-21under35 U.S.C. § 112, second paragraph, as failing to particularly point out and distinctly claim the invention is proper. The rejection of claims 1, 4, 5, 15, and 20 under 35 U.S.C. § 103(a) as unpatentable over Fairman and Kawamae is proper. The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Fairman, Kawamae, and Chikhani is proper. The rejection of claims 16 and 21under35 U.S.C. § 103(a) as unpatentable over Fairman, Kawamae, and Nagel is proper. The rejection of claim 19 under 35 U.S.C. § 103(a) as unpatentable over Fairman, Kawamae, and Montoya is proper. 10 Appeal2013-004443 Application 12/083,273 DECISION The rejection of claims 1, 4---6, 15, 16, and 19-21 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. § 1.136(a)(l)(iv) (2011). AFFIRMED 11 Copy with citationCopy as parenthetical citation