Ex Parte HAN

Board of Patent Appeals and Interferences

Nov 21, 2006

09319093 (B.P.A.I. Nov. 21, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MIN-JAE HAN
____________

Appeal No. 2006-2113
Application No. 09/319,093
Technology Center 3600
____________

ON BRIEF
____________

Before FRANKFORT, HORNER and FETTING, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1-18, all of the claims pending in the application. Claims
19-45 have been canceled.
We reverse.
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Application No. 09/319,093

BACKGROUND
The appellant’s invention relates to a record/playback apparatus and method.
Claims 1 and 11 are representative of the subject matter on appeal, and a copy of
these claims can be found in the appendix to the appellant’s brief.
The examiner relies upon the following as evidence of unpatentability:
Freeny, Jr. (Freeny) 4,528,643 Jul. 09, 1985
Yoshioka 4,964,109 Oct. 16, 1990
Endoh 5,084,790 Jan. 28, 1992
Suzuki 5,850,527 Dec. 15, 1998
Ball et al. (Ball) EP 0 309 298 A2 Mar. 29, 1989

The appellant has asked us to reconsider the examiner’s rejection of claims
1-18 under 35 U.S.C. § 103(a) as being unpatentable over Ball in view of Suzuki,
Yoshioka, Freeny and Endoh.
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellant regarding this appeal, we make reference to the final
office action (mailed January 11, 2005), the examiner's answer (mailed January 17,
2006) for the examiner's complete reasoning in support of the rejection and to the
appellant’s brief (filed December 12, 2005) and reply brief (filed March 21, 2006)
for the appellant’s arguments.

OPINION
In reaching our decision in this appeal, we have carefully considered the
appellant’s specification and claims, the applied prior art, and the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations that follow. It is our view that, after
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Application No. 09/319,093

consideration of the record before us, the examiner has failed to set forth a prima
facie case of obviousness.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The examiner can satisfy
this burden by showing that some objective teaching in the prior art or that
knowledge generally available to one of ordinary skill in the art would lead that
individual to combine the relevant teachings of the references such that they would
teach or suggest the claimed subject matter. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). It is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See id. at
1073, 5 USPQ2d at 1598. In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). The examiner must articulate reasons for the examiner's
decision. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1433 (Fed. Cir. 2002).
In particular, the examiner must show that there is a teaching, motivation, or
suggestion to combine references relied on as evidence of obviousness. Id. at
1343, 61 USPQ2d at 1433. These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of obviousness. See
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. Only if this initial burden is met
does the burden of coming forward with evidence or argument shift to the
appellant. Id. at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788. Obviousness is then determined on the basis of the evidence as
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Application No. 09/319,093

a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at
1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
In the rejection of independent claim 1, the examiner determined that Ball
discloses a record/playback apparatus as claimed except that it fails to disclose that
payment is imposed upon the user based upon dubbing speed selected by the user
and causing the record/playback unit to start the recording at a standard dubbing
speed without transmitting the basic data to the payment imposing unit (Answer, p.
3). The examiner relies on Suzuki for the teaching of an information providing
apparatus that enables user-selected information to be recorded and enables the
user to select a speed at which the information is transmitted and recorded to a
local terminal, wherein payment is imposed on the user based on the selected
transmission or recording speed (Answer, pp. 3-4). The examiner relies on
Yoshioka for the teaching of a digital disc reproduction system that includes a
control unit to control the recording operation in fast speed dubbing mode as well
as standard speed dubbing mode using a selector switch (Answer, p. 4). The
examiner asserts, “Yoshioka also teaches that the recording is started in the
standard speed dubbing mode without transmitting any data to a payment imposing
unit since Yoshioka is not concerned with paying for the service” (Answer, p. 4).
The examiner finds:
Thus, it would have been obvious to one having ordinary
skill in the art to implement either scenario (payment
required or no payment required) in the system of Ball in
view of the teachings of Susuki [sic] and Yoshioka. If
one was concerned about receiving payment for the
dubbing service at increased speeds, then, it would have
been obvious to one having ordinary skill in the art to
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Application No. 09/319,093

modify Ball and adopt the teachings of Susuki [sic] to
allow for charging based upon the dubbing speed. If one
was not concerned about receiving payment or offering
the service for free if the standard dubbing speed is used,
then, it would have been obvious to one of ordinary skill
in the art at the time of applicant’s invention to modify
Ball and adopt the teachings of Yoshioka to allow for
recording at a standard speed without transmitting data to
a payment imposing unit, thereby, starting the recording
without charging the user (Answer, pp. 4-5) (emphasis
added).
It is clear from the language shown in italics above that the examiner’s
reasoning was based on hindsight using the present invention as a roadmap by
which to piece together the teachings of the prior art. None of this prior art relied
upon by the examiner would have taught, suggested, or motivated one skilled in
the art at the time of the invention to dub a copy at standard speed without charging
for it, while at the same time charging for copies dubbed at higher than standard
speeds. Both Ball and Suzuki describe systems that assess some charge for each
copy made or program provided regardless of speed, because they are designed to
pay a royalty to the copyright holder for every copy. For example, the system of
Ball is designed to enable a customer to enter a store equipped with a kiosk-type
device and make a customized cassette tape of the user’s selected songs (Ball, p. 2,
lines 54-57). The kiosk charges the customer for the customized product, and the
system calculates royalty payments. (Ball, p. 2, lines 57-58). The information
providing apparatus described in Suzuki similarly charges the customer for each
program provided. Suzuki teaches varying a compression service fee (S1), which
is charged in the case where a compressed program is provided, but it also teaches
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Application No. 09/319,093

charging in addition a basic fee (B1) for the program based on the popularity of the
program regardless of whether it is compressed or not (Suzuki, col. 13, lines 28-36
and Figure 13).
Yoshioka, on the other hand, describes a fast speed reproduction system for
digital discs in which the user is not charged at all for copies made, regardless of
dubbing speed. While Yoshioka clearly teaches enabling a user to dub at standard
speed or at a faster speed (col. 5, lines 16-20), Yoshioka does not mention a
payment imposing unit or assess a charge to the user for dubbing. As such,
Yoshioka naturally does not send information to a payment imposing unit if the
user selects to copy at standard speed. However, we hold that the lack of teaching
in Yoshioka of a payment imposing unit would not have led one of ordinary skill in
the art at the time the invention was made to selectively charge for dubbing at
higher than standard speed, while in the same system, not charge for dubbing at
standard speed.
The remaining Freeny and Endoh references are relied on by the examiner to
show using an owner code to identify the owner of information to be recorded and
reading copyright holder ID data from a control data storage region of the
recording medium. We find that neither Freeny nor Endoh cure the deficiencies of
Ball, Suzuki, or Yoshioka. Specifically, neither Freeny nor Endoh disclose a
system that sends certain data to a payment imposing unit to assess a payment
when the user selects a dubbing speed higher than a standard speed, and that does
not send such data to the payment imposing unit or assess a payment when the user
selects a standard speed for dubbing. With regard to remaining rejected dependent
claims 2-18, because these claim rejections rely upon the underlying rejection of
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Application No. 09/319,093

independent claim 1, the examiner’s rejection of these claims also fails. See In re
Fine, 837 F.2d 1071, 5 USQP2d 1596 (Fed. Cir. 1988) (If an independent claim is
nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is
nonobvious). Accordingly, we do not sustain the examiner’s rejection of claims 1-
18 under 35 U.S.C. § 103(a) as being unpatentable over Ball in view of Suzuki,
Yoshioka, Freeny, and Endoh.

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Application No. 09/319,093

CONCLUSION
To summarize, the decision of the examiner to reject claims 1-18 is reversed.
REVERSED

)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LINDA E. HORNER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )
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Application No. 09/319,093

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