Ex Parte Heo

Board of Patent Appeals and Interferences

Mar 24, 2011

09960504 (B.P.A.I. Mar. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUNG-KWON HEO
____________

Appeal 2009-009104
Application 09/960,504
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-009104
Application 09/960,504

2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 5-7, 9, and 34-42. Claims 1-4, 10-33, and 43-46
have been allowed and claim 8 has been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is directed to an apparatus and
method to transcopy data (Spec. [0004]). Claims 5 and 7, reproduced below
with the numbering in brackets added, are representative of the subject
matter of appeal.

5. A content data structure stored on a recordable medium, the
content data comprising:
content data comprising one of original and copied content data;
[1] data file information unique to said content data so that said
content data is distinguishable by a recording and/or reproducing
apparatus from other content data, [2] said data file information
comprising information used by the recording and/or reproducing
apparatus to determine the corresponding original content data in the
case that the content data is the copied content data; and
[3] a rights management information area to indicate to the
recording and/or reproducing apparatus whether said content data is
the original content data or the copied content data transcopied from
the original content data such that the recording and/or reproducing
apparatus distinguishes between the original and copied content data,
Appeal 2009-009104
Application 09/960,504

3
[4] and to indicate to the recording and/or reproducing apparatus
rights information related to the recording and/or reproducing
apparatus performing data transcopying of said content data,
wherein said rights management information for the original content
data and the copied content data changes according to transcopying
situations.
7. A method for transcopying data, the method comprising:
confirming an original coding method applied to original
content data;
setting a different coding method than the original coding
method; and
converting the original content data to generate copied content
data to be decoded by the different coding method;
wherein said converting the original content data comprises
recording information indicating that the original content data was
transcopied into the copied content data is recorded in a rights
management information area of the original content data, and
recording information indicating that the copied content data was
transcopied from the original content data in a rights management
information area of the copied content data.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 5-7, 9, and 34-42 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.

THE ISSUES
With regards to claims 5-6, the issue turns on whether claim 5 is
directed to content data. With regards to claims 7 and 9, the issue turns on
whether the claims are directed to an abstract idea. With regards to claims
Appeal 2009-009104
Application 09/960,504

4
34-42 the issue turns on whether claim 34 is broad enough to cover a
transitory propagating signal.

ANALYSIS
Claims 5-6 and 34-42
The Examiner has determined that the rejection of claims 5-6 and 34-
42 is proper under 35 U.S.C. § 101 as being directed to non-statutory subject
matter (Ans. 3). Specifically, the Examiner cites that these claims contain
abstract ideas, non-functional descriptive material (Ans. 3-4), and mere
collections of data (Ans. 7).
In contrast, the Appellant argues that for claims 5-6 and 34-42 that the
Examiner has failed to provide a prima facie case that the cited claims
contain “non-functional descriptive material” (Br. 6). The Appellant for
instance states that in claim 5, that claim limitations [1] and [4] contain
“descriptive material” which address functional relationships in the claim
(Br. 8).
We agree with the Examiner. Turning first to claim 5, the claim
preamble recites “A content data structure stored on a recordable medium,
the content data comprising” (emphasis added) and the claim is merely
directed to data, not a structure positively recited on a recordable medium as
the preamble is not a limitation to the claim here. A claim drawn to a mere
data structure is not patentable under 35 U.S.C. § 101 (see In re Wamerdam,
33 F.3d 1354 at 1358). Regardless, a further analysis of claim 5 shows the
claim limitations [1] and [4] cited by the Appellant to be non-functional
descriptive material as they are essentially only “data file information” and
“rights management information” directed to data. For these reasons the
Appeal 2009-009104
Application 09/960,504

5
rejection of claim 5, and dependent claim 6 not separately argued, is
sustained.
The Appellant has provided essentially the same arguments for claims
34-42. Claim 34 is drawn to “A computer-readable medium encoded with
data that is readable by a computer”. Here, the claim covers forms of non-
transitory tangible media and transitory propagating signals. When the
broadest reasonable interpretation of a claim covers a signal per se, the claim
must be rejected under 35 U.S.C. § 101 as covering non-statutory subject
matter. See In re Nuitjen, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007).
Regardless, for similar reasons as mentioned above, the claim limitations
cited by the Appellant are “non-functional descriptive material” as they are
drawn to mere data in “identification information” and “rights information”.
For these above reasons, the rejection of claim 34, and claims 35-42 not
separately argued, is sustained.

Claims 7 and 9
The Examiner has also rejected claims 7 and 9 under 35 U.S.C. § 101
in a new grounds of rejection and applied a “machine or transformation” test
analysis (Ans. 5). In contrast, the Appellants have argued that claim 7
recites patentable subject matter because the original data is transformed in
the claimed process (Reply Br. 7-8) and because the method is tied to a
specific machine (Reply Br. 8-9).
We agree with the Examiner. Claim 7 is a method claim drawn to “A
method of transcopying data”. The claim is drawn simply to an abstract idea
of converting data without any significant post-solution activity to tie it to a
particular machine. Regardless, for similar reasons as mentioned above, the
Appeal 2009-009104
Application 09/960,504

6
claim limitations cited by the Appellant as drawn to “non-functional
descriptive material” as they are drawn to mere data. For these reasons, the
rejection of claim 7, and claim 9 which not been separately argued, is
sustained.

CONCLUSIONS OF LAW
We conclude that the Examiner not erred in rejecting claims 5-7, 9,
and 34-42 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.

DECISION
The Examiner’s rejection of claims 5-7, 9, and 34-42 is sustained.

AFFIRMED

MP

STEIN MCEWEN, LLP
1400 EYE STREET, NW
SUITE 300
WASHINGTON DC 20005