Ex Parte Kang et al

Patent Trial and Appeal Board

Sep 28, 2016

12142056 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/142,056 06/19/2008
89980 7590 09/30/2016
NSIPLAW
P.O. Box 65745
Washington, DC 20035
FIRST NAMED INVENTOR
Man-seok Kang
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.
011001.0lOlCl 6579
EXAMINER
JONES, HEATHER RAE
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
pto@nsiplaw.com
pto.nsip@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAN-SEOK KANG, SEONG-JIN MOON, and KIL-SOO JUNG
Appeal2015-001150
Application 12/142,056
Technology Center 2400
Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1 and 3, which constitute all
the claims pending in this application. Claims 2 and 4 have been canceled.
Final Act. l; App. Br. 2. 1 We have jurisdiction under 35 U.S.C. § 6(b).
1 We refer to Appellants' Specification ("Spec.") filed June 19, 2008
(claiming benefit of several applications including US 60/452,551, filed
Mar. 7, 2003); Appeal Brief ("App. Br.") filed May 9, 2014; and Reply Brief
("Reply Br.") filed Oct. 29, 2014. We also refer to the Examiner's Answer
("Ans.") mailed Aug. 29, 2014 and Final Office Action ("Final Act.")
mailed Oct. 11, 2013.
Appeal2015-001150
Application 12/142,056
We affirm.
Appellants' Invention
The invention at issue on appeal concerns information storage media
and apparatuses for reproducing multi-path block data including multiple
reproduction paths corresponding to multiple different languages. The
reproduction apparatus includes a reading unit that reads playlists
corresponding to the different languages. Spec. i-fi-12, 14--19; Abstract.
Related PTAB Appeals
Appeal No. 2012-001485 (co-pending Application No. 10/793,955 -
now US Patent No. 9,036,984 B2, May 19, 2015), decided Oct. 1, 2014
(Examiner Reversed).
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A non-transitory information storage medium
compnsmg a multi path block, the multi path block
corresponding to one of a plurality of intervals and comprising a
plurality of reproduction paths respectively corresponding to a
plurality of languages, the medium comprising:
a plurality of clips comprising presentation data;
a first play list corresponding to a title and a first one of the
languages, the first playlist comprising a plurality of first
playitems, one of the first playitems being in the multi path block
and pointing to a first one of the clips, the first one of the clips
comprising presentation data regarding a first one of the
reproduction paths corresponding to the first one of the
languages; and
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Appeal2015-001150
Application 12/142,056
a second playlist corresponding to the title and a second
one of the languages, the second play list comprising a plurality
of second playitems, one of the second playitems being in the
multi path block and pointing to a second one of the clips, the
second one of the clips comprising presentation data regarding a
second one of the reproduction paths corresponding to the second
one of the languages,
wherein, in the intervals other than the one of the plurality
of intervals to which the multi path block corresponds, one or
more of the first playitems of the first play list respectively point
to one or more of the clips to which one or more of the second
playitems of the second playlist respectively point, the one or
more of the clips comprising presentation data regarding one of
the reproduction paths, and
wherein one of the first play list and the second play list is
reproduced according to a movie object.
Re} ections on Appeal2
1. The Examiner rejects claims 1 and 3 on the ground of non-
statutory obviousness-type double patenting over claims 1 and 8 of co-
pending application US 10/793,955 ("Kang") in view ofKozuka et al. (US
2007/0140653 Al; published June 21, 2007 (filed Feb. 20, 2004, claiming
benefit of US 60/449,136, filed Feb. 21, 2003)) ("Kozuka")
2. The Examiner rejects claims 1 and 3 under 35 U.S.C. § 102(e)
as being anticipated by Kozuka.
2 The Examiner provisionally rejects claims 1 and 3 on the ground of non-
statutory obviousness-type double patenting over claims 1 and 8 of Kang in
view of Kozuka. Kang has issued as US Patent No. 9,036,984 B2.
Accordingly, the rejection is no longer provisional, and we remove the
terminology from the statement of rejection for clarity and consistency.
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Appeal2015-001150
Application 12/142,056
ISSUES
Based upon our review of the administrative record, Appellants'
contentions, and the Examiner's findings and conclusions, the pivotal issues
before us follow:
1. Does the Examiner err in finding Kozuka discloses the disputed
limitations of independent claims 1 and 3?
2. Does the Examiner err in rejects claims 1 and 3 on the ground
of non-statutory obviousness-type double patenting over claims 1 and 8 of
Kang in view ofKozuka?
ANALYSIS
The§ 102 Rejection of Claims 1 and 3
Appellants contend the portions of Kozuka cited by the Examiner as
anticipating the disputed limitations of claims 1 and 3 are not supported in
Kozuka's provisional application-US 60/449,136-and, therefore, are
not available as anticipating prior art. App. Br. 5-10; Reply Br. 2---6. We
agree.
In particular, as explained by Appellants, the cited portions of Kozuka
are not found in the provisional application and the concepts disclosed
therein are insufficient to support anticipation by Kozuka. Reply Br. 2---6.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Kozuka discloses the disputed limitations of
Appellants' claim 1. Independent claims 3 includes limitations of
commensurate scope, and is rejected utilizing the same findings.
Accordingly, we reverse the Examiner's anticipation rejection of claims 1
and 3.
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Appeal2015-001150
Application 12/142,056
The Double Patenting Rejection of Claims 1 and 3
Appellants do not address the Examiner's findings with respect to the
co-pending application (Kang), and reiterate that Kozuka "is not available as
prior art because the Office has failed to indicate where in Kozuka' s
provisional application" (App. Br. 12) the disputed limitations can be found.
App. Br. 12; Reply Br. 6. We disagree.
We adopt to the extent consistent with our analysis (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 5-9), and (2) the reasons set forth by the Examiner in the
Examiner's Answer (Ans. 4--7) in response to Appellants' Appeal Brief. We
concur with the findings and conclusions reached by the Examiner, and we
provide the following for emphasis.
While Appellants are correct that the anticipating disclosure in
Kozuka requires near identical support in Kozuka's provisional application
(supra), this is not necessary with respect to the non-statutory obviousness-
type double patenting rejection. Appellants must instead show that the cited
provisions ofKozuka are not properly supported under the provisions of 35
U.S.C. § 112. Appellants' arguments (supra) do not meet this burden. The
Examiner has set forth a detailed explanation of the rejection (Final Act. 5-
9; Ans. 4--7). Specifically, the Examiner explains that the recited intervals:
[T]he intervals other than the one of the plurality of intervals to
which the multi path block corresponds, one or more of the first
playitems of the first play list respectively point to one or more
of the clips to which one or more of the second playitems of the
second playlist respectively point
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Appeal2015-001150
Application I2/142,056
(claim I)- are taught or at least suggested by Kozuka's Figures IA-IC,
IO, and I4B-I4C. Final Act. 8-9. The Examiner explains that the concepts,
i.e., these same teachings and/or suggestions are set forth in Kozuka's
provisional application. Ans. 4--7. Appellants do not provide sufficient
persuasive argument to overcome the Examiner's findings and conclusions.
Thus, Appellants do not persuade us of error in the Examiner's double
patenting rejection. Accordingly, we affirm the Examiner's rejection on the
ground of non-statutory obviousness-type double patenting independent
claims I and 3.
CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
I and 3 on the ground of non-statutory obviousness-type double patenting.
Appellants have shown that the Examiner erred in rejecting claims I
and 3 under 35 U.S.C. § I02(e).
DECISION
We affirm the Examiner's rejection of claims I and 3.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § I. I36(a)(l )(iv).
AFFIRMED
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