Ex Parte Kawa et al

Patent Trial and Appeal Board

Sep 27, 2012

10809216 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/809,216 03/25/2004 Seiji Kawa 450100-04966 6582
7590 09/27/2012
William S. Frommer, Esq.
FROMMER LAWRENCE & HAUG LLP
745 Fifth Avenue
New York, NY 10151
EXAMINER
FABER, DAVID
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
09/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

PATENT TRIAL AND APPEAL BOARD
______________

Ex parte SEIJI KAWA and TAKAO SUZUKI
______________

Appeal 2010-004071
Application 10/809,216
Technology Center 2100
______________

Before JOHN C. MARTIN, JEAN R. HOMERE, and JAMES R. HUGHES,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3-9, and 11-14, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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A. Appellants’ invention
Appellants’ invention ensures real-time reproduction of AV (Audio-
Visual) data without triggering picture quality degradation and other
irregularities. Specification ¶ 0001.1 When AV data that have been
recorded in discontinuous areas on an optical disc are reproduced following
non-destructive editing, seeks occur from one recorded area to another on
the apparatus carrying out the reproduction. Id. at ¶ 0005. If the time
required for a seek is inordinately long, the AV data item to be reproduced at
that point may not be retrieved in time, resulting in an interruption of the
reproduction process. Id. at ¶ 0006.
Appellants’ solution employs an information creating apparatus that,
as described in greater detail below, includes: (i) a determining element for
determining whether it is possible for the reproducing apparatus to
reproduce in real time the data resulting from the editing process; and (ii) a
relocating element for relocating data in proximity of the edit point if the
determining element determines that it is impossible for the reproducing
apparatus to reproduce in real time the data resulting from the editing
process. Id. at ¶ 0032.

1 See the substitute specification filed in response to the Examiner’s
objection to the drawing, as explained in the January 29, 2007, “Response
Under 37 C.F.R. §1.116” at page 10. The Examiner approved the amended
specification for entry in the February 21, 2007, Advisory Action at page 1,
paragraph 7.
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Appellants’ Figure 3A is reproduced below.

Figure 3A shows three recorded GOP (i.e., Group of Pictures2) clips: a clip
#1 consisting of GOP(m), GOP(m+1), and GOP(m+2); a clip #2 formed by
GOP(o); and a clip #3 consisting of GOP(n), GOP(n+1), and GOP(n+2).
Id. at ¶ 0099. Data are read or written from left to right on the optical disc.
Id. at ¶ 0098. A blank area #1 is present between GOP(m+2) and GOP(n)
and a blank area #2 is present between GOP(n+2) and GOP(o). Id. at ¶
0099. Blank areas are often formed on the optical disc 52 if data write and
erase operations are carried out repeatedly on the disc. Id.
The edit points are represented in Figure 3A as IN1 and OUT1 for
clip #1, IN2 and OUT2 for clip #2, and IN3 and OUT3 for clip #3. Id. at
¶ 0105. Because the clips are recorded in discontinuous areas, reproducing
the clips in the order #1, #2, and #3 results in seek times #1 and #2. Id. If
the seek time is prolonged, retrieval of the AV data from the optical disc
may fail to keep up with real-time reproduction of the data, resulting in an
interruption of the ongoing AV data reproduction. Id. Specifically, the

2 Specification ¶ 0012.
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reproducing apparatus typically includes a buffer for temporarily storing the
AV data read from the optical disc 52, and a decoder for decoding the
buffered AV data. Id. at ¶ 0106. If all buffered AV data have been read out
of the buffer by the decoder, a buffer underflow occurs and an interruption
of real-time reproduction takes place. Id.
Appellants’ Figure 3B is reproduced below.

Figure 3B shows the use of a bridge clip in accordance with Appellants’
invention to avoid the buffer underflow problem. Id. at ¶ 0108.
Specifically, GOP(m+2) of clip #1, GOP(o) of the clip #2, and GOP(n) of
clip #3 are relocated into the blank area #1 to form the bridge clip. Id. at ¶
0109.
A comparison of Figures 3A and 3B reveals that the total time
required for seek #3 through seek #6 in Figure 3B is appreciably shorter than
the total time required for seeks #1 and #2 in Figure 3A, while the displayed
pictures are the same. Id. at ¶ 0114. Referencing the bridge clip therefore
shortens the seek time and helps prevent buffer underflow from taking place.
Id.

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Appellants’ Figure 2 is reproduced below.

Figure 2 is a block diagram depicting a typical structure of a disc apparatus 1
(i.e., information creating apparatus) according to Appellants’ invention. Id.
at ¶ 0084. The disc apparatus 1 is made up of an information processing
block 11 and a drive 12. Id. If the real-time reproduction feasibility
determining unit 24 in block 11 determines that the reproducing apparatus is
incapable of real-time reproduction of AV data in a predetermined range, the
bridge clip creating unit 26 creates a bridge clip based on data from a main
line data reading unit 43 in such a manner that the seek time involved will be
minimized upon reproduction of the AV data. Id. at ¶ 0096.
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The structure described above is implemented as shown in Figure 5,
which is reproduced below. Id. at ¶ 0125.

Figure 5 shows a personal computer, which includes a CPU (Central
Processing Unit) 61 for performing various processes in keeping with
programs held in a ROM (Read-Only Memory) 62 or with programs loaded
from a storage unit 68 into a RAM (Random Access Memory) 63. Id.

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Appellants’ Figure 7 is reproduced below.

Figure 7 is a block diagram outlining a typical structure of Appellants’
reproducing apparatus. Id. at ¶ 0054. The reproducing apparatus 101 has a
plurality of decoders (two decoders in the example of Figure 7). Id. at
¶ 0135. Buffer unit 154 is made up of buffers 1541 and 1542, which are used
to buffer AV data retrieved by the drive 112 before the data are decoded by
the downstream decoders 1551 and 1552, respectively. Id. at ¶ 0142.
Because the play list refers to bridge clips where necessary, no buffer
underflow occurs in the buffers 1541 and 1542 during the reproduction based
on the play list. Id.
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Although the disc apparatus 1 and reproducing apparatus 101 are
shown as discrete devices, these apparatuses may be integrated to form a
single entity such as an information processing apparatus 221, as shown in
Figure 36. Id. at ¶ 0361.

B. The Claims on Appeal
The independent claims are claims 1, 7-9, 13, and 14. Of these
claims, claims 1, 7, and 8 are directed to information creating (including data
relocation). Specifically, claim 1 recites an information creating apparatus
(claim 1); claim 7 recites an information creating method (claim 7); and
claim 8 recites a computer-readable medium storing a program for
performing the same steps that are recited in claim 7.
Claim 1 reads as follows:
1. An information creating apparatus for creating
information to be provided to a reproducing apparatus for
reproducing data, said information creating apparatus
comprising:
first acquiring means for acquiring edit point information
describing an edit point set for said data;
creating means for creating reproduction control
information in accordance with said edit point information
acquired by said first acquiring means, said reproduction
control information resulting from an editing process based on
said edit point and serving to control reproduction of said data;
determining means for determining whether it is possible
for said reproducing apparatus to reproduce in real time said
data resulting from said editing process; and
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relocating means for relocating data in proximity of said
edit point if said determining means determines that it is
impossible for said reproducing apparatus to reproduce in real
time said data resulting from said editing process; and
wherein said creating means creates said
reproduction control information including information for
indicating said data relocated by said relocating means as a
reproduction object, and
wherein said relocating means determines the
location at which to create data in proximity of the edit point in
accordance with the result of the determining means.
Claims App. (Br. 17) (emphasis added). We understand the italicized
language to mean that the determining means determines whether it is it is
possible to reproduce “said data resulting from said editing process” without
first performing data relocation.
Independent claims 9, 13, and 14 are directed to data reproduction.
Claim 9 recites a reproducing apparatus; claim 13 recites a reproducing
method; and claim 14 recites a computer-readable medium storing a program
for performing the same steps as recited in claim 13.
Claim 9 reads as follows:
9. A reproducing apparatus comprising:
acquiring means for acquiring reproduction control
information, which is created in accordance with edit point
information describing an edit point set for data and which
serves to control reproduction of said data;
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reproducing means for reproducing said data in
accordance with said reproduction control information acquired
by said acquiring means; and
determining means and selecting means for use when
said reproduction control information includes information for
indicating as a reproduction object data, which are relocated by
an information creating apparatus for creating said reproduction
control information and which are in proximity of said edit
point,
wherein said determining means determines a
location at which to start reproducing said data in accordance
with said reproduction control information,
wherein said selecting means selects a decoder for
reproducing said data, wherein said reproducing means
reproduces said data based on said reproduction control
information, on the starting location determined by said
determining means, and on said decoder selected by said
selecting means, and
wherein the selecting means selects a decoder from
a plurality of decoders in accordance with the reproduction
control information which includes designation information.
Claims App. (Br. 20).

C. The Rejections3

3 A rejection of claim 1 under 35 U.S.C. § 112, sixth paragraph (Final
Action 3, paras. 6-7) was withdrawn at page 2 of the Answer.
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Claims 1, 3-6, 9, 11, and 12 stand rejected under 35 U.S.C. § 101 as
being directed to nonstatutory subject matter.4 Final Action 3, para. 9.
Claims 9 and 11-14 stand rejected under 35 U.S.C. § 102(b) for
anticipation by Yasuda.5 Id. at 5, para. 12.
Claims 1 and 3-8 stand rejected under 35 U.S.C. § 103(a) for
obviousness over Yasuda in view of Kelly.6 Id. at 7, para. 14.
As Appellants specifically argue only independent apparatus claims 1
and 9 for each ground of rejection, we will treat the remaining claims as
standing or falling with claims 1 and 9 for each ground of rejection.
37 C.F.R. § 41.37(c)(1)(vii).

II. DISCUSSION
A. The Rejection of Claims 1, 3-6, 9, 11, and 12 Under 35 U.S.C. § 101
The independent claims that are rejected under 35 U.S.C. § 101 are
claims 1 and 9, which respectively recite “[a]n information creating
apparatus for creating information to be provided to a reproducing apparatus
for reproducing data” and “[a] reproducing apparatus.” In both claims, the
elements are cited in means-plus-function format.

4 The Final Action (at 4) and Answer (at 3) incorrectly include canceled
claim 2 in the statement of this ground of rejection.
5 Yasuda et al. European Patent Application EP 0 855 714 A2, published
July 29, 1998.
6 Kelly et al. International Publication No. WO 99/48096, published
September 23, 1999.
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In response to Appellants’ argument that the rejected claims “are
apparatus claims and therefore comply with the statutory subject matter
requirement” (Br. 11), the Examiner stated that he disagrees for the
following reasons:
Claims 1-4 disclose an apparatus; however, the claim
language in the claims failed to disclose or mention what is
included in an apparatus at all. Thus, the claims fail to disclose
if this apparatus indicates any hardware; therefore, the
apparatus is representing a data structure resulting in the claims
being viewed as software in view of data structures. The use of
the word “apparatus” does not inherently mean that [a] claim is
directed to a physical machine. Therefore, the claims,
themselves, lack the necessary physical articles or objects to
constitute a machine or a manufacture within the meaning of 35
USC 101. They are clearly not a series of steps or acts to be a
process nor are they a combination of chemical compounds to
be a composition of matter. As such, they fail to fall within a
statutory [category]. They are, at best, functional descriptive
material per se. Thus, in regards to claims 1-4, and 9-12, the
claims, as written, appear to be claiming “software systems”[,]
i.e. systems without hardware indication, which is [a] computer
program per se. The claims as written do not recite any
hardware indication.
Answer 10.
We will not sustain this rejection. To the extent the Examiner’s
position is based on the belief that claims 1 and 9 need not be interpreted in
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accordance with 35 U.S.C. § 112, sixth paragraph,7 we disagree because the
Examiner has not explained why these claims are not governed by the
principle that “[w]hen a claim uses the term ‘means’ to describe a limitation,
a presumption inheres that the inventor used the term to invoke §112, ¶ 6.”
Biomedino, LLC v. Waters Tech. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).
See also MPEP § 2181 (8th ed., rev. 9, Aug. 2012). In the absence of such
an explanation by the Examiner, the means-plus-function elements of these
claims must be interpreted as reciting the corresponding (i.e., disclosed)
structure for performing the recited functions as well as any equivalents of
the corresponding structure. As explained above, the specification describes
the recited functions as being performed by a programmed personal
computer, shown in Figure 5. In particular, we find that the claimed
information creating apparatus corresponds to a disc apparatus (Fig. 2, 1)
made up of an information processing block (11) containing various units
that correspond to the different means recited in the claim. (Spec. [0084]-
[0085].) Because the recited units correspond to various hardware (and not
software codes), we conclude that the recited creating apparatus clearly falls
within the statutory category of a “machine,” which is a “concrete thing,

7 35 U.S.C. § 112, sixth paragraph, reads as follows:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
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consisting of parts, or of certain devices and combination of devices” and
“includes every mechanical device or combination of mechanical powers
and devices to perform some function and produce a certain effect or result.”
In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2000) (internal quotation
marks omitted).
Because we do not agree with the Examiner’s finding that the
information creating apparatus may be directed to software code (and there
is no indication it is implemented in hardware) (Ans. 10), we find error in
the Examiner’s conclusion that the recited apparatus is directed to software
per se. Accordingly, we do not sustain the rejection of any of independent
claims 1 and 9 and their dependent claims 3-6, 11, and 12 under 35 U.S.C. §
101.

B. The Rejection of Claims 9 and 11-14 for Anticipation by Yasuda
Yasuda discloses a digital signal editing apparatus and method.
Yasuda, title.

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Figure 5 of Yasuda is reproduced below.

Figure 5 shows a digital signal editing apparatus according to a first
embodiment of Yasuda’s invention. Id. at 5:30-31. Storage medium 1, such
as an optical disc allowing random access, stores coded data (e.g., I, B, and P
pictures in the MPEG format) as well as “reproduction information on a
reproduction interval of the coded data.” Id. at 5:26-36. This reproduction
information, which is stored in the Table of Contents (TOC) region of the
disc (id. at 5:49-51), identifies the portion or portions of coded data that are
to be read out of storage:
This reproduction information on the reproduction
interval contains a data on a reproduction start point, a
reproduction end point or reproduction interval length, and the
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like. For example, when the TOC area contains a plurality of
reproduction information, the coded data corresponding to the
respective reproduction intervals are successively decoded and
displayed on a display unit 6.
Id. at 5:52-6:1.
Yasuda’s Figure 5 apparatus further includes: a read-out unit 2 for
reading out coded data and reproduction information from storage medium
1; a storage unit 3 for storing the reproduction information obtained by read-
out unit 2; a control unit 4 for controlling read-out of the read-out unit 2
according to the reproduction information in storage unit 3; and a decoding
unit 5 for decoding the coded data which has been read out by the read-out
unit 2 controlled by the control unit 4, so as to be temporally continuous, and
outputting an edited decoded data string. Id. at 5:31-44.
Figures 8A-D of Yasuda are reproduced below.

Figures 8A-D are used to explain how the TOC information can be used for
editing with the Figure 5 apparatus. Id. at 5:7-8. Figure 8A shows “a coded
data prior to the edition containing a coded image signal . . . and a coded
sound signal of frame F0 to frame F1.” Id. at 9:6-9. The corresponding
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TOC information, in the initial state, contains information required for
decoding/reproducing frames F0-F1. Id. at 9:9-11. The TOC information
can be edited in order to, for example: (i) cause frames F2b-F3a to be
skipped during reproduction, as shown in Figure 8B; (ii) insert coded data
frames G0-G1 between frames F2a and F2b, as shown in Figure 8C; or (iii)
replace frames F2b-F3a with frames G0-G1, as shown in Figure 8D. Id. at
9:11-30.
Figures 9A-D of Yasuda are reproduced below.

Figures 9A-D are used to explain operation of the Figure 5 apparatus “when
a plurality of TOC information are defined.” Id. at 5:9-11. TOC1, TOC2,
and TOC 3 yield the reproduction sequences depicted in Figures 9B-D. Id.
at 9:35-42. The user can select the desired TOC and “readily modify the
reproduction route of the coded data according to his/her will.” Id. at 9:43-
48.
As explained below, Yasuda also discloses that decoding unit 5
(Fig. 5) can include a plurality of decoders, as required by claim 9.
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Figure 6 of Yasuda is reproduced below.

Figure 6 is used to explain the operation of the decoding unit 5 in Yasuda’s
Figure 5 embodiment. As shown in Figure 6, it is assumed that after
reproducing up to picture P at the point Sa, reproduction is to be started (i.e.,
resumed) with picture B3 at the point Sb. Id. at 6:16-18. In an ordinary
decoding apparatus, in order to decode the picture B3 it is necessary to
decode the pictures I0, P2, and P4, which are reference images for the
picture B3. Id. at 6:18-22. Thus, while these pictures I0, P2, and P4 are
being decoded by an ordinary decoding apparatus, the display becomes
discontinuous. Id. at 6:22-23.

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Figure 7 of Yasuda is reproduced below.

Figure 7 is a block diagram showing a specific example of Yasuda’s
decoding unit 5, which makes it possible to connect parts of coded data
which are logically discontinuous in such a manner that the data can be
reproduced as temporally continuous data. Id. at 6:29-36. The track buffer
10 simultaneously contains the coded data of the P picture at skip start point
Sa (Fig. 6) and the coded data of B picture (B3) at skip destination point Sb
as well as coded data of the pictures I0, P2, and P4, which are required for
decoding the picture B3. Id. at 8:29-36. The coded data that precedes skip
start point Sa is routed to decoding system 11 (containing decoding buffer
12 and decoder 13), whereas the coded data that follows skip destination
point Sb is routed to decoding system 14 (containing decoding buffer 15 and
decoder 16). Id. at 6:39-48. A switch 17 selectively outputs to the display
unit 6 coded data supplied from the first decoding system 11 and the second
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decoding system 14. Id. at 7:26-29. Thus, prior to skip start point Sa,
switch 17 connects the output of decoder 13 to the display unit 6. Id. at
7:54-8:3. Conversely, after skip destination point Sb is reached, switch 17
connects the output of decoder 16 to the display unit 6. It is therefore clear
that the routing of data to and from decoders 14 and 16 is controlled by skip
start point Sa and skip destination point Sb, which are included in Yasuda’s
“reproduction information.” Id. at 5:52-55.
Before considering the merits of the rejection, it is necessary to
address the scope of the following paragraph in claim 9:
determining means and selecting means for use when said
reproduction control information includes information for
indicating as a reproduction object data, which are relocated by
an information creating apparatus for creating said
reproduction control information and which are in proximity of
said edit point[.]
Claims App. (Br. 20) (emphasis added).8 The italicized language is entitled
to no weight in this claim because this language either (a) describes an
intended use of the claimed reproducing apparatus (i.e., for use with
reproduction control information that represents relocated data) or (b) recites
a process step (i.e., relocation) performed by an unclaimed apparatus (i.e.,
the recited “an information creating apparatus”) on the recorded data prior to
being read out by the claimed reproducing apparatus. Thus, the italicized
language does not imply any structural limitation on the claimed

8 We understand the term “said edit point” in this paragraph to be referring
(Continued on next page.)
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reproducing apparatus, as required to for that language to be given weight.
See In re Hallman, 655 F.2d 212, 215 (CCPA 1981) (process limitations are
entitled to weight in apparatus claims only to the extent they imply structural
limitations that distinguish the apparatus from the prior art). The claimed
reproducing apparatus does not recite any structure for determining whether
or not the received reproduction control information represents relocated
information.
Comparing claim 9 to Yasuda, the Examiner reads the recited
“reproduction control information” on the description of using TOC
information as editing information at column 5, lines 45-54, and also on the
description of Figures 8A-D and 9A-D at column 9, lines 5-46. Final Action
12-13. Appellants’ argument against anticipation reads in its entirety as
follows:
Appellants submit that there is no teaching or suggestion in
Yasuda of reproducing apparatus comprising: determining
means and selecting means for use when said reproduction
control information includes information for indicating as a
reproduction object data, which are relocated by an information
creating apparatus for creating said reproduction control
information and which are in proximity of said edit point, as
recited in claim 9.
Indeed, Appellants submit that Yasuda does not select a
decoder based on any kinds of control information, as disclosed
in the present invention in Figures 26 and 31 where a decoder is
selected from a plurality of decoders in accordance with the
reproduction control information which includes designation

to an edit point of the “edit point set” recited in the first paragraph.
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information such as the description [decoder = “0”] (Fig. 26)
and the preDecBegin attribute (Fig. 31).
Br. 14-15. This argument is unclear because the second paragraph of the
argument does not relate to the claim language quoted in the first paragraph
thereof, as suggested by the introductory term “[i]ndeed” in the second
paragraph. Instead, the second paragraph appears to be directed to the last
paragraph of claim 9, which reads: “wherein the selecting means selects a
decoder from a plurality of decoders in accordance with the reproduction
control information which includes designation information.” Because
Appellants have not explained which language in the “determining means
and selecting means” paragraph of claim 9 is not satisfied and why, we are
not persuaded of error in the Examiner’s finding that the recited
“determining means and selecting means” is anticipated by Yasuda.
Nor are we persuaded by the second-paragraph argument that “Yasuda
does not select a decoder based on any kinds of control information.” As
explained above, the routing of data to and from decoders 14 and 16 is
controlled by skip start point Sa and skip destination point Sb, which are
included in Yasuda’s “reproduction information.”

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Because Appellants have not demonstrated error by the Examiner in
rejecting claims 9 and 11-14 for anticipation by Yasuda, the rejection is
sustained.9

C. The Rejection of Claims 1 and 3-8 for Obviousness Over Yasuda in View
of Kelly
As discussed below, Appellants specifically argue two passages in
claim 1, the first of which is the recited “determining means for determining
whether it is possible for said reproducing apparatus to reproduce in real
time said data resulting from said editing process.” For such a teaching, the
Examiner (Final Action 8-9) relies on Kelly, which discloses recording and
reproducing using a disk-like record carrier. Kelly, abstract.

9 Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (an
appellant may attempt to overcome an examiner’s obviousness rejection on
appeal to the Board by: (1) submitting arguments and/or evidence to show
that the examiner made an error in either (a) an underlying finding of fact
upon which the final conclusion of obviousness was based or (b) the
reasoning used to reach the legal conclusion of obviousness; or (2) showing
that the prima facie case has been rebutted by evidence of secondary
considerations of nonobviousness).
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Figure 1 of Kelly is reproduced below.

Figure 1 shows an embodiment of an apparatus in accordance with Kelly’s
invention. Id. at 4:29-30. The data area of the disc-like record carrier 3 is
divided into fragment areas of a fixed length, containing a contiguous
sequence of sectors. Id. at 5:5-7. The apparatus includes a disc subsystem 6
for and a video recorder subsystem 8. Id. at 5:10-11. For real-time data, the
disc subsystem is addressed on a fragment-related basis, thereby
guaranteeing a maximum sustainable bit rate for reading and/or writing,
whereas for non-real-time data, the disc subsystem may be addressed on a
sector basis. Id. at 5:16-21.

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Figures 2a and 2b of Kelly are reproduced below.

Figures 2a and 2b show the recording of blocks of video information in
fragment areas on the record carrier. Id. at 3:30-31. In order to realize real-
time reproduction in all situations, the fragment areas introduced earlier need
to have a specific size, which is selected in the disclosed example to be equal
to 4 MB. Id. at 5:27-32.
A video information signal, which is a real-time signal, is converted
into a real-time file, as shown in Figure 2a, which consists of a sequence of
signal blocks of information recorded in corresponding fragment areas. Id.
at 6:2-5. There is no constraint on the location of the fragment areas on the
disc and, hence, any two consecutive fragment areas that include portions of
information of the video information signal may be recorded anywhere in
the logical address space, as shown in Figure 2b. Id. at 6:5-7.

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Figure 3 of Kelly is reproduced below.

Figure 3 shows the principle of playback of a video information signal. Id.
at 3:32. Playback is controlled by a “playback-control-program” (PBC
program), with each PBC program defining a (new) playback sequence. Id.
at 6:12-15. This PBC program is a sequence of fragment areas with, for
each fragment area, a specification of a data segment that has to be read from
that fragment. Id. at 6:15-16. Figure 3 shows playback of only a portion of
the first three fragment areas in the sequence of fragment areas. Id. at 6:16-
18.

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Figure 4 of Kelly is reproduced below.

Figure 4, which illustrates the principle of editing of video information
signals, shows two video information signals recorded earlier on the record
carrier 3, as indicated by two sequences of fragments named “file A” and
“file B” (file B having two parts). Id. at 6:28-31. As shown in this figure,
the edited version starts at a point P1 in the fragment area f(i) of file A,
continues until point P2 in the next fragment area f(i+1) of file A, jumps
over to the point P3 in fragment area f(j) in file B, etc. Id. at 7:6-9.
In order to guarantee seamless simultaneous play of a PBC program,
the playback sequence defined by the PBC program must ensure that the
segment length in all fragments (except the first and the last fragment area)
satisfies the following relationship: 2 MB ≤ segment length ≤ 4 MB.
Id. at 7:18-22.
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Figures 7a and 7b of Kelly are reproduced below.

Figures 7a and 7b show an example of how to editing a video information
signal when the resulting length of the segment s, i.e., l(s), is less than the
2 MB minimum to ensure seamless playback. Id. at 11:5-6. In this case, a
new fragment area, referred to as a bridging fragment area f', is created that
includes a copy of segment s preceded by a copy of some preceding data in
stream A. Id. at 11:6-8. Depending on the length of preceding segment r,
“either all or part of r is copied into the new fragment area f [sic; f'].” Id. at
11:9-11. Specifically, if l(r)+1(s) ≤ than 4 MB, “all of r is copied into [f'],
and none of the original segment r is used in the new playback sequence.”
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Id. at 11:12-13. Specifically, as shown in Figure 7b, the new exit point is the
point denoted a'. Id. at 11:13-15. In operation, the program, after reading
the information stored in the bridging fragment area f', jumps to the entry
point in video stream B to reproduce the portion of the B stream, which is
represented by the label “B-part” in Figure 7b. Id. at 11:15-20.
Appellant, after acknowledging that in Kelly “the fragment areas need
to be a specific size (Kelly, page 5, lines 15-35),” argues that
[while] Kelly suggests determining whether a data is real time
or not and a way to ensure real-time production in different
situations, Kelly fails to teach or suggest how to determine
whether the reproducing process itself is able to produce real-
time data or not. Therefore, Appellants submit that Kelly fails
to teach or suggest “determining means for determining
whether it is possible for said reproducing apparatus to
reproduce in real time said data resulting from said editing
process”, as recited [in] claim 1 (emphasis added).
Br. 12. Because Appellants do not assert that Kelly is nonenabling, we
understand the above-quoted argument that “Kelly fails to teach or suggest
how to determine whether the reproducing process itself is able to produce
real-time data or not” (emphasis added) to mean that Kelly fails to teach or
suggest performing the function of determining whether or not the
reproducing process itself is able to produce real-time data. We are
unpersuaded by this argument. As explained above, Kelly creates a bridging
segment (Fig. 7b) when a segment to be played (e.g., segment s in Fig. 7a) is
determined to be shorter that 2 MB. Appellants have not explained why this
determination is not effectively a determination that it may not be possible
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for the edited data stream to be reproduced in real time, as required by the
claim.
The second limitation of claim 1 argued by Appellants is the
“relocating means for relocating data in proximity of said edit point if said
determining means determines that it is impossible for said reproducing
apparatus to reproduce in real time said data resulting from said editing
process” (emphasis added). The Examiner does not rely on Kelly for this
teaching. Instead, the Examiner apparently reads this limitation and the last
“wherein” clause (i.e., “wherein said relocating means determines the
location at which to create data in proximity of the edit point in accordance
with the result of the determining means”) on Yasuda’s disclosure of
reproducing the coded data in proximity to the start and points identified by
the “reproduction information” (e.g., TOC data). See Final Action 8
(“[Yasuda] Column 5, lines 52-54: [the reproduction information] [c]ontains
a data on a production start point and end point for relocating (reproduction)
data. In addition, when reproducing data, data is being created.”) (emphasis
added).
Appellants responded to this position of the Examiner as stated in the
Final Action merely by asserting that “reproducing data and relocating data
are different matters.” Br. 13.
The Examiner in the Answer responded to this argument by
elaborating on his reasoning as follows:
[B]ased on its respective reproduction intervals, (Col 5, lines
56-57) this coded data is selected and reproduced (Column 6,
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lines 2-9,16-23; FIG 3,8; Column 9, lines 5-46). Therefore,
Yasuda disclosing reproducing data in proximity of a[n] edit
point (interval). Furthermore, Appellant and the claim
limitations failed to clearly state the differences between
relocating and reproducing of how relocating is not the same as
reproducing. Relocating is moving data from one location to
another location. Reproducing is copying data from one
location and moving the copied data to another location. Thus,
in essence, both relocating and reproducing are moving data
from one location to another. Therefore, reproducing is a form
of relocating data.
Answer 13. Appellants, who did not file a reply brief, have not addressed
this more specific reasoning of the Examiner, which appears to be based on
an interpretation of the claim language “relocating data in proximity of an
edit point” that may be broader than Appellants’ interpretation. That is, the
Examiner appears to be interpreting this claim language to be broad enough
to read on relocating data from “a location in proximity to an edit point” to
another location rather than interpreting it to mean relocating data from a
first location to “a location in proximity to an edit point.” Appellants have
not demonstrated error in this apparent position of the Examiner. We note
that Appellants also have not explained why this claim distinguishes over
Kelly.
The rejection of claims 1 and 3-8 under 35 U.S.C. § 103(a) for
obviousness over Yasuda in view of Kelly is accordingly sustained.

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III. DECISION
The rejection of claims 1, 3-6, 9, 11, and 12 under 35 U.S.C. § 101 as
being directed to nonstatutory subject matter is reversed.
The rejection of claims 1 and 3-8 under 35 U.S.C. § 103(a) for
obviousness over Yasuda in view of Kelly is sustained, as is the rejection of
claims 9 and 11-14 under 35 U.S.C. § 102(b) for anticipation by Yasuda.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2012).

AFFIRMED