Ex Parte Kitzler et al

Board of Patent Appeals and Interferences

Mar 14, 2008

10232734 (B.P.A.I. Mar. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS KITZLER, WOLFGANG WIMMER,
and ALOIS HOMER
____________

Appeal 2007-3122
Application 10/232,734
Technology Center 2600
____________

Decided: March 14, 2008
____________

Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and CARLA M.
KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1, 3-8, 10 and 11. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
We affirm.

Appeal 2007-3122
Application 10/232,734

STATEMENT OF CASE
Appellants’ claimed invention is a scannable record carrier that
contains at least one subcode channel in which data is stored. The stored
data are formed by “strange” data, that is, data that is not related to the
record carrier. The strange data are formed by update data. The update data
update routines executed in a playback device (Spec. 1:1-8; Br. 6).
Independent claim 1, reproduced below (with numerals omitted), is
representative of the subject matter on appeal.

1. A record carrier, which record carrier can be scanned and
contains at least one subcode channel, data being stored in the at least one
subcode channel and the data stored in the at least one subcode channel
being formed by strange data not related to the record carrier, wherein the
strange data are formed by update data, which update data can be processed
by an update device included in a playback device for scanning the record
carrier and which update data are capable of updating of routines executed in
the playback device.

REFERENCES
Lee US 5,737,287 Apr. 7, 1998
Akiyama US 6,411,575 B1 June 25, 2002

The Examiner rejected claims 1, 3-8, 10, and 11 under 35 U.S.C.
§ 103(a) based upon the teachings Lee and Akiyama.
Appellants contend that there is no motivation to combine Lee and
Akiyama as Lee fails to teach storing strange data and Akiyama teaches
storage for strange data in a non-subcode area (Br. 9).

2
Appeal 2007-3122
Application 10/232,734

ISSUE
The issue before us is whether the Examiner erred in rejecting the
claims over the combination of Lee and Akiyama as obvious to one of
ordinary skill in the art under 35 U.S.C. § 103(a) to obtain the present
invention.

FINDINGS OF FACT
1. Appellants’ invention teaches a record carrier that contains at least
one subcode channel in which data, not related to the record carrier and
referred to as “strange” data, are stored. The strange data form update data
to control the playback device (Spec. 2:27-29; Cl. 1; Br. 6).
2. The record carrier and playback device recited in the claims are
known. (“Such a record carrier and…playback device…are therefore
known” (Spec. 1:6-10)).
3. Lee teaches a method for recording/reproducing status information on
an optical disc (col. 1, ll. 7-16) (record carrier). The record carrier utilizes
subcode channels for storing data (Figs. 1-3; Br. 7).
4. Akiyama teaches an optical recording medium that has a
recording/reproduction conditions recording area for recording
recording/reproduction conditions and apparatus information (Abst.; col. 6,
ll. 25-30; Br. 7).

PRINCIPLES OF LAW
One can not show nonobviousness by attacking references
individually where the rejection is based on a combination of references. In
re Keller, 642 F.2d 413, 426 (CCPA 1981). The test for obviousness is not
3
Appeal 2007-3122
Application 10/232,734

whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference. Nor is it that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to the artisan. In re Keller, 642 F.2d at 425.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v Teleflex Inc., 127 S. Ct. 1727, 1739 (2007). The Federal
Circuit relied in part on the fact that no evidence was presented showing that
the inclusion of a reader in the combined device was “uniquely challenging
or difficult for one of ordinary skill in the art” or “represented an unobvious
step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1740-41).
The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the method. See In re Lowry, 32 F.3d 1579, 1583-84, (Fed. Cir.
1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) and our recent final
decision in Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005), aff’d (Fed. Cir.
Appeal No. 2006-1003 June 12, 2006) (Rule 36).

ANALYSIS
Appellants acknowledge in their specification that the record carrier
and playback device are known (FF 2). Thus, the only question is whether
strange data stored in a subcode channel is new. Appellants have asserted
that, with respect to independent claims 1, 8, and 11, Lee and Akiyama can
not be combined because Akiyama is silent as to the use of a subcode
4
Appeal 2007-3122
Application 10/232,734

channel as being an area used for storing (Br. 7). Appellants also argue that
Akiyama fails to teach using multiplexed data contained in subcode channels
for storing the recording/reproduction condition data (Br. 8).
The Examiner acknowledged that as a single reference, Akiyama does
not use the subcode channel as being an area used for storing (Ans. 6). The
Examiner, however, cited Lee for using a subcode channel for storing data
and cited Akiyama for providing a recording/reproducing method where
stored data is data not related to the record carrier (“strange data”) (Ans. 5).
Under In re Keller, the references cannot be attacked separately as done so
by Appellants, but must be viewed by what the combined teachings would
have suggested. In this case, Lee teaches data stored in subcode channels
(FF 3). Appellants acknowledge that Akiyama teaches the “use of a distinct
area of the record carrier to be used for storing of his recording/reproduction
data (FF 4, Br. 8). That is, Akiyama teaches “strange data” being stored in a
record carrier, albeit not in a subcode channel. However, the skilled artisan,
in our view, would have reasonably stored strange data in the subcode
channels, rather than, or in addition to, merely data.
Appellants’ independent claims 1 and 8 contain “wherein” clauses.
The wherein clauses in the claims describe the characteristics of the strange
data. Under In re Lowry, these limitations are of no consequence since the
Examiner need not give patentable weight to descriptive material absent a
new and unobvious functional relationship. In this instance, because Lee
teaches storing data in a subcode channel, that the data contained on the
media is of a different nature (data as compared to “strange” data), does not
affect the claim interpretation.
5
Appeal 2007-3122
Application 10/232,734

In light of the above, we are not persuaded that the Examiner erred in
the determination of obviousness.
Independent claims 1, 8, and 11 were argued together. Further, since
Appellants have stated that the dependent claims depend from claims 1, 8,
and 11 and did not provide arguments with respect to the dependent claims,
the dependent claims fall with the independent claims.

CONCLUSION
We therefore conclude that the Examiner did not err in rejecting
claims 1, 3-8, 10, and 11 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner rejecting claims 1, 3-8, 10, and 11 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)(1)(iv).

AFFIRMED

tdl

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR NY 10510
6