Ex Parte Konetski et alDownload PDFPatent Trial and Appeal BoardFeb 25, 201311112251 (P.T.A.B. Feb. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID KONETSKI and THOMAS L. PRATT ___________ Appeal 2010-008261 Application 11/112,251 Technology Center 2600 ____________ Before ERIC B. CHEN, MICHAEL J. STRAUSS, and JOHN G. NEW, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008261 Application 11/112,251 2 This is an appeal under 35 U.S.C. § 134(a) from the non-final rejection of claims 1, 2, 4-10, 12-18, and 20. Claims 3, 11, and 19 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention relates to an error engine associated with an optical disc drive that plays an audible voice error message if an optical medium is incompatible with the optical drive based system. (Abstract.) Claim 1 is exemplary, with disputed limitations in italics: 1. A method for playing an optical medium on an optical drive based system, the method comprising: inserting the optical medium into the optical drive based system; searching the optical medium with the optical drive based system to attempt to identify the formatting of the optical medium; determining that the formatting of the optical medium is incompatible with the optical drive based system; and issuing an audible voice error message of the incompatibility from the optical drive based system; wherein searching the optical medium further comprises identifying the formatting of the optical medium as video navigation formatting, the optical drive based system configured to play optical media having audio navigation formatting. Claims 9, 10 and 12-17 stand rejected under 35 U.S.C. §112, second paragraph, as failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Claims 1, 4, 6, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gehr (U.S. Patent No. 6,453,395 B1; Sept. 17, 2002), Smith (U.S. Patent Application Publication No. 2003/0217312 A1; Appeal 2010-008261 Application 11/112,251 3 Nov. 20, 2003), and Yamamoto (U.S. Patent No. 7,006,758 B1; Feb. 28, 2006). Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gehr, Smith, Yamamoto, and Weng (U.S. Patent No. 6,778,479 B2; Aug. 17, 2004). Claims 5 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gehr, Smith, Yamamoto, and Forson (U.S. Patent No. 4,481,577; Nov. 6, 1984). Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gehr, Smith, Yamamoto, and Berke (U.S. Patent No. 6,629,092 B1; Sept. 30, 2003). Claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gehr, Smith, Yamamoto, Berke, and Mobini (U.S. Patent No. 6,564,255 B1; May 13, 2003). Claims 9, 10, 12, and 14-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gehr, Smith, Yamamoto and Weng. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gehr, Smith, Yamamoto, Weng, and Ohtaki (U.S. Patent No. 6,373,807 B1; Apr. 16, 2002.) Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Gehr, Smith, Yamamoto, Weng, and Berke.1 1 Appellants do not present any arguments with respect to the rejection of claims 9, 10, and 12-17 under 35 U.S.C. §112, second paragraph, and the rejection of dependent claims 2, 4-8, 10, 12-17, and 20 under 35 U.S.C. §103(a). Thus, any such arguments are deemed to be waived. See 37 C.F.R. § 41.37(c)(iv). Appeal 2010-008261 Application 11/112,251 4 ANALYSIS We are not persuaded by Appellants’ arguments (App. Br. 3-4; see also Reply Br. 1) that the combination of Gehr, Smith, and Yamamoto would not have rendered obvious independent claim 1, which includes the limitations “issuing an audible voice error message of the incompatibility from the optical drive based system” and “wherein searching the optical medium further comprises identifying the formatting of the optical medium as video navigation formatting, the optical drive based system configured to play optical media having audio navigation formatting.” The Examiner found that the audio player of Yamamoto that is incompatible with a video DVD corresponds to the limitation “wherein searching the optical medium further comprises identifying the formatting of the optical medium as video navigation formatting, the optical drive based system configured to play optical media having audio navigation formatting.” (Ans. 5; Yamamoto, col. 11, ll. 19-25.) The Examiner acknowledged that Gehr does not disclose the limitation “issuing an audible voice error message of the incompatibility from the optical drive based system” (Ans. 4-5) and thus, relied upon Smith for teaching presentation of an error audibly (Ans. 5; Smith, ¶ [0009].) The Examiner concluded that “[o]ne of ordinary skill in the art . . . would have been motivated to incorporate the audible voice error message disclosed by Smith into the method disclosed by Gehr to enhance the user interface of the method.” (Ans. 5.) We agree with the Examiner. Gehr relates to read/write compact disc drives, in particular, “an automatic way of copying compact discs using read/write compact disc Appeal 2010-008261 Application 11/112,251 5 drives having one or more copy buttons on the read/write compact disc drives.” (Col. 1, ll. 6-9.) Smith relates to computer error messages “presenting error messages to computer users” (¶ [0001]) for either visually impaired users (¶ [0004]) or for technically challenged users that are unfamiliar with a graphical user interface (¶ [0005]). A disk-drive system includes a data structure stored in a machine-readable medium within an optical disk drive “for audibly indicating an error.” (¶ [0009].) Therefore, Smith teaches the limitation “issuing an audible voice error message of the incompatibility from the optical drive based system.” Yamamoto relates to a digital versatile disk (DVD) that “enables simultaneous recording of sound and video data sets, as well as recording of solely video data or solely sound data.” (Col. 1, ll. 32-34.) Yamamoto explains that a video DVD is reproduced by a video player on the basis of navigation information that includes management information. (Col. 11, ll. 19-22.) “However, since the navigation information is not recorded according to the DVD audio format, the audio player cannot reproduce the video DVD.” (Col. 11, ll. 23-25.) Accordingly, Yamamoto teaches the limitation “wherein searching the optical medium further comprises identifying the formatting of the optical medium as video navigation formatting, the optical drive based system configured to play optical media having audio navigation formatting.” A person of ordinary skill in the art would have recognized that incorporating the audible signals of Smith for audibly indicating errors, with the read/write compact disc drives of Gehr, would improve Gehr by providing the ability to alternately present error messages to computer users. Appeal 2010-008261 Application 11/112,251 6 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Thus, we agree with the Examiner (Ans. 5) that modifying Gehr to include the audible signals of Smith would have been obvious. First, Appellants argue that “Gehr seeks a match of optical medium type, and does not analyze the content on the optical medium, such as whether an optical medium has audio or video navigation formatting” and, accordingly, “Gehr fails to teach, disclose or suggest an incompatibility error based on the type of navigation associated with the optical medium.” (App. Br. 4; see also Reply Br. 1.) However, the Examiner cited to Smith, rather than Gehr, for teaching the limitation “issuing an audible voice error message.” (Ans. 5.) Likewise, the Examiner cited to Yamamoto, rather than Gehr, for teaching the limitation “identifying the formatting of the optical medium as video navigation formatting, the optical drive based system configured to play optical media having audio navigation formatting.” (Ans. 5.) Second, Appellants argue that “Yamamoto teaches away from presentation of an error based upon the type of navigation by presenting title information in only an audio form.” (App. Br. 4.) In particular, Appellants argue that “a disable[d] person needing audio navigation using Smith would have no desire to seek to use video navigation or even have media that uses video navigation.” (Reply Br. 1.) However, Appellants have provided insufficient evidence or arguments to explain why a person of ordinary skill in the art, upon reviewing Smith, would have been led in a direction divergent from that chosen by Appellants, because Smith provides alternative applications other than visually impaired users (e.g., technically challenged users unfamiliar with a graphical user interface (¶ [0005])). See Appeal 2010-008261 Application 11/112,251 7 In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Third, Appellants argue that “Yamamoto fails to indicate that any error exists if a DVD with video navigation is played in an audio device.” (App. Br. 4.) However, the Examiner cited to Smith, rather than Yamamoto, for teaching the limitation “issuing an audible voice error message.” (Ans. 5.) Last, Appellants argue “that no motivation exists to combine the audible message of Smith intended for disable users with Gehr and Yamamoto.” (App. Br. 4.) As discussed previously, the combination of Gehr and Smith is based on the improvement of a similar device in the same way as in the prior art or, to yield predictable results. Thus, we agree with the Examiner that the combination of Gehr, Smith, and Yamamoto would have rendered obvious independent claim 1, which includes the limitations “issuing an audible voice error message of the incompatibility from the optical drive based system” and “wherein searching the optical medium further comprises identifying the formatting of the optical medium as video navigation formatting, the optical drive based system configured to play optical media having audio navigation formatting.” Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a). Independent claims 9 and 18 recite limitations similar to those discussed with respect to independent claim 1, and Appellants have not presented any substantive arguments with respect to these claims. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably Appeal 2010-008261 Application 11/112,251 8 interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). We sustain the rejection of claims 9 and 18, for the same reasons discussed with respect to claim 1. DECISION The Examiner’s decision to reject claims 1, 2, 4-10, 12-18, and 20 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 tj Copy with citationCopy as parenthetical citation