Ex Parte KUBO

Board of Patent Appeals and Interferences

Sep 16, 2004

09136619 (B.P.A.I. Sep. 16, 2004)

1
The opinion in support of the decision being entered
today was not written for publication and is
not binding precedent of the Board
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MASAHIRO KUBO
______________
Appeal No. 2004-0316
Application 09/136,619
_______________
ON BRIEF
_______________
Before THOMAS, DIXON and GROSS, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant has appealed to the Board from the examiner's
final rejection of claims 1, 3, 10-12, 16-18 and 22-28.
Representative claim 1 is reproduced below:
1. A recording medium with an index print wherein, in a
recording medium in the form of a disk having a digital data
recording surface on which a plurality of digital image data can
be recorded, thumbnail images, forming the index print,
Appeal No. 2004-0316
Application 09/136,619
1 We note in passing that the subject matter of independent
claims 10 and 16 on appeal appear to be substantially identical,
thus not meeting the requirement of Rule 75(b) that there be
substantial distinctions between pending claims.
2
corresponding to the digital image data are displayed in printing
on the opposite surface to the digital data recording surface,
wherein markings for specifying images corresponding to the print
images are displayed in printing together with the print images.
The following reference is relied on by the examiner:
Wen et al. (Wen) 6,019,151 Feb. 1, 2000
(filing date Jan. 7, 1997)
Claims 1, 3, 10, 12, 16, 18, 22 and 24 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Wen. On the other
hand, dependent claims 11, 17, 23 and 25-28 stand rejected under
35 U.S.C. § 103. As evidence of obviousness, the examiner relies
upon Wen alone.1
Rather than repeat the positions of the appellant and the
examiner, reference is made to the brief (no reply brief has been
filed) for the appellant's positions, and to the final rejection
and answer for the examiner's positions.
OPINION
For the reasons set forth by the examiner in the final
rejection and answer, we sustain both stated rejections of the
Appeal No. 2004-0316
Application 09/136,619
3
claims on appeal. Appellant groups all independent claims 1, 10,
16, and 22 together with independent claim 1 as representative
thereof. Appellant also presents dependent claims 25-28 as
falling together in a separate grouping. Note the top of page 4
of the brief.
At page 4 of the brief, appellant urges that Wen fails to
disclose markings which specify images that correspond to the
print images, where the markings are displayed in printing
together with the print images on the CD. The ensuing discussion
recognizes that column 1, lines 48-61 of Wen teaches the
thumbnail images recited in the body of independent claim 1 on
appeal which is stated there to form the so-called index print of
the preamble of that claim. Page 5 of the brief urges that the
only text contemplated by Wen regards the descriptive contents of
the CD and that there is no teaching or suggestion of specific
information that would map out the location of thumbnail images
on a CD. Finally, appellant recognizes in the paragraph bridging
pages 5 and 6 of the brief that Wen mentions the desire to print
thumbnail images "as" an index on a CD surface. This is correct
in that column 1, lines 50 and 51 indicate that "thumbnail images
can be printed on the label as an index of the images stored in
Appeal No. 2004-0316
Application 09/136,619
4
the CD." Appellant continues to argue that this teaching does
not contemplate the additional provision of a marking for
specifying images on the CD that corresponds to the print images.
Appellant's arguments at page 6 of the brief regarding this
teaching of an index in Wen takes the position that the use of
the word "index" does not necessarily include specific markings
and that the index "is constituted by thumbnail images only and
there is no teaching that specific markings should accompany each
thumbnail image."
We disagree with these arguments and appellant's view with
respect to the teaching in the identified portion of the bottom
of column 1 of Wen, and we are persuaded by the examiner's
reasoning set forth on substantially all of page 4 of the answer
which we reproduce here:
The Examiner contends that Wen's disclosure of using
thumbnails as an index for the photos necessitates
having markings associated therewith to direct the user
of the disc as to which track has the photo, whether it
be a number [sic ,] a letter, etc. Wen explicitly
states that the thumbnails are for index use, which
implies that a user is to utilize the thumbnails to
locate the pictures of the disk. This is the identical
purpose of that found in Appellant's invention.
Furthermore, Wen explicitly discloses the usage of
print with images and graphics in order to provide more
information to the user in the disc. The Examiner
disagrees with the implication of Appellant's argument.
Appeal No. 2004-0316
Application 09/136,619
5
Appellant's argument would suggest that even though Wen
discloses thumbnail images of photos to be used as an
index (which is exactly what Appellant's invention
does), and further discusses the usage of text with
images to provide information to the user, this
disclosure somehow fails to encompass the addition of a
mark (e.g., track listing next to the thumbnail image)
on the CD. The Examiner contends that Appellant is
reading the term "index" in Wen as narrowly as
possible, and that even with this narrow interpretation
still does not overcome the rejection. Appellant's
interpretation of index contradicts not only what one
of ordinary skill in the art would perceive as being an
index on a CD (see any list of tracks on music CD, note
the numbers that identify the tracks on the disc), it
also contradicts a simple common sense interpretation
of what an "index" is. The Examiner maintain [sic,
maintains] that when Wen states that an index is
provided that consists of thumbnails, that this
implicitly means that markings accompany the thumbnail
index.

The examiner's persuasiveness is aided by earlier teachings
at column 1, lines 20-23 of Wen. There it is stated that a label
is "usually printed with, say, a description of the information
stored on the CD. The printed information may be logos, text,
graphics, and/or bar codes." Not only does this descriptive
information correspond to the just-reproduced portion of the
answer, it essentially refutes the appellant's arguments at pages
4-6 of the brief as to the first stated rejection of each of the
independent claims on appeal. Consistent with this teaching of
Appeal No. 2004-0316
Application 09/136,619
6
conventional CD descriptive material on their labels, the artisan
would readily interpret the teaching at the bottom of column 1
relating to thumbnail images that are printed for photo CD would
also include index information that is characteristic of
descriptive information of the actual images stored in the photo
array on the disk itself. Moreover, an ordinary dictionary
definition of the term "index" indicates the term commonly
includes a list of items and a numeric identifier or "marking"
indicating where the item may be found. Thus, there are clear
teachings consistent with the examiner's position that "markings
for specifying images corresponding to the print images are
displayed in printing together with the print images" as set
forth at the end of representative independent claim 1 on appeal.
In view of these conclusions, we sustain the rejection of
each independent claim 1, 10, 16, and 22 on appeal and their
corresponding dependent claims 3, 12, 18, and 24 within this
first stated rejection of the claims under 35 U.S.C. § 102.
Appellant's position with respect to dependent claims 11, 17
and 23 at the bottom of page 6 of the brief, which claims are
rejected under 35 U.S.C. § 103 and not 35 U.S.C. § 102, notes
that these claims fall with their respective parent independent
claims 10, 16, and 22.
Appeal No. 2004-0316
Application 09/136,619
7
Lastly, we consider the subject matter of dependent claims
25-28 that are rejected under 35 U.S.C. § 103 over Wen alone.
According to the reasons set forth by the examiner at page 6 of
the final rejection, we sustain this rejection in addition to the
examiner's responsive arguments at page 5 of the answer. Each of
these claims 25-28 recite the same feature, namely, that the
markings of the independent claims comprise "frame numbers."
Although we agree with appellant's view at page 7 of the brief
that Wen's teaching of an index formed by thumbnail images does
not indicate frame numbers per se, we agree with the examiner's
positions. The examiner's reliance upon "Official notice" is
noted at the bottom of page 7 of the brief but is not challenged
per se. The appellant merely argues that the examiner's
rationale is based upon hindsight.
In addressing this criticism at page 5 of the answer the
examiner, within 35 U.S.C. § 103, argues that the "usage of track
numbers is probably implied with the usage of the term "index" in
Wen. We also agree with the examiner's further views stated
here:
Appeal No. 2004-0316
Application 09/136,619
8
Having an index implies that this index must guide a
user of it to where the information exists. Simply
placing thumbnails on the disk provides the user with
no direction. One of ordinary skill in the art would
want to provide the user with means for finding the
picture on the disc (much in the same way a user can
find tracks on a CD by referencing the song index on
the CD).
This rationale is consistent with the examiner's views
expressed at page 6 of the final rejection. There the examiner
appears to analogously argue that the track numbers of a song
on the label of an audio CD would advantageously lead the artisan
to use and identify the frame number of an image on a photo CD
as in Wen. To print the name of a song plus its track number
"corresponding to" the digital audio information on the other
or opposite side of conventional audio disc obviously would have
lead the artisan to print the index of the image "corresponding
to" the frame with the frame number of the digital video on the
opposite side of the CD/DVD, on a photo CD as in Wen.
All of this rationale is consistent with appellant's
disclosed invention which recognizes at pages 1 and 2 of the
specification as filed that the prior art provides a conventional
index print (claimed as a feature in the preamble of each claim
on appeal) which is separately provided together with a recording
Appeal No. 2004-0316
Application 09/136,619
9
medium of the photo image of video images as well. Consistent
with the examiner's rationale and the teachings identified
earlier at the initial portion of column 1 of Wen, prior
art/conventional index prints contain a numeric identifier
corresponding to each image and therefore its location on the
opposite or image data surface of the CDS. These conventional
index prints map the location of each of the respective
individual index prints to the respect images in their
corresponding, relative location among the digital data on the
disk itself.
Finally, we note that dependent claims 25-28 recite a
specific detail (a frame number) of what the generic "marking" is
in their parent independent claims. By implication therefore,
our affirmance of the rejection of claims 25-28 under 35 U.S.C.
§ 103 applies equally well to their parent independent claims
even though no express rejection of them has been made under
35 U.S.C. § 103.
In view of the foregoing, the decision of the examiner
rejecting various claims under 35 U.S.C. § 102 and 35 U.S.C.
§ 103 is affirmed.
Appeal No. 2004-0316
Application 09/136,619
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Joseph L. Dixon ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Anita Pellman Gross )
Administrative Patent Judge )

Appeal No. 2004-0316
Application 09/136,619
11
Sughrue, Mion, Zinn, MacPeak & Seas
2100 Pennsylvania Avenue, N.W.
Washington, DC 20037-3202
JDT/cam