Ex Parte Lee

Patent Trial and Appeal Board

Feb 20, 2013

10865952 (P.T.A.B. Feb. 20, 2013)

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.
10/865,952 06/14/2004 Ki-ju Lee 1793.1278 1069
21171 7590 02/20/2013
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
ALUNKAL, THOMAS D
ART UNIT PAPER NUMBER
2688
MAIL DATE DELIVERY MODE
02/20/2013 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
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KI-JU LEE
____________

Appeal 2010-009860
Application 10/865,952
Technology Center 2600
____________

Before JOSEPH F. RUGGIERO, DENISE M. POTHIER, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 3-34. App. Br. 29.1 Claim 2 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b)(1). We affirm.

1 Throughout this opinion, we refer to: (1) the Appeal Brief (“App. Br.”)
filed September 30, 2009; (2) the Examiner’s Answer (“Ans.”) mailed
January 25, 2010; and (3) the Reply Brief (“Reply Br.”) filed March 25,
2010.
Appeal 2010-009860
Application 10/865,952

2
STATEMENT OF THE CASE
Invention
Appellant’s invention relates generally to apparatus and methods for
providing recording-related information regarding a disc. The apparatus
includes a disc drive that determines whether a disc that is presently in the
disc drive can be recorded by the disc drive. The apparatus further includes a
processor that obtains recording-related information from the disc and
displays the information regarding the disc if the disc drive cannot record to
the disc. See generally Abstract.
Independent claim 1, which is illustrative of the invention, reads as
follows:
1. An apparatus that provides information regarding a disc,
comprising:
a disc drive that determines whether the disc inserted therein
can be recorded to; and
a processor that obtains recording related information regarding
the disc when the disc drive cannot record to the disc, displays the
recording related information regarding the disc to a user if the disc
drive cannot record to the disc, and downloads software to enable the
disc drive to support the disc to be recorded, the recording related
information including a type of the disc and manufacturer information
for the disc.
The Examiner relies on the following as evidence of unpatentability:
Liow US 6,038,612 Mar. 14, 2000
Imamura US 2002/0057635 A1 May 16, 2002
Chiloyan US 2002/0095501 A1 July 18, 2002
Gehr US 2003/0051112 A1 Mar. 13, 2003
The Rejections
The Examiner rejected claims 1, 3, 4, 6-10, 12-24, and 26-34 under 35
U.S.C. § 103(a) as unpatentable over Gehr, Imamura, and Chiloyan.
Ans. 3-11.
Appeal 2010-009860
Application 10/865,952

3
The Examiner rejected claims 5, 11, and 25 under 35 U.S.C. § 103(a)
as unpatentable over Gehr, Imamura, Chiloyan, and Liow. Ans. 11.
Appellant’s arguments raise a variety of issues regarding the rejected
claims. Some arguments relating to one claim are essentially repeated in the
rejection of one or more other claims. In some claims, Appellant raises other
issues unique to that particular claim or to a subset of claims. All such issues
for all rejections are addressed in the analysis to follow on a claim-by-claim
basis. Rather than repeat the various arguments here, we review the
respective positions of Appellant and the Examiner in discussing each
rejected claim below. Only those arguments actually made by Appellant
have been considered in this decision. Arguments that Appellant did not
make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2010).

ANALYSIS
REJECTION OF CLAIMS 1, 3, 4, 6-10, 12-24, and 26-34
1. CLAIMS 1, 3, and 4
Analysis 1 – Downloaded Software Not Specific to Disc
The Examiner rejected claim 1 finding that Gehr teaches the recited
disc drive as element 122 of figure 1 and finding the teaching of the recited
processor as element 102 of figure 1. Ans. 3-4. The Examiner further finds
that Gehr describes at paragraph 0031 the recited processor operable to
obtain “recording related information” regarding a disc inserted in the disc
drive and that Gehr’s system displays an error message (read as the
“recording related information”) to a user if a disc inserted in drive 122 is
not capable of being recorded. Ans. 4. The rejection notes that Gehr does not
Appeal 2010-009860
Application 10/865,952

4
specifically show “the recording related information including a type of the
disc and manufacturer information” but finds the limitation is taught by
Imamura’s figure 2 and paragraph 0044. Ans. 4.The Examiner further notes
that Gehr does not specifically show that the processor downloads software
to enable the disc driver to support the inserted disc but finds the limitation
is taught by Chiloyan’s paragraphs 0010 and 0039 wherein the peripheral
device (e.g., disc drive) uses a Universal Resource Identifier (URI) stored on
the disc (and thus obtained from the disc) to obtain information related to the
peripheral device. Ans. 4-5.
Appellant argues that Chiloyan teaches that only “information
pertaining to the peripheral device can be can be downloaded by the host
device from the remote device.” App. Br. 31. Appellant therefore asserts that
the information (i.e., software) downloaded by Chiloyan is specific to the
peripheral device (i.e., the disc drive) rather than specific to the disc to be
recorded. App. Br. 31. Appellant further argues that paragraph 0039 of
Chiloyan (as cited by the Examiner) teaches only a “one-time update to the
peripheral device” to permit a host to access device driver revisions. App.
Br. 33. Thus, Appellant argues again that the downloaded software taught by
Chiloyan pertains to “the peripheral device only” and does not therefore
pertain to obtaining software “specifically to allow a certain type of disc to
be recorded.” App. Br. 33.
We find this argument unpersuasive as it is not commensurate in
scope with the claim. Notably, the language of claim 1 does not require that
the downloaded software is specific to the disc to be recorded or that the
software have any specific association with the disc to be recorded. Rather,
the claim (reproduced above) recites that the processor “downloads software
Appeal 2010-009860
Application 10/865,952

5
to enable the disc drive to support the disc to be recorded.” We find that the
plain meaning of this claim language is that any downloaded software that
enables the disc drive to support the disc to be recorded is within the scope
of this recitation (such as the information in Chiloyan including software and
firmware). In other words, the downloaded software as claimed need not be
“specific to the disc to be recorded” as Appellant contends. Rather, the
downloaded software enables the drive to support any number of disc types
so long as it includes support for recording on the presently inserted disc to
be recorded and thus need not be “specific to the disc.”
The Examiner responded:
The function of a disc drive is to record and/or reproduce
information on/from a disc. Thus, any software downloaded
from a remote device and pertaining to the peripheral device
(i.e., disc drive) in Chiloyan relates to the functionality of the
peripheral device, which is to either record or reproduce from
an inserted disc. In other words, Chiloyan discloses
downloading software to further enable a disc drive to record
and/or reproduce information on/from a disc (Paragraphs 10
and 39).
Ans. 12-13. We agree.
Appellant further argues that the above response of the Examiner
appears to set forth an unsupported inherency argument that any downloaded
software relating to the peripheral device (i.e., the disc drive) inherently
enables the peripheral device to record information on an inserted disc. App.
Br. 32. We find this argument unpersuasive.
We find no inherency argument in the Examiner’s rejection. Gehr is
relied upon for teaching that the disc drive can determine that a disc inserted
therein cannot be recorded by the drive and to take some action in response
to such a determination (i.e., Gehr teaches that the action is to display an
Appeal 2010-009860
Application 10/865,952

6
error message). Ans. 3-4. Chiloyan is relied upon as teaching numerous
types of information that may be located and downloaded in response to
information from the peripheral device (e.g., disc drive). Ans. 4-5. This
information includes an application program, a device driver, and firmware
(e.g., software). Chiloyan ¶ 0011.2 We find that it is common knowledge that
the firmware of a disc drive may determine the types and formats of inserted
discs that are supported for recording and that application programs or
drivers enable a peripheral device (e.g., a disc drive) to support an insertable
device (e.g., a disc). Thus, these teachings collectively teach or suggest to an
ordinarily skilled artisan that the downloaded software enables the disc drive
to support the disc to be recorded as recited.
Appellant next argues that the combination of Gehr with Imamura
“further illustrates the deficiency present in Chiloyan et al., and
subsequently in the combination of Chiloyan et al. with Gehr and Imamura
et al.” App. Br. 33. Appellant essentially argues that Chiloyan’s disc
manufacturing URI in combination with the teachings of Gehr and Imamura
still fails to teach that downloaded software of Chiloyan, accessed at the
URI, supports “a specific disc to be recorded.” Ans. 33. We find this
argument unpersuasive. As expressed above, we agree that the Examiner’s
combination of Gehr and Chiloyan teaches that the downloaded software of
Chiloyan enables the disc drive to support recording on a presently inserted
disc. Imamura is not required or relied on by the Examiner to teach this
recited limitation. Ans. 4-5.

2 The Examiner did not specifically cite paragraph 0011 of Chiloyan in
rejecting claim 1. However, Appellant has noted Chiloyan’s paragraph 0011
in both the Appeal Brief (App. Br. 31) and in the Reply Brief (Reply Br. 2)
in discussion of the rejection of claim 1.
Appeal 2010-009860
Application 10/865,952

7
Analysis 2 – Gehr Cannot Read “Recording Related Information”
Still further, Appellant argues that Gehr and Imamura in combination
fail to teach the recitations of obtaining and displaying “recording related
information” responsive to detecting that the presently inserted disc cannot
be recorded by the disc drive. App. Br. 34-35. Appellant argues:
Specifically, in the cited passage, para. [0031], Gehr
discusses displaying an error message when it is determined
that the CD drive is incapable of reading and writing data in a
format for the CD. Accordingly, in Gehr, when such an error
message is displayed, Gehr is unable to read from the CD. In
contrast, Imamura et al. in cited passage [0044] discusses
reading recording properties from a disk. That is, in Imamura et
al., the disc drive is capable of reading, and therefore, is not in
the error state described in Gehr. It is noted that if the CD drive
of Gehr is incapable of reading, thus prompting the error
message, then it would also be incapable of reading recording
properties from the disk, as discussed in Imamura et al. Thus,
the combination of Gehr and Imamura et al. fails to teach or
suggest the claimed “obtains recording related information
regarding the disc when the disc drive cannot record to the disc,
displays the recording related information regarding the disc to
a user if the disc drive cannot record to the disc.”
App. Br. 35-36. We find this argument unpersuasive.
The Examiner responds:
Here, the crux of the appellant’s argument is that because
Gehr outputs an error message when it is determined that the
drive is incapable or [sic] performing a record/reproduce
operation, the apparatus of Gehr is also unable to reading [sic]
any properties from the disc. However, Figure 5A, step 508
discloses that a format type of an inserted disc is determined
based on information reproduced from the disc. Thus, the
apparatus of Gehr is able to reproduce information from a disc
even when said disc in not a compatible disc. If the apparatus of
Gehr were unable to reproduce any information from an
incompatible disc, Figure 5A, step 508 would be omitted for
Appeal 2010-009860
Application 10/865,952

8
incompatible discs and an error message would be outputted
prior to the determination of a format type of an incompatible
disc. Therefore, the apparatus of Gehr is fully capable of
reading recording properties from a disc, in the cases where the
disc is either compatible or incompatible.
Ans. 16-17. We agree. Step 508 of Gehr’s figure 5A is described in
paragraph 0031 as determining “the formatting for the data stored on the CD
in the CD drive.” We therefore agree with the Examiner that Gehr has the
ability and suggests reading information from a disc (“recording related
information” as recited in claim 1) to determine the format of data stored
thereon to thereby determine that an error message is to be displayed.
In view of the above discussion, Appellant has not persuaded us of
error in the rejection of independent claim 1 and dependent claims 3 and 4
not separately argued with particularity. App. Br. 48.
2. CLAIM 6
Independent claim 6 includes recitations of functionality similar to
those of claim 1 but recites more detailed structural elements that provide
the recited functions. Specifically, claim 6 recites:
6. An apparatus that provides information regarding a disc in a
processor combined with a disc drive, the apparatus comprising:
a disc back-up supporter that stores a utility for a user to
instruct the user on how to record the disc;
a disc information servicer that displays recording related
information regarding the disc to a user if the disc drive cannot record
to the disc, the recording related information including a type of the
disc and manufacturer information for the disc;
an information searcher that receives a request from the disc
information servicer to search for the recording related information
regarding the disc, and transmits a result of the search to the disc
information servicer; and
an interface that transmits an instruction generated by the disc
back-up supporter to perform the disc recording or an instruction
Appeal 2010-009860
Application 10/865,952

9
generated by the disc information servicer to search for the recording
related information regarding the disc, and receives data output by the
disc drive, according to a predetermined protocol,
wherein the disc drive stores a recordable disc list table
including a list of discs that the disc drive can record to.
In rejecting claim 6, the Examiner reads the “disc back-up supporter”
as Gehr’s element 126 of figure 1 and reads the “disc information servicer”
as steps 508 and 510 of Gehr’s figure 5A (performed by a processor of Gehr
as described in paragraph 0031). Ans. 6. The Examiner further reads the
“interface” and “predetermined protocol” as system bus 104 of Gehr’s figure
1 and an associated protocol operating thereon. Ans. 6. The Examiner reads
the “information searcher” in Chiloyan as the system therein using a URI
stored on the disc to obtain information (e.g., download software) related to
the disc drive. Ans. 6-7.
We first note that Appellant’s arguments with regard to the rejection
of claim 6 do not dispute the Examiner’s reading of the above structural
elements but rather argue that the functions of these elements as recited in
claim 6 are not performed in the prior art – regardless of what structural
element may perform a recited function.
Appellant first argues that Gehr and Imamura in combination fail to
teach the recitations of obtaining and displaying “recording related
information” responsive to detecting that the presently inserted disc cannot
be recorded by the disc drive. App. Br. 37-38. Appellant’s argument here is
similar (if not identical) to the argument (see supra “Analysis 2”) discussed
above with respect to claim 1. We are not persuaded and refer to the
previous discussion in Analysis 2 for details.
Appellant further argues that the combination of Gehr, Imamura, and
Chiloyan fails to teach (emphasis added): “an interface that transmits an
Appeal 2010-009860
Application 10/865,952

10
instruction . . . generated by the disc information servicer to search for the
recording related information regarding the disc.” App. Br. 39. As in earlier
arguments relating to claim 1 (see supra “Analysis 1”), Appellant disputes
that Chiloyan shows locating information regarding the disc but rather
locates information (e.g., software to download) pertaining to the peripheral
device (i.e., the disc drive). App. Br. 39. Specifically, Appellant states:
Chiloyan et al. discusses that the URI, stored in firmware of the
peripheral device, is a network address for a resource which has
software for the peripheral device.
. . . Chiloyan et al. fails to discuss or suggest that the
URI/network address obtains firmware from the network
address regarding the disc.
App. Br. 39 (emphases added). Appellant here argues that the “instruction”
transmitted is to search for information pertaining to the disc – not
information pertaining to the disc drive (i.e., the downloaded software as in
Chiloyan).
As discussed above with respect to “Analysis 1” of claim 1, we find
this argument unpersuasive and find that downloaded software as taught in
Chiloyan shows information that pertains to the disc if it enables the disc
drive functions to support recording to the disc. For example, downloading
and installing firmware for a peripheral device (i.e., disc drive), as taught by
Chiloyan in paragraph 0011, suggests enabling the disc drive functionality to
support recording on the presently inserted disc and hence such downloaded
software is “information regarding the disc.”
Analysis 3 – No Disc List Table
Independent claim 6 also includes a limitation regarding use of a “disc
list table” listing discs to which the disc drive can record. The Examiner’s
rejection finds that it is inherent in Gehr to use such a table stored in the disc
Appeal 2010-009860
Application 10/865,952

11
drive to determine whether the drive can record on the presently inserted
disc. Ans. 6. The Examiner clarified that steps 508 and 510 of Gehr’s figure
5A must inherently provide and utilize such a disc list table indicating discs
that are compatible with the disc drive to enable a determination as to
whether the disc drive supports the format of the presently inserted disc and
permits the associated display of an error message (e.g., at step 512 of figure
5A). Ans. 20.
Appellant argues that this limitation is not taught by Gehr or inherent
in Gehr and further argues that paragraph 0031 of Gehr and the associated
method steps (508 and 510) in Gehr’s figure 5A fail to show use of such a
table. App. Br. 40. We find this argument unpersuasive.
The Examiner responds that Gehr’s figure 5A, steps 508 and 510,
determines if the disc drive can read/write from/to the format of the
presently inserted disc and thus Gehr must have a list/table of compatible
formats to make such a determination (i.e., in step 510). Ans. 20. We agree.
Moreover, assuming such a “table” data structure is not inherent in the
teachings of Gehr, we find that the rejection of claim 6 is based on
obviousness and that the use of a “table” for storing one or more entries of
data is common knowledge to those of ordinary skill in the art. The Supreme
Court has held: “the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127
S. Ct. 1727 (2007).
In view of the above discussion, Appellant has not persuaded us of
error in the rejection of independent claim 6.
Appeal 2010-009860
Application 10/865,952

12
3. CLAIMS 7 and 9
Claim 7 depends from claim 6 and includes a limitation: “wherein the
disc information servicer determines whether the disc drive supports the disc
to be recorded to, and displays the recording related information regarding
the disc to a user if the disc drive does not support the disc.” App. Br. 60
(emphasis added). The Examiner finds Gehr’s elements 508 and 510 of
figure 5A and the supporting text in paragraph 0031 teach this limitation.
Ans. 7. Appellant argues that the Examiner’s reading of the limitation on
Gehr must restrict the definition of “recording related information” to only
the error message display of Gehr’s step 510, thus excluding display of other
information such as the manufacturing information and disc type as the
Examiner finds in Imamura. Specifically, Appellant argues:
In the cited passage, para. [0031], Gehr discusses
displaying an error message when it is determined that the CD
drive is incapable of reading and writing data in a format for the
CD. The error message is discussed in para. [0031] of Gehr as
“indicating to the user that the CD has incompatible
formatting.” However an error message indicating to the user
that the CD has incompatible formatting cannot be properly
equated with the claimed “recording related information,” as
same features antecedent basis from claim 6, reciting “the
recording related information including a type of the disc and
manufacturer information for the disc.”
App. Br. 49-50. We find this argument unpersuasive. The Examiner
responds:
Here, it is noted that the teachings if Gehr and Imamura
have already been combined in claim 6. Thus, the “recording
related information” of Gehr[, when combined with Imamura,]
is provided with both manufacturer information and disk type
information. Paragraph 31 of Gehr is cited in claim 7 for the
displaying of said recording related information already
Appeal 2010-009860
Application 10/865,952

13
provided with both manufacturer information and disk type
information.
Ans. 27. We agree. Thus, Appellant has not persuaded us of error in the
rejection of dependent claim 7 and claim 9 (dependent from claim 7) not
separately argued with particularity. App. Br. 48.
4. CLAIM 8
Claim 8 depends from claim 7 and includes a limitation: “wherein if
the disc drive does not support the disc to be recorded to, the information
searcher searches a server or a website for the recording related information
regarding the disc and transmits a result to the disc information servicer, and
the disc information servicer displays the result.” App. Br. 60 (emphasis
added). As in the discussion of “Analysis 1” above, the Examiner rejected
the claim reading this limitation on the teachings of Chiloyan’s paragraphs
0011 and 0034. Ans. 7.
As in earlier arguments relating to claim 1 (see supra “Analysis 1”),
Appellant disputes that Chiloyan shows displaying information regarding
the disc but rather searches for information (e.g., software to download)
pertaining to the peripheral device (i.e., the disc drive). App. Br. 50.
Specifically, Appellant states:
Chiloyan et al. discusses that the URI, stored in firmware of the
peripheral device, is a network address for a resource which has
software for the peripheral device.
However, the URI of Chiloyan et al. fails to discuss or
suggest that the URI/network address obtains recording related
information regarding the disc.
App. Br. 50 (emphases added). As above, we find this argument
unpersuasive and find that downloaded software as taught in Chiloyan
pertains to the disc (“information regarding the disc”) if it enables the disc
Appeal 2010-009860
Application 10/865,952

14
drive functions to support recording to the disc. Thus, Appellant has not
persuaded us of error in the rejection of dependent claim 8.
5. CLAIM 10
Claim 10 depends from claim 6 and includes a limitation: “wherein, if
the disc drive does not support the disc to be recorded, the information
searcher downloads software supporting recording of the disc from a server
or website.” App. Br. 60 (emphasis added). The Examiner finds Chiloyan’s
paragraphs 0011 and 0034 teach this limitation. Ans. 8. Appellant again
argues that Chiloyan teaches only “information pertaining to the peripheral
device” as distinct from information specific to the disc to be recorded. As
discussed above with respect to “Analysis 1,” we find this argument
unpersuasive. Thus, Appellant has not persuaded us of error in the rejection
of dependent claim 10.
6. CLAIM 12
Independent claim 12 includes recitations of functionality similar to
those of claim 1 but presented as a method claim. Specifically, claim 12
recites:
12. A method of providing information regarding a disc in a
processor combined with a disc drive, the method comprising:
determining whether the disc drive supports recording to a disc
in the disc drive by referencing a recordable disc list table stored in
the disc drive; and
displaying recording related information regarding the disc to a
user if the disc is not supported to be recorded to by the disc drive, the
recording related information including a type of the disc and
manufacturer information for the disc.
The Examiner rejected this claim as a method claim having similar
recitations to claim 1 and thus rejected claim 12 for the same reasons as
claim 1. Ans. 8. Appellant argues that the combination of references fails to
Appeal 2010-009860
Application 10/865,952

15
show the recited use of a “recordable disc list table” for the same reasons as
argued with respect to a similar limitation in claim 6 (see supra “Analysis
3”). App. Br. 40-41. For the same reasons as discussed above with respect to
“Analysis 3,” we are unpersuaded by Appellant’s argument.
Appellant further argues that the combination of Gehr and Imamura
fails to show the recited display of information because Gehr is incapable of
reading such information from the disc when it identifies an error for the
same reasons as argued with respect to a similar limitation in claim 1 (see
supra “Analysis 2”). App. Br. 41-43. The Examiner responds similarly to the
response presented above with respect to claim 1 (see supra “Analysis 2”).
Ans. 22. For the same reasons as discussed above with respect to “Analysis
2,” we are unpersuaded by Appellant’s argument and agree with the
Examiner.
Thus, Appellant has not persuaded us of error in the rejection of
independent claim 12.
7. CLAIM 13
Claim 13 depends from claim 12 and includes the recitation:
“searching the website using a disk ID and manufacturer of the disk.” App.
Br. 61. The Examiner rejected this claim, mapping this limitation to
Chiloyan’s paragraphs 0011 and 0034 and noting that the host device
downloads documentation for the peripheral device. Ans. 8-9. Appellant
argues again that Chiloyan shows only searching using information
pertaining to the peripheral device (disc drive) as distinct from using
information relating to the disc. App. Br. 52. The Examiner responds that, by
using the disc manufacturing information URI provided by the disc in
Chiloyan, the disc apparatus taught by Gehr and Imamura is able to search
Appeal 2010-009860
Application 10/865,952

16
the website identified by the URI (provided by the disc) based on the disk ID
and manufacturing information as taught by Gehr and Imamura (e.g., search
for software, documentation, or other information as suggested by
Chiloyan’s paragraph 0011). Ans. 30. As above with respect to “Analysis 1,”
we are not persuaded.
Thus, Appellant has not persuaded us of error in the rejection of
dependent claim 13.
8. CLAIM 14
Claim 14 depends from claim 12 and includes the recitation:
“connecting to a server via a network and downloading software which
supports recording to the disc by the disc driver [sic] from the server.” App.
Br. 61. The Examiner rejected this claim reading this limitation on
Chiloyan’s paragraphs 0011 and 0034 as the downloading of software that
enables the peripheral device (disc drive) to support the disc. Ans. 9.
Appellant argues again that Chiloyan downloads only software pertaining to
the peripheral device (disc drive) as distinct from software relating to the
disc. App. Br. 52-53. As above with respect to “Analysis 1,” we are not
persuaded. The Examiner responds similarly to the response regarding
“Analysis 1” above that downloaded software relating to the disc reads on
downloaded software relating to the peripheral device that enables the
device (disc drive) to support the disc. Ans. 30. We agree.
Thus, Appellant has not persuaded us of error in the rejection of
dependent claim 14.
9. CLAIMS 15-23 and 26-29
Independent claim 15 includes recitations similar to those of claim 1.
Specifically, claim 15 recites:
Appeal 2010-009860
Application 10/865,952

17
15. An apparatus to record data on a disc, the apparatus
comprising:
a disc drive in which the disc is removably provided, the disc
drive to record data onto the disc and the disc drive to store a
recordable disc list table including a list of discs that the disc drive
can record to;
a processor, connected with the disc drive, to determine if the
disc drive is able to record data onto the disc based on the recordable
disc list table wherein, if the disc drive is not able to record the data
on the disc, the processor searches a network for software and
downloads the software to enable the disc drive to record the data on
the disc and updates the recordable disc list table to reflect that the
disc may now be recorded upon.
The Examiner rejected this claim for the same reasons as claim 12.
Ans. 9. Appellant argues again that the combination of references fails to
show the recited use of a “recordable disc list table” for the same reasons as
argued with respect to a similar limitation in claim 6 (see supra “Analysis
3”). App. Br. 43-44. As above, we are unpersuaded. The Examiner responds
similarly to the response presented above with respect to claim 6 (see supra
“Analysis 3”). We agree.
Claim 15 also includes the recitation: “the processor searches a
network for software and downloads the software to enable the disc drive to
record the data on the disc.” App. Br. 62. The Examiner rejected this claim
for the same reasons as claim 12. Ans. 9. Appellant argues again that
Chiloyan searches and downloads only software pertaining to the peripheral
device (disc drive) as distinct from software and downloads relating to the
disc. App. Br. 44-45. As above with respect to “Analysis 1,” we are not
persuaded. The Examiner responds similarly to the response regarding
“Analysis 1” above that searching for and downloading software relating to
the disc reads on searching for and downloading software relating to the
Appeal 2010-009860
Application 10/865,952

18
peripheral device that enables the device (disc drive) to support the disc.
Ans. 23-24. We agree.
Thus, Appellant has not persuaded us of error in the rejection of
independent claim 15. Dependent claims 16-23 and 26-29 depend from
claim 15 and are not separately argued (see App. Br. 53-55) and thus we are
not persuaded of error in the rejection of dependent claims 16-23 and 26-29.
10. CLAIM 24
Claim 24 depends from claim 23 and includes the additional
recitation: “wherein the disc information includes at least one of a disc ID or
manufacturer information.” App. Br. 63. The Examiner rejected this claim
reading this limitation on the “vendor identifier” in Chiloyan’s paragraph
0013. Ans. 10. Appellant argues:
However, in para. [0013], Chiloyan et al. is discussing a device
descriptor assigned to the peripheral device, where the device
descriptor includes information such as a vendor identifier and
a product identifier. That is, Chiloyan et al. discusses a
descriptor and information specific to a peripheral device.
Chiloyan et al. is silent in para. [0013] regarding “disc
information,” or information specific to a disc, and further,
specifically regarding “a disc ID or manufacturer information.”
App. Br. 54-55. We are not persuaded.
The Examiner responds: “However, the vendor information disclosed
by Chiloyan corresponds to the claimed manufacturer information as the
peripheral device of Chiloyan is provided with a removable optical disk
(Paragraph 0032). Furthermore, a disc ID is disclosed for optical disk 31 in
Chiloyan.” Ans. 31. We agree.
Thus, Appellant has not persuaded us of error in the rejection of
dependent claim 24.
Appeal 2010-009860
Application 10/865,952

19
11. CLAIMS 30-33
Independent claim 30 includes recitations similar to claims discussed
above. Specifically, claim 30 recites:
30. A method of providing recording related information
regarding a disc, the method comprising:
determining if a disc drive is able to record data onto the disc
by referencing a stored recordable disc list table stored in the disc
drive;
displaying a message to a user if the disc drive is not able to
record the data onto the disc; and
when the drive is not able to record the data onto the disc:
automatically connecting to a network and searching the
network for software and recording related information regarding the
disc to enable the disc drive to record data onto the disc, the recording
related information including a type of the disc and manufacturer
information for the disc;
automatically executing the software; and
displaying recording related information found on the network
to the user.
Claim 30 was rejected by the Examiner for reasons similar to claims
15-24 and 26-29. Ans. 11. Appellant argues again that the combination of
references fails to show the recited use of a “recordable disc list table” for
the same reasons as argued with respect to a similar limitation in claim 6
(see supra “Analysis 3”). App. Br. 43-44. As above, we are unpersuaded.
The Examiner responds similarly to the response presented above with
respect to claim 6 (see supra “Analysis 3”). Ans. 24-25. We agree.
Claim 30 also includes the recitation: “when the drive is not able to
record the data onto the disc: automatically connecting to a network and
searching the network for software and recording related information
regarding the disc to enable the disc drive to record data onto the disc.” App.
Br. 63. Appellant argues again, as above, that Chiloyan searches only
Appeal 2010-009860
Application 10/865,952

20
software pertaining to the peripheral device (disc drive) as distinct from
software relating to the disc. App. Br. 45-46. As above with respect to
“Analysis 1,” we are not persuaded. The Examiner responds as above that
the recitations of searching for and downloading software relating to the disc
reads on searching for and downloading software relating to the peripheral
device that enables the device (disc drive) to support the disc. Ans. 25. We
agree.
Claim 30 also includes a limitation: “when the drive is not able to
record the data onto the disc: . . . displaying recording related information
found on the network to the user.” Appellant argues that the combination of
Gehr and Imamura fails to show the recited display of information because
Gehr is incapable of reading such information from the disc when it
identifies an error for the same reasons as argued with respect to a similar
limitation in claim 1 (see supra “Analysis 2”). App. Br. 47-48. We are again
unpersuaded. The Examiner responds similarly to the response presented
above with respect to claim 1 (see supra “Analysis 2”). Ans. 26-27. We
agree.
Thus, Appellant has not persuaded us of error in the rejection of
independent claim 30 and dependent claim 31-33 not separately argued with
particularity. App. Br. 56.
12. CLAIM 34
Claim 34 depends from claim 30 and includes the recitation: “wherein
the disc information includes manufacturer information.” App. Br. 64. Claim
34 was rejected by the Examiner for reasons similar to claims 15-24 and 26-
29. Ans. 11. Appellant argues as in claim 24 above that the recited
“manufacturer information” does not read on Chiloyan’s “vendor identifier”
Appeal 2010-009860
Application 10/865,952

21
in paragraph 0013. As with claim 24 discussed above, we are similarly
unpersuaded. Responding to the same argument regarding claim 24, the
Examiner states: “However, the vendor information disclosed by Chiloyan
corresponds to the claimed manufacturer information as the peripheral
device of Chiloyan is provided with a removable optical disk (Paragraph
0032). Furthermore, a disc 10 is disclosed for optical disk 31 in Chiloyan.”
Ans. 31. We agree.
Thus, Appellant has not persuaded us of error in the rejection of
dependent claim 34.
REJECTION OF CLAIMS 5, 11, and 25
Dependent claims 5, 11, and 25 depend from claims 1, 6, and 15,
respectively, and are rejected based over Gehr, Chiloyan, Imamura, and
Liow. Appellant asserts that Liow fails to cure the deficiencies discussed in
connection with their base claims. App. Br. 57-58. We are not persuaded for
the reasons discussed above in connection with claims 1, 6, and 15 and need
not address whether Liow cures any purported deficiency. Thus, Appellant
has not persuaded us of error in the rejection of claim 5, 11, and 25.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 3, 4, 6-10, 12-24,
and 26-34 under § 103.
(2) The Examiner did not err in rejecting claims 5, 11, and 25 under
§ 103.

DECISION
The Examiner’s decision rejecting claims 1 and 3-34 is affirmed.
Appeal 2010-009860
Application 10/865,952

22
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

babc