Ex Parte Lin

Board of Patent Appeals and Interferences

Jun 9, 2010

10129602 (B.P.A.I. Jun. 9, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte SHU LIN
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Appeal 2009-003283
Application 10/129,602
Technology Center 2600
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Decided: June 9, 2010
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Before KENNETH W. HAIRSTON, THOMAS S. HAHN,
and, BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant invokes our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-16. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

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STATEMENT OF THE CASE1
Appellant claims an apparatus and method for simultaneously playing
back and recording data onto a disc medium by, inter alia, storing video data
in a writing buffer and supplying navigation data to the writing buffer.2
Claim 1, with a disputed limitation emphasized, is illustrative:
1. A method for controlling simultaneous playing back and
recording of data onto a disc medium, the method comprising the
steps of:
storing in a writing buffer video object units intended for recordation
on the disc medium;
supplying navigation pack data to said writing buffer from a
navigation pack buffer;
responsive to a user-generated pause-resume command, firstly
buffering a plurality of video object units in said writing buffer;
recording said plurality of video object units buffered in said writing
buffer onto said disc medium;
selectively pausing the buffering step to prevent a data overflow of
said writing buffer; and
during the pausing step, secondly buffering additional video object
units in said navigation pack buffer to prevent loss of said additional
video object units.

1 Throughout this opinion we refer to the Appeal Brief filed Dec. 28, 2007
and the Examiner’s Answer mailed April 4, 2008 for their respective details.
2 See generally Spec. 7:3-8:30, 12:10-17:18; Figs. 1 and 4.
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The Examiner’s rejection relies on the following prior art references:
Isaka US 5,706,388 Jan. 6, 1998
Kikuchi US 5,870,523 Feb. 9, 1999
Barton US 6,233,389 B1 May 15, 2001
The Examiner rejected claims 1-16 under 35 U.S.C. § 103(a) as being
unpatentable over Isaka, Kikuchi, and Barton (Ans. 3-8).
ISSUE
The pivotal issue, based on Appellant’s contentions (see Br. 20-23 and
29), as well as the Examiner’s findings and conclusions (see Ans. 3-6, 8-11,
15, and 16), is whether the Examiner erred in determining that Isaka,
Kikuchi, and Barton, alone or in combination, teach or suggest providing
navigation pack data from a navigation pack buffer to a writing buffer.

ANALYSIS
Claim 1
The pivotal independent claim 1 limitation is “supplying navigation
pack data to said writing buffer from a navigation pack buffer.” With
respect to this disputed limitation, the Examiner acknowledges “Isaka fails
to explicitly teach supplying navigation pack data” (Ans. 3).
Appellant asserts Isaka more than explicitly fails to teach this subject
matter, but that Isaka effectively fails to suggest “any data that could be
considered navigation data related to the digital data stored in the reception
buffer memories 1 and 2 . . .” (Br. 20). Specifically, Appellant argues Isaka
teaches “that the digital data is supplied from the reception buffer memories
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1 and 2 to the compressed data buffer 4 sequentially, and reproduced . . . on
the recording medium 6a in recorded order. Thus, there is no navigation
data for storing video data requiring future data address information for
seamless playing back and recording” (id.).
The Examiner neither addresses Appellant’s contention that Isaka
teaches seamless video data recording and play back nor Appellant’s
argument that Isaka, therefore, does not teach use or storage of navigation
data. Instead, the Examiner asserts:
Isaka reads on navigation pack buffer since Isaka reads on wherein an
external video source is input (as further clarified in at least the
Abstract) into a reception buffer memory (Fig. 2, 1 - reception buffer
memory), where in order for the video source to be forwarded and
supplied through a device and acknowledged as video content, there
must be information regarding navigation through the various
components of said device within the video content.

(Ans. 9) (emphasis added). We reviewed Isaka, including the Examiner’s
referenced Isaka disclosures, but do not find teachings concerning use or
storage of navigation data. Despite this silence, we note that the Examiner
asserts that “there must be information regarding navigation.” We,
accordingly, understand the Examiner to find Isaka inherently teaches use
and storage of navigation information. We, however, are not persuaded by
such an indicated inherency contention because the Examiner does not
identify factual bases and/or technical reasoning for why Isaka necessarily
teaches use and storage of navigation information. See In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (“‘Inherency . . . may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is nor sufficient.’” (citations omitted)).
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The Examiner further argues Kikuchi teaches including navigation
packs as an essential element for a video set (Ans. 9). Specifically, the
Examiner finds that a “navigation pack is taught explicitly by Kikuchi et al.
in at least Figs. 6, 86; 25; 28 and 30-wherein each Video Object Unit
(VOBU), comprising navigation packs, is an essential element of a video
set” (id.). We agree that Kikuchi discloses including navigation pack data
with recorded video data on an optical disk (col. 12, ll. 1-8; Fig. 4).
However, the Examiner does not explain where or how Kikuchi teaches or
suggests that including navigation packs is an “essential element” for a video
set. Consequently, we do not find that the Examiner’s assertion of Kikuchi
addresses Appellant’s Isaka seamless recording and play back contention.
The Examiner does not assert that Barton, the last cited reference,
teaches or suggests the disputed limitation (see Ans. 3, 4, and 10).
Accordingly, despite the Examiner’s findings and conclusions, we
agree with Appellant that the cited references alone, or in combination,
including Isaka, fail to teach or suggest the disputed limitation.
We conclude that the Examiner erred in rejecting claim 1 as obvious
under § 103(a), so we, therefore, will not sustain the rejection of this claim.
Further, we will not sustain the same rejection of dependent claims 2-8 that
incorporate the claim 1 disputed limitation.
Claim 9
The independent claim 9 pivotal limitation is “a navigation pack
buffer supplying navigation pack data to said writing buffer for buffering
video object units requiring future data address information.”
Appellant relies essentially on the same arguments made with respect
to claim 1 (Br. 29), and, likewise, the Examiner continues with the same
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findings and conclusions (Ans. 15, 16) that we considered supra.
Accordingly, we will not sustain the Examiner’s rejection of this claim for
similar reasons. Further, we will not sustain the same rejection of dependent
claims 10-16 that incorporate the claim 9 disputed limitation.

ORDER
The Examiner’s decision rejecting claims 1-16 is reversed.

REVERSED

KIS

Joseph S Tripoli
Thomson Multimedia Licensing Inc
PO Box 5312
Princeton, NJ 08543-5312