Ex Parte Madar et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201510580997 (P.T.A.B. Feb. 19, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PIERO ANDREAS MADAR and RICHARD EARL JONES ____________ Appeal 2012-006893 Application 10/580,997 Technology Center 2400 ____________ Before CARLA M. KRIVAK, JOHNNY A. KUMAR, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–20, which constitute all the claims pending in this application.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest identified by Appellants is THOMSON Licensing S.A. Appeal Br. 2. Appeal 2012-006893 Application 10/580,997 2 STATEMENT OF THE CASE Introduction Appellants describe the claimed invention as follows: A password protection function enables a user to assign a password to signals including audio and/or video signals recorded by their own digital recording apparatus, and is capable of providing both backward and forward compatibility for older and future digital playback apparatuses, respectively. According to an exemplary embodiment, a method for performing digital recording and playback includes steps of enabling a user to record digital signals onto a digital storage medium, receiving a password from the user, storing the password in at least one unreserved data field on the digital storage medium, wherein the at least one unreserved data field is included in a first presentation sequence for the recorded digital signals, and requiring the password to be input before playing back the recorded digital signals. See Abstract. Claims 1, 8, and 16 are independent claims. Representative Claim Claim 1, which is representative,2 reads as follows: 1. A method, comprising steps of: enabling a user to select a recording title stored on a digital storage medium in a first program chain for password protection, said first program chain being a single program chain according to DVD specifications; receiving a password from said user for said selected recording title; 2 Appellants argue claims 1–20 together. See Appeal Br. 4–7. Appeal 2012-006893 Application 10/580,997 3 storing said password for said selected recording title on said digital storage medium in said first program chain; storing a password menu screen for said selected recording title on said digital storage medium in said first program chain, wherein said password menu screen prompts said user to input said password if playback of said selected recording title is attempted; and requiring said password to be input before playing back said selected recording title. References Sugahara US 2002/0146238 A1 Published Oct. 10, 2002 Setogawa US 6,469,718 B1 Oct. 22, 2002 Tsurui Japanese 2003-132624 Published May 9, 2003 Rejections on Appeal Claims 1–20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Tsurui, Sugahara, and Setogawa. Issues on Appeal Appellants’ arguments in the Appeal Brief3 and Reply Brief present us with the following issues: 1. Did the Examiner err in finding Tsurui teaches combining the user-assigned password and password menu into a single program chain? 3 Our decision refers to Appellant’s Appeal Brief, filed on Oct. 4, 2011 (“Appeal Br.”), the Examiner’s Answer, mailed on Nov. 25, 2011 (“Ans.”), Appellant’s Reply Brief, filed on Jan. 19, 2012 (“Reply Br.”), and the original Specification, filed on May 26, 2006 (“Spec.”). Appeal 2012-006893 Application 10/580,997 4 2. Did the Examiner err in finding claim 1 obvious over Tsurui, Sugahara, and Setogawa? ANALYSIS Tsurui Appellants contend Tsurui teaches the use of at least six program chains to store the user selected recording title and the password menu screen. See Appeal Br. 5; Reply Br. 4. Appellants further contend that Tsurui does not disclose the user-selected stored password and the password menu are stored in a single program cell. See Reply Br. 3–4. The Examiner states it is “arguable” that Tsurui teaches one single program chain containing “links” and finds “Tsurui . . . teaches the password is stored with the menu.” See Ans. 12–14. We agree with Appellants. First, we conclude Tsurui cannot be interpreted to meet the “single program chain” limitation of claim 1. As Appellants assert, and the Examiner states, in playing back the recording title in PGC#10 of Tsurui, the password menu in PGC#1–5 must be invoked. See Ans. 13; Reply Br. 2 and 4; Tsurui Figure 5(b) and ¶ 42. Appellants contend the Specification distinguishes a single program chain and “the separate program chain approach, [in which] one program chain must be linked to another program chain.” Reply Br. 2; Spec. 11:12–15, 27–31. Although the Examiner suggests that “combining two separate chains into one, results in a single chain” (Ans. 13), we agree with Appellants that “two linked program chains cannot be called a single program chain in light of the present application.” Reply Br. 2. Appeal 2012-006893 Application 10/580,997 5 Second, we agree with Appellants that Tsurui does not disclose or suggest that the stored password and the password menu are stored in a single program chain. See Reply Br. 3. Appellants assert, and we agree, that because the password menu is incorporated in PGC#1–5, as shown in Figure 5 of Tsurui, the password menu and the password cannot be in a single chain. See id. Furthermore, as Appellants argue, we are not persuaded by the Examiner’s finding that paragraph 37 of Tsurui “teaches the password is stored with the menu.” See id. Thus, we conclude that Tsurui teaches storing the user selected recording title and the password menu in six separate chains and that the Examiner erred in finding Tsurui teaches combining the user-assigned password and password menu into a single program chain. Obviousness The Examiner finds claim 1 is obvious over the combined teachings of Tsurui, Sugahara, and Setogawa. See Ans. 5–7 and 14. Appellants contend Tsurui and Setogawa “teach away” from the claimed invention, the combined references do not teach the claimed invention and, even if the proposed combination did disclose all the features of the claimed invention, it is non-obvious over the references. See Appeal Br. 5–8. We now consider each of Appellants’ arguments regarding the obviousness vel non of claim 1 in view of our conclusion supra regarding the teaching of Tsurui. Appellants contend Tsurui teaches away from the claimed invention because it teaches the use of at least six different program chains to store the recording title, user-assigned password, and password menu, whereas in the claimed invention these items are all stored in a single program chain. See Appeal Br. 5; Reply Br. 4. We are not persuaded by this argument because Appeal 2012-006893 Application 10/580,997 6 Tsurui does not criticize, discredit, or otherwise discourage Appellants’ claimed solution using a single program chain. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In addition, as noted by the Examiner, Appellants’ Specification “shows that either using one program chain or multiple chains are both acceptable alternatives.” Ans. 14; Spec. 11:12–16. Appellants contend Sugahara and Setogawa do not remedy the deficiencies of Tsurui because Sugahara discloses a system in which the title and password are stored in a single reproduction cell and Setogawa discloses a system in which a “chapter menu” (which does not correspond to the claimed title, password, and password menu) is stored in a single program chain. See Appeal Br. 5–6. Regarding Setogawa, Appellants further contend it also teaches away from the claimed invention because it teaches that the program menu should be stored separately in a single program chain “by itself.” Id. at 6. Appellants further contend that, even if Tsurui is modified by the teachings of Sugahara and Setogawa, the resulting modification does not produce the claimed invention. Id. The Examiner finds Sugahara combines the title and password in a single program chain. See Ans. 13. The Examiner further states “Setogawa was relied upon to teach that using a single program chain is more efficient than a plurality of program chains because access time is decreased with the PGC data including menus which rely upon user input can be read once sequentially (col. 13, lines 1–15).” Id. The Examiner also finds that, based on “the fact that Setogawa teaches it is more efficient to use a single program chain,” it is obvious to combine the title, password, and password menu in a single program chain. Id. at 14. Appeal 2012-006893 Application 10/580,997 7 Regarding the teaching of Setogawa, we agree with the Examiner. Specifically, we agree Setogawa teaches it is beneficial to store data in a single program chain, rather than separate program chains. See Ans. 14; Setogawa 13:8–16. We are not persuaded by Appellants’ argument that Setogawa teaches the password menu should be stored separately in a single program chain “by itself” and, therefore, teaches away from the claimed invention. See Appeal Br. 6. Appellants cite Setogawa 13:1–15 in support of this argument. Considering the first paragraph of column 13 of Setogawa in its entirety, however, we conclude it does not support storing the password menu separately. Instead, we conclude it supports the Examiner’s finding that “using a single program chain is more efficient . . . with the PGC data including menus which rely upon user input can be read once sequentially.” Ans. 13. In other words, we conclude Setogawa teaches it is advantageous to store in a single program chain the password menu, the user-defined password, and the recording title because all of this data is read sequentially once a user inputs into the password menu the password that matches the stored user-defined password that enables playback of the recording. We also agree with the Examiner that the combination of Tsurui, Sugahara, and Setogawa teaches all of the features of claim 1 and that it would have been obvious to combine the title, password, and password menu screen into a single program chain. See Ans. 14. The Examiner finds Tsurui teaches storing the password and password menu in a single program chain (see Ans. 13). However, for the reasons stated supra, we conclude Tsurui teaches storing the recording title and password menu in six separate program chains. We do agree with the Examiner that “Sugahara teaches the Appeal 2012-006893 Application 10/580,997 8 password can be stored with the title in a single program chain.” Ans. 13; Sugahara Figure 8. Furthermore, we also agree with the Examiner that, “[c]oupled with the fact that Setogawa teaches it is more efficient to use a single program chain,” it would have been obvious to combine the recording title, password, and password menu screen into a single program chain. Ans. 14. Appellants contend that, even if the combined references teach every feature of the claimed invention, it is non-obvious over the references because the proposed combination “appear[s] to be the result of impermissible hindsight reconstruction,” the references do not suggest the desirability of the proposed modification, and obviousness cannot be shown by demonstrating that each of the claimed elements was independently known in the prior art. See Appeal Br. 6–8. In regard to Appellants’ “impermissible hindsight” argument, we find no such hindsight in the Examiner’s rejection. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the appellants’ disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, as explained supra, the Examiner’s finding of obviousness is based on the teachings of Tsurui, Sugahara, and Setogawa. As to Appellants’ argument that a suggestion of the desirability of the claimed invention is required, we disagree. This argument fails to acknowledge the impact of the Supreme Court’s explicit rejection in KSR of Appeal 2012-006893 Application 10/580,997 9 the rigid requirement that the art suggest a modification. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) (“We begin by rejecting the rigid approach of the Court of Appeals.”). Finally, as to Appellants’ argument that it is not enough to prove obviousness by merely demonstrating that each of the elements of the claimed invention was, independently, known in the prior art (Appeal Br. 8 (citing KSR, 550 U.S. at 418)), the Supreme Court stated in KSR “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. In this regard, the Examiner states, as previously noted, Appellants’ Specification shows that using one program chain or multiple chains are both acceptable alternatives and finds that incorporating the recording title, password, and password menu screen “into a single program change (sic) [chain] is an acceptable alternative which does not yield any unpredictable results.” Ans. 14. We agree with the Examiner and conclude that combining the recording title, user-selected password, and password menu screen (as disclosed by Tsurui and Sugahara) into a single program chain (as disclosed by Setogawa) would have entailed no more than the combination of known elements to achieve a predictable result (e.g., a method of efficiently enabling a user to access the program menu screen, user-selected password, and recording title sequentially without processing delay (see Ans. 13–14)). Such a predictable combination would have been obvious to one of ordinary skill in the art. Thus, we sustain the Examiner’s rejection of claim 1 for obviousness. For the same reasons, we also sustain the Examiner’s rejection of claims 8 Appeal 2012-006893 Application 10/580,997 10 and 16, as well as claims 2–7, 9–15, and 17–20, which depend from claims 1, 8, and 16, respectively. DECISION The Examiner’s decision rejecting claims 1–20 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 msc Copy with citationCopy as parenthetical citation