Ex Parte Onomatsu

Board of Patent Appeals and Interferences

Nov 14, 2008

10449493 (B.P.A.I. Nov. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TAKEHIRO ONOMATSU
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Appeal 2008-3468
Application 10/449,493
Technology Center 2600
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Decided: November 14, 2008
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Before ROBERT E. NAPPI, SCOTT R. BOALICK, and JOHN A.
JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b), and we
heard the appeal on October 21, 2008. We affirm.

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Application 10/449,493

STATEMENT OF THE CASE
Appellant invented a digital contents playback apparatus with a user-
friendly interface for playing back any desired content without requesting
the user for action or identification of the type of recording medium. To this
end, a list of digital contents is displayed automatically upon switching on
the power of the playback apparatus.1 Claim 1 is illustrative:
1. A digital contents playback apparatus having two or more playback
means for playing back different types of recording mediums on which
digital contents of data are stored, comprising:

an automatic contents retrieving means for automatically retrieving
reproducible data of the digital contents from each recording medium upon
switching on a power of the digital contents playback apparatus; and

a contents data displaying means for producing a list of the contents
from the data retrieved by the automatic contents retrieving means and
displaying the list on an externally connected display device, wherein

the contents data displaying means is arranged to display at once a list
of the available digital contents retrieved over all the applicable recording
mediums by the automatic contents retrieving means upon switching on the
power of the apparatus.

The Examiner relies on the following prior art reference to show
unpatentability:
Levitt US 2002/0151327 A1 Oct. 17, 2002
(filed Dec. 20, 2001)

Claims 1-5 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Levitt (Ans. 3-4).

1 See generally Spec. 2-4; Abstract.
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Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer2 for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but 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).
Regarding representative claim 1,3 Appellant argues that Levitt fails
to perform the identical function recited in the means-plus-function
limitation calling for automatically retrieving reproducible data of the digital
contents from each recording medium upon switching on a power of the
digital contents playback apparatus (App. Br. 4; emphases added). Although
Appellant acknowledges that Levitt’s system setup may perform
synchronization operations with a networked device and that power must be
turned on to perform these operations, Appellant emphasizes there is simply
no disclosed relationship between retrieving the data and turning on the
power as claimed. Rather, Appellant argues, the user must provide input
prior to performing a synchronization (i.e., pressing a “HotSync” button)
(App. Br. 5-7; Reply Br. 2-4). Appellant adds that Levitt fails to teach or
suggest that its retrieval of reproducible data of digital contents is from each
recording medium as claimed (Reply Br. 4-5; emphasis in original).

2 Throughout this opinion, we refer to (1) the Appeal Brief filed Jan. 18,
2007; (2) the Examiner’s Answer mailed Aug. 7, 2007; and (3) the Reply
Brief filed July 27, 2007.
3 Appellant argues claims 1-5 together as a group. See App. Br. 4-8.
Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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The Examiner responds that the breadth of the limitation “upon
switching on a power” does not require a causal relationship between
automatically retrieving data and turning on the power. Rather, the
Examiner contends, the term merely requires a sequential relationship in
view of the meaning of the term “upon” (i.e., “immediately or very soon
after”) (Ans. 5; emphases added). As such, the Examiner reasons that since
power must be turned on before initiating system setup or maintenance
procedures in Levitt, then data is automatically retrieved at some point
sequentially after turning on the power (Ans. 5-6). The Examiner adds that
Levitt does not require user intervention for synchronization and ultimately
retrieval of the data since the reference teaches that a continuous Internet
connection can be employed (Ans. 6-7).

ISSUE
The issue before us, then, is whether Appellant has shown that the
Examiner erred in finding that Levitt automatically retrieves reproducible
data of the digital contents from each recording medium upon switching on a
power of the digital contents playback apparatus as claimed, and whether
this limitation is met despite the requisite synchronization needed in Levitt
for data retrieval.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Levitt discloses an interactive media selection system that uses a
handheld device 22 (e.g., a personal digital assistant (PDA)) that can enact
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and review media choices through wireless control of media-playing devices
(i.e., entertainment devices 24). Content directory choices, such as TV
program schedule items or CD music track titles, are provided via Internet,
modem, or other network connectivity of the handheld device (Levitt,
Abstract, ¶¶ 0066-67, 0069; Fig. 1).
2. The handheld device enables the user to navigate a hierarchical
database of entertainment devices and content including multiple views of
program choices available of multiple media playback devices (e.g., multiple
CDs and DVDs in each player in each home, as well as radio and digital
video recorder (DVR) programs in devices) (Levitt, ¶¶ 0062, 0221; Fig. 6).
3. The handheld device can exchange information with another
computer in the home or on the Internet. Such communication can be
asynchronous (e.g., sync on demand by placing the handheld device in its
cradle, or periodically connecting to the Internet) and/or continuous (e.g.,
persistent wireless connection directly from the handheld device to the
Internet) (Levitt, ¶ 0072).
4. In addition to sending commands to entertainment devices 24, the
handheld device can exchange information with a PC 28 and/or server
system 32 to, among other things, update/synchronize personal preferences
and content databases (Levitt, ¶ 0073).
5. Information pertaining to newly added content and services (e.g.,
new CDs or new DirecTV channels) can be entered into the handheld
device, PC 28, or server system 32. The information can be synchronized
continuously. Alternatively, the information can be synchronized
asynchronously (e.g., periodically between the PC and the server system,
and upon demand between the PC and the handheld device via the cradle),
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so that the user would not need to enter the information again. As such,
product information can be transferred to the handheld device automatically
(Levitt, ¶ 0074).
6. The wireless data network connection used by the handheld device
may be intermittent, temporary, on demand, or always on (Levitt, ¶ 0230).
7. For PDA handheld devices, the PDA’s native data synchronization
capabilities can be used (e.g., PalmOS HotSync) so that the handheld
program schedule is updated when the user performs synchronization and
backup operations for other data, typically by pressing a single button
(Levitt, ¶ 0230).
8. Upon synchronization of the handheld device with the network, the
handheld device and server system databases are updated to sustain device
control and content directory services (Levitt, ¶¶ 0233-41).
9. These updates include, among other things, transferring updates to
device, service, collection, and preference databases from network databases
to the handheld device (Levitt, ¶ 0237).

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention as well as disclosing structure which is
capable of performing the recited functional limitations. RCA Corp. v. Appl.
Dig. Data Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984); W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1554 (Fed. Cir. 1983).

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ANALYSIS
Based on the functionality of Levitt noted in the Findings of Fact
section above, we will sustain the Examiner’s anticipation rejection of
representative claim 1. At the outset, we note that the disputed limitations of
claim 1 are drafted in means-plus-function format and must therefore be
construed to cover the corresponding structure, material, or acts described in
the Specification and their equivalents. In re Donaldson Co., Inc., 16 F.3d
1189, 1193 (Fed. Cir. 1994) (en banc). In this regard, Appellant does not
argue that the components of Levitt’s system identified by the Examiner are
not the same or equivalent to the corresponding structure in Appellant’s
Specification, but rather argues that Levitt fails to perform the identical
function recited.4 We therefore confine our discussion to this argument.
We agree with the Examiner that the scope and breadth of the
limitation “upon switching on a power of the digital contents playback
apparatus” does not preclude Levitt’s data retrieval process that occurs after
power is switched on. While Levitt is unclear as to the exact temporal
relationship between turning on the power and data retrieval, the scope and
breadth of the claim language simply does not preclude a delay (if any)
between these two events.
We acknowledge that synchronization of the handheld device with the
network in Levitt is a key factor in achieving data retrieval (FF 8-9). And
we further recognize that the handheld device can be synchronized manually
(e.g., by pressing a button using the PDA’s HotSync feature) (FF 7).

4 See App. Br. 4 (“Levitt fails to perform the identical function and thus it is
not necessary to compare the structural components of Levitt’s system with
those in Appellant’s specification.”).
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But Levitt is by no means limited to communication requiring this
type of synchronization. Levitt notes that the handheld device can exchange
information with another computer in the home or on the Internet. Such
communication can either be (1) asynchronous (e.g., sync on demand by
placing the handheld device in its cradle, or periodically connecting to the
Internet); and/or (2) continuous (e.g., persistent wireless connection directly
from the handheld device to the Internet) (FF 3).
Appellant argues that the synchronization capabilities of the handheld
in this passage are limited to the sync on demand feature (i.e., by placing the
handheld device in its cradle) and that the term “continuous” refers to
communication, not synchronization (Reply Br. 4). While Levitt uses the
terms “asynchronous” and “continuous” in connection with
“communication” in Paragraph 0072, we note that Levitt also uses these
terms in connection with synchronization as well.
In Paragraph 0074, Levitt notes that information pertaining to newly
added content and services (e.g., a newly purchased CD or new channel
subscription) can be entered into the system and the information
synchronized continuously or asynchronously (e.g., periodically between the
PC and the server system, and upon demand between the PC and the
handheld device via the cradle), so that the user would not need to enter the
information again. As such, product information can be transferred to the
handheld device automatically (FF 5).
The import of these passages taken as a whole is that synchronized
data exchange between the handheld device and the network can occur either
(1) asynchronously (e.g., using techniques involving manual intervention
such as sync on demand), or (2) synchronously via a continuous, persistent
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wireless connection between the handheld device and the Internet. In either
case, synchronization will occur with respect to the handheld device to
facilitate the automatic exchange of data.
Using a continuous, persistent wireless Internet connection to
facilitate this synchronized exchange of data would, in our view, involve an
automatic retrieval of data of the digital contents from each recording
medium upon switching on power as claimed. Even if we assume, without
deciding, that synchronization occurred some time after powering on the
system using a continuous Internet connection in Levitt, it will nonetheless
automatically occur “upon” switching on power. The scope of the claim
language simply does not preclude such a delay (if it exists at all). In this
regard, the Examiner’s point regarding the claim not precluding a sequential
relationship between the switching on of power and data retrieval (Ans. 5) is
well taken. We add that data retrieval in Levitt likewise involves a causal
relationship as data retrieval would not occur but for powering on the
apparatus.
Furthermore, we find that the data retrieved upon synchronization
would reasonably include reproducible data of the digital contents from each
recording medium as claimed. As we noted above, upon synchronization of
the handheld device with the network, various database updates are
transferred from the network to the handheld device (FF 8-9). Moreover, the
handheld device can exchange information with a PC and/or the server
system to, among other things, update/synchronize personal preferences and
content databases (FF 4).
As shown in Figure 6 of Levitt, aggregated information can be
presented on the handheld device to enable the user to navigate a
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hierarchical database of entertainment devices and content (e.g., multiple
CDs and DVDs in each player in each home, as well as radio and digital
video recorder (DVR) programs in devices) (FF 2). Updating this
aggregated display of diverse recording media using Levitt’s synchronized
data exchange noted above would, in our view, involve retrieving data
regarding the contents of each recording media as claimed.
For the foregoing reasons, Appellant has not persuaded us of error in
the Examiner’s rejection of representative claim 1. Therefore, we will
sustain the Examiner’s rejection of that claim, and claims 2-5 which fall with
claim 1.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
1-5 under § 102.

DECISION
The Examiner’s decision rejecting claims 1-5 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).

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AFFIRMED

eld

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