Ex Parte Sako et al

Patent Trial and Appeal Board

Jan 29, 2015

11900381 (P.T.A.B. Jan. 29, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111900,381 09/11/2007
23628 7590 02/02/2015
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC A VENUE
BOSTON, MA 02210-2206
FIRST NAMED INVENTOR
Y oichiro Sako
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Sl459.70001US01 1897
EXAMINER
SIMPSON, LIXI CHOW
ART UNIT PAPER NUMBER
2626
NOTIFICATION DATE DELIVERY MODE
02/02/2015 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOICHIRO SAKO, TOMIHIRO NAKAGAWA,
SHUNSUKE FURUKAWA, KAO RU KIJIMA,
YOSHIMASA UTSUMI, MITSURU TORIY AMA,
TATSUY A INOKUCHI, KAZUKO SAKURAI, and
AKIRA TANGE1
Appeal2012-007824
Application 11/900,3 81
Technology Center 2600
Before MAHSHID D. SAADAT, KIMBERLY J. McGRAW, and NATHAN
A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
8, 9, 11, 13-17, 19, 21-23, 43, and 44, which are all of the pending claims.
Claims 1-7, 10, 12, 18, 20, and 24--42 are canceled. App. Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Sony Corporation as the real party in interest. App. Br.
3.
Appeal2012-007824
Application 11/900,3 81
STATEMENT OF CASE
Appellants' invention is directed to a method and system of playing a
recording medium in which the quality of the output is deteriorated if the
recording medium is a rental copy. Claims 8 and 16 are the focus of
Appellants' arguments and are reproduced below:
8. A recording medium playback method for playing back a
recording medium comprising a first recording area, a second
recording area, and a lead-in area in a position being read
before said first recording area and said second recording area
are read, said recording medium having identification
information recorded in at least one of said first recording area,
said second recording area, and said lead-in area, the
identification information indicating whether or not said
recording medium is for a rental use,
said recording medium playback method comprising
steps of:
determining whether or not the identification information
extracted from a signal read from said recording medium
indicates that the recording medium is for a rental use;
in response to determining that the identification
information indicates that the recording medium is for a rental
use, restricting operation of playing back playback data which
is recorded in at least one of said first recording area and said
second recording area by deteriorating a quality of said
playback data to produce deteriorated quality playback data
when performing playback processing for playing back the
signal read from said recording medium for a user
playing back said deteriorated quality playback data
when the identification information indicates that said recording
medium is for a rental use; and
playing back said playback data of non-deteriorated
quality when the identification information does not indicate
that said recording medium is for a rental use.
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Application 11/900,3 81
16. A recording medium playback apparatus for playing back
a recording medium comprising a first recording area, a second
recording area, and a lead-in area in a position being read
before said first recording area and said second recording area
are read, said recording medium having identification
information recorded in at least one of said first recording area,
said second recording area, and said lead-in area, the
identification information indicating whether or not said
recording medium is for a rental use,
said recording medium playback apparatus comprising:
a head unit which scans said recording medium;
a decoding processor which performs decoding
processing on a signal output from said head unit;
an identifying unit which extracts the identification
information from the signal output from said head unit;
a playback processor supplied with data output from said
decoding processor, said playback processor performing
playback processing on the supplied output data;
a switching unit which is controlled by a signal output
from said identifying unit to perform switching as to whether or
not the output data from said decoding processor is supplied to
said playback processor, said switching unit being controlled,
when the identification information is
identified by said identifying unit, to supply the output
data from said decoding processor to said playback processor;
and
a controller supplied with an output signal from the
identifying unit, said controller controlling, based on the output
signal supplied from the identifying unit, operation of said
playback processor, said controller performing, when being
supplied with an output signal indicating that the identification
information is identified by said identifying unit, restriction of
the playback processing by said playback processor on the
output data from said decoding processor;
wherein, in response to identifying, based on the
identification information, that the recording medium is for a
rental use, said controller controls said playback processor to
perform data-quality deteriorating processing on the output data
from said decoding processor to produce deteriorated quality
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Application 11/900,3 81
playback data by reducing a sampling rate of said playback
data, such that the deteriorated quality playback data is played
back.
Appellants 'Contentions
Appellants argue that the Examiner erred in rejecting claims 8, 9, 11,
13-17, 19, 21-23, 43, and 44 under 35 U.S.C. § 103(a) as being
unpatentable over Sako et al. (US 7 ,072,260 B 1; July 4, 2006) and Alcalay
et al. (US 6,988,206B1; Jan. 17, 2006). Specifically, Appellants argue that
(1) the combination of Sako and Alcalay would not teach or suggest to a
person of ordinary skill in the art the invention recited in claims 8 and 16
(App. Br. 11-14), and (2) the combination of Sako and Alcalay is improper.
App. Br. 6.
ANALYSIS
1. The Scope of Claim 8
Claim 8 is a method claim reciting conditional limitations that depend
on the step "determining whether or not the identification information ...
from said recording medium indicates that the recording medium is for a
rental use." App. Br. 16. When the determining step determines that the
recording medium is for rental use, claim 8 requires a "deteriorating" step.
Id. That step does not occur, though, when the identification information
indicates that the recording medium is not for rental use. Id. When the
determining step determines that the recording medium is not for rental use,
the only remaining step in claim 8 is "playing back said playback data of
non-deteriorated quality" (hereinafter the "non-rental play back" step). Id.
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Application 11/900,3 81
Stated differently, for non-rental play back, claim 8 requires only the
determining step and then playing back the recording medium without
deterioration. Id. Accordingly, we conclude that, under the broadest
reasonable interpretation of claim 8, the claim's scope is not limited by the
deteriorating step and the claim's scope can include performance of only the
determining step and the "non-rental play back" step. See In re Johnston,
435 F.3d 1381, 1384 (Fed. Cir. 2006) ("optional elements do not narrow the
claim because they can always be omitted").
2. The Examiner's Rejection of Claim 8
Sako discloses a "disc-shaped recording medium" with identification
information that indicates whether the disc is a rental disc or a purchased
disc. See Sako col. 18, 11. 47-52 ("when supplying disc-shaped recording
media on the market, it is possible to enable discrimination between the
individual ID data of a rental disc and the individual ID data of a disc for
sale"). Sako teaches that when a user purchases a disc, the user can play the
full-quality, complete version of the disc. See Sako col. 18, 1. 66-col. 19, 1.
3 ("it is possible to construct a data processing system which enables
provision of various services to a user who properly purchases and uses the
disc-shaped recording medium") and Sako col. 5, 11. 47---60 (describing first
digital and second digital data that are combined to form audio data of high
quality); cf Sako col. 18, 11. 47---61 (explaining that users of a rental disc
cannot access the second digital data).
The Examiner finds that those portions of Sako, among others, teach
the determining step and the "non-rental play back" steps of claim 8. Ans.
5---6. Appellants do not contest the Examiner's findings relating to those
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Application 11/900,3 81
limitations, instead focus their arguments on the "deteriorating" step. See
App. Br. 7-12. Because we conclude that the broadest reasonable
interpretation of claim 8 requires only the determining step and the "non-
rental playback" step, and Appellants' arguments are not commensurate with
the scope of the claim, we find them unpersuasive.
We also agree with the Examiner's conclusion that the deteriorating
step would have been obvious in view of the combination of Sako and
Alcalay. Among other teachings, Sako teaches a recording medium that
requires "second digital data [to be] combined with the first digital data to
form audio data of high quality" (Sako col. 5, 11. 55---60), and, as Appellants
acknowledge, Sako teaches preventing reception of a part of the services
(e.g., the second digital data) when a disc's individual identification
indicates it is a rental disc. App. Br. 7 (citing Sako col. 18, 11. 46-61 ). The
Examiner cites Alcalay for its teaching of known techniques for
deteriorating the quality of a recording by introducing errors that interfere
with normal playback (Ans. 6 and 11-14), and we agree with the Examiner
that combining known techniques for deteriorating sound quality with Sako
renders claim 8 obvious, even if the scope of claim 8 were considered to
always require the deteriorating step.
Appellants further argue that Alcalay does not disclose, and in fact
teaches away from, the claimed invention because Alcalay discloses an
embodiment in which the deterioration errors are introduced while data is
read from a source disc and copied onto another disc. App. Br. 9-12. In
such embodiments, Alcalay teaches that an error-insertion block receives
audio signals read from an original storage medium and alters the signal,
which is later sent to a data-writing unit for recording. Alcalay col. 2, 11. 7-
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12. Contrary to Appellants' contention, we find that the combination of
Alcalay and Sako is proper because a person of ordinary skill in the art
would understand that the error-insertion block and signal-altering
techniques taught in Alcalay are not limited by Alcalay's embodiments that
route the altered signal to a data-writing unit rather than a playback unit.
See, generally, Specification 1 (describing "recording/playback" methods
and apparatus); accord Specification 4, 21-22 (describing a generic "output
method" without limiting the end use of the signal output).
Accordingly, because we are unpersuaded that the Examiner erred in
rejecting claim 8, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of
claim 8, as well as claims 9, 11, 13-15 dependent therefrom which were not
separately argued.
3. The Examiner's Rejection of Claim 16
Claim 16 is an apparatus claim that recites a conditional limitation
similar to that in claim 8. App. Br. 18. Specifically, claim 16 recites the
following, in relevant part:
Id.
in response to identifying ... that the recording medium is for
rental use, said controller controls said playback processor to
perform data-quality deteriorating processing onto the output
data from said decoding processor to produce deteriorated
quality playback data by reducing a sampling rate of said
playback data, such that the deteriorated quality playback data
is played back.
In addition to the arguments advanced for claim 8 which we addressed
above, Appellants further argue that the combination of Sako and Alcalay
does not teach or suggest "produc[ing] deteriorated quality playback data by
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Appeal2012-007824
Application 11/900,3 81
reducing a sampling rate of said playback data, such that the deteriorated
quality playback data is played back." App. Br. 13.
We disagree. The Supreme Court has stated that an Examiner's
obviousness rejection must be based on
"some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness" .... [H]owever,
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'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner found that
while Alcalay does not expressly recite reducing the sampling rate of the
playback data to deteriorate quality playback data, Alcalay does teach
techniques for deteriorating sound quality by restricting how the playback
data is reproduced/played back, including by skipping time frames. Ans. 8;
accord Alcalay col. 6, 11. 40-46 (explaining that during playback absolute
time jumps from frame 2 to frame 4 to frame 6 to produce a distorted and
generally "unmelodious" sound). The Examiner finds that a person of
ordinary skill in the art would understand that the combination of Sako and
Alcalay teaches or suggests generally known methods of data-quality
deterioration, including reducing the sample rate of playback data. Ans. 18-
19. Appellants have not provided any evidence or argument to challenge
these findings and conclusion. Accordingly, we are unpersuaded by
Appellants' arguments that the Examiner erred in rejecting claim 16 over the
combination of Sako and Alcalay.
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Application 11/900,3 81
Additionally, Appellants' Specification is consistent with the
Examiner's finding that generally known methods of data-quality
deterioration would be within the background knowledge of a person of
ordinary skill in the art. Indeed, Appellants' Specification states that
various, unnamed methods for deteriorating the quality of playback data can
be used instead of a reduction of the sample rate. See Ans. 18-19 (citing
Specification 16-17 (explaining that the deterioration process includes, "for
example, a process that deletes some of the lower bits of the output data
from the CIRC error corrector 34, and a process that reduces the sampling
rate. However, another process may be used if it makes the user feel
deterioration in sound quality when the user listens.") (Underline added)).
For the above reasons we sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 16, as well as claims 17, 19, 21-23, 43, and 44 dependent
therefrom which were not separately argued.
DECISION
The Examiner's decision rejecting claims 8, 9, 11, 13-17, 19, 21-23,
4 3, and 44 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)(l )(iv).
AFFIRMED
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