Ex Parte Staring

Board of Patent Appeals and Interferences

Jul 5, 2011

10151049 (B.P.A.I. Jul. 5, 2011)

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.
10/151,049 05/20/2002 Antonius Adriaan Maria Staring PHNL 010356 3066
7590 07/06/2011
Stephen B. Salal
Harter, Secrest and Emory LLC
1600 Bausch & Lomb Plaza
Rochester, NY 14604
EXAMINER
NALVEN, ANDREW L
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/06/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte ANTONIUS ADRIAAN MARIA STARING
_____________

Appeal 2009-011354
Application 10/151,049
Technology Center 2400
______________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
THOMAS S. HAHN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-011354
Application 10/151,049

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1 through 12.
We affirm-in-part.
INVENTION
The invention is directed to a storage carrier for a digital work where
tampering of the access information is prevented. See pages 1 and 2 of
Appellant’s Specification. Claim 1 is representative of the invention and
reproduced below:
1. A machine-readable record carrier storing a digital work, said
record carrier comprising:
a first data area at a first physical location on the record carrier storing
machine-readable access information controlling access to the digital work,
and
a second, re-writable data area comprising a secondary channel and
located substantially at the first physical location on the record carrier, the
secondary channel storing secondary channel information used for
encrypting, decrypting or verifying the access information.

REFERENCES
BRAAT US 5,732,065 Mar. 24, 1998
SAKO US 5,802,174 Sep. 1, 1998
OSHIMA US 2001/0021144 A1 Sep. 13, 2001
DAVIS US 6,611,607 B1 Aug. 26, 2003
UTSUMI US 6,999,947 B2 Feb. 14, 2006
GRUSE US 7,206,748 B1 Apr. 17, 2007
Appeal 2009-011354
Application 10/151,049

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REJECTIONS AT ISSUE
The Examiner has rejected claims 1, 3 through 6, and 8 through 11
under 35 U.S.C. § 103(a) as being unpatentable over Davis in view of Gruse
and Sako. Answer 3-41.
The Examiner has rejected claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Davis in view of Gruse, Sako, and Oshima. Answer 6.
The Examiner has rejected claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over Davis in view of Gruse, Sako, and Utsumi. Answer 5.
The Examiner has rejected claim 12 under 35 U.S.C. § 103(a) as
being unpatentable over Davis in view of Gruse, Sako, and Braat. Answer 6
-7.

ISSUES
Claims 1 and 4 through 6
Appellant argues on pages 5 through 8 of the Brief2 that the
Examiner’s rejection of independent claim 1 is in error. These arguments
present us with the following issue: did the Examiner err in finding that the
combination of Davis, Gruse, and Sako, teaches a second re-writable data
area including a secondary channel storing secondary channel information
used for encrypting, decrypting, or verifying access information?

Claims 8 through 10

1 Throughout this opinion we refer to the Examiner’s Answer mailed on
January 13, 2009.
2 Throughout this opinion we refer to the Appeal Brief dated October 22,
2008, and Reply Brief dated April 15, 2009.
Appeal 2009-011354
Application 10/151,049

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Appellant argues on pages 8 and 9 of the Brief that the Examiner’s
rejection of claims 8 through 10 is in error. These arguments present us with
the same issue as discussed above.

Claim 2
Appellant argues on page 9 and 10 of the Brief that the Examiner’s
rejection of claim 2 is in error. Appellant’s arguments present us with the
additional issue: did the Examiner error in finding that the combination of
the references teaches the secondary channel being stored by controlling the
polarity of a predetermined run length of a predetermined data or control
symbol of a run length-limited code sequence.

Claim 3
Appellant argues on page 10 of the Brief that the Examiner’s rejection
of claim 3 is in error. Appellant’s arguments present us with the additional
issue: did the Examiner error in finding that Davis teaches the secondary
channel information is rewritten when the access information has changed as
claimed?
Claims 7 and 12
Appellant argues on page 10 of the Brief that the Examiner’s rejection
of claims 7 and 12 is in error for the same reasons as claim 1.

ANALYSIS
Claims 1, 4 through 6, and 11
We have reviewed the Examiners’ rejection in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
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conclusion that the Examiner erred in finding the combination of the
references teaches a second re-writable data area including a secondary
channel storing secondary channel information used for encrypting,
decrypting, or verifying access information. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief. We concur
with the conclusion reached by the Examiner.
Appellant states that the Examiner has found the metadata of Davis
meets the claimed access information, and that the watermark meets the
claimed secondary channel information but does not teach that the
watermark is in a rewritable area. Brief 6. Appellant argues that Gruse
does not teach rewriting watermarks and that Sako similarly does not teach a
re-writable secondary channel storing secondary channel information as
claimed. Brief 6-7. Further, the Appellant argues that the Examiner does
not provide a reasoned rationale as to why the claim is obvious over the
combined teachings of the reference.
In response, the Examiner states that Gruse teaches that re-writable
data carriers are known, and that it would be obvious to use a rewritable data
carrier for the Davis device, i.e. in combination the entire data carrier is
rewritable. Answer 8. The Examiner finds this meets the claim, as the claim
does not preclude other data areas from being rewritable as well. Answer 8-
9. We concur with these findings and claim interpretation. Further, the
Examiner states that a skilled artisan would combine the references as using
rewritable data carriers that can be used to help track the usage of content.
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Answer 9. Thus, the Examiner has provided a reasonable rationale to
combine the references.
We additionally note on page 4 of the Reply Brief, Appellant argues
that the Examiner’s interpretation of the watermark as being the data on a
secondary channel is in error as the watermark is part of the digital work.
This argument is deemed waived. Appellant has not explained why, nor is
it apparent that, this argument was necessitated by a new point in the
Answer or any other circumstance constituting “good cause” for its belated
presentation. See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010)
(“informative”3) (absent a showing of good cause, the Board is not required
to address arguments in a Reply Brief that could have been presented in the
principal Brief). Further, Appellant has not identified a definition of “digital
work” to show that the Davis’s watermark falls within the “digital work.”
Even if such a definition were provided, it is merely defining the information
stored which does not have a claimed functional recitation (e.g. the claim
does not recite a step of encrypting/decrypting using the data in the
secondary data area) thus any such difference would not define the claim
over the prior art.4
Thus, Appellant has not persuaded us of error in the Examiner’s
rejection of claims 1, 4 through 6, and 11.

3 The “informative” status of this opinion is noted at the following Board
website: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.
4 The Examiner need not give patentable weight to descriptive material
absent a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed.
Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) and our
Footnote continued on next page.
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Claims 8 through 10
Appellant’s arguments directed to these claims present us with the
same issues as discussed above with respect to claim 1. Accordingly, we are
similarly not persuaded of error in the rejection of claims 8 through 10.

Claim 2
We have reviewed the Examiners’ rejection in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusion that the Examiner erred in finding that the combination of the
references teaches the secondary channel being stored by controlling the
polarity of a predetermined run length of a predetermined data or control
symbol of a run length-limited code sequence. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief. We concur
with the conclusion reached by the Examiner.
Appellant argues that while Oshima “may discuss polarization
orientation, it is not understood to teach or suggest that the secondary
channel storing secondary channel information used for encrypting or
verifying access information is stored by controlling the polarity of a
predetermined runlength of a predetermined data or control symbol of a
runlength-limited code sequence.” Brief 9. In response the Examiner finds
that Oshima teaches storing data on a carrier by controlling the polarity of a

decision in Ex parte Curry, 2005-0509 (BPAI 2005), 84 USPQ2d 1272
Footnote continued on next page.
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predetermined runlength of a predetermined data. Answer 10. The
Examiner relies upon Davis to teach the secondary channel and finds the
combination of these teachings meets the claim limitation. We concur with
the Examiner. Appellant’s argument focus on Oshima not teaching using
polarization orientation in conjunction with the secondary channel as
claimed and does not address Oshima’s teaching in combination with Davis
as set forth in the Examiner’s rejection. Accordingly, we are not persuaded
of error in the Examiner’s rejection of claim 2.

Claim 3
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner has erred. We agree with Appellant’s
conclusion that the Examiner erred in finding that Davis teaches the
secondary channel information is rewritten when the access information has
changed as claimed. The Examiner has not responded to this argument in
the Answer, however in the statement of the rejection the Examiner cites to
column 9, lines 20-25 as supporting this finding. Answer 4. We have
reviewed this passage of Davis and do not find that it teaches re-writing the
secondary channel information as claimed. Accordingly, we will not sustain
the Examiner’s rejection of claim 3.

Claims 7 and 12

(Affirmed, Rule 36, Fed. Cir., slip op. 06-1003, June 2006).
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Application 10/151,049

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Appellant’s arguments directed to these claims present us with the
same issues as discussed above with respect to claim 1. Accordingly, we are
similarly not persuaded of error in the rejections of claims 7 and 12.

SUMMARY
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejections of claims 1, 2, and 4 through 12 under 35 U.S.C.
§ 103(a)
However, Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a).

ORDER
The decision of the Examiner to reject claims 1 through 12 is affirmed
in part.

AFFIRMED-IN-PART

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