11601836 (B.P.A.I. Oct. 14, 2010)

Ex Parte Sugahara

Board of Patent Appeals and InterferencesOct 14, 2010

11601836 (B.P.A.I. Oct. 14, 2010)

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. 11/601,836 11/20/2006 Takayuki Sugahara MIY.001.0099.RE 6804 65181 7590 10/14/2010 MOTS LAW, PLLC 1629 K STREET N.W. SUITE 602 WASHINGTON, DC 20006-1635 EXAMINER LEE, Y YOUNG ART UNIT PAPER NUMBER 2482 MAIL DATE DELIVERY MODE 10/14/2010 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 TAKAYUKI SUGAHARA _____________ Appeal 2010-010414 Application 11/601,836 Technology Center 2400 ______________ Before ROBERT E. NAPPI, JOSEPH P. RUGGIERO, and ELENI MANTIS MERCADER, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-010414 Application 11/601,836 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 3 through 9 and 18. We affirm. INVENTION The invention is directed to a method of reproducing data which allows for the degree of restriction of reproduction to be conveyed along with the data being reproduced. See column 2, lines 15-30 of Appellant’s Patent 6,970,505. Claim 3 is representative of the invention and reproduced below: 3. A receiving method providing reproduction protection, for operating on main data which are conveyed by a broadcasting system, said method comprising steps of: detecting transmitted protection data conveyed by said broadcasting system, wherein said transmitted protection data is constituting one of a first data group, determining first protect information as a first plurality of protection levels in response to said transmitted protection data and first apparatus protection data which are specific to a region or a country and constituting one of a second data group, specifying second apparatus protection data by user selection from a second plurality of protection levels, generating second protect information by referring to at least said first protect information and said second apparatus protection data, and executing reproduction of said main data in accordance with said second protect information, wherein use of said transmitted protection data constituting one of said first data group and said first apparatus protection data constituting one of said second data group results in the determination of said first protect information having said first plurality of protection levels, each member of said first plurality of protection levels of said first protect information corresponds with a respective member of said 2 Appeal 2010-010414 Application 11/601,836 second plurality of protection levels of said second apparatus protection data, said first plurality of protection levels and said second plurality of protection levels represent successive increase of protection levels, and selection of said second apparatus protection data by a user manually restrict protection level among all of the protection levels defined in said first protect information. REFERENCES Cookson US 5,574,567 Nov. 12, 1996 REJECTIONS AT ISSUE The Examiner has rejected claims 3 through 6 and 9 under 35 U.S.C. § 102(e) as being anticipated over Cookson. Answer 3-5. The Examiner has rejected claims 7, 8, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Cookson. Answer 5 and 6. The Examiner has rejected claims 3 through 9 and 18 on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 7,010,031. Answer 6. The Examiner has rejected claims 3 through 9 and 18 on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 4 through 10, and 19 of U.S. Patent Application 11/601,835. Answer 6. ISSUES Appellant argues on pages 13 through 25 of the Appeal Brief that the Examiner’s rejection of 3 through 6 and 9 under 35 U.S.C. § 102 as being anticipated over Cookson is in error. Specifically, Appellant asserts on page 23 that the Examiner has not shown that each of the plurality of first 3 Appeal 2010-010414 Application 11/601,836 protection levels corresponds with a respective member of the second plurality of protection levels as claimed. App. Br. 23, Reply. Br. 11, 12. Appellant presents additional arguments in the Briefs, however we do not reach the additional argument as this argument is dispositive Appellant’s contentions with respect to the rejection of claims 3 through 6 and 9 under 35 U.S.C. § 102(e), present us with the issue: did the Examiner err in finding that Cookson teaches each member of the first plurality of protection levels corresponds with a member of the second plurality of protection levels as recited in claim 3? Appellant has not contested the rejections based upon non-statutory obviousness-type double patenting. App. Br. 25, 26. ANALYSIS Rejection under 35 U.S.C. § 102 Appellant’s arguments have persuaded us of error in the Examiner’s rejection of claims 3 through 6 and 9 under 35 U.S.C. § 102. Claim 3 recites “each member of said first plurality of protection levels of said first protect information corresponds with a respective member of said second plurality of protection levels of said second apparatus protection data.” Thus, the scope of independent claim 3 includes that there is a correspondence between each of the first protection levels and the second protection levels. The Examiner has found that Cookson teaches four different combinations of the first protection information, thus producing 4 protection levels, combination of rating (PG or R) and (authorized or not authorized). Answer 3, 7-8. Further, the Examiner has found that Cookson teaches the second protect information, as the parental lock along with the rating version and 4 Appeal 2010-010414 Application 11/601,836 the authorized territory. Answer 4 and 8. Further, in response to the Appellant’s arguments directed to the correspondence of protection levels the Examiners states “it is submitted that Cookson et al discloses the same type of protection information, namely version codes and territory codes, as illustrated in Figures 3 and 4 of appellant’s own disclosure.” Answer 9. We disagree with the Examiners’ findings; the Examiner has not shown that Cookson teaches the claimed correspondence in the first and second protection levels. While we do not reach the issue of whether the combination of rating and authorized territory meets the claimed first protect information, if we were to accept the Examiner’s finding directed to this feature of Cookson, the Examiner has not shown that the 4 levels set by the first protect information correspond to 4 levels in the second protect information. Claim 3 recites that the second protect information is specified by the user, e.g. the parental lock, while this may correspond to the PG or R rating in the first protection information, we do not find any user input corresponding to the authorized territory, thus we do not see a correspondence between levels the first and second protect information. Accordingly, we will not sustain the Examiner’s rejection of claims 3 through 6 and 9 under 35 U.S.C. § 102. Rejection under 35 U.S.C. § 103 Claims 7, 8, and 18 are dependent upon claim 3. The Examiner’s rejection of these claims similarly relies upon the teachings of Cookson to teach the limitation of claim 3. Answer 3, 4, and 7-9. As discussed above we are not persuaded that Cookson teaches or suggests the limitations of 5 Appeal 2010-010414 Application 11/601,836 claim 3. Accordingly, we will not sustain the Examiner’s rejection of claims 7, 8 and 18. Non-statutory obviousness-type double patenting rejections. Appellant has not contested the Examiner’s double patenting rejections. Application 11/601,835 is now abandoned, so we will not sustain the rejection based upon application 11/601,835. However, as Appellant has not contested the rejection based upon U.S. Patent No. 7,010,031, we sustain the Examiner’s rejection based upon non-statutory obviousness-type double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 7,010,031. CONCLUSION We will not sustain the Examiner’s rejections of claims 3 through 9 and 18 under 35 U.S.C. § 102, 35 U.S.C. § 103, or non-statutory obviousness-type double patenting as being unpatentable over claims 4 through 10 and 19 of U.S. Patent Application 11/601,835. However we sustain the Examiner’s rejection of claims 3 through 9 and 18 on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 7,010,031. Thus, Appellant has not persuaded us of error in the Examiner’s decision to reject claims 3 through 9 and 18. 6 Appeal 2010-010414 Application 11/601,836 ORDER The decision of the Examiner to reject claims 3 through 9 and 18 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). 7 Appeal 2010-010414 Application 11/601,836 AFFIRMED ELD MOTS LAW, PLLC 1629 K STREET N.W. SUITE 602 WASHINGTON, DC 20006-1635 8