Ex Parte Sugiyama et al

Patent Trial and Appeal Board

Aug 23, 2017

13720613 (P.T.A.B. Aug. 23, 2017)

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.
13/720,613 12/19/2012 Koichi Sugiyama 407566US8CONT 3131
22850 7590 08/25/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WONG, KIN C
ART UNIT PAPER NUMBER
2688
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOICHI SUGIYAMA
and
ETSUROU SAKAMOTO1
Appeal 2016-000357
Application 13/720,613
Technology Center 2600
Before CARLA M. KRIVAK, JASON V. MORGAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was conducted on July 25, 2017.
We affirm.
1 Appellants identify Sony Corporation of Japan as the Applicant.
Appeal 2016-000357
Application 13/720,613
STATEMENT OF THE CASE
Appellants’ invention is directed “to digital data recording medium,
AV apparatus, and AV system which can easily control the recording or
dubbing of a digital signal which is supplied from, for example, a television
station or a digital VCR” (Spec. 2:2—8).
Independent claims 1 and 13, reproduced below, are exemplary of the
subject matter on appeal.
Claim 1. An apparatus for controlling usage of digital
content data, comprising:
a storage unit configured to store the digital content data;
a determination processing unit configured to determine
whether the digital content data stored by the storage unit is
eligible for reproduction based on reproduction duration
information; and
a control processing unit configured to control
reproduction of the digital content data based on the
determination by the determination processing unit.
Claim 13. A non-transitory computer readable medium
claim having stored thereon a program that when executed by a
computer causes the computer to implement a method for
controlling usage of digital content, comprising:
storing digital content data in a storage unit;
determining, at a determination processing unit, whether
the digital content data stored by the storing is eligible for
reproduction based on reproduction duration information; and
controlling, using a control processing unit, reproduction
of the digital content data based on the determination by the
determining.
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Appeal 2016-000357
Application 13/720,613
REFERENCES and REJECTIONS
The Examiner rejected claims 13—18 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
The Examiner rejected claims 1—18 under 35 U.S.C. § 102(b) as
anticipated by Grantz (US 5,564,038; iss. Oct. 8, 1996).
ANALYSIS
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner finds Appellants’ Specification lacks description of a
program to be executed or implemented by a computer for controlling the
usage of digital content or the computer itself (system) (Final Act. 2).
Appellants contend the disclosure associated with Figures 11 and 3B
“clearly describes” the method for controlling usage of digital content using
digital circuitry, thus an ordinarily skilled artisan would “immediately
recognize that digital circuitry is operable using programs stored on a
computer readable media” (App. Br. 4). We do not agree.
Appellants’ Specification recites digital circuitry is used—not a
computer. The Specification recites a “condition memory 209 is provided
for a tape cassette 202 of the digital VCR. The condition memory is
prepared for every recording medium capable of recording a digital video
signal” (Spec. 18:25—19:3; Fig. 11). Further, the Specification states
Alternatively, the condition memory may be provided in a
semiconductor memory, such as a MIC (Memory in Cassette),
integratedly attached to tape cassette 202. Of course, the
condition memory may be provided in both the subcode area of
magnetic tape 211 and the MIC integratedly attached to the tape
cassette
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Appeal 2016-000357
Application 13/720,613
(Spec. 19:5—10).2 Figure 11 shows a “digital VCR 201 comprises a
condition judgment logic circuit 203” (Spec. 18:20-23). However, neither
the condition memory nor the condition judgment logic circuit is a computer
readable medium have a program stored thereon, as recited in claim 13.
Rather, they are circuitry that can store data (209-a memory) or a circuit that
provides a logic function (203). Figure 3B merely shows the recording
apparatus of a digital VCR (Spec. 6:16—17). Figure 3B includes a control
unit 6 and a recording/reproducing unit 8 (Spec. 10:19—20).
To satisfy the written description requirement, a patent specification
must describe the claimed invention in sufficient detail that one skilled in the
art can reasonably conclude that the inventors had possession of the claimed
invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d
1306, 1319 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555
1563 (Fed. Cir. 1991). Appellants have not persuaded us they had
2 “Memory-in cassette [MIC] hardware makes uses [sic] of an Electrically
Erasable Programmable Read-Only Memory (EEPROM), which is mounted
within the data cartridge and consists of a five-pin interface to the external
connection or drive. Information stored in memory-in-cassette consists of
information written at the time the cartridge is manufactured, data accesses
when media was first loaded into the advanced intelligent tape drive and the
portions that are written directly by user applications.”
(https://www.techopedia.com/defmition/27404/memory-in-cassette-mic; last accessed Aug. 11,
2017).
An EEPROM is a “user-modifiable read-only memory (ROM) that can be
erased and reprogrammed (written to) repeatedly through the application of
higher than normal electrical voltage........ EEPROMs do not need to be
removed from the computer to be modified. However, an EEPROM chip
has to be erased and reprogrammed in its entirety, not selectively.
(http://whatis.techtarget.com/definition/EEPROM-electrically-erasable-programmable-read-only-memory;
last accessed Aug. 11, 2017).
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Appeal 2016-000357
Application 13/720,613
possession of a computer readable medium having a program that when
executed causes the computer to implement the method. The Specification
and drawings merely support a digital network of circuits.
Thus, we sustain the Examiner’s rejection of claims 13—18 under 35
U.S.C. § 112, first paragraph as failing to comply with the written
description requirement.
Rejection under 35 U.S.C § 102(b)
Appellants contend the Examiner erred in finding Grantz “has nothing
to do with determining whether the digital content data stored by the storing
is elisible for reproduction based on reproduction duration information”
(App. Br. 5). Rather, Appellants contend, Grantz is directed to a process for
delaying the creation of a data stamp for checking if a software program has
expired, based on a timer {id.).
We first note the term “digital content data” is broad and is not used in
Appellants’ Specification; rather the term “digital data” is used and one
example of digital data is given as a “software program” (Spec. 22:21; see
also Ans. 2—3).3 Grantz discloses a “method and apparatus for providing a
trial period for a software license product using a date stamp and designated
test period” (Title; capitalization and bold deleted). This contradicts
Appellants’ argument that Grantz “has nothing to do with digital content
3 ft is noted Appellants’ Specification relies on Figure 15 when referencing
the “software program,” however no definitions or examples of a software
program are provided in the Specification except that digital data can be a
software program.
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Appeal 2016-000357
Application 13/720,613
data” (App. Br. 6). We therefore, agree with Examiner that Appellants
“mischaracterized that Grantz lacks ‘digital content data’” (Ans. 2).
Appellants contend Grantz is “completely different” from Appellants’
claimed limitation of determining if digital content data is eligible for
reproduction based on duration information. Appellants argue Grantz relates
entirely to a process for delaying the creation of a date stamp used for
checking whether a software program expired based on a timer (App. Br. 5).
However, Appellants contend this has “nothing to do with digital content
data or determining whether this content is eligible for reproduction. The
teaching of Grantz is completely different from the claimed features” (App.
Br. 6). Thus, Appellants contend, Grantz’s timer is used only to “determine
when the date-stamp should be created” and not for determining eligibility
for reproduction (App. Br. 7).
Although Appellants argue that a timer only “provides a duration for
the date-stamp ‘bum-in-period’” we do not agree it is not determinative of
whether content is eligible for reproduction (App. Br. 7). That is, Grantz
discloses a time period date-stamp for a bum-in period, but also teaches once
the ‘bum-in-period expires and the date stamp is created, there is a time
period for which the software can be used/reproduced (“Elapsed Days>Max
Days” Grantz Fig. 4, Step 470). Appellants’ Specification does not provide
a definition of “reproduction duration information” but does give examples
including “prepaid fee information corresponding to reproduction duration
information whose reproduction is permitted or to its allotted reproduction
duration” (Spec. 20:6—9). Thus, Appellants’ reproduction duration is the
time period in which the data can be reproduced, which is taught by Grantz
(Ans. 3).
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Application 13/720,613
We therefore sustain the Examiner’s rejection of independent claims
1, 7, and 13, argued together and dependent claims 2—6, 8—12, and 14—18,
argued for their dependence from claims 1, 7, and 13, respectively, and for
which no substantive arguments are provided (App. Br. 7—8; Ans. 3—4).
DECISION
The Examiner’s decision rejecting claims 13—18 under 35 U.S.C.
§112, first paragraph is affirmed.
The Examiner’s decision rejecting claims 1—18 as anticipated by
Grantz 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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