Ex Parte Ueda et al

Patent Trial and Appeal Board

Aug 14, 2014

11155590 (P.T.A.B. Aug. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HIROSHI UEDA, YOSHIHISA FUKUSHIMA,
MOTOSHI ITO, and SHINJI SASAKI
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Appeal 2012-004281
Application 11/155,590
Technology Center 2600
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Before JOSEPH F. RUGGIERO, CARL W. WHITEHEAD JR., and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 14 and 16, all pending claims of the application.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 In this Opinion, we refer to Appellants’ Appeal Brief (“Br.,” filed August
29, 2011), the Examiner’s Answer (“Ans.,” mailed November 1, 2011), and
the original Specification (“Spec.,” filed June 20, 2005, claiming priority to
January 7, 2000).
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STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to recording control information in a
burst cutting area (“BCA”) of an information recording disc. See generally
Spec. 1:3–4.
Claims 14 and 16 are reproduced below:
14. An information recording disc comprising a burst
cutting area,
wherein the burst cutting area includes an application
identifier area having an application identifier recorded therein,
and an application specific data area having control data
recorded therein,
wherein the application identifier indicates a purpose of
the use of the control data, and
wherein the control data includes an intrinsic code
allocated uniquely to each information recording disc.

16. An information recording disc according to claim 14,
further comprising
a data length area having a data length of the application
specific data area recorded therein.

THE REJECTIONS
Claims 14 and 16 are rejected under 35 U.S.C. § 102(e) as anticipated
by Shim (US 6,608,804 B2, filed Dec. 31, 1998).
Claims 14 and 16 are also rejected under 35 U.S.C. § 103(a) as
unpatentable over Shim and Weirauch (US 6,330,210 B1, filed Apr. 29,
1999).
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Only those arguments actually made by Appellants have been
considered in this Decision. Arguments that Appellants 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).
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner erred. Br. 9–13. We are not persuaded by
Appellants’ contentions. We adopt as our own the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and as
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (see Ans. 7–11). However, we highlight and
address specific arguments and findings for emphasis as follows.

ISSUE
Appellants’ arguments presents the dispositive issue: Has the
Examiner erred by finding Shim teaches “the control data includes an
intrinsic code allocated uniquely to each information recording disc” as
recited in claim 14?

ANALYSIS
ANTICIPATION REJECTION
The Examiner rejects claim 14 finding the recited “code allocated
uniquely to each information recording disc” taught as a type code in Shim.
Ans. 5–6. Shim’s type code is a value indicating the particular type of
medium of each disc (i.e., CD, DVD, MD, LD, etc.). See, e.g., Shim 3:39–
42, 6:4–5. The Examiner interprets “unique” as reading on Shim’s type
code stating: “Uniquely identifiable among different disks, uniquely and
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only one to such type, the ‘type’ can be uniquely and only identified.” Ans.
5.
Appellants argue the type code is not a unique code as recited in the
claim. Br. 9–11. Specifically, Appellants argue:
[T]he Shim reference does not disclose that each disk,
regardless of type, has a disk code IDDT 210 that is uniquely
allocated to that particular disk. In other words, there is no
disclosure in the Shim reference that each DVD would have a
disk code IDDT 210 that differs from the disk codes IDDT 210
of all other DVDs.
Therefore, it is apparent that the disk code IDDT 210 is
not a code that is allocated uniquely to each disk, but a code
that is shared by a whole class of disks. Thus, according to the
disclosure of the Shim reference, all DVDs would have a
common disk code IDDT 210. The disk code IDDT 210 is not
unique to each disk.
Br. 10. We are unpersuaded by Appellants’ argument.
The issue hinges on the interpretation of “unique” as recited in claim
14. Appellants’ argument interprets “unique” in the claims to mean a unique
identifier for every disc—e.g., an identifier for a disk that is unique with
respect to all other disks such as a serial number or globally unique identifier
(“GUID”). However, the claim does not require such a narrow
interpretation. Claims are given their broadest reasonable construction “in
light of the specification as it would be interpreted by one of ordinary skill in
the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (citation and internal quotation marks omitted). Although a patent
applicant is entitled to be his or her own lexicographer of patent claim terms,
the applicant must do so by placing such definitions in the specification with
sufficient clarity to provide a person of ordinary skill in the art with clear
and precise notice of the meaning that is to be construed. See In re Paulsen,
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30 F.3d 1475, 1480 (Fed. Cir. 1994). The Examiner has interpreted
“unique” in claim 14 as a code that is unique to each type of disc medium
and Appellants have not identified any clear definition of “unique” within
the Specification that contradicts the Examiner’s interpretation.
Appellants cite a portion of the Specification suggesting it supports
Appellants’ interpretation of “unique” as enabling better copy protection.
Br. 10. Appellants provide a detailed example of the enhanced protection
enabled by a unique code in accordance with Appellants’ interpretation of
“unique.” Br. 10–11. In response, the Examiner explains, “The benefits
and/or manner in which above is simply the manner in which the Appellant
intend to use the information recording medium does not differentiate what
it is actually claimed from the teachings of Shim.” Ans. 11. We agree. An
intended use cannot distinguish over the prior art even if it were recited in
the claim, which it is not here. See, e.g., In re Schreiber, 128 F.3d 1473,
1477–78 (Fed. Cir. 1997) (claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function).
We find the Examiner’s interpretation of “unique” in the context of
claim 14 broad but reasonable in view of the Specification’s lack of a clear
definition. Therefore, we are not persuaded the Examiner erred by finding
Shim teaches “the control data includes an intrinsic code allocated uniquely
to each information recording disc” as recited in claim 14 and claim 16 not
argued separately with particularity (Br. 11). We, therefore, sustain the
anticipation rejection of claims 14 and 16.

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OBVIOUSNESS REJECTION
In the alternative, the Examiner rejects claims 14 and 16 as obvious
over Shim and Weirauch. Because we find that claims 14 and 16 are
anticipated by Shim, we do not separately address the alternative rejection of
claims 14 and 16 under 35 U.S.C. § 103(a). In re Fracalossi, 681 F.2d 792,
794 (CCPA 1982) (anticipation is the epitome or ultimate of obviousness).
We, therefore, sustain the obviousness rejection of claims 14 and 16.

DECISION
For the above reasons, the Examiner’s decisions rejecting claims 14
and 16 under 35 U.S.C. §§ 102 and 103 are 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).

AFFIRMED

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