Ex parte UENO et al.

Board of Patent Appeals and Interferences

May 12, 2000

08165318 (B.P.A.I. May. 12, 2000)

Application for patent filed December 13, 1993,1
entitled "Movie Film Having Two Digital Audio Data Recording
Areas Along Its Longitudinal Direction."
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
_______________
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MASATOSHI UENO
and SHINJI MIYAMORI

Appeal No. 1997-2941
Application 08/165,3181

HEARD: May 2, 2000

Before BARRETT, FLEMING, and DIXON, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-2941
Application 08/165,318
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This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1, 7, 9, and 11. The amendments
after final rejection filed January 29, 1996, (Paper No. 12)
and May 16, 1996, (Paper No. 15) have been entered.
We reverse.
BACKGROUND
The invention is fairly described in Appellants' Summary
of the Invention (Brief, pages 4-6).
Claim 1 is reproduced below.
1. A movie film for recording image reproduction
data and audio reproduction data, said movie film
comprising:
a frame image information recording area arranged
along a longitudinal direction in the form of frames; and
at least two digital audio data recording areas
arranged at different positions in a direction orthogonal
to the longitudinal direction, wherein said audio
reproduction data is recorded in a digital format with a
predetermined relationship in one of said at least two
digital audio data recording areas and the same audio
reproduction data is recorded in the same digital format
in another of said at least two digital audio data
recording areas, wherein said audio reproduction data
recorded in said digital audio data recording areas is
constituted by a plurality of channels and each channel
includes a parameter by which said audio reproduction
data is encoded, the encoded data, and a doubly written
parameter the same as said parameter, wherein said doubly
written parameter is recorded in a digital audio data
recording area which is different from the digital audio
Appeal No. 1997-2941
Application 08/165,318
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data recording area in which said parameter and said
encoded data are recorded.
The Examiner relies on the following prior art
references:
Fujiwara et al. (Fujiwara) 5,115,240 May 19, 1992
Kohut et al. (Kohut) 5,327,182 July 5, 1994
(filed June 10,
1992)
Claims 1, 7, 9 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Kohut or, in the alternative, under
35 U.S.C. § 103 as being unpatentable over Kohut and Fujiwara.
Claim 11 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Fujiwara and Kohut.
We refer to the Final Rejection (Paper No. 6) (pages
referred to as "FR__"), the Examiner's Answer (Paper No. 17)
(pages referred to as "EA__"), and the Supplemental Examiner's
Answer (Paper No. 20) (pages referred to as "SEA__") for a
statement of the Examiner's position and to the Brief (Paper
No. 14) (pages referred to as "Br__") and the Reply Brief
(Paper No. 19) (pages referred to as "RBr__") for Appellants'
arguments thereagainst.
Appeal No. 1997-2941
Application 08/165,318
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OPINION
The claims are grouped to stand or fall together (Br6).
Claim 1 is analyzed as representative.
The issue is whether the limitation of "a doubly written
parameter ... [which] is recorded in a digital audio data
recording area which is different from the digital audio data
recording area in which said parameter and said encoded data
are recorded" is anticipated by Kohut or rendered obvious by
the combination of Kohut and Fujiwara.
The teachings of Kohut and Fujiwara are fairly summarized
by Appellants (Br7-10).
35 U.S.C. § 102(e)
The Examiner relies on Table 1 (col. 6) of Kohut (EA5):
"Each channel of 'A' includes a 'parameter' readable as the
16-bit digital audio data, and each channel of 'C' also
including the 16-bit digital audio data, same as channel 'A'
or as claimed 'a doubly written parameter.'" The Examiner
also states (EA8): "Given the broad language of the claims,
in particular, the fact that Appellant does not limit or
define the term 'parameter' in any way, this so-called claimed
Appeal No. 1997-2941
Application 08/165,318
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'parameter' is readable on the 16-bit digital audio data
encoding of Kohut et al."
Appellants argue (RBr5) that claim 1 recites (1) a
parameter by which audio reproduction data is encoded, (2) the
encoded data, and (3) a doubly written parameter the same as
the parameter. Therefore, a "parameter" is defined as being
utilized to encode audio data. Furthermore, it is argued
(RBr5), the 16-bit digital audio data in Kohut is not the same
as the claimed parameter, encoded data, and doubly written
parameter.
The Examiner responds that a channel of soundtrack "A"
corresponds to the parameter, encoded data, and doubly written
parameter, and the doubly written parameter is recorded on a
channel of soundtrack "C" (SEA3).
We agree with Appellants. A "parameter" is defined as
being utilized to encode audio data and is different from the
audio data itself. Kohut says nothing about an encoding
parameter, much less having a redundant, doubly written
parameter, much less recording these two parameters in
different recording areas. Therefore, the finding of
anticipation is clearly erroneous. The Examiner's reasoning
Appeal No. 1997-2941
Application 08/165,318
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with respect to Table 1 and the various channels is not
understood. The eight channels all carry different data
intended for different speakers (Table 1, col. 6; figure 7).
It is not known why the Examiner considers the data in two
channels to be the same (FR3, first full para.) since they
carry different data. There is no reason to believe that the
"Right/Center" channel in area "A" carries identical
information to the "Left/Center" channel in area "C."
Nevertheless, even if the data was the same, the claim
requires the parameter to be doubly written in different
recording areas, not the data, and, again, Kohut does not
disclose redundant encoding parameters or recording redundant
encoding parameters in different digital audio data recording
areas. Accordingly, the Examiner has failed to establish a
prima facie case of anticipation. The anticipation rejection
of claims 1, 7, and 9 is reversed.
35 U.S.C. § 103
The Examiner states that Kohut discloses the claimed
subject matter except, perhaps, "a parameter by which said
audio reproduction data is encoded," but that this limitation
is "clearly disclosed by Fujiwara" (EA9). The Examiner
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apparently bases this finding on the fact that Appellants
cited Fujiwara as relevant to the SDDS and ATRAC system and
the assumption that Fujiwara must, therefore, have a parameter
(EA8-9).
Appellants note that they did not acknowledge that the
system and method of encoding audio reproduction data with the
disclosed "parameter" is taught by Fujiwara (RBr3-4).
Appellants argue that the Examiner fails to indicate exactly
where the parameter or parameters are disclosed in Fujiwara,
despite Appellants' previous assertions that Fujiwara does not
disclose a parameter and a doubly written parameter (RBr8).
We agree with Appellants that their submission of
Fujiwara does not in any way constitute a representation that
Fujiwara discloses a "parameter" and a "doubly written
parameter." We have reviewed Fujiwara and find that it does
not disclose or suggest the parameter and doubly written
parameter. Thus, the Examiner errs in relying on Fujiwara for
these limitations.
The specification admits that in the SDDS (Sony Dynamic
Digital Sound) system, each channel comprises an encoding
parameter, an encoded and compressed audio data recording
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Application 08/165,318
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portion, and a doubly written parameter (specification,
page 8). The specification further admits that the ATRAC
(adaptive transform acoustic coding) system was utilized for
the compression of digital audio data recorded on the digital
audio data recording portion in the SDDS recording system
(specification, pages 9-11) and that the most important coding
parameters are doubly written in the ATRAC system
(specification, page 13). It is not known why the Examiner
did not rely on this admitted prior art (APA). Nevertheless,
the APA indicates that there is still a problem in that when
the parameter and doubly written parameter are recorded in the
same recording area, both parameters can be destroyed by a
scratch and the information needed for decoding and
decompressing the data is lost. The invention and claimed
subject matter is directed to recording the doubly written
parameter in a different digital audio data recording area
than the parameter. This limitation is not shown or suggested
by either Kohut or Fujiwara. Accordingly, the Examiner has
failed to establish a prima facie case of obviousness. The
rejections of claims 1, 7, 9, and 11 over the combination of
Kohut and Fujiwara are reversed.
Appeal No. 1997-2941
Application 08/165,318
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CONCLUSION
The rejections of claims 1, 7, 9, and 11 are reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 1997-2941
Application 08/165,318
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William S. Frommer
FROMMER, LAWRENCE & HAUG
745 Fifth Avenue
New York, NY 10151