Ex Parte Winter

Board of Patent Appeals and Interferences

Jan 26, 2007

09469865 (B.P.A.I. Jan. 26, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARCO WINTER
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Appeal 2006-3145
Application 09/469,865
Technology Center 2600
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Decided: January 26, 2007
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Before LANCE LEONARD BARRY, MAHSHID D. SAADAT, and
ALLEN R. MACDONALD, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-12, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 134.
The claims are directed to a replay appliance that accesses information
stored on recording medium (e.g., a DVD) at a defined playing time. In
particular, the replay appliance drives a scanning device using a binary
Appeal 2006-3145
Application 09/469,865

search to a point on the recording medium that corresponds to the access
point defined by the playing time. Such a feature enables accessing
information on the medium at a defined playing time despite the absence of
a concordance list that correlates replay time with recording location.
Claim 1 is illustrative.
1. Replay appliance for accessing at a defined playing
time information stored on recording media containing
information blocks, the appliance comprising:
a scanning device for scanning data on a recording medium;
search means for binary searching of the recording medium
on the basis of a replay time; and

a comparator for comparing a replay time which has been scanned
from the recording medium with a desired replay time, wherein the
scanning device scans the recording medium at a point which corresponds
to a result of a comparison by the comparator to access at the defined
playing time.

The Examiner relies on the following prior art references to show
unpatentability:

Carter US 5,845,331 Dec. 1, 1998

Kawamura US 6,075,920 Jun. 13, 2000
(filed Oct. 31, 1995)

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Application 09/469,865

The rejections1 as presented by the Examiner are as follows:
1. Claims 1, 2, and 4-10 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Kawamura.
2. Claims 3, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kawamura in view of Carter.

OPINION
We have carefully considered the subject matter on appeal, the
rejections advanced by the Examiner and the evidence of anticipation and
obviousness relied upon by the Examiner as support for the rejections. We
have, likewise, reviewed and taken into consideration, in reaching our
decision, the Appellant’s arguments set forth in the Brief along with the
Examiner’s rationale in support of the rejections and arguments in rebuttal
set forth in the Examiner’s Answer. Rather than repeat the arguments of
Appellant or the Examiner, we make reference to the Brief and the Answer
for the respective details thereof.
It is our view, after consideration of the record before us, that the
disclosure of Kawamura does not meet the invention as set forth in claims 1,
2, and 4-10. We also find that the evidence relied upon and the level of skill
in the particular art would not have suggested to one of ordinary skill in the

1 We note that the Examiner’s Answer does not expressly state the
Examiner’s grounds of rejection, but instead refers to a previous Office
Action (Answer 3). Such incorporations by reference, however, are
improper under current practice. See MPEP § 1207.02 (“An examiner's
answer should not refer, either directly or indirectly, to any prior Office
action without fully restating the point relied on in the answer.”). See also
Ex parte Metcalf, 67 USPQ2d 1633, 1635 n.1 (BPAI 2003).
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Application 09/469,865

art the invention as set forth in claims 3, 11, and 12. Accordingly, we
reverse.
We first consider the Examiner’s rejection of claims 1, 2, and 4-10
under 35 U.S.C. § 102(e). The Examiner has indicated how the claimed
invention is deemed to be fully met by the disclosure of Kawamura (Final
Rejection 3-4). Regarding independent claim 1, Appellant argues that
Kawamura does not disclose a replay appliance comprising, among other
things, (1) a scanning device, (2) a search means for binary searching the
recording medium on the basis of a replay time, and (3) a comparator that
performs the recited functions. Rather, Kawamura teaches only searching
time code information recorded in each sector of a recording medium based
on a specified time code and moving a pickup to the appropriate sector of
the medium (Br. 5).
The Examiner responds with four main arguments. First, the
Examiner notes that the claimed invention does not recite a sequence of
events for searching recorded media, but rather recites a device that searches
a medium based on a replay time data signal recorded on the medium
(Answer 3-4). Second, the Examiner argues that Kawamura’s scanning
device corresponds to Kawamura’s pickup since the pickup scans the data
recorded on the disc (Answer 4). Third, the Examiner contends that
Kawamura discloses a search means that performs a binary search in view of
Kawamura’s time-code based search which, according to the Examiner, is
based on a “binary” time code format. Also, the Examiner notes that
Kawamura compares the accessed replay time with the desired replay time
(Id.).
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We will not sustain the Examiner’s anticipation rejection essentially
for one limitation that, in our view, is missing from Kawamura.
Specifically, we disagree with the Examiner that Kawamura discloses
expressly or inherently a search means for binary searching the recording
medium on the basis of a replay time as claimed in independent claim 1.
As well known in the art, binary searching is a specific technique that
searches for a value within a given search interval by repeatedly dividing the
search interval in half. That is, a binary search finds the median of the
interval, compares the desired value with the median to determine whether
the desired value is higher or lower than the median, and searches the
remaining half in the same manner.2 Such an interpretation of “binary
search” is entirely consistent with Appellant’s disclosure, particularly noting
the arrows in Steps S1-S4 in the figure that clearly illustrate a binary search.
The Examiner’s reliance on col. 14, ll. 55-56 and col. 5, ll. 58-67
(Answer 4) for allegedly disclosing a binary search is unavailing.
Kawamura’s search is based on comparing a stored time code with a user-
specified time code (Kawamura, col. 14, ll. 54-60). Although the time code
is in a Binary Coded Decimal (BCD) format (Kawamura, col. 5, ll. 65-67) as
the Examiner indicates, Kawamura’s search hardly qualifies as a “binary
search” as the term is understood by skilled artisans. In fact, Kawamura is
silent regarding the specific search technique employed.

2 See Paul E. Black, Binary Search, in Dictionary of Algorithms and Data
Structures, U.S. Nat’l Inst. Of Standards & Tech., Oct. 27, 2005, available at
http://www.nist.gov/dads/HTML/binarySearch.html (last visited Jan. 12,
2007). See also Binary Search Algorithm, Wikipedia, at
http://en.wikipedia.org/wiki/Binary_search_algorithm (last visited Jan. 12,
2007).
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Appeal 2006-3145
Application 09/469,865

We recognize that claim limitations must be “given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000). But the broadest
reasonable interpretation of the claims must also be consistent with the
interpretation that those skilled in the art would reach. In re Cortright, 165
F.3d 1353, 1358, 49 USPQ2d 1464, 1467 (Fed. Cir. 1999). See also MPEP
§ 2111. Merely because a BCD time code is used as a basis for the search
does not transform the search into a “binary search” – a particular search
technique recognized by skilled artisans as noted above.
Notwithstanding our disagreement with the Examiner regarding the
binary search limitation, we nevertheless agree with the Examiner that
Kawamura reasonably discloses all other limitations of independent claim 1.
We cannot say that no other prior art exists that would render utilizing a
binary search in conjunction with the other claimed limitations unpatentable.
We can say, however, that no such prior art exists on this record.3
For the above reasons, we will not sustain the Examiner’s anticipation
rejection of independent claim 1. Likewise, we will not sustain the
Examiner's rejection of dependent claims 2 and 4-10.
With regard to the obviousness rejection of dependent claims 3, 11,
and 12, the examiner adds Carter to the teachings of Kawamura (Final
Rejection 5). But since Carter does not cure the deficiencies noted above

3 We refer the Examiner, however, to U.S. Pat. 5,706,261 to Udagawa which
teaches determining the boundary between recorded and unrecorded areas on
an optical disc using, in part, a binary search). See Fig. 4 and col. 6, l. 5 –
col. 7, l. 17. We leave the determination of whether such a teaching is
reasonably combinable with Kawamura to the Examiner.
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Application 09/469,865

with respect to independent claim 1, the rejection of claims 3, 11, and 12 is
also not sustained.
In summary, we have not sustained the Examiner's rejection with
respect to any of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 1-12 is reversed.

REVERSED

kis/ce

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