Ex Parte Wong et al

Board of Patent Appeals and Interferences

Oct 24, 2011

10387232 (B.P.A.I. Oct. 24, 2011)

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.
10/387,232 03/11/2003 Terrence L. Wong 03-2476 / 1496.00546 6463
22501 7590 10/24/2011
CHRISTOPHER P MAIORANA, PC
LSI Corporation
24840 HARPER
SUITE 100
ST CLAIR SHORES, MI 48080
EXAMINER
LANIER, BENJAMIN E
ART UNIT PAPER NUMBER
2432
MAIL DATE DELIVERY MODE
10/24/2011 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 TERRENCE L. WONG, IAN E. HARVEY,
DAVID C. LEE, GREG S. LEWIS, STEVEN R. SPIELMAN,
CHRISTOHPER C. TAN, and DAVID K. WARLAND

____________

Appeal 2009-011258
Application 10/387,232
Technology Center 2400
____________

Before ALLEN R. MACDONALD, DENISE M. POTHIER, and
JASON V. MORGAN, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-3 and 5-32. Claim 4 has been canceled. App. Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

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STATEMENT OF THE CASE
Appellants’ invention relates to a data security system that is useful
with an optical disc. See generally Spec. 1; Abstract. Claim 1 is reproduced
below with the key disputed limitations emphasized:
1. A method of storing data to an optical disc comprising:
generating encoded data that includes a payload data block and
overhead data to be stored on the optical disc, wherein the overhead
data is (i) used by one or more components of a disc writing system to
write the encoded data to the optical disc and (ii) used by one or more
components of a disc reading system to read the encoded data from
the optical disc using instructions generated based upon a key,
wherein it is infeasible to convert an analog read signal recovered
from the optical disc into encoded digital data without the key; and
generating the overhead data according to the key.

The Examiner relies on the following as evidence of unpatentability:
Thomlinson US 5,778,069 July 7, 1998

Warren US 5,963,909 Oct. 5, 1999

Sako US 6,108,423 Aug. 22, 2000
Kuroda US 2002/0129254 A1 Sept. 12, 2002
Carson US 6,477,124 B2 Nov. 5, 2002
Inazawa US 6,587,948 B1 July 1, 2003
(filed Feb. 8, 1999)

Linnartz US 2004/0168076 A1 Aug. 26, 2004
(effectively filed
Apr. 6, 2001)

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THE REJECTIONS
1. The Examiner rejected claims 1-3, 5, 7, 9, 10, 13, 17-20, 22, and
25-31 under 35 U.S.C. § 102(e) as anticipated by Carson. Ans. 3-4.
1

2. The Examiner rejected claims 6 and 8 under 35 U.S.C. § 103(a)
as unpatentable over Carson and Sako. Ans. 5.
3. The Examiner rejected claims 11, 21, 23, 24, and 32 under 35
U.S.C. § 103(a) as unpatentable over Carson and Inazawa. Ans. 5-7.
4. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Carson and Thomlinson. Ans. 7.
5. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Carson and Kuroda. Ans. 7.
6. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Carson and Warren. Ans. 7-8.
7. The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Carson and Linnartz. Ans. 8.

THE ANTICIPATION REJECTION
Regarding independent claim 1, the Examiner finds that Carson
discloses both the overhead data and the key as the data rate profile and the
content of the profile. Ans. 3, 10-11. The Examiner further finds Carson
needs the data rate to write and read data and thus converting data is
infeasible without the data rate or key. Ans. 3, 9.

1
Throughout this opinion, we refer to (1) the Appeal Brief filed December
1, 2008; (2) the Examiner’s Answer mailed January 12, 2009; and (3) the
Reply Brief filed Mach 12, 2009.
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Appellants assert that the recitation, “it is infeasible to convert an
analog read signal recovered from the optical disc into encoded digital data
without the key,” means a conversion of the analog read signal recovered
from the optical disc into the encoded digital data cannot be done without
the key. App. Br. 12-13. Given this construction, Appellants conclude that
the Examiner’s interpretation of “infeasible,” in the context of Carson is
unreasonable because Carson can read the disc surface in a
non-contiguous manner or during separate access operations without the data
rate profile. App. Br. 10, 13-15, 17-18; Reply Br. 5-11. Appellants also
argue that the Examiner relies on the data rate profile as both the overhead
data and the key, and thus, Carson either fails to disclose the key or the
overhead data as claimed. See App. Br. 16.

ISSUES
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Carson discloses:
(a) overhead data
(b) a key; and
(c) the infeasibility of converting a recovered analog read signal from
the optical disc into encoded digital data without the key?

FINDINGS OF FACT (FF)
1) Appellants state overhead data is “used to facilitate reading and
writing[.]” Spec. 11:10.
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2) Appellants describe the key as “a seed” in one embodiment and
also states the key controls how a player’s components reads data from and
writes data to the disc. Spec. 7:8-9; 10:12-13.
3) Carson discloses a system 100 that selectively changes the rate at
which data appears on certain locations of disc 102. The recorded data on
the disc includes input data 108 and the data rate profile. Col. 4, ll. 12-14;
col. 5, ll. 26-30; col. 7, ll. 1-4; col. 9, ll. 6-10; Figs. 1-2.
4) Carson writes data to a disc 102 using varying data rates (e.g.,
velocity disruption zones 184, 186, 188). The profile includes the frequency
T (e.g., the data rate) on the y-axis and the disc position from the inner
diameter (ID) to the outer diameter (OD) of the disc on the x-axis. Col. 7, ll.
1-26; Fig. 4.
5) Carson discloses that disc authentication data, such as intentional
errors, are placed on the disc at selected locations to provide copy protection
for discs, including defeating multi-layered copy protection schemes. Col.
5, ll. 12-18.
6) Carson explains that data is written to optical disc in accordance
with the data rate profile moving from the inner diameter (ID) to the outer
diameter (OD). Also, Carson states data is written (at step 260) and the
readback system 140 proceeds to move the readback assembly 144 to
selected locations on the disc 142 and read the data from these locations
while characterizing the associated data rate (at step 276). Col. 4, l. 52 – col.
5, l. 6; col. 8, ll. 44-col. 9, l. 5; col. 9, ll. 21-39; Figs. 8-9.
7) Carson states that the data is written on the disc according to the
selected data rate profile (e.g., steps 256, 260) and data is read while
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characterizing the associated data rate (e.g., step 272, 274). Col. 8, ll. 44-64;
col. 9, ll. 21-27, 31-34; Figs. 8-9
8) Carson explains that the data rate variations will tend to prevent
the readback system 140 from continuous reading of the disc 142 from
lead-in to lead-out and that the entire disc surface can be read in a
non-contiguous fashion, but not continuously. Col. 5, ll. 48-57; col. 6, ll.
65-67; col. 7, ll. 56-57; Fig. 9.
9) Carson discloses the actual data rate characteristics are compared
to the expected characteristics. If there is a mismatch, the disc is determined
to be an unauthorized duplicate copy and further disc access is denied at step
282. Col. 9, ll. 40-52; Fig. 9.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of representative claim 1. We first address Appellants’
argument that the Examiner has mapped the data rate profile to both the
recited overhead data and the key. App. Br. 16. Notably, Appellants state:
(1) overhead data is “used to facilitate reading and writing” (FF 1) and (2)
the key is “a seed” in one embodiment and controls how a player reads and
writes information to the disc (FF 2). However, while these descriptions
provide examples of overhead data and the key, Appellants have not defined
either of these terms. See generally Specification. Thus, giving these terms
their broadest reasonable construction, overhead data includes any data
separate from the payload data block and a key includes any information
used to assist in writing or reading data from an optical disc. See In re Am.
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Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal
citations omitted).
The Examiner explains (Ans. 10-11) that Carson discloses content
within the data rate profile, such as measurement information, as the
overhead data. That is, Carson discloses the recorded data rate profile,
which is separate from the payload data (e.g., input data 108), consists of
several elements, including data rates (e.g., frequencies) and disc position
information. FF 3-4. Thus, apart from the data rate itself, Carson discloses
other measurement data (e.g., position information) that are not payload data
and are stored on the optical disc. See id. Moreover, Carson discloses that
disc authentication data is placed on the original disc at selected locations or
using the disc position information (see FF 5). Carson further discloses that
this position or location data is used by the writing and reading system to
facilitate writing data to and reading data from the optical disc. See FF 1, 6-
8. We therefore agree with the Examiner that Carson discloses overhead
data (e.g., disc positions) is used by the writing and reading system to write
data to and read data from the optical disc as recited in claim 1.
Additionally, Carson discloses the data rate profile includes data rates
or frequencies separate from the disc positions or locations. See FF 4.
Carson states that the data, including the data rate information, is written on
the disc according to the selected data rate and read while characterizing the
associated data rate. FF 3, 4, 6-8. Thus, Carson further discloses that the
overhead data (e.g., positions) is written to and read from the disc based
upon the data rate or the rate controls how components read and write data.
See id. We therefore also agree with the Examiner that Carson discloses a
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key (e.g., the data rate) as recited consistent with the Specification (see FF 2)
and contrary to Appellants’ contentions (Reply Br. 11-13).
Appellants also assert that Carson does not disclose that “it is
infeasible to convert an analog read signal recovered from the optical disc
into encoded digital data without the key[.]”
2
This recitation fails to limit
the infeasibility to convert signals in all situations or to an “all-inclusive
prevention of reading” (Reply Br. 5). Rather, claim 1 recites “it is infeasible
to convert an analog read signal recorded from the optical disc . . .”
(emphasis added). Thus, Carson need not disclose that the converting of all
read signals is infeasible, including those read in a non-contiguous fashion,
but only that converting a read signal is infeasible without the key or data
rate.
Appellants admit that Carson discloses the conversion of an analog
read signal recovered from an optical disc into a digital data. See App. Br.
13. Appellants also admit Carson discloses continuous access of the disc or
reading of the disc may fail. App. Br. 10. However, Appellants argue that
Carson fails to disclose the conversion cannot be achieved or is infeasible
without the key. See App. Br. 10-18.
As the Examiner explains (Ans. 9), Carson discloses the data is read
while characterizing an associated data rate (see FF 6-8), and thus “it is
infeasible” to read and thus convert recovered signals without the key or
data rate. Carson also discusses a technique which denies access to the disc
after comparing the expected and actual data rates. See FF 9. This also

2
Noticeably absent from Appellants’ cited support in the disclosure are the
words, “infeasible” or converting “analog read signal recovered from the
optical disc” (emphasis added). See App. Br. 4 (citing Spec. 5:1-5).
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illustrates that a data rate or key is needed to access or read data, including a
read signal, and thus to convert this signal as recited, contrary to Appellants’
assertion (Reply Br. 9). Moreover, Carson states that the data rate can be
chosen to read the data on the disc in a non-contiguous fashion (FF 8) and
thus discloses a yet another situation (e.g., non-contiguous) where access or
the reading of a signal will only be granted after a data rate (e.g., a key)
comparison (see FF 9). Carson therefore discloses “it is infeasible to convert
an analog read signal recovered from the optical disc into encoded digital
data without the key” as recited.
Independent claim 23 recites the first security feature hinders recovery
of encoded digital data from an analog read signal without the first key and
thus is broader in scope than claim 1. That is, this claim does not recite
recovery is “infeasible” but only hindered. Appellants admit Carson
discloses continuous access of the disc or reading of the disc may fail (see
App. Br. 10) or hinder recovery of signals in certain situations. Further as
discussed above, the data rate is needed to read the signals and thus hinders
recovery of data and conversion of signals as recited.
For the foregoing reasons, the Examiner has not erred in rejecting
independent claim 1 and claims 2, 3, 5, 7, 9, 10, 13, 17-20, 22, 25-28, 30,
and 31 not separately argued with particularity (App. Br. 9-18).

Claim 29
Regarding claim 29, the Examiner finds that Carson discloses the
storage system can store various information (e.g., rates) that creates
different levels of data written on the disc. Ans. 4, 11. Appellants argue that
the Examiner has not explained how the phrase, “multi-level optical data
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storage system” has been interpreted and that the inferred interpretation of a
storage system having multiple levels by the Examiner using Carson is
unreasonable. See App. Br. 18-20; Reply Br. 14-15. Appellants direct our
attention to the use of multi-level signals in the disclosure for an
understanding of the recited term, “multilevel optical data storage system.”
App. Br. 19-20.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 29 by finding
that Carson discloses the optical disc comprises a multilevel optical data
storage system?

FINDINGS OF FACT (FF)
10) Carson describes the extended frequency modulation (EFM)
signal as a high-frequency two-state signal with pulse durations that
correspond to the range of data symbols to be written to the disc 102. Col. 4,
ll. 23-34.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
anticipation rejection of claim 29. Appellants have not defined “multilevel
optical data storage system.” See generally Specification. Also, the
discussion of the signals in the disclosure (see App. Br. 19-20) does not
define what is meant by the multilevel optical data storage system.
Moreover, Appellants have not provided any evidence that the term,
“multilevel” has a specific meaning to an ordinary skilled artisan. Thus,
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giving this phrase its broadest reasonable construction, we find that a
multilevel optical data storage system includes a disc that stores data at more
than one level or states.
Carson discusses an EFM signal as a two-state signal with varying
pulse durations that is written to the disc (FF 10) and is a storage system that
stores information at more than one state or is multilevel. Also, as the
Examiner states (Ans. 11), Carson stores various information (e.g., rates and
positions) on the disc and thus creates different types or levels of data
written on a storage system. See FF 3-4. Additionally, Carson discloses
multi-layered copy protection schemes on optical discs or an optical disc
having yet another multilevel optical data storage system as recited. See FF
5. For the foregoing reasons, the Examiner has not erred in rejecting of
claim 29.

THE OBVIOUSNESS REJECTION OVER CARSON AND SAKO
Regarding claims 6 and 8, Appellants incorporate the arguments
presented for claim 1 (App. Br. 22-23) and we are not persuaded for the
reasons stated previously.
Additionally, the Examiner finds that Carson teaches all the
limitations except for the equalization and automatic gain control steps.
Ans. 5. The Examiner relies on Sako to teach the recited missing steps. Id.
Among other things, Appellants argue for both claims 6 and 8 that the
Examiner has not identified in Carlson or Sako adequate support for
teaching or suggesting equalization being controlled or automatic gain
control being adjusted based upon overhead data. App. Br. 22-23; Reply Br.
15-17.
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ISSUES
Under § 103, has the Examiner erred by finding that Carson and Sako
collectively would have taught or suggested:
(1) equalization being controlled based upon overhead data as recited
in claim 6?
(2) automatic gain control is adjusted based upon the overhead data as
recited in claim 8?

ADDITIONAL FINDINGS OF FACT
11) Sako teaches a reproducing apparatus 50 for an optical disc D.
An analog protect pulse (APP) or white peak signal is produced by a protect
pulse generated circuit 72 to protect signal generated circuit 20. The APP is
mixed by the mixing circuit 24 in a pre-set period of vertical blanking period
of the analog video signal. Col. 15, ll. 16-35; Figs. 10-11.
12) Sako teaches the analog video tape recorder (VTR) 60 has an
automatic gain control (AGC) circuit 62 as automatic gain adjustment means
configured to automatically adjust the amplitude of an analog video signal
entering the analog terminal 61. The AGC circuit 62 responds to the white
peak signal added in the vertical blanking period. If the analog video signal
that is automatically adjusted by the AGC circuit 62 is recorded on a video
tape (VT) and subsequent reproduced, an extremely ill-looking picture is
produced. Col. 15, l. 62- col. 16, l. 16; Fig. 11.
13) Sako discusses the AGC circuit 62 cannot distinguish the
equalizing pulse P10 from the pseudo synchronization pulse P12. Col. 16, ll.
4-6; Figs. 10-11.

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ANALYSIS
Based on the record before us, we find error in the Examiner’s
obviousness rejection of claims 6 and 8. As explained above in connection
with claim 1, the elected overhead data includes the disc position
information within the data rate profile. Notably, the separately-recited key
has been mapped to the data rate itself.
The Examiner suggests that Sako’s teaching of introducing an APP or
white peak signal into the data stream (Ans. 5; FF 11-12) teaches and
suggests controlling equalization and adjusting automatic gain control.
While Sako teaches automatic gain control means (see FF 12) and an
equalizing pulse (see FF 13), Sako is silent regarding what information is
used to create the equalizing or white peak signal. See FF 11-13. That is,
Sako does not discuss what information is used -- let alone using the recited
overhead data or disc position information -- for the equalizing pulse or
adjusting the automatic gain control means. Thus, Sako does not teach or
suggest a method of storing data to an optical disc that includes controlling
equalization or adjusting automatic gain control based upon the overhead
data.
The Examiner also states, when combining this teaching with Carson,
that Carson’s profile data, including the disc position, would be substituted
for the added signal so as to perform automatic gain and generate an
ill-looking picture. See Ans. 12. We agree with Appellants (Reply Br. 15-
17) that the Examiner has not articulated an adequate reasoning with rational
underpinning to support a conclusion for substituting the data profile
information with an added signal as taught by Sako. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). That is, absent impermissible
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hindsight and as argued by Appellants (Reply Br. App. Br. 22-23; 15-17),
we find no reason in Sako or Carson for substituting a digital data signal
carrying data profile information used to read and write data on an optical
disc with an analog signal that creates ill-looking images in order to control
equalization or adjust automatic gain control. We therefore disagree with
the Examiner (see Ans. 5) that “[i]t would have been obvious to one of
ordinary skill . . . to use the profile data of Carson to produce a signal that is
used to perform automatic gain control” or equalization as recited.
For the foregoing reasons, the Examiner has erred in rejecting claims
6 and 8 as presented.

THE OBVIOUSNESS REJECTION OVER CARSON AND INAZAWA
Regarding claim 11, the Examiner finds that Carson teaches all the
limitations except for the overhead data specifies the location of extra marks
inserted to shift a position of one or more data marks. Ans. 5. The
Examiner relies on Inazawa to teach the recited missing steps. Id.
Appellants argue that Inazawa modulates the signals or the data’s width but
does not specify the location of extra marks inserted to shift a position of
one or more data marks. App. Br. 23-24; Reply Br. 17-18.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 11 by finding
that Carson and Inazawa collectively would have taught or suggested
wherein the overhead data specifies the location of extra marks inserted to
shift a position of one or more data marks?

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ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of claim 11. At the outset, we find that the limitation,
“the overhead data specifies the location of extra marks inserted to shift a
position of one or more data marks” merely recites what the overhead data
represents and does not further limit the claimed invention either
functionally or structurally. As such, the overhead data that specifies the
locations of the inserted extra marks or specifying information details as
recited in claim 11 does not patentably distinguish over Carson or Sako.
Nonetheless, Carson’s overhead data (e.g., the disc position
information) does specify the locations of where data is copied at different
data rates or a location where data is inserted. See FF 4, 6. We therefore
conclude that Carson at least suggests and thus Carson and Sako collectively
suggest the overhead data limitation recited in claim 11. The Examiner has
therefore not erred in rejecting claim 11 under § 103.

Claim 21
Claim 21 depends from claim 18. The Examiner finds that Carson
and Inazawa teach all the limitations in claim 21. Ans. 6. Appellants refer
to the arguments previously presented for claim 18. App. Br. 25. Since
claim 18 was grouped with representative claim 1 (see App. Br. 9-18), the
issues before us are the same as those in connection with claim 1. We thus
refer Appellants to our previous discussion and will sustain the rejection of
claim 21.

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Claims 23 and 24
Regarding representative independent claim 23, the Examiner finds
that Carson teaches all the limitations except for input data being encrypted.
See Ans. 6. The Examiner relies on Inazawa to teach this missing limitation.
Ans. 6-7. Appellants argue that even though Carson’s control block (e.g.,
168) can prevent further access to the disc, this discussion does not
necessarily teach prevention is obtained by hindering recovery of encoded
digital data from an analog read signal recovered from a medium as recited.
See App. Br. 26.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 23 by finding
that Carson and Inazawa collectively teach the first security feature hinders
recovery of encoded digital data from an analog read signal, recovered from
a storage medium?

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection of claim 23. As discussed above in connection with claim 1,
Carson teaches making conversion of an analog read signal recovered from
the optical disc into encoded digital data infeasible or hinders recovery when
reading the disc. See FF 7-9. We refer Appellants to our above discussion
for more details. Also, by denying further reading access (see FF 9), Carson
also teaches and suggests a security which hinders the recovering of data
from the analog read signal recovered from a storage medium. See id. We
therefore find that Carson and Inazawa collectively teach and suggest a
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security feature that hinders recovery of encoded digital data from an analog
read signal recovered from a storage medium.
For the foregoing reasons, the Examiner has not erred in the rejecting
claim 23 and claim 24 not separately argued with particularity (App. Br. 25-
27).

Claim 32
Claim 32 depends from claim 1. The Examiner finds that Carson and
Inazawa teach all the limitations in claim 32. Ans. 6. Appellants refer to the
arguments previously presented for claim 1. App. Br. 27. The issues before
us, then, are the same as those in connection with claim 1, and we will
sustain the rejection of claim 32 for the reasons previously discussed.

THE OBVIOUSNESS REJECTION OVER CARSON AND THOMLINSON
Regarding claim 12, the Examiner finds that Carson teaches all the
limitations except the key is a seed to pseudorandom number generator.
Ans. 7. The Examiner relies on Thomlinson to teach randomizing the data
rate variations to provide a more cryptographic system. Id. Among other
arguments, Appellants argue that Carson is not concerned with encryption
and particularly using the rate variation as a form of encryption but rather to
prevent a continuous read copying. App. Br. 28.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 12 by finding
that Carson and Thomlinson collectively would have taught or suggested the
key is a seed to a pseudorandom number generator?
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ADDITIONAL FINDINGS OF FACT
14) Thomlinson teaches using a pseudo-random number generator
to create unpredictable sequences of bits and to produce pseudo-random
string of bits used as keys for a cipher. Col. 1, ll. 26-35; col. 2, ll. 12-17.

ANALYSIS
Based on the record before us, we find error in the Examiner’s
obviousness rejection of claim 12. Thomlinson teaches a random number
generator that produces pseudo-random values used as keys for ciphering.
FF 15. However, we agree with Appellants that this teaching does not teach
or suggest using Carson’s elected key (e.g., the data rate) as a seed or an
input to a pseudorandom number generator.
Specifically, Thomlinson teaches a pseudorandom generator generates
a value but does not use a value, such as a data rate, as a seed to a random
generator. See id. Also, as the Examiner suggests (Ans. 7), when
combining Thomlinson’s teaching with Carson, the combination teaches or
suggests that Carson’s data rate will be used to randomize data rate
variations and make the rates unpredictable. See FF 14. However, nothing
in Carson or Thomlinson suggests using Carson’s data rate or the
Examiner’s elected key as a seed to or an input for a pseudorandom number
generator as recited in claim 12. Rather, the Examiner’s combination
teaches and suggests, at best, the opposite or that the generator is used to
select the data rate or the elected key.
For the foregoing reasons, the Examiner has erred in the rejecting
claim 12.

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THE OBVIOUSNESS REJECTION OVER CARSON AND KURODA
Regarding claim 14, the Examiner finds that Carson teaches all the
limitations except for the key
3
(e.g., the data rate) is watermarked on the
optical disc. Ans. 7. The Examiner relies on Kuroda to teach this missing
limitation. Id. Appellants argue that Carson and Kuroda collectively do not
teach or suggest the watermark limitation. App. Br. 29. Appellants assert
that Carson is not concerned with encryption and thus is not combinable
with Kuroda absent impermissible hindsight. App. Br. 29-30.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 14 by finding
that Carson and Kuroda collectively would have taught or suggested the key
is stored on the optical disc as a watermark?

ADDITIONAL FINDINGS OF FACT
15) Carson discloses using data rate variations to embed hidden
data on a disc for forensic tracking purposes. Col. 9, ll. 62-67.
16) Kuroda teaches watermarking digital images, keys, and other
information into the contents of an optical disc to indicate duplication
control information. ¶¶ 0008, 0030, 0075-77.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of claim 14. First, Carson discloses embedding

3
The Examiner discusses “the variation in data rate” but claim 14 only
recites “the key is stored on the disc as a watermark.”
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hidden data within the disc for forensic tracking purposes. See FF 15. Thus,
Carson suggests to an ordinarily skilled artisan to hide data within the
optical disc for tracking purposes. Kuroda is further cited to teach a known
technique for hiding or embedding watermark data within an optical disc to
control duplication. See FF 16. Thus, combining Kuroda’s watermarking
technique with Carson’s teaching and suggestion to embed data within the
disc predictably yields no more than an ordinary skilled artisan would expect
from such a combination. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007). That is, the combination provides a known technique for hiding
data, including the key or data rate, with the disc or watermarking for
tracking purpose (see FF 15), and the Examiner has not relied on
impermissible hindsight.
For the foregoing reasons, the Examiner has not erred in the rejecting
claim 14.

THE OBVIOUSNESS REJECTION OVER CARSON AND WARREN
Regarding claim 15, the Examiner finds that Carson teaches all the
limitations except for the key
4
is received through a communication channel.
Ans. 7-8. The Examiner relies on Warren to teach this missing limitation.
Ans. 8. Appellants argue that Carson and Warren collectively do not teach
or suggest the limitation in claim 15. App. Br. 29. Appellants assert that
Carson is not concerned with encryption and thus is not combinable with

4
Once again, the Examiner discusses “the variation data” but claim 15
recites “the key[.]”
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21
Kuroda absent impermissible hindsight. App. Br. 30-31. Appellants also
contend that combining Warren with Carson would change Carson’s
principle of operation. App. Br. 31.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 15 by finding
that Carson and Warren collectively would have taught or suggested the key
is received through a communication channel?

ADDITIONAL FINDINGS OF FACT
17) Warren teaches data streams are carried over communication
channels or lines (e.g., CH.A-CH.C, 1705, 1708) within a player/record
1750. Col. 16, ll. 7-29; Fig. 17.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of claim 15. Notably, Carson discloses a key or data
rate that is used to write to and read the optical data from the disc. See FF 6-
9. As such, this data rate or information must be received through a
communication channel by the reader and writer so to write and read the
data. We therefore find that Warren is cumulative. Yet, Warren further
teaches carrying information over a data stream or communication channel
(e.g., CH.A) within a reader/writer (e.g., 1750). See FF 17. Warren
therefore further teaches using communication channels to received data,
including the data rate, when combined with Carson, and we do not find that
this teaching in Warren of receiving data on a channel would change
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22
Carson’s principle of operation (see App. Br. 31) of writing and reading data
at a predetermined data rate.
For the foregoing reasons, the Examiner has not erred in the rejecting
claim 15.

THE OBVIOUSNESS REJECTION OVER CARSON AND LINNARTZ
Regarding claim 16, the Examiner finds that Carson teaches all the
limitations except for the key
5
is encoded with a wobble groove on the disc.
Ans. 8. The Examiner relies on Linnartz to teach this missing limitation. Id.
Appellants assert that Carson is not concerned with encryption. App. Br. 32.
Appellants also contend that combining Linnartz with Carson would be
unsuitable for its intended purpose. App. Br. 32-33.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 16 by finding
that Carson and Linnartz collectively would have taught or suggested the
key is encoded with a wobble groove on the disc?

ADDITIONAL FINDINGS OF FACT
18) Linnartz teaches a storage medium (e.g., a CD or DVD) for
optically recording data, including storing fixed data in the radial
displacement of the prepressed pits (“pit-wobble”) or in the radial
displacement of the pre-groove (e.g., a “pre-groove wobble”). Linnartz,
¶ 0023.

5
Yet again, the Examiner discusses “the variation data” but claim 16 recites
“the key[.]”
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19) Linnartz states that the laws of physics prohibit that the wobble
can be written on the fly by a laser as available in the consumer recorder for
optical discs. Linnartz, ¶ 0008.

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of claim 16. Carson is silent as to whether the data,
including the data rate (e.g., the key), is encoded on the disc in a wobble
groove. Linnartz teaches a known technique for encoded data within a disc,
including using a wobble groove on the disc. See FF 18. Thus, combining
Linnartz’s wobble groove encoding technique with Carson’s teaching of
writing data to a disc predictably yields no more than an ordinary skilled
artisan would expect from such a combination or encoding data on a disc,
including data rates (e.g., a key), with a wobble groove See KSR, 550 U.S.
at 417. The combination provides a known technique for writing a key to a
disc using a wobble groove as recited.
Pointing to Paragraph 0008 in Linnartz (FF 19), Appellants also assert
that Linnartz teaches that the physical laws prevent a wobble from being
written by the laser and thus such a modification would make Carson
unsuitable for its intended purpose. See App. Br. 32-33. We disagree. First,
this statement in Linnartz (see FF 19) contradicts the later statement (see FF
18) of Carson, which encodes data in a wobble groove on the disc using an
optical device. Second, this statement only limits the physical laws to
situations of using a wobble on the fly by a laser in consumer recorder and
does not state that the laws of physics prevent encoded in wobble groove by
a laser in other scenarios, such as not “on the fly” or using a commercial
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recorder. We therefore disagree that combining Linnartz’s teaching with
Carson in these other scenarios would render Carson unsuitable for its
intended purpose or that such a modification would destroy Carson’s system.
For the foregoing reasons, the Examiner has not erred in the rejecting
claim 16.

Final Comments on Claims 12-16
Lastly, regarding claims 12-16, Appellants incorporate the arguments
made for claim 1. See App. Br. 27, 29-32. We are not persuaded by these
arguments for the reasons discussed above in connection with claim 1

CONCLUSION
The Examiner did not err in rejecting claims 1-3, 5, 7, 9, 10, 13,
17-20, 22, and 25-31 under § 102 and claims 11, 14-16, 21, 23, 24, and 32
under § 103. The Examiner erred in rejecting claims 6, 8, and 12 under
§ 103.

DECISION
The Examiner’s decision rejecting claims 1-3 and 5-32 is
affirmed-in-part.
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-IN-PART

ELD