Ex Parte Yoshida et al

Board of Patent Appeals and Interferences

Mar 30, 2010

10574945 (B.P.A.I. Mar. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte HARUO YOSHIDA, SHIGERU KASHIWAGI, MASAHARU MURAKAMI, HIROSHI JINNO, and MASAYOSHI OHNO ____________________ Appeal 2009-008743 Application 10/574,945 Technology Center 2100 ____________________ Decided: March 30, 2010 ____________________ Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and DEBRA K. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-008743 Application 10/574,945 2 Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b) (2008). We REVERSE. Introduction According to Appellants, the invention is a system and method for “an optical disk apparatus that handles an index file formed by a series of entries comprising extract information about files” (Spec. 58, Abst.). STATEMENT OF THE CASE Exemplary Claim Claim 1 is an exemplary claim and is reproduced below: 1. A file managing apparatus for managing files recorded on a recording medium which has an index file recorded as a series of entries including blocks of extract information derived from and corresponding to said files to be managed; wherein said index file includes a plurality of files into which data including the extract information is divided by attribute and the plurality of files includes a property file having data representative of attributes of said files to be managed; wherein said file managing apparatus records a still picture file in such a manner that an entry including extract information about the still picture file is registered into said index file, and reorganizes said index file in such a manner that a plurality of still picture files recorded on said recording medium are grouped into a single movie file; and wherein the entries corresponding to said plurality of still picture files grouped into said movie file are deleted from said index file by setting a valid-invalid information as invalid in the property file to indicate that the corresponding extract Appeal 2009-008743 Application 10/574,945 3 information is invalid, while an entry including extract information about said movie file is registered into said index file. Prior Art Beattie 5,659,742 Aug. 19, 1997 Um 2003/0161616 A1 Aug. 28, 2003 Rejections Claims 1-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Um and Beattie. 35 U.S.C. § 103(a): claims 1, 2, and 6-14 Appellants assert their invention is not obvious over Um and Beattie because Um does not disclose or suggest consolidating index file entries into a single movie file (App. Br. 7-11). Specifically, Appellants contend Um’s system allows a user to put still pictures into groups and add or remove a still picture from a specific group without removing the still picture from other groups of which it is a part (id. at 8). Appellants also contend that [i]n Um, (1) there is no reorganization of the index files into a single movie file, (2) nor is there any deleting of the index file entries for those still picture files grouped into the movie file, (3) nor is there any setting of a valid-invalid information as invalid in the property file in order to delete the index field, (4) nor is there any registration of an entry include extract information about the movie file into the index file. (id. at 9). Appellants further argue neither Um nor Beattie teaches “wherein the entries corresponding to said plurality of still picture files grouped into said movie file are deleted from said index file by setting a valid-invalid information as invalid in the property file to indicate that the corresponding Appeal 2009-008743 Application 10/574,945 4 extract information is invalid, while an entry including extract information about said movie file is registered into said index file” (id. at 10). The Examiner finds Um discloses “still-picture groups” and deleting the filename of the still picture written on the filename list (Ans.17-19.). The Examiner further finds that the inclusion of Beattie emphasizes the claim language of “delet[ing] from said index file” (id. at 21). Issue: Have Appellants shown the Examiner erred in finding the combination of Um and Beattie teaches “wherein the entries corresponding to said plurality of still picture files grouped into said movie file are deleted from said index file by setting a valid-invalid information as invalid in the property file to indicate that the corresponding extract information is invalid, while an entry including extract information about said movie file is registered into said index file?” FINDINGS OF FACT (FF) Um Reference (1) Um teaches a method and system of conducting management operations of recorded still pictures that have been recorded on a recording medium, such as grouping recording still pictures based on their attributes, creating a filename list of the still pictures, and writing the filename list onto the recording medium (Abst.). (2) A digital video recorder (DVR) records video and audio data into a file having a structure including a directory (pg. 1, [0009]). “The ‘DVR’ directory has directories ‘PLAYLIST’, ‘CLIPINF’, and ‘STREAM’. The ‘PLAYLIST’ directory includes playlist files (*.rpls, *.vpls) containing Appeal 2009-008743 Application 10/574,945 5 motion-picture and still-picture play items and title management information” (pg. 1, [0010]). (3) A method of managing one of the still pictures recorded on the recording medium “comprises the steps of: receiving a deleting or an inter- group moving command for a still picture recorded on a recording medium; and deleting a filename of the still picture written on a filename list including the filename of the still picture” (pg. 1, [0014]). (4) If a file deletion is requested by a user, a controller 19 deletes the requested filename on a filename list without deleting that data file (pg. 3, [0051]). (5) If a user moves a still picture to a still picture group (SPG), its filename is deleted in a filename list of a previous SPG, and is inserted in a proper entry position of a filename list of a target SPG (pg. 3, [0053]). Beattie Reference (6) Beattie teaches a method and system for “storing information in an information retrieval system having a database for retrieval of the input information in response to a query” (Abst.). (7) An index update unit 932 updates “the document indexes within the document index 117 when a new document or group of documents is added to the data center 110” (col. 31, ll. 29-30). (8) Additionally, the index update unit 932 updates the document index database 117 when documents are purged from the data center 110. When purging documents from the data center 110, the index update unit 932 deletes the document text or image from the document information directory and/or dependent image tables in database 118, and marks the document as deleted in the index system. (col. 31, ll. 31-39). Appeal 2009-008743 Application 10/574,945 6 PRINCIPLES OF LAW “Obviousness is a legal conclusion based on factual determinations.” Aktiebolaget Karlstads Mekaniska Werkstad v. U.S. Int'l Trade Comm'n, 705 F.2d 1565, 1575 (Fed. Cir. 1983) (citation omitted). It requires consideration of four factors: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) any objective indicia of non-obviousness. Crown Ops. Int’l, Ltd. v. Solutia, Inc., 289 F.3d 1367, 1375 (Fed. Cir. 2002) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). ANALYSIS We find the Examiner has not shown that the proffered combination of references teaches “wherein the entries corresponding to said plurality of still picture files grouped into said movie file are deleted from said index file by setting a valid-invalid information as invalid in the property file to indicate that the corresponding extract information is invalid, while an entry including extract information about said movie file is registered into said index file” as claimed. The Examiner points to teachings by Um and Beattie as disclosing this limitation. We find, however, neither Um nor Beattie, taken alone or in combination, teaches any setting of a valid-invalid information. While Um teaches deleting an intergroup moving command and a filename of a still picture (FF 2-5), Um does not teach the setting of any information. Similarly, we find Beattie teaches deleting document text or a document image from a directory but, again, the Examiner has not indicated where Beattie teaches setting valid-invalid information. To find Appeal 2009-008743 Application 10/574,945 7 this limitation in Um, Beattie, or the combination thereof would require us to speculate. We decline to engage in such speculation. Accordingly, we find neither Um nor Beattie, taken alone or in combination, teaches the disputed limitations of claim 1. (See also commensurate language in claims 12, 13, and 14.) CONCLUSION Appellants have shown the Examiner erred in concluding that the combination of Um and Beattie renders claims 1, 12, 13, and 14 unpatentable. Since claims 2-11 depend from independent claim 1, the Examiner erred in concluding the proffered combination renders claims 2-11 unpatentable. Accordingly, Appellants have shown the Examiner erred in rejecting claims 1-14 under 35 U.S.C. § 103(a) for obviousness over Um and Beattie. DECISION We reverse the Examiner’s rejection of claims 1-14 under 35 U.S.C. § 103(a) as being obvious over Um and Beattie. REVERSED nhl RADER FISHMAN & GRAUER PLLC LION BUILDING 1233 20TH STREET N.W., SUITE 501 WASHINGTON DC 20036