Ex Parte 5438560 et al

Patent Trial and Appeal Board

Nov 20, 2013

90009654 (P.T.A.B. Nov. 20, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/009,654 01/20/2010 5438560 SONYNJ 3.6-022 6571
29141 7590 11/20/2013
Sawyer Law Group, P.C.
P.O. Box 51418
Palo Alto, CA 94303
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/20/2013 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex Parte ORINDA INTELLECTUAL PROPERTIES
USA HOLDING GROUP, INC.
Patent Owner and Appellant
________________

Appeal 2013-005043
Reexamination Control 90/009,654
Patent 5,438,5601
Technology Center 3900
________________

Before KEVIN F. TURNER, STANLEY M. WEINBERG, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
Introduction
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed on January 20, 2010. Orinda Intellectual
Properties USA Holding Group, Inc. (Appellant), the owner of the patent

1 The patent involved in this reexamination appeal proceeding (the “ ‘560
Patent”) issued to Si H. Lee on August 1, 1995.
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under reexamination,2 appeals under 35 U.S.C. §§ 134(b) and 306 from a
September 28, 2011 Final Rejection of claim 2. Claims 1 and 3 have been
canceled. App. Br. 33; Ans. 2.4 An oral hearing was conducted on July 17,
2013. A transcript (“Tr.”) of the hearing was made of record on August 15,
2013.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
We affirm.
Related Proceedings
Appellant has informed us about the following judicial proceedings
that are related to the present reexamination:
Orinda Intellectual Properties USA Holding Group, Inc. v.
Sony Electronics Corp. et al., Case No. C-09-04920-EDL.

Orinda Intellectual Properties USA Holding Group, Inc. v.
Asustek Computer et al., Case No. 4:11-cv-02010-SBA.

Appellant also informs us that the above two matters had been stayed as of
the February 16, 2012 filing date of its Appeal Brief, pending a decision by
the Board.
The Invention
The invention relates to a method of reproducing optical information
using an optical disk, including checking whether a target sector of the

2 See Patent Assignment Abstract of Title, Reel 020741 Frame 0983
recorded April 3, 2008 and entered into the record of this proceeding as
“Title Report” on January 13, 2010.
3 Appellant relies on its Appeal Brief filed February 16, 2012 (App. Br.) and
its Reply Brief filed October 5, 2012 (Reply Br.).
4 The Examiner’s Answer was mailed on August 7, 2012.
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optical disk from which data are to be reproduced is a bad sector. Spec. col.
4, ll. 1-6.
Claim 2, the appealed subject matter, is reproduced below, with
disputed limitations emphasized (App. Br. 17, Claims Appx):
2. A method of reproducing optical information using an
optical disk, comprising the steps of:
checking whether a target sector of the optical disk from
which data is to be reproduced is a bad sector, upon receiving a
data reproduction command from a main processing means;
storing information into storage means in accordance
with the checked result;
reading information from mapping sectors of a block of
the optical disk to which said target sector belongs and storing
the read information into mapping memory means;
checking whether said target sector is the bad sector;
reading a replacement sector in a center block of the
optical disk if it is detected that the target sector is the bad
sector, and updating the mapping sector information in said
mapping memory means;
seeking said target sector if it is checked that said target
sector is normal and setting the reproduction command in a
sector read/write control means so that the data can be
reproduced from said target sector;
moving an optical head to said target sector;
demodulating the data read by said optical head;
correcting an error of the demodulated data and storing the
error-corrected data into said storage means; and
sending the error-corrected data stored in said storage
means to said mean processing means through system
processing means.

The Rejection
Claim 2 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Takagi (US 4,949,326). Final Rejection 3; Ans. 4.
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B. ANALYSIS
It appears that the ‘560 Patent expired on October 21, 2013. While
claims are generally given their broadest possible scope during prosecution,
In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000), the Board's review of the
claims of an expired patent is similar to that of a district court's review, Ex
Parte Papst–Motoren, 1 U.S.P.Q.2d 1655, 1655–56 (B.P.A.I. Dec. 23,
1986). See In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In a
reexamination proceeding involving claims of an expired patent, claim
construction pursuant to Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
Cir. 2005) (words of a claim “are generally given their ordinary and
customary meaning” as understood by a person of ordinary skill in the art in
question at the time of the invention) is applied since the expired claims are
not subject to amendment.
At various points in the Answer, the Examiner states he is relying
upon principles of “broadest reasonable interpretation” of the claims. See,
e.g., Ans. 8, 9, 11-13. Our analysis, instead, relies upon the ordinary and
customary meaning of the claim terms at issue because the ‘560 Patent has
expired. Any distinctions from the different claim constructions are noted
below.

Checking Whether A Target Sector Is A Bad Sector and
Checking Whether Said Target Sector Is the Bad Sector
Claim 2 recites two checking steps. The first recited checking step
occurs “upon receiving a data reproduction command from a main
processing means.” The claim does not recite when the second checking
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step occurs. Appellant does not argue about the order of the steps; but
contends only that both checks have to occur after a reading command has
been made. Tr. 13:11-14:2. Because claim 2 does not recite a “reading
command,” we assume that Appellant refers to the recited “reproduction
command.” Also, Appellant does not explain why the method uses two
checking steps; i.e., why the same target sector is checked twice. Tr. 11;
14:15-17. Appellant contends that Takagi checks a target sector once, while
Appellant’s system checks it twice. See, App. Br. 13; Reply Br. 4; Tr.
15:19-23.
The first checking step reads: “checking whether a target sector of the
optical disk from which data is to be reproduced is a bad sector, upon
receiving a data reproduction command from a main processing means.”
Although Takagi refers to “object sectors” (see e.g., col. 4, l. 4; col. 5, ll. 44-
45) and claim 2 recites a “target sector,” Appellant agrees that “[w]hat
Takagi refers to, what we call the target sector, is the object sector. There’s
no real dispute in terms of that particular naming convention.” Tr. 4:3-4.
The Examiner cites a number of places in Takagi where he contends
the first target sector checking limitation is shown. Ans. 4. One of the cites
is col. 5, ll. 19-41 where, the Examiner finds, Takagi shows initialization
operations that check a target sector upon a read/reproduction command.
Ans. 11. Although Appellant acknowledges that the Examiner’s finding
relies on col. 5, ll. 19-41 in support of this finding (App. Br. 10), neither of
Appellant’s briefs persuasively rebut this finding. At the hearing, moreover,
Appellant agreed with part of the finding based on the column 5 citation:
that Takagi is checking a target sector. Tr. 14:20-15:6.
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We therefore agree with the Examiner’s finding that the column 5
citation describes an initialization process upon a read/reproduction
command in that it describes what happens “when the power source is
turned on or when the optical disk 1 is exchanged” (col. 5, ll. 20-22) and
“the controller 3 executes each of the read, write and erase commands.”
Col. 5, ll. 29-30.
We also find that the Examiner’s column 5 citation (col. 5, ll. 35-38)
discloses that Takagi checks all of the sectors: “Test data are recorded and
reproduced in or from all the sectors in each of the blocks 15, and a check is
performed to see if there is any sector address error, data error, or defect in
the data section.”
Citing column 7, lines 19-26 of Takagi, the Examiner also finds that
Takagi discloses the second checking step: “checking whether said target
sector is the bad sector.” Ans. 5. This portion of Takagi reads, in part:
“With respect to the object sector address, a check is made to see if the
associated sector is defective or not, by making reference to the mapping
data in the mapping memory 12, prior to reproducing.” Col. 7, ll. 22-26.
Referring to this Takagi citation, Appellant agrees that “with respect to the
object sector address a check is made to see if the associated sector is
defective or not.” App. Br. 14; Reply Br. 5 (emphasis omitted). See also Tr.
15:16-18.
Because the first checking step disclosed in column 5 checks all
sectors, the second checking step necessarily checks at least one of the
sectors that had previously been checked and, therefore, checks whether
“said” sector is the bad sector.
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Appellant points out that Takagi checks the sector “by making
reference to the mapping data in the mapping memory 12.” App. Br. 14;
Reply Br. 5. By referring to Takagi’s reference to mapping data, Appellant
appears to suggest that the sector check in column 7 is not performed in the
same way that Appellant’s second check is performed. However, the second
checking limitation neither limits the sequence nor the manner of conducting
that particular checking step. To the extent, therefore, that Appellant makes
such a suggestion, it is not persuasive.
For all of the above reasons, we agree with the Examiner that Takagi
discloses two checking steps as claimed. We do not address the Examiner’s
other reasons for finding that Takagi discloses the claimed two checking
steps.
Storing Information Into Storage Means
In Accordance With The Checked Result
Claim 2 recites that after the first checking step, the following step
occurs: “storing information into storage means in accordance with the
checked result,” which Appellant contends Takagi does not disclose.
App. Br. 7. The Examiner concludes that “information” as recited in the
claim, “can be anything” and “does not require what the information is.”
Ans. 7. Appellant agrees that the claim does not recite the precise nature of
the information that is checked or stored. Tr. 4:20-24.
The Examiner also concludes that the claimed “‘[i]n accordance with’
merely requires showing some relationship with between [sic] the
‘information’ and the ‘checked result’ . . . does not indicate in what manner
the actions are ‘in accordance with’ the checked result . . . or how it is
specifically related[] to the checked result.” Ans. 7. Appellant agrees that
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the claimed “in accordance with” can be read as “associated with” (Tr. 4:22-
23; 5:6-10) and as “something reflective of what has occurred during the
check.” Tr. 5:11-12.
The Examiner also concludes that “‘storage means’ reads upon all
possible ways of storing something.” Ans. 7. “Storage, as in a memory
store, is merely a device or medium that can retain data for subsequent
retrieval.” Ans. 8. For example, the Examiner finds that Takagi has storage
means in “the data and instructions that move through the registers (storage
memory) of the processor;” that is, the CPU referenced at Takagi column 7,
lines 15-17. As another example, the Examiner finds that “the main memory
(equivalent of a RAM generically) of the processor/CPU of Takagi is also
the storage means.” Ans. 7-8.5 Appellant therefore incorrectly asserts that
the Examiner has not indicated where Takagi discloses a storage means
(App. Br. 7; Reply Br. 2) and does not persuasively rebut the Examiner’s
finding that Takagi’s CPU stores data and instructions.
As part of Takagi’s initial checking step, outputs of control circuit 9
are inputted to OR circuit 14, the output of which is checked by CPU 10 to
detect the presence or absence of errors. Takagi, col. 5, ll. 49-56. “If an
output of the OR circuit 14 is detected, it is decided that the sector address is
correct.” Takagi, col. 5, ll. 56-57. The described detection of OR circuit
output occurs because CPU 10 stores information, however briefly, “in
accordance with,” or “associated with,” or “reflective of what has occurred

5 The ordinary and customary meaning of “storage” is “any device in or on
which information can be kept.” Microsoft Computer Dictionary (5th ed.
2002) 498. A CPU “encompasses both the processor and the computer’s
memory.” Id. At 132.
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during the check.” For at least this reason, Takagi discloses the claimed
“storing information into storage means in accordance with the checked
result.”
Appellant argues that another of the Examiner’s findings regarding a
storage means in Takagi (Takagi’s mapping memory; see Ans. 8) is
incorrect for various reasons. See Tr. 6:9-19; App. Br. 8-9; Reply Br. 3. We
need not resolve whether Takagi’s mapping memory anticipates the recited
“storage means” in view of our agreement with the Examiner’s findings
regarding Takagi’s CPU.
Appellant also contends that Takagi does not disclose the following
limitations: storing the target or object sector in a storage means (App. Br.
10, 11; Reply Br. 3); a checked result of whether the reproduced target
sector is a bad sector stored in the storage means (App. Br. 11); information
related to the checked result is stored in the storage means (App. Br. 13);
store the checked results of whether the target section is a bad sector in a
storage means (App. Br. 13; Reply Br. 4). These arguments are not
persuasive because none of the purported limitations are actually recited in
claim 2.
We are therefore not persuaded that the Examiner erred in rejecting
claim 2.

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CONCLUSION
Under § 102, the Examiner did not err in rejecting claim 2.
DECISION
The Examiner’s decision rejecting claim 2 is affirmed.

AFFIRMED

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PATENT OWNER:
SAWYER LAW GROUP, P.C.
P.O. BOX 51418
PALO ALTO, CA 94303

THIRD PARTY REQUESTER:
MARCUS J. MILLET
LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090

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