Ex Parte Chu et alDownload PDFPatent Trial and Appeal BoardFeb 7, 201311499701 (P.T.A.B. Feb. 7, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHANG-NAM CHU, JONG-IL CHOI, DO-GYOON KIM, YOUNG-SUP KIM, and HYO-SUNG JUNG ____________________ Appeal 2011-011442 Application 11/499,701 Technology Center 2100 ____________________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011442 Application 11/499,701 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 19 and 22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to method and apparatus for directly writing multimedia data on a digital device. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method for writing multimedia data, the method comprising: sensing multimedia data written on a storage medium; displaying a user interface screen to show the multimedia data and a folder corresponding to a digital device; receiving a command to write the multimedia data in the folder corresponding to the digital device; determining, in response to receiving the command and without additional input from a user, a format which is playable in the digital device by using metadata, corresponding to the multimedia data, received from a server; and automatically converting, in response to determining the format and without additional input from the user, the multimedia data to the format which is playable by the digital device and writing the converted multimedia data to the digital device. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Appeal 2011-011442 Application 11/499,701 3 Bowman-Amuah US 6,339,832 B1 Jan. 15, 2002 Hirano Hanson US 2004/0210593 A1 US 2005/0125082 A1 Oct. 21, 2004 Jun. 9, 2005 REJECTIONS Claims 1-19 and 22 stand rejected under 35 U.S.C §112 first paragraph as failing to comply with the written description requirement. Claims 1-19 and 22 stand rejected under 35 U.S.C §103(a) as being unpatentable over Hanson, Hirano, and Bowman-Amuah (hereinafter “Bowman”). ANALYSIS 35 U.S.C. §112, FIRST PARAGRAPH, WRITTEN DESCRIPTION Appellants' maintain that the features of the claimed invention are described and supported in Appellants' disclosure. (App. Br. 11). The Examiner maintains that claims 1-19 and 22 fail to comply with the written description requirement with respect to: determining, in response to receiving the command and without additional input from a user, a format which is playable in the digital device by using metadata, corresponding to the multimedia data, received from a server; and automatically converting, in response to determining the format and without additional input from the user, the multimedia data to the format which is playable by the digital device and writing the converted multimedia data to the digital device. (Claim 1; Ans. 3-4). The Examiner also maintains that: Appeal 2011-011442 Application 11/499,701 4 The specification needs to say how the multimedia metadata are used to determine the format. To say that the format is determined using multimedia metadata, as the specification does in paragraphs [27] and [28], pages 7 and 8 and paragraph [36], pages 10 and 11, does not say how it is used to determine the format. The closest that the specification appears to come to this limitation is when "tag information according to a format (e.g., MP3 or WMA) for multimedia data able to be played in a digital device is also written in the folder for the digital device 300" in lines 6-9, paragraph [36], pages 10 and 11. There is no mention in the specification, however, of this tag information being used to determine the format, not to speak of how one would use the tag information to determine the format. In fact, in lines 1-3, paragraph [37], page 11, by dropping the file into a particular folder, it is the user, and not the methods of claims 1 or 22, the converting and writing unit of claim 10 or the executable program of claim 19, that determines the format. (Ans. 4). We agree with the Examiner that the Specification does not describe how the multimedia metadata are used to determine the format so as to evidence possession. Appellants identify paragraphs [28], [36], [37], and [40] along with figure 3 to describe and support possession of this feature at the time of filing. From our review of these identified portions, we do not find express written description support or clear implicit written description support to evidence possession at the time of filing. We find the identified portions of Appellants' Specification merely disclose that the data is converted to a format that is playable by the digital device without identifying how this is done, with or without user interaction. We note that paragraph [40] states "it is possible for a user to write a multimedia file on a digital device by one operation, without having to set options when the multimedia file is converted to a format playable in a Appeal 2011-011442 Application 11/499,701 5 digital device." Yet, this may be no more than merely presetting the conversion and looking up the format rather than performing some "determination" step. Therefore, Appellants have not shown error in the Examiner's finding of a lack of written description support for the claimed subject matter, and we will sustain the rejection of claims 1-19 and 22. Appellants' Reply Brief contains similar arguments and contends there is no requirement that a negative limitation be expressly mentioned in the Specification for the claims to comply with written description requirement. (Reply Br. 4-5). We disagree with Appellants and note that more than mere silence is required. Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). ("Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.") Appellants have not identified any reason to exclude the identified limitation. Therefore, Appellants' have not shown error in the Examiner's finding of a lack of written description support for the claimed subject matter, and we will sustain the rejection of claims 1-19 and 22. 35 U.S.C. §103 With respect to independent claims 1, 10, 19, and 22, Appellants rely upon the same argument. (App. Br. 13-18). Therefore, we select independent claim 1 as the representative claim and address Appellants' Appeal 2011-011442 Application 11/499,701 6 arguments thereto. Dependent claims 2-9 and 11-18 stand or fall with their parent claims by virtue of their dependency. (App. Br. 19). Appellants maintain that the Hanson reference does not teach the claimed limitation: receiving a command to write the multimedia data in the folder corresponding to the digital device, [and] determining, in response to receiving the command and without additional input from a user, a format which is playable in the digital device by using metadata, corresponding to the multimedia data, received from a server. (Claim 1; App. Br. 13). Appellants maintain that Hirano does not cure the deficiencies of Hanson because, similar to Hanson's "auto rip CD function," Hirano is directed to a data recording apparatus that records data of a CD on a hard disk drive (HDD). (App. Br. 15). Appellants' contentions with respect to Hanson and Hirano are with respect to what the end-use/playable device, identified in these references as a hard disk drive, rather than the mobile unit as relied on by the Examiner in the Bowman reference. We find Appellants' arguments with respect to the HDD as the end-use/playable digital device unavailing. We find Appellants' arguments to the hard disk drive, where the playback device would be the actual digital device, of concern to skilled artisans (whatever digital device may be desired). We find skilled artisans would clearly realize that the data format for the ultimate playback device is of concern. We find the teachings of Hanson with respect to auto ripping, selection of an audio file format to be used, auto detect function, and the use of metadata and auto-detection/collection of metadata clearly teaches and suggests the steps of the claimed invention. Appeal 2011-011442 Application 11/499,701 7 (Hanson [0032]-[0035]). Furthermore, we find the sequence of various steps does not significantly impact the process of transforming data in one format to data in another format for subsequent playback. As discussed above, with respect to the rejection under 35 U.S.C. §112, first paragraph, the system could have a preset format (input by a user prior to any file selection) which is looked up to convert the files to this format. Then, the process of Hanson would teach the claimed negative limitation "determining, in response to receiving the command and without additional input from a user." Furthermore, we find that the steps recited in independent claim 1 are the same steps as identified by Appellants in the Background of the Invention [02]-[05] with the addition of the negative limitation. We find that in the prior art, the user would have to determine the playable format for the digital device. We observe the language of independent claim 1 merely sets forth "in response to receiving the command and without additional input from a user" and "automatically converting, in response to determining the format and without additional input from the user." We conclude that the mere automation of the manual determination does not distinguish the claimed invention. In re Venner, 262 F.2d 91, 95 (CCPA 1958) (holding that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.); cf. Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (replacing prior art mechanical device with modern electronics held obvious). Addressing Bowman, Appellants contend that Bowman is not analogous prior art with respect to the claims of the instant application. Appeal 2011-011442 Application 11/499,701 8 (App. Br. 16-18). While we agree with Appellants that Bowman is directed to a wide spectrum of applications when compared to Hanson and the Hirano, we find that Bowman is directed to a wide spectrum of multimedia information which includes audio data, specifically music data (Bowman col. 62) as discussed throughout the reference (Ans. 9-10). We agree with the Examiner that Bowman further teaches the conversion/translation of these data types to the proper format requires recognizing the initial format. (Ans. 9-10). Therefore, we find Appellants' combinability argument to be unpersuasive of error in the Examiner's conclusion of obviousness. Appellants present similar arguments in the Reply Brief and contend that the Examiner is overlooking differences in structure and function between the present application and the prior art teachings of the Bowman reference. (Reply Br. 7-9). As discussed above, we find this argument unavailing and does not show error in the Examiner's combination. Therefore, Appellants have not shown error in the Examiner's conclusion of obviousness for the claimed subject matter, and we will sustain the rejection of representative independent claim 1 and claims 2-19 and 22 grouped therewith. CONCLUSIONS OF LAW The Examiner did not err in rejecting claims 1-19 and 22 under 35 U.S.C § 112 first paragraph as failing to comply with the written description requirement. The Examiner did not err in rejecting claims 1-19 and 22 under 35 U.S.C § 103(a) as being unpatentable over Hanson, Hirano, and Bowman. Appeal 2011-011442 Application 11/499,701 9 DECISION For the above reasons, the Examiner’s rejections of claims 1-19 and 22 are affirmed. 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) (2012). AFFIRMED peb Copy with citationCopy as parenthetical citation