Ex Parte MONS

Board of Patent Appeals and Interferences

Jul 31, 2007

09341910 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHANNES J. MONS
____________

Appeal No. 2007-0344
Application No. 09/341,910
Technology Center 2600
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Decided: July 31, 2007
____________

Before JAMES D. THOMAS, JOSEPH L. DIXON, and
MAHSHID D. SAADAT, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 21-39, which are all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).

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Application 09/341,910

Appellant’s invention is directed to a method and system for storing
audio information having various formats and to navigating among different
items using a multilevel table of contents (TOC) management approach
(Specification 1). According to Appellant, the storage medium includes
audio files that are arranged in a hierarchy of master-TOC and sub-TOCs
(Specification 6; Figure 4). An understanding of the invention can be
derived from a reading of representative independent claim 21, which is
reproduced as follows:
21. A method for storing audio-centered information on a unitary
storage medium while using a table-of-contents (TOC) mechanism for
therein specifying an actual configuration of various audio items on the
medium, comprising:

assigning one or more sub-TOCs to each of a plurality of differently
standardized audio formats, the sub-TOCs for specifying an actual
configuration of various audio items on the medium, and

providing a single master-TOC with pointing information specifically
pointing to each of the sub-TOCs.

The Examiner relies on the following prior art references:
Maeda US 4,996,678 Feb. 26, 1991
Yonemitsu US 5,596,565 Jan. 21, 1997
Asthana US 5,623,470 Apr. 22, 1997
McPherson US 6,298,025 B1 Oct. 2, 2001
(filed Apr. 24, 1998)

The claim rejections under appeal are:
1. Claims 21-23, 25, 27-36, 38, and 39 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Yonemitsu.
2. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yonemitsu and McPherson.
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3. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yonemitsu and Maeda.
4. Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yonemitsu and Asthana.
Rather than reiterate the opposing arguments, we refer to the Briefs,
the Final Rejection, and the Answer for the respective positions of Appellant
and the Examiner.
We affirm.
THE ISSUE
To show that the Examiner erred in rejecting the claims under 35
U.S.C. § 102(b), Appellant argues that application TOC (ATOC) and the
stream parameters of Yonemitsu are not the same as the claimed limitations
related to “master-TOC” and “sub-TOCs” since they perform different
functions (Br. 9-11). Appellant further contends that the Examiner has not
shown any teachings in the reference indicating that the stream parameters
specify an actual configuration of various audio items on the medium (Reply
Br. 3-4).
Therefore, the issue turns on whether Yonemitsu teaches the claimed
subject matter by disclosing a master-TOC and one or more sub-TOCs
assigned to each of plurality of audio formats and for specifying an actual
configuration of various audio items, as recited in claim 21.
FINDINGS OF FACT
The following findings of fact (FF) are believed to be supported by a
preponderance of the evidence.
1. Yonemitsu relates to a method of recording and reading information
on optical disks (col.1, ll. 11-14).
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2. Yonemitsu provides for a track area on the disk for table of contents
(TOC) while the Application table of content (ATOC) is recorded in
the program area (col. 3, ll. 3-15).
3. As shown in Figure 34 of Yonemitsu, the disk includes an area for
ATOC information that relates to the recorded chapters of data (col.
31, ll. 39-43). The ATOC information identifies predetermined
parameters of the compressed video and audio data in their respective
chapters (col. 31, ll. 55-60). Yonemitsu further discloses that the
ATOC information is used to identify, for each chapter, the number of
“streams” of data multiplexed, stream type and the particular format
used to encode each stream (col. 32, ll. 5-9).
4. Yonemitsu includes data format information in ATOC (col. 32, ll. 19-
25) while the location of picture data or “I-pictures” are also included
therein, which are known as “entry points” (col. 32, ll. 25-34).
5. Among the information data included with ATOC are fields which
identify the disk information (col. 33, ll. 20-23) such as pointers to
stream parameters that each could relate to video data, audio data, and
title data within a chapter (col. 34, ll. 26-40).
6. Yonemitsu further discloses that the number of stream parameter
pointers could vary depending on how the chapter is formatted and
configured which represent the characteristics of the corresponding
stream (col. 34, ll. 40-53). For example, two stream parameter
pointers may be used if the chapter is formed of two multiplexed
streams such as video data and audio data or video data and title, and
three stream parameter pointers will be used if three multiplexed
streams are used (col. 34, ll. 40-45).
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7. The stream parameter field further includes pointers that identify the
data in the chapter as well as its format and other necessary
information parameters (col. 34, ll. 54-67).
8. McPherson discloses a high-capacity multi-channel (e.g. six-channel)
format for recording on DVD-like recording media in which audio
content is stored (Abstract).
9. Maeda discloses an optical recording and reproducing medium
wherein the table of contents (TOC) region is set apart from the data
region (col. 3, ll. 25-32). The information provided in the TOC region
is repeatedly recorded three times on the TOC region for improving
accuracy as well as preventing errors when scratches, dust or alike
create unreadable conditions in the TOC region (col. 3, ll. 42-47).
10. Asthana discloses a system for detecting recording defects in digital
CDs that require modification such that any modified data must be
recorded in a new session and its corresponding TOC must be updated
(col. 1, ll. 60-67).
PRINCIPLES OF LAW
1. Anticipation
A rejection for anticipation requires that the four corners of a single
prior art document describe every element of the claimed invention, either
expressly or inherently, such that a person of ordinary skill in the art could
practice the invention without undue experimentation. See Atlas Powder
Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1946 (Fed. Cir.
1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994).

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2. Obviousness
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A
motivation to combine prior art references may be found in the nature of the
problem to be solved. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276,
69 USPQ2d 1686, 1690 (Fed. Cir. 2004). Also, evidence of a suggestion,
teaching, or motivation to modify a reference may flow from the prior art
references themselves, the knowledge of one of ordinary skill in the art, or,
in some cases, from the nature of the problem to be solved. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999);
Pro Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37
USPQ2d 1626, 1630 (Fed. Cir. 1996). Therefore, motivation or suggestion
is not merely what the references disclose, but whether a person of ordinary
skill in the art, possessed with the understandings and knowledge reflected
in the prior art, and motivated by the general problem facing the inventor,
would have been led to make the combination recited in the claims. See In
re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006).
The Examiner can satisfy this burden by showing some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007) (citing In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006)).
ANALYSIS
Claim 21
After a review of Yonemitsu and considering the arguments presented
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by Appellant and the Examiner, we agree with the Examiner that the method
for storing audio-centered information disclosed by Yonemitsu anticipates
the subject matter of the instant claims. As pointed out by the Examiner
(Answer 6), the stream parameters do specify the configuration of various
audio items on the disk such as the data format (FF 3-5). Contrary to
Appellant’s assertion (Br. 11), these parameters identify the data
configuration by identifying the data format and function in the same way
the claimed sub-TOCs are defined.
We also disagree with Appellant that the 1-byte data representing the
stream type cannot specify configuration of various audio items (Reply Br.
4) since each claimed sub-TOC is assigned to one audio format that specifies
the configuration of various audio items. Similarly, each of the stream
parameters of Yonemitsu is related to one stream and may be used to specify
the characteristics of various chapters on the disk (FF 7). As argued by the
Examiner (Answer 7), the fact that ATOC is acknowledged by Appellant as
specifying the configuration of various items on the medium (Br. 11) further
supports the Examiner’s position characterizing the stream parameters as the
claimed sub-TOCs. The pointers in ATOC point to each of the 4-byte
stream parameters or sub-TOCs which exhibit the data structure as shown in
Figure 41.
Appellant specifically attempts to limit the claim to require that each
sub-TOC specify an actual configuration of various audio items on the
medium and argues that the stream parameter of Yonemitsu only defines the
corresponding stream (Br. 3-4). We disagree. The claim recites that one or
more sub-TOCs be assigned to each of formats and the sub-TOCs [in
general] specify an actual configuration of the audio items. This language
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does not preclude one sub-TOC specifying the configuration of one audio
item which is disclosed by Yonemitsu. In particular, two or three stream
parameter pointers or sub-TOCs may be used when two or three streams of
data are multiplexed (FF 6).
Therefore, based on our analysis above, we find that the TOC
arrangement of Yonemitsu anticipates the claimed subject matter by
disclosing a master-TOC and one or more sub-TOCs assigned to each of
plurality of audio formats.
Claim 22
Appellant, in arguing the patentability of claim 22 (Br. 11-12),
assumes that the claimed sub-TOC is characterized as the ATOC, which is
actually the same as the master TOC. We disagree with that assumption and
point to FF 3-6. Based on our analysis above and the teachings of
Yonemitsu, we agree with the Examiner’s position (Answer 8) that the two
stream parameter pointers needed when two streams of data are multiplexed
reads on the claimed limitation of assigning exactly two sub-TOCs to each
format (FF 6).
Claims 23, 25, 27, 28, 35, 38, and 39
Appellant does not argue these claims with any specificity and merely
repeats the limitations recited in these claims asserting that the reference
does not teach the subject matter of any of these claims (Br. 12-19). As we
find the Examiner’s position with respect to these claims to be reasonable
and supported by factual evidence (Final Rejection 3-8) and absent specific
rebuttal arguments by Appellant, we disagree with Appellant that the
Examiner erred in rejecting claims 23, 25, 27, 28, 35, 38, and 39.
Claims 29- 33
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With respect to the remaining independent claims, Appellant mainly
asserts the same points discussed above with respect to claim 21. Therefore,
based on our analysis of Yonemitsu above, we disagree with Appellant that
the Examiner erred in rejecting claims 29-33.1
Claim 34
Appellant argues that the Entry Point Info and the Pointer to Entry
Point Info of Yonemitsu do not disclose or suggest the actual configuration
of the various audio items on the medium or include a description of its
location (Br. 17). Again we disagree and find the Examiner’s position
(Answer 9-10) to be reasonable and supported by evidence (FF 4). Thus, we
remain unconvinced by Appellant’s arguments that the Examiner erred in
rejecting claim 34.
Claim 36
Appellant alleges error in the Examiner’s rejection of claim 36 by
reading the claimed master-TOC on the stream parameters of Yonemitsu
(Br. 17-18). However, the Examiner asserts that the rejection is based on
reading the claimed subdirectories on the stream parameters (Answer 10-

1 We observe that claim 33 is directed to a “unitary medium”
comprising TOCs for identifying the configuration of the audio data. The
breadth of the claimed medium allows for transmission-type media -- media
that includes carrier waves and signals – and could render the claim non-
statutory. We are not aware of any case law that has specifically decided
this question either way. However, a case involving this issue is presently on
appeal to the Federal Circuit: In re Nuijten, No. 06-1301. It could be argued
that a carrier wave or signal is not statutory subject matter because it does
not fall within any of the four categories of statutory subject matter. Even if
considered to be an article of manufacture, however, we observe that a
carrier wave or signal does not operate as a computer readable medium and
cannot exist while the information is being transmitted on a carrier wave or
signal because of the way a carrier wave or signal is processed.
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11). We find the Examiner’s position to be supported by factual evidence
(FF 3 & 5) which indicates Yonemitsu’s teachings related to the ATOC and
stream parameters to be the same as a file system with a root directory
format containing a master-TOC and subdirectories, as claimed. Therefore,
we disagree with Appellant as we find no error in the Examiner’s position
rejecting claim 36.
Claims 24, 26, and 37
Appellant’s arguments are focused on the alleged deficiencies of the
base reference and combinability of Yonemitsu with each of McPherson,
Maeda, and Asthana (Br. 19-24). The Examiner asserts that using the multi-
channel format disclosed by McPherson (FF 8) in combination with the
audio formats of Yonemitsu (FF 5) would have been obvious to one of
ordinary skill in the art for improving the format by using other known audio
formats, as recited in claim 24 (Answer 12). Similarly, the Examiner
correctly argues that adding a plurality of copies of the ATOC and stream
parameters taught by Maeda (FF 9) would have enhanced accuracy and
reliability of the disk, as recited in claim 26 (Answer 13-14). Finally, we
also agree with the Examiner’s position that updating the ATOC and stream
parameters of claim 37 for detecting and correcting defects, as taught by
Asthana (FF 10) would have been obvious to one of ordinary skill in the art
(Answer 14-15).
CONCLUSION
In view of the analysis above, we find that Yonemitsu prima facie
anticipates the subject matter of independent claims 21, 29, 31, 32, and 33,
as well as claims 22, 23, 25, 27, 28, 30, 34-36, 38, and 39 as the reference
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teaches all the recited features. Accordingly, the 35 U.S.C. § 102(b)
rejection of claims 21-23, 25, 27-36, 38, and 39 over Yonemitsu is sustained.
Based on our findings above and the weight of arguments presented
by Appellant and the Examiner’s response, we also sustain the 35 U.S.C.
§ 103 rejection of claim 24 over Yonemitsu and McPherson, of claim 26
over Yonemitsu and Maeda, and of claim 37 over Yonemitsu and Asthana.
DECISION
The decision of the Examiner rejecting claims 21-23, 25, 27-36, 38,
and 39 under 35 U.S.C. § 102 and claims 24, 26, and 37 under 35 U.S.C.
§ 103 is 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).

AFFIRMED

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