Ex Parte Chou et al

Patent Trial and Appeal Board

Sep 25, 2018

11773942 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/773,942 07/05/2007 Hung-Te Chou
27765 7590 09/27/2018
NORTH AMERICA INTELLECTUAL PROPERTY CORPORATION
SF., No.389, Fuhe Rd., Yonghe Dist.
New Taipei City,
TAIWAN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PCLP0021USA 2268
EXAMINER
MESA,JOSEM
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
09/27/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Patent.admin.uspto.Rcv@naipo.com
mis.ap.uspto@naipo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HUNG-TE CHOU, CHUN-MING SU, HUNG-TE LIN,
YUNG-CHAO TSENG, CHIH-CHUNG CHANG, KUANG-CHE WU,
MENG-JYI SHIEH, and KUO-HSIN YANG
Appeal2017-007757
Application 11/773,942
Technology Center 2400
Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
AARON W. MOORE, Administrative Patent Judges.
Opinion of the Board by SMITH, Administrative Patent Judge.
Opinion Dissenting by MOORE, Administrative Patent Judge.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-007757
Application 11/773,942
STATEMENT OF THE CASE
This is an appeal1 under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 5, 6, 8, 9, 11, 12, and 14--25. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Illustrative Claim
1. A method for activating video-audio data in an optical
disc, wherein a program in the optical disc allows access to a first
featured content of the video-audio data, the method comprising:
connecting to an information platform supplied by a
publisher of the video-audio data;
paying to the information platform through an on-line
payment mechanism;
receiving a first activation signal inputted by a user into an
optical disc player, wherein the first activation signal is an
identification code provided by the publisher through the
information platform in response to the information platform
receiving payment;
the program in the optical disc allowing access to a second
featured content of the video-audio data when the first activation
signal is received, wherein the program in the optical disc allows
access according to a case selected from the group consisting of:
the program in the optical disc allowing access to
the first featured content of the video-audio data
comprises allowing access to partial contents of the video-
audio data, and the program in the optical disc
allowing access to the second featured content of the
video-audio data comprises allowing access to full
contents of the video-audio data;
the program in the optical disc allowing access to
the first featured content of the video-audio data
comprises allowing access to a first partially-featured
content of the video-audio data, and the program in
the optical disc allowing access to the second featured
1 The real party in interest is CyberLink Corporation. See Br. 2.
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Application 11/773,942
content of the video-audio data comprises allowing
access to a second partially-featured content of the video-
audio data;
the program in the optical disc allowing access to
the first featured content of the video-audio data
comprises allowing access to a first partially-featured
content of the video-audio data, and the program in
the optical disc allowing access to the second featured
content of the video-audio data comprises allowing
access to a second partially-featured content of the video-
audio data within a predetermined period;
the program in the optical disc allowing access to
the first featured content of the video-audio data
comprises allowing access to full contents of the
video-audio data within a first predetermined period, and
the program in the optical disc allowing access to the
second featured content of the video-audio data
comprises allowing access to the full contents of the
video-audio data within a second predetermined period;
and
the program in the optical disc allowing access to
the first featured content of the video-audio data
comprises allowing playing full contents of the
video-audio data according to a first display standard,
and the program in the optical disc allowing access to the
second featured content of the video-audio data
comprises allowing playing the full contents of the
video-audio data according to a second display standard.
Tsumagari
Jarman
Jung
Prior Art
US 2003/0161615 Al
US 2006/0101487 Al
US 2006/0280048 Al
Examiner's Rejection
Aug. 28, 2003
May 11, 2006
Dec. 14, 2006
Claims 1, 5, 6, 8, 9, 11, 12, and 14--25 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Jung, Tsumagari, and Jarman.
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Appeal2017-007757
Application 11/773,942
ANALYSIS
We adopt the findings of fact made by the Examiner in the Final
Office Action and Examiner's Answer as our own. We concur with the
conclusions reached by the Examiner for the reasons given in the
Examiner's Answer.
Cumulative to the Examiner's findings and conclusions, we highlight
that Appellants' contentions that certain claim limitations are not taught by
the prior art are inconsistent with statements made by Appellants in
Appellants' Specification that such limitations are taught by the prior art.
For example, Appellants contend that Jung's teaching of metadata and
a disc library do not teach "video-audio data in an optical disc," including "a
first featured content of the video-audio data" and "a second featured content
of the video-audio data" as recited in claim 1. Br. 8-10. However,
Appellants' Admitted Prior Art teaches:
Under certain conditions, copyright owners of published optical
discs will lock partial video-audio data in the optical disc. Only
partially-featured contents but not fully-featured contents of the
video-audio data can be accessed when users buy the optical disc
with a basic price .... Assuming that the video-audio data stored
in the optical disc totally includes five video albums, at this time,
the partially-featured contents of the video-audio data only
include the 1st video album and the fully-featured contents of the
video-audio data include the five video albums.
Spec. ,r 5. Appellants' contention that the first and second featured content
of the video-audio data as claimed is not taught by the prior art is
inconsistent with Appellants' Admitted Prior Art, which teaches an optical
disc storing partially-featured contents, or "first featured content of the
video-audio data," and fully-featured contents, or "second featured content
of the video-audio data," within the meaning of claim 1.
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Application 11/773,942
As another example, Appellants contend Jarman teaches that a filter
provider, rather than a "publisher of the video-audio data" as claimed,
provides an online mechanism to receive payment from a user and provide
an access code to the user. Br. 10-12. However, Appellants' Admitted
Prior Art teaches that a publisher of video-audio data receives payment from
a user and provides an access code to the user. See Spec. ,r 6. Although the
Admitted Prior Art does not teach performing these steps "on-line" as
claimed, Jarman teaches that receiving payment from and providing an
access code to a user "on-line" was within the level of ordinary skill.
Jarman ,r,r 54--56. Appellants have not provided persuasive evidence or
argument to show that allowing a publisher to receive payment from a user
and providing an access code to the user as taught by Appellants' Admitted
Prior Art, and performing these steps "on-line" as taught by Jarman, was
"uniquely challenging or difficult for one of ordinary skill in the art." See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,419 (2007)).
DECISION
The rejection of claims 1, 5, 6, 8, 9, 11, 12, and 14--25 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). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HUNG-TE CHOU, CHUN-MING SU, HUNG-TE LIN,
YUNG-CHAO TSENG, CHIH-CHUNG CHANG, KUANG-CHE WU,
MENG-JYI SHIEH, and KUO-HSIN YANG
Appeal2017-007757
Application 11/773,942
Technology Center 2400
Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge, dissenting.
The claims at issue are directed to a system in which a program on an
optical disc "allow[ s] access to partially-featured contents or fully-featured
contents of the video-audio data in the optical disc according to activation
signals." (Spec. ,r 2.) Claim 1, for example, is directed to a "method for
activating video-audio data in an optical disc, wherein a program in the
optical disc allows access to a first featured content of the video-audio data."
The Examiner relies primarily on Jung, which describes a system in
which a DVD player reads metadata from DVDs and compiles an internal
Appeal2017-007757
Application 11/773,942
"disc library" that may searched, for example by actor, director, or the like.
(See Jung ,r,r 31-36.) Jung thus concerns a system that has little in common
with Appellants' method of using software on a DVD to partially lock the
content.
The Examiner finds that "Jung discloses a method for activating
video-audio data in an optical disc, wherein a program in the optical disc
allows access to a first featured content of the video-audio data." (Final Act.
22 (citing Jung Figs. 1-3 & 5---6; ,r,r 56, 66, and 71).) The problem I see with
this analysis is that Jung's "program" allowing one to search the metadata is
in the reproduction apparatus (i.e., the DVD player), while the "content" is
on the DVDs. Thus, even assuming that searching the library on the DVD
player "allows access" to the content of the DVDs (which need not be in the
player, or even available), the Examiner has failed to show "activating
video-audio data in an optical disc, wherein a program in the optical disc
allows access to a first featured content of the video-audio data," as recited
in claim 1. Because the express language of the claim requires the program
and content to be on the same optical disc, but Jung's are not, I would
reverse the rejection of claim 1.
Appellants do acknowledge in the Specification that it was known for
"copyright owners of published optical discs [to] lock partial video-audio
data in the optical disc." (Spec. ,r 5.) However, I would not rely on that
material to sustain the Examiner's rejection because it was not part of the
rejection. (See Final Act. 22-28.) Moreover, it is not clear to me why one
of skill in the art would have combined Jung's player metadata library with
the partial disc locking concept, or how such a combination would work.
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The Examiner also finds that "Jung fails to explicitly teach paying to
the information platform through an on-line payment mechanism; receiving
a first activation signal inputted by a user into an optical disc player, wherein
the first activation signal is an identification code provided by the publisher
through the information platform in response to the information platform
receiving payment" but that "the reference of Jarman explicitly teaches
paying to the information platform through an on-line payment mechanism."
(Final Act. 27 .) The cited portions of Jarman describe a system with "media
filtering capability" that "monitors play of the movie and scenes identified in
the filter file." (Jarman ,r 48.) "When the media filtering capability
identifies an elected type of scene, it operates to perform a skip of the scene
or to mute the audio associated with the scene." (Id.) The filter data is
provided by a "filter provider." (Id. ,r 10, 54.) Jarman does not, however,
indicate that the filter provider would be the claimed "publisher of the video-
audio data," and the Examiner does not make a finding that it would have
been either necessary or obvious for the filter provider to be the publisher. I
would also reverse the rejection of claim 1 due to the lack of such a
disclosure or finding.
The background portion of the Specification states that "[ t ]he users
need to pay extra fees to the copyright owners of the published optical disc
for getting authorizations for accessing the fully-featured contents of the
video-audio data if the users desire to watch the fully-featured contents of
the video-audio data after accessing the partially-featured contents of the
video-audio data." (Spec. ,r 6.) However, I would not rely on this to sustain
the rejection because it is not part of the rejection, and, in any event, it
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Application 11/773,942
contemplates payment to the "copyright owners," which is not necessarily
the same as the "publisher of the video-audio data."
Independent claim 25 recites "a first activation signal ... provided by
a publisher ... in response to a payment being made to the information
platform through an on-line payment mechanism." I would reverse the
rejection of this claim as well because, as explained above, Jarman identifies
a filter provider, not the publisher.
On the present record, I would reverse the rejections of independent
claims 1 and 25, and, for the same reasons, the rejections of dependent
claims 2-24. I, therefore, respectfully dissent.
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