Ex Parte Chun et al

Patent Trial and Appeal Board

Nov 22, 2013

11139591 (P.T.A.B. Nov. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HYE-JEONG CHUN, SUNG-WOOK PARK, and
JUNG-WAN KO
____________________

Appeal 2011-009066
Application 11/139,591
Technology Center 2100
____________________

Before BRUCE R. WINSOR, MICHAEL J. STRAUSS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
7-9, 11, 13-15, 17, 19, and 20. Claims 12 and 18 are objected to but would
be allowable if rewritten in independent form. Claims 1-6, 10, 16, and 21-29
are cancelled. We have jurisdiction over the rejected claims under 35 U.S.C.
§ 6(b). We heard oral arguments on November 14, 2013. A transcript of the
hearing will be added to the record in due time.
We affirm-in-part.

INVENTION
The claims are directed to reproducing and searching audio/video
(AV) data stored on an [optical] disc, the AV data including meta data
further including title information about the AV data. Abst. Claim 7,
reproduced below, is representative of the claimed subject matter:
7. An apparatus for reproducing audio/video (AV) data, the
apparatus comprising:
a metadata storing unit configured to store metadata of at
least one disc, each disc comprising more than one title
audio/video stream, the metadata of a disc comprising disc
information and more than one title information of the disc, the
disc information being metadata about the disc itself, each title
information being metadata about each title audio/video stream
included in the disc, a metadata file of a disc being copied into
the metadata storing unit when the disc is inserted into the
reproducing apparatus, the metadata being formed when the
metadata files of the inserted discs are accumulated; and
a search unit configured to present metadata from a
representative title information with the disc information to
help a user to identify the disc and a feature of the disc when
showing the disc information of a result which is selected by
the user,
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wherein the representative title information comprises
attribute information configured to be used to indicate a
representative title audio/video stream among the more than one
title audio/video stream.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Muraki US 6,429,364 B1 Aug. 6, 2002
AbiEzzi US 2005/0235338 A1 Oct. 20, 2005

REJECTIONS
1

The Examiner rejected claims 7-9, 11, 13-15, 17, 19, and 20 under 35
U.S.C. § 103(a) as being unpatentable over AbiEzzi and Muraki. Ans. 3-9.

RELATED DECISION
Appeal No. 2011-009395 (Application No. 11/832,982), mailed Nov.
22, 2013. (Examiner Affirmed-In-Part).

APPELLANTS’ CONTENTIONS
1. In connection with claim 7, AbiEzzi fails to disclose “each disc
comprising more than one title audio/video stream, the metadata of a disc

1
Appellants collectively argue claims 7 and 15 (App. Br. 5-8), claims 11
and 17 (App. Br. 8-9), and claims 13 and 19 (App. Br. 9.) Claim 14 is
separately argued (App. Br. 9-10). Separate patentability is not argued for
claims 8, 9, and 20. Therefore, based on Appellants’ arguments, we decide
the appeal of claims 7-9 and 15 based on claim 7 alone, the appeal of claims
11 and 17 based on claim 11, claims 13, 19, and 20 based on claim 13, and
claim 14 separately. See 37 C.F.R. § 41.37(c)(1)(vii).
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comprising disc information and more than one title information of the
disc” (App. Br. 7) and the Examiner’s subsequent citation to Muraki for
this limitation (see Ans. 11) is improper (Reply Br. 7.)
2

2. In connection with claim 11, Muraki teaches “other title is below the disc
(i.e., general) title in the hierarchy” rather than a representative title
placed at a higher data structural level than the general title information
(App. Br. 8) while the Examiner “does not even cite any reference for the
claimed sub link” (App. Br. 9.)
3. In connection with claim 13, Muraki “teaches that the other title is below
the disc (i.e., general) title” rather than at the same data structural level.
App. Br. 9.
4. In connection with claim 14, AbiEzzi fails to disclose a “second option
for returning a result if the search information is not found.” App. Br. 10.

ISSUES ON APPEAL
Based on Appellants’ arguments in the Appeal Brief (App. Br. 5-10)
3

and Reply Brief (Reply Br. 5-13), the issue presented on appeal is whether

2
Appellants further contend that, in the absence of a sufficient explanation
of why the Examiner disagrees with Appellants’ arguments, those arguments
“must be taken as being correct.” Reply Br. 6. We disagree. Appellants cite
no authority for the asserted position. Instead, “[t]he Board reviews the
particular finding(s) contested by an appellant anew in light of all the
evidence and argument on that issue.” Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential). A failure of the Examiner to address
Appellants’ arguments of error does not require that the Board accept those
arguments of error on their face or ignore the remaining evidence and
arguments of record.
3
In addition to allegations of error in the outstanding rejection, Appellants
question “whether proper procedure was followed in this case.” App. Br. 11.
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the combination of AbiEzzi and Muraki teaches or suggests the disputed
claim limitations.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
agree with Appellants’ conclusions as to claim 13. Because claim 14
depends from claim 13, we do not consider Appellants’ separate argument in
connection with dependent claim 14. We disagree with the Appellants’
conclusions in connection with claims 7 and 11 and, in connection therewith
and, except as noted infra, adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Ans. 3-
9) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to the Appellants’ Appeal Brief (Ans. 9-12) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
Claims 7-9 and 15
In connection with claim 7, the Examiner cites AbiEzzi paragraphs
[0006] and [0022] for disclosing the disputed limitation of each disc
comprising more than one title audio video stream, the metadata of a disc
comprising disc information and more than one title information of the disc.
Ans. 4. Appellants contend that, while AbiEzzi’s jukebox stores a plurality
of DVDs, each DVD has only a single title. App. Br. 7. We agree that
AbiEzzi standing alone does not disclose the disputed limitation. However,

Because no specific error reviewable by this Board is alleged, we do not
address these procedural issues.
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in the Response to Argument, the Examiner finds Muraki teaches the
disputed limitation. Ans. 11 citing Muraki, Fig. 1, col. 3, ll. 32-57, col. 9, l.
59 – col. 10, l. 4. While disagreeing with the Examiner in connection with
AbiEzzi’s teaching of the disputed limitation, we agree with the Examiner
that Muraki teaches or suggests “each disc comprising more than one title
audio/video stream” as recited by claim 7.
Appellants reply, contending that the Examiner’s reliance on Muraki
is inconsistent with the Examiner’s earlier finding that AbiEzzi teaches the
disputed limitation while Muraki only had been applied for teaching a
different limitation.
4
Reply Br. 7. We find no inconsistency in the
Examiner’s citation to Muraki for the disputed limitation. While we agree
that AbiEzzi is deficient for the reasons supra, the addition of Muraki cures
the rejection.
Appellants further contend the combination of AbiEzzi and Muraki is
improper for failure of the Examiner to allege a reason why one of ordinary
skill would have incorporated a disc having multiple titles according to
Muraki into the jukebox system of AbiEzzi. Reply Br. 7. We find no
reversible error. “The combination of familiar elements according to known

4
“[The Examiner’s ] statement [applying Muraki for teaching the disputed
limitation] is inconsistent with the explanation of the rejection of claims 7
and 15 on pages 3-5 and 6-7 of the Examiner's Answer of March 2, 2011,
where the Examiner states that paragraph [0006] of AbiEzzi discloses the
feature ‘each disc comprising more than one title audio/video stream’
recited in claims 7 and 15, and relies on Muraki only to show the
feature ‘wherein the representative title information comprises attribute
information configured to be used to indicate a representative title
audio/video stream among the more than one title audio/video stream’
recited in claim 7.” Reply Br. 7.
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methods is likely to be obvious when it does no more than yield predictable
results.” KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007). We conclude
modifying the system of AbiEzzi to use optical media having plural titles
according to Muraki would have been obvious.
Furthermore, while contending Muraki fails to describe how to
modify AbiEzzi’s system to accommodate multi-title DVDs (Reply Br. 7),
Appellants fail to provide sufficient evidence or argument that AbiEzzi’s
system is incompatible with or incapable of being readily modified to
incorporate the mutli-title DVDs of Muraki. We note that “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 421. Consequently, we “can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
Id. at 418. Furthermore, “we do not ignore the modifications that one skilled
in the art would make to a device borrowed from the prior art.” In re Icon
Health and Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) (citing
Optivus Tech., Inc. v. Ion Beam Applications, S.A., 469 F.3d 978, 989-90
(Fed. Cir 2006). Therefore, in the absence of sufficient evidence or
argument, Appellants’ contention that Muraki fails to describe how to
modify AbiEzzi’s system is not persuasive of error.
For the reasons supra, Appellants’ contentions in connection with
claim 7 lack sufficient evidence or argument to persuade us of reversible
Examiner error. Therefore we sustain the rejection of independent claim 7
and, for the same reasons, the rejection of independent claim 15 under 35
U.S.C. § 103(a) over AbiEzzi and Muraki together with the rejections of
dependent claims 8 and 9 not separately argued.
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Claims 11 and 17
In connection with claim 11 Appellants equate disc title 243 of Muraki
with the claimed general title information and argue that Figure 8 of Muraki
depicts disc title 243 (i.e., general title information) higher than title list 231
while claim 5 requires the opposite hierarchical relationship, i.e.,
representative information structurally place higher than the general title
information. App. Br. 8. The Examiner responds, equating Muraki’s disk
title to the claimed representative title, with Muraki’s Figure 2 depicting the
disk title (i.e., representative title) placed at a higher level in the title list
thereby disclosing the recited relationship between the representative title
information and the general title information. Ans. 11. We agree that Muraki
teaches or suggests (at least graphically in figure 2) the claimed hierarchical
relationship between the representative and general title information.
Furthermore, while Appellants contend that “the Final Rejection does not
even cite any reference for the claimed sub link” (App. Br. 9), we find that
the Examiner cites to Figure 8 and column 10, lines 1-4 of Muraki (Ans. 6).
Other than this mere allegation of error, Appellants fail to explain why
Muraki fails to teach or suggest the disputed sub link.
5
Therefore we find the

5
Even had Appellants clearly contended that Muraki fails to teach or
suggest the disputed limitation, such assertion alone would not be considered
argument of Examiner error. 37 C.F.R. § 41.37(c)(1)(vii) (“A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”); In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). Furthermore,
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Examiner’s reasoning and conclusion to be reasonable and, in the absence of
persuasive evidence or argument to the contrary, sustain the rejection of
claim 11 and, for the same reason, the rejection of claim 17 under 35 U.S.C.
§ 103(a) over AbiEzzi and Muraki.

Claims 13 and 19
In connection with claim 13 the Examiner refers to Muraki’s Figure 2
and column 11, lines 20-32 disclosing “the disc title (representative title) has
different ID in the list title (general title information.)” Ans. 6. Appellants
contend that Muraki’s depiction of disc title 243 higher than title 241 fails to
disclose information structurally placed at the same level. App. Br. 9. We
note that, in connection with claims 11 and 17 discussed supra, the
Examiner finds that Muraki’s Figure 2 discloses the representative title
information is placed at a higher data structural level than the general title
information. See Ans. 11. Therefore, on its face and without further
explanation, it would appear illogical to point to the same elements as
disclosing both a “higher” hierarchical relationship and the same elements
also at the “same” level. Therefore, in the absence of persuasive evidence or
reasoning by the Examiner explaining why Muraki’s titles are at the same
level or otherwise teach or suggest the disputed limitation, we do not sustain
the rejection of claim 13 or, for the same reason, the rejection of claim 19
under 35 U.S.C. § 103(a) over AbiEzzi and Muraki. Because of its
dependency from claim 19, neither do we sustain the rejection of claim 20.

we note that Muraki discloses the use of links pointing to title information.
See, e.g., Muraki Abstract.
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Claim 14
Because our finding of error in connection with the rejection of claim
13 is dispositive with regard to claim 14 which depends from claim 13, we
need not consider Appellants’ separate arguments of error in connection with
claim 14 and, for the same reasons, will not sustain the rejection of that
claim.

CONCLUSIONS
On this record, we find:
(i) The Examiner erred in rejecting claims 13, 14, 19, and 20 under
35 U.S.C. § 103(a) over AbiEzzi and Muraki.
(ii) The Examiner did not err in rejecting claims 7-9, 11, 15, and 17
under 35 U.S.C. § 103(a) over AbiEzzi and Muraki.

DECISION
The Examiner’s decision to reject claims 13, 14, 19, and 20 is
reversed. The Examiner’s decision to reject claims 7-9, 11, 15, and 17 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-IN-PART

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