09760242 (P.T.A.B. Oct. 17, 2012)

Ex Parte Davidson

Patent Trial and Appeal BoardOct 17, 2012

09760242 (P.T.A.B. Oct. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 09/760,242 01/12/2001 Robert J. Davidson 10002343-1 (SEAG 77938) 2554 7590 10/18/2012 FELLERS, SNIDER, BLANKENSHIP,BAILEY & TIPPENS, PC 100 BROADWAY SUITE 1700 OKLAHOMA CITY, OK 73102-8820 EXAMINER SHELEHEDA, JAMES R ART UNIT PAPER NUMBER 2424 MAIL DATE DELIVERY MODE 10/18/2012 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 ROBERT J. DAVIDSON ____________ Appeal 2011-007933 Application 09/760,2421 Technology Center 2400 ____________ Before CAROLYN D. THOMAS, ANDREW CALDWELL, and JOHN A. EVANS, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is Seagate Technology LLC. Appeal 2011-007933 Application 09/760,242 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-5, 8, 9, 11-15, 19, 20, 24-26, 32, and 37-39, which are all the claims remaining in the application. Claims 6, 7, 10, 16- 18, 21-23, 27-31, and 33-36 are cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to portable entertainment media storage devices. See Spec., 1. Claim 1 is illustrative: 1. A method of portably handling entertainment media comprising: storing in a memory of a portable digital storage module non-encoded entertainment media that is not encoded with any authorized usage condition; and after the storing step is completed, encoding the portable digital storage module with access instructions defining a prescribed authorized usage condition of the stored non-encoded entertainment media. Appellant appeals the following rejections: R1. Claims 1-5, 8, 19, 20, 24, 25, 32, 37, and 39 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chung (US 6,628,963 B1, Sep. 30, 2003) and Kawakami (US 7,266,202 B1, Sep. 4, 2007); R2. Claims 9 and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chung, Kawakami, and Katayama (US 6,651,212 B1, Appeal 2011-007933 Application 09/760,242 3 Nov. 18, 2003); R3. Claims 11-14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chung, Kawakami, Katayama, and Gibson (US 5,557,596, Sep. 17, 1996); R4. Claims 26 and 38 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chung, Kawakami, and Downs (US 6,226,618 B1, May 1, 2001). Claim Groupings Based on Appellant’s arguments in the Appeal Brief, we will decide the appeal on the basis of claims as set forth below. See 37 C.F.R. 41.37(c)(1)(vii). ANALYSIS Claims 1 and 9 Issue: Did the Examiner err in finding that the cited art, particularly Kawakami, teaches and/or suggests “storing in a memory . . . non-encoded entertainment media that is not encoded with any authorized usage condition”, as claimed? Appellant contends that “Kawakami explicitly discloses the data transferred to the portable device is in the form of a packet composed of a header and a content, the header defining the usage condition information” (Id. at 9.) Appellant further contends that “the content referred to in block S59 of Fig. 13 is previously selected in block S54 and then paired with its corresponding usage rule file in block S55 before being transferred” (Reply Br. 4). Appeal 2011-007933 Application 09/760,242 4 The Examiner found that “Kawakami explicitly shows in Fig. 13 and 19, where the content data is transferred to the portable devices first, and after the content data is stored in the portable device (steps 59-60 and 119- 120), the usage conditions are then transferred and stored into the portable device (steps 61-64 and 122-123)” (Ans. 17). The Examiner further found that “[t]he content data and usage data are explicitly disclosed as being separate files which are separately processed and transferred” (id. at 18). We agree with the Examiner. Here, the Examiner relies upon Kawakami to disclose the argued limitation. Therefore, our discussion will be limited thereto. Fig. 13 of Kawakami is depicted below: Appeal 2011-007933 Application 09/760,242 5 Fig. 13 of Kawakami illustrates a flow chart of the movement of content from the HDD to a portable device. As noted above, Kawakami discloses that “[a]t step S59, the move management program 134 will make the PD driver 143 transfer the content converted at S58 to the portable device 6 via the USB port 23. . . . and stores it as it is into the flash memory 61.” (Kawakami, col. 27, ll. 49-54.) Kawakami further discloses “[t]hen at step S63, the move management program 134 makes the PD driver 143 transfer to the portable device 6 the playback condition . . . The CPU 53 of the portable device 6 saves the transferred playback condition . . . into the flash memory 61.” (Id. at col. 27, l. 64 to col. 28, l. 3.) In other words, Kawakami discloses first transferring content to the portable device, then transferring the playback condition to the portable device. Therefore, we agree with the Examiner that Kawakami discloses transferring and processing the content data and the usage rules separately (see Ans. 18). While Kawakami discloses the following: “A data to be transferred to the portable device 6 is composed of a header and content. The header stores . . . a playback limitation data” (see Kawakami, col. 10, ll. 32-36), we find that Kawakami stops short of disclosing that the content and usage information is transferred together as contended by Appellant, particularly given Kawakami’s Fig. 13 illustration which explicitly discloses usage rules being transferred after the content information. We further add that if a header containing usage rules was transferred with the content as alleged by Appellant then a further step transferring usage rules (i.e. S63) would not be Appeal 2011-007933 Application 09/760,242 6 necessary. Stated differently, if Kawakami’s usage rules were encoded with the content than a later transfer step, e.g., S63, would not be required. Instead, an extraction step would follow, i.e., extracting the usage rules from the header. As this is not the case in Kawakami’s Fig. 13, we find Appellant’s arguments unpersuasive that Kawakami’s content was encoded in a header containing usage rules. Claims 2-5, 8, 11-15, 19, 20, 24-26, 32, and 37-39 Appellant reproduces other limitations from the claims in the Appeal Brief, but alleges error in their rejection by relying on the same position regarding the supposed deficiencies of Kawakami, i.e., it only transfers encoded entertainment media, that we have found untenable (see App. Br. 16-23). Appellant’s additional remarks are not separate arguments for patentability under the applicable rules. See 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.”). To the extent that any of Appellant’s additional remarks in the Appeal Brief could be considered to rise to the level of providing arguments for separate patentability, we refer to the Examiner’s findings in the Answer as a complete response to any such arguments. In view of the above discussion, since Appellant has not demonstrated that the Examiner erred in finding the argued limitations in the disclosure of Kawakami, the Examiner’s 35 U.S.C. § 103(a) rejections of representative independent claim 1, as well as claims 2-5, 8, 9, 11-15, 19, 20, 24-26, 32, and 37-39 not separately argued by Appellant, are sustained. Appeal 2011-007933 Application 09/760,242 7 DECISION We affirm each of the Examiner’s § 103(a) rejections. 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. § 1.136(a)(1)(iv) . AFFIRMED tkl