Ex Parte Iida

Board of Patent Appeals and Interferences

Mar 16, 2012

11242472 (B.P.A.I. Mar. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte KENICHI IIDA
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Appeal 2010-002386
Application 11/242,472
Technology Center 2600
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Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER,
and GLENN J. PERRY, Administrative Patent Judges.

PERRY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002386
Application 11/242,472

2
STATEMENT OF THE CASE
Summary
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 6, 13-17, 28-34, and 38-43. Claims 2-4 and 35-37 have
been indicated as containing allowable subject matter. Claims 1, 5, 7-12,
and 18-27 have been canceled.
We reverse.
Background
A. Appellant’s invention
Appellant’s invention relates to a recording and/or reproducing
apparatus of the type on which multiple “programs” can be recorded and
“reproduced” (played back after recording). The invention purports to solve
a problem of accidental erasing of a previously recorded program by
requiring a user who wants to erase the entirety of a program to select the
program to be erased, request erasure of that program, and then confirm the
erasure request. (Spec. 1-4).
B. The claims
Claim 29 is illustrative of the claimed subject matter. It reads as
follows (emphases added):
29. A recording and/or reproducing apparatus
comprising:
storage means for storing a plurality of
recorded digital audio programs;
selecting means for selecting a digital audio
program from said plurality of digital audio
programs stored in said storage means;
reproducing means for reproducing said
selected digital audio program;
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erasure directing means for directing an
erasure of said digital audio program being
reproduced; and
control means for erasing an entirety of said
digital audio program being reproduced by said
reproducing means from said plurality of stored
digital audio programs on condition that said
erasure directing means directs erasure of said
reproduced digital audio program a second time
subsequent to directing erasure of said digital
audio program a first time during reproduction of
said selected digital audio program.   
C. The reference and rejection
The Examiner relies on the following prior art reference to show
unpatentability:
Okano et al. US 5,774,863 June 30, 1998
Claims 6, 13-17, 28-34, and 38-43 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Okano.

ARGUMENTS
The Examiner relies on Okano’s partial erasing mode (see col. 6, ll.
51-67) and Okano’s whole letter1 erasing mode (see col. 7, ll. 26-43) to
conclude that either of these modes, alone, anticipates the claims (Ans. 4-6).
Appellant argues that each of the independent claims contains
language requiring both a request to erase program and a confirmation of
that request while a selected program is being reproduced and that Okano
does not teach these limitations by virtue of either its partial erasing mode or
its whole letter erasing mode (App. Br. 7-9).

1 We understand Okano’s term “letter” to mean an audio file or program.
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ANALYSIS
Each of independent claims 29, 30, and 31 recites a recording and/or
reproducing apparatus on which multiple “programs” can be recorded and
“reproduced” (played back after recording). We construe the language of
claim 29 (supra) as requiring that a user select a program (activate the
“selecting means”) and cause that program to be reproduced (playback).
While the selected program is being reproduced, the user wishing to erase
the entirety of that program must first direct (with the “erasure directing
means”) the program to be erased (“directing . . . a first time”). The user
must then again direct erasure “a second time subsequent to directing erasure
. . . a first time during reproduction of said selected digital audio program”
(claim 29) (emphasis added).
We construe “entirety of . . . [the] program” to mean all of the
program, from its beginning to its end. Thus, while a particular program is
in the process of being reproduced, a request to erase that program will erase
all of the program being reproduced.
Independent claims 30 and 31 recite this requirement with
correspondingly similar language. Thus, the analysis made with respect to
claim 29 applies as well to claims 30 and 31.
Okano teaches two different erasing modes: a “partial erasing mode”
(see Okano Fig. 8B, step S426) and a “whole erasing mode (see Okano Fig.
6B, step S220 and col. 7, ll. 26-35). As noted supra, the Examiner
concludes that either of these modes, alone, anticipates the claims (Ans. 4-
6). We address the Examiner’s rationales for these two modes separately.
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I.
According to a “partial erasing mode,” a user erases an arbitrary
portion of recorded data. Operation of the partial erasing mode is described
in Okano as follows:
A partial erasing switch 28G is used to erase [sic: an]
arbitrary part of recorded data. First an operator operates any
one of the operation switches for reproduction, FF, and REW to
set the current position to the head or foot of a desired portion
to be erased, and depresses the switch 28G. Thus “ERASE” is
displayed on the LCD 30 (FIG. 4K), the LED 32 blinks, and the
current position is stored as an erase start position. The
operator then operates any one of the operation switches for
reproduction, FF, and REW to shift the position to the desired
portion. During this shift, both “ERASE” of LCD 30 and LED
32 continue to blink. If the operator depresses the switch 28G
again after the position is shifted, both the “ERASE” and LED
32 are lit for several seconds, and the data recorded on the
desired portion is erased in several seconds. The range of the
portion can be set either in a forward direction or in a backward
direction, and may cover a plurality of letters.
Okano col. 6, ll. 51-67.
Restated, a user navigates to a first boundary of that portion to be
erased and presses switch 28G to define that first boundary. That first press
of switch 28G does not cause erasure to occur. Rather, it marks the first
boundary of the part of recorded data to be erased. The user then maneuvers
(via play, fast forward, or reverse) to a second boundary of the portion to be
erased. A second press of switch 28G delineates and fixes the second
boundary, thus defining the portion to be erased between the two boundaries.
The portion may be within a program or it may span more than one program.
After the second key press, the portion to be erased has been defined and
erasure of the bounded portion occurs. No confirmation is required to cause
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erasure of the bounded portion. The two key presses required are for the
purpose of defining the portion to be erased (analogous to the claimed
“selecting means” and also for causing erasure.
The Examiner has construed the two button pressings of Okano
switches 28G, which delineates the boundaries of the partial erase portion, to
correspond to Appellant’s claimed first and second requests to erase a
previously selected program. We disagree.
The claim language in each of independent claims 29, 30, and 31
requires the first and second presses requesting erasure to occur while “said
digital audio program [is] being reproduced” (claim 29) – that is, after a
program has been selected and starts to play, but prior to the program
finishing. For a previously selected program, the user requests erasure of the
entire program and then confirms the request to erase the entire program. In
Okano, the first and second presses delineate the boundary of a portion to be
erased and cause erasure. There is no opportunity afforded to confirm
erasure with a second key press.
We understand the Examiner’s position to be that the claims do not
require the two presses to necessarily correspond to a first press designating
an entire program and a second press to serve as a confirmation. But, rather,
claim 29 only requires two button presses, and the claim is broad enough to
read on the situation where Okano’s switch 28G is pressed twice: once at the
precise beginning of a selected program and once again at the precise end of
the program (Ans. 3-4). This position is not reasonable because the claim
language requires that two button presses to occur while the program is
“being reproduced” (claim 29). That is, the two button presses must
necessarily occur after the program starts and before the program ends.
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II.
Okano’s “whole erasing mode” is described with reference to Okano
Figure 8B, step S429 et seq.
Once a whole letter erasing switch 28I is depressed,
“ERASE” (FIG. 4K) is displayed on the LCD 30, and the LED
32 is lit. If the switch 28I is released at this time, the LED is lit
for several seconds and then a letter of the current position is
erased. If the switch 28I continues to be depressed for several
second after the LED 32 is lit, the whole letter erasure is
displayed (FIG. 4L), and the entire contents stored in the solid
memory 22 are erased in several seconds.
Okano col. 7, ll. 26-34.
In using Okano’s whole erase mode, a user presses whole letter
erasing switch 28I for erasing an entirety of a reproduced digital audio
program regardless of a position at which the program is being reproduced at
the moment switch 28I is pressed. In this mode, Okano does not select a
program to be erased and then require two separate and distinct key presses,
the first to request erasure and the second to confirm erasure.
We understand the Examiner’s alternative position to be that Okano
additionally does disclose that an entire program be deleted with two button
presses while the program is being played – not only at the beginning and
end of the program. This is because Okano discloses that while the program
is in the midst of playing, a user can first select a partial erasure with switch
28G, subsequently change his or her mind, and then press the entire erasure
switch 28I, still while the program is playing, thereby causing with these two
switch presses the entire program to be deleted (Ans. 10).
This interpretation does not correspond to the express language of the
claims. Claim 29, for example, requires that each of the first and second
erasure directing means directs erasure of the entire program. In the
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scenario set forth by the Examiner, though, initially pressing the partial
erasure switch does not direct Okano’s device to erase the entire program.

CONCLUSION
Appellant has shown that the Examiner erred in finding that the cited
prior art teaches or suggests selecting a program to be erased in its entirety,
requiring an erase command by the user and a follow up confirmation
command before erasure takes place. Each of independent claims 29, 30,
and 31 includes these limitations, which are not taught by Okano. We
therefore do not sustain the Examiner’s rejection of each of these
independent claims or the rejection of the claims dependent therefrom.

DECISION
The Examiner’s decision rejecting claims 6, 13-17, 28-34, and 38-43
is reversed.

REVERSED

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