Ex Parte Kelly et al

Patent Trial and Appeal Board

Mar 7, 2013

10535467 (P.T.A.B. Mar. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte DECLAN PATRICK KELLY, BEI WANG, and YANG PENG

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Appeal 2010-008606
Application 10/535,467
Technology Center 2100
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Before THU A. DANG, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-18 (App. Br. 5). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Invention
Exemplary Claims 1 and 5 follow:
1. A user interface system for presenting to a user the
contents of an information carrier intended to be inserted into a
reading apparatus, said information carrier containing data files
having different content types and/or different coding formats,
said user interface system comprising:

means for retrieving stored capabilities (CAP) of said
reading apparatus, said CAP signifying which coding formats
and/or content types said reading apparatus supports to play
such data files;

selection means for selecting a set of data files complying
with the CAP from among data files contained on said
information carrier; and

presentation means for presenting to said user, a table of
contents from the selected data files.

5. The user interface system as claimed in claim 4 or
16, wherein said user interface system further comprises:

downloading means for downloading a plug-in allowing
the reading apparatus to play data files contained on said
information carrier and considered non-playable according to
the CAP of said reading apparatus.

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Claims 1-18 stand rejected under 35 U.S.C. 103 (a) as being
unpatentable over Okuda (U.S. Pat. Pub. No.: 2002/0138781 A1) in view of
Griffiths (U.S. Patent No. 5,913,038) (Ans. 3-7).

ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Can the claimed invention be distinguished from the prior art
on the basis of a “CAP signifying which coding formats and/or content types
said reading apparatus supports . . . [and] presenting to said user, a table of
contents from the selected data files,” as recited in independent claim 1 and
as similarly recited in independent claims 7 and 15?
2. Would Griffiths have taught or suggested “retrieving stored
capabilities (CAP) of said reading apparatus . . . [and] selecting a set of data
files complying with the CAP from among data files contained on said
information carrier”, as recited in independent claim 1 and as similarly
recited in independent claims 7 and 15?
3. Would the combination of Okuda and Griffiths have taught or
suggested “downloading a plug-in allowing the reading apparatus to play
data files contained on said information carrier and considered non-playable
according to the CAP of said reading apparatus”, as recited in claim 5 and as
similarly recited in claims 12 and 13?

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ANALYSIS
Obviousness Rejection of Claims 1-4, 6-11, and 14-18
Appellants argue that the Examiner erred in rejecting independent
claims 1, 7, and 15 as obvious because “there is no disclosure or suggestion
in Griffiths of ‘means for retrieving stored capabilities (CAP) of said reading
apparatus, said CAP signifying which coding formats and/or content types
said reading apparatus supports to play such data files’ as clearly set forth in
claims 1 and 15” (App. Br. 19). Appellants further argue that “there is no
disclosure or suggestion in Griffiths of the existence of such a CAP file, as
clearly set forth in claim 7” (id. at 19-20). In addition, Appellants argue that
Okuda does not teach "‘presentation means for presenting to said user, a
table of contents from the selected data files’” (id. at 23-24).
We conclude, however, that these arguments urging patentability of
independent claims 1, 7, and 15 are predicated on non-functional descriptive
material, i.e., the content of a capabilities file and the content of a
presentation to a user. The informational content of non-functional
descriptive material is not entitled to weight in the patentability analysis.
See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not
claim merely the information content of a memory. . . Nor does he seek to
patent the content of information resident in a database.”). See also Ex
parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex
parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit
Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias,
84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959
(Fed. Cir. 2006). Accordingly, we do not find Appellants’ arguments based
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on the content of the capabilities file and the user presentation to be
persuasive.
Appellants also contend that the combination of Okuda and Griffiths
does not teach or suggest "‘selecting a set of data files complying with the
CAP from among data files contained on said information carrier’” (App.
Br. 23 (emphasis omitted)). In support of their contention, Appellants argue
that
the selection means of the subject invention is not a user
interface allowing the user to select a file, but rather, is an
operative element of the user interface of the subject invention
which scans all of the data files on the information carrier and
establishes a set of data files which comply with the capabilities
as indicated in the CAP file
(id. (emphasis omitted)).
The Examiner concluded, however, that Griffiths teaches the selection
of data files that comply with a capabilities file of a device (Ans. 10-11).
We agree with the Examiner’s conclusion. Griffiths discloses that “[e]ach
stream of data can be characterized by a ‘media type.’ Each media type can
be further described by a major type, a minor type or sub-type” (Griffiths
col. 2, ll. 57-58). Griffiths also discloses that “a table or database, stored in
a memory storage device, can be used to define the characteristics of
available filters” (id. at col. 2, ll. 52-54). In particular, “each filter has stored
in the table a list of major types and minor types which the filter can accept”
(id. at col. 2, ll. 62-64). Griffiths also discloses that the identification of the
media type of the data file “allows the selection of an appropriate file reader
filter from the table” (id. at col. 3, ll. 21-22).
By disclosing the selection of a file reader filter from a table (i.e.,
capabilities file) that is appropriate for a data file, Griffiths teaches selecting
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data files that comply with the capabilities file. In particular, if one of the
filters in a device’s capabilities file is determined to be appropriate for a
particular data file, then that data file necessarily complies with that device’s
capabilities.
Accordingly, we find no error in the Examiner’s obviousness rejection
of independent claims 1, 7, and 15 as well as claims 2-4, 6, 8-11, 14, and 16-
18 dependent therefrom because Appellants did not set forth any separate
patentability arguments for those claims (see App. Br. 27).

Obviousness Rejection of Claims 5, 12, and 13
Appellants also contend that the Examiner erred in rejecting
dependent claims 5 and 12 as obvious because the combination of Okuda
and Griffiths does not teach or suggest "‘downloading means for
downloading a plug-in allowing the reading apparatus to play data files
contained on said information carrier and considered nonplayable according
to the CAP of said reading apparatus’" (App. Br. 28 (emphasis omitted)).
Appellants similarly contend that the Examiner erred in rejecting dependent
claim 13 as obvious because the combination of Okuda and Griffiths does
not teach or suggest downloading “a ‘plug-in’ for expanding the playing
capabilities of the apparatus and for updating the capabilities (CAP) file
based on the downloaded ‘plug-in’” (id. at 29).
The Examiner found that Okuda discloses “a file management method
for downloading a desired file to a predetermined recording medium by
accessing recording means in which file are recorded in a layered structure”
(Ans. 11). We disagree with the Examiner. Claims 5, 12, and 13 do not
require merely a download of any file in a particular format; they instead
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require expanding the capabilities of an apparatus to play files that were
considered to be non-playable with the existing capabilities of the apparatus.
The Examiner failed to show that Okuda teaches this claim requirement (see
Ans. 11). Accordingly, we find error in the Examiner’s rejection of claims
5, 12, and 13.

DECISION
We affirm the Examiner’s decision rejecting claims 1-4, 6-11, and 14-
18 as being unpatentable under 35 U.S.C. § 103(a). We reverse the
Examiner’s decision rejecting claims 5, 12, and 13 as being unpatentable
under 35 U.S.C. § 103(a).
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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