Ex Parte Matsushima et al

Patent Trial and Appeal Board

Mar 14, 2018

10048546 (P.T.A.B. Mar. 14, 2018)

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.
10/048,546 05/02/2002 Hideki Matsushima 20020185A 4652
52349 7590 03/16/2018
WENDEROTH, LIND & PONACK L.L.P.
1030 15th Street, N.W.
Suite 400 East
Washington, DC 20005-1503
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
eoa@ wenderoth. com
kmiller @ wenderoth .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIDEKI MATSUSHIMA,
SHUNJI HARADA,
YASUSHIUESAKA,
TERUTO HIROTA,
MASAYUKI KOZUKA, and
MASATAKA NIKAIDO
Appeal 2016-000755
Application 10/048,5461
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hideki Matsushima, et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the final rejection of claims 15 and 17. We have
jurisdiction under 35 U.S.C. § 6(b).
1 The Appellants identify Panasonic Intellectual Property Management Co.,
Ltd. as the real party in interest. Br. 3.
Appeal 2016-000755
Application 10/048,546
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Claim 15, reproduced below, is illustrative of the subject matter on
appeal.
15. A method of using a system to perform a migration of an
audio object to generate right management information for the
audio object,
wherein the system includes:
a memory card including an authentication circuit,
a protected area accessible only when the authentication
circuit determines that an apparatus to which the memory
card is connected is legitimate, and a non-protected area
accessible regardless of whether or not the authentication
circuit determines that the apparatus is legitimate; and
a plurality of apparatuses including an apparatus
having a right management module and an apparatus
without the right management module, the apparatus
having the right management module including a
processor controlling the right management module to
perform the migration of the audio object by recording
the audio object and to generate the right management
information for the audio object,
wherein said method comprises:
authenticating, via the authentication circuit, the
apparatus to which the memory card is connected by
determining whether the apparatus is a legitimate
apparatus when the apparatus is connected to the memory
card;
recording a plurality of files onto the non-protected
area via one of (i) the apparatus without the right
management module and (ii) the apparatus having the
right management module, each file recorded onto the
non-protected area being identifiable by a serial number
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and including an audio object, which is encrypted audio
data generated according to an encryption key;
recording, onto the protected area, a rule management
file including a plurality of rule entries, each rule entry included
in the rule management file (i) corresponding one-to-one to
each file recorded onto the non-protected area, (ii) including a
serial number matching the serial number of the corresponding
file, (iii) including an encryption key of the audio object of the
corresponding file, and (iv) including a flag for indicating either
OFF or ON for the audio object of the corresponding file,
wherein, when the flag indicates OFF, the flag serves to
indicate that the migration of the audio object of the
corresponding file has been performed by the apparatus having
the right management module, and the right management
information for the audio object of the corresponding file has
been generated by the apparatus having the right management
module, and wherein, when the flag indicates ON, the flag
serves to indicate that the migration of the audio object of the
corresponding file has not been performed, the right
management information for the audio object of the
corresponding file has not been generated, and the audio object
of the corresponding file has been recorded onto the non­
protected area by the apparatus without the right management
module;
at some point in time:
prohibiting copying of the audio object of the
corresponding file from the non-protected area when the
flag indicates OFF; and
permitting copying of the audio object of the
corresponding file from the non-protected area when the
flag indicates ON;
receiving a recording instruction from a user;
upon receiving the recording instruction, (i) externally
receiving, via the apparatus without the right management
module, an audio signal, (ii) obtaining, via the apparatus
without the right management module, at least one audio object
by encoding the audio signal, and (iii) writing, via the apparatus
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without the right management module, the obtained audio
object into the memory card together with the right
management information, wherein
each audio object, which is written into the
memory card via said writing by the apparatus without
the right management module, is one of (i) an audio
object that corresponds to one content of a plurality of
contents, and (ii) a divided audio object from among at
least two audio objects that have been obtained by
dividing one content of the plurality of contents, the one
content being divided and recorded by one of (i) the
apparatus without the right management module, and (ii)
the apparatus having the right management module,
each rule entry, which is recorded onto the
memory card via said recording of the rule management
file by the apparatus without the right management
module and which corresponds to a file (i) of the
plurality of files stored on the non-protected area and (ii)
including the audio object corresponding to one content,
stores a content ID identifying the one content, and the
flag, and
wherein each rule entry, which corresponds to a
file (i) of the plurality of files stored on the non-protected
area and (ii) including the divided audio object from
among the at least two audio objects obtained by dividing
the one content, stores a content ID identifying the audio
object from among the at least two audio objects of the
one content, and includes a head rule entry storing the
flag;
reading, via the apparatus having the right management
module, (i) the audio object corresponding to the one content
from the non-protected area of the memory card and (ii) the rule
entry corresponding to the read audio object from the protected
area of the memory card;
performing, via the apparatus having the right
management module and based on the flag of the read rule
entry, the migration of the read audio object by recording the
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Application 10/048,546
read audio object onto the non-protected area of the memory
card;
generating, via the apparatus having the right
management module and based on the flag of the read rule
entry, the right management information for the read audio
object, the flag of the read rule entry controlling whether or not
the apparatus having the right management module generates
the right management information for the read audio object, and
the apparatus having the right management module only being
permitted to perform the migration of the read audio object by
recording the read audio object onto the non-protected area and
the generation of the right management information for the read
audio object when the flag of the read rule entry indicates ON;
and
performing, via the apparatus having the right
management module, a check-out of the read audio object read
from the memory card by recording the read audio object to the
non-protected area of another memory card based on the right
management information generated by the apparatus having the
right management module.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 15 and 17 are rejected under 35 U.S.C. §112, first paragraph,
as failing to comply with the written description requirement.
2. Claims 15 and 17 are rejected under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the
invention.
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ISSUES
Did the Examiner err in rejecting claims 15 and 17 under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement?
Did the Examiner err in rejecting claims 15 and 17 under 35 U.S.C.
§112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicants regard as the
invention?
ANALYSIS
The rejection of claims 15 and 17 under 35 U.S.C. §112, first paragraph, as
failing to comply with the written description requirement.
The Examiner’s position is:
[ ] Regarding the prohibiting and permitting steps (in tandem) in
claim 15-
[ ] In this case, claim 15 recites prohibiting and permitting steps in
tandem. The method as claimed including these steps lacks support in
the Specification.
[ ] Regarding the audio object in claim 15 -
[ ] It is unclear to where the audio object is being migrated. In this
case, the claim is broader than the Specification.
Final Act. 5.
We agree with the Appellants that “the authenticating step in pending
claim 15 is described in the specification in such a way as to reasonably
convey to one skilled in the art that the inventors had possession of the
claimed subject matter.” Br. 13. As the Appellants point out, “[t]he
authenticating step is discussed in the specification at least at page 30, line 1
- page 31, line 24 and Figure 9.”
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With regard to the issue the Examiner raises in that the prohibiting
and permitting steps in claim 15 are being performed in tandem, this is not
an accurate reading of the claim. As the Appellants point out, claim 15
recites that “at some point in time: prohibiting copying of the audio object of
the corresponding file from the non-protected area when the flag indicates
OFF; and permitting copying of the audio object of the corresponding file
from the non-protected area when the flag indicates ON.”“[T]he prohibiting
step and permitting step do not occur in tandem, but only when their
associated condition is met.” App. Br. 14.
With regard to the issue the Examiner raises in that the audio object of
claim 15 is being migrated, again, this is not an accurate reading of the
claim. As the Appellants point out, claim 15 calls for “performing, via the
apparatus having the right management module and based on the flag
of the read rule entry, the migration of the read audio object by recording the
read audio object onto the non-protected area of the memory card.”
From this recitation in claim 15, it is clear that the read audio
object is being migrated onto the non-protected area of the
memory card. Also, the specification at least at page 25, line 15
- page 27, line 1 provides the requisite description of the
migration in such a way as to reasonably convey to one skilled
in the art that the inventors had possession of the claimed
subject matter.
Br. 15.
The Answer provides no response to the Appellants’ arguments.
The rejection is not sustained.
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The rejection of claims 15 and 17 under 35 U.S.C. §112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicants regard as the invention.
The Examiner’s position, in its entirety, is:
[ ] Regarding the reading step in claim 15-
[ ] Claim 15 recites “reading, via the apparatus . . . Note that in the
previous step the method recites writing the audio object on the
Memory Card with rights information. It is unclear how the method
can be read from the special areas.
[ ] Regarding the audio object in claim 15 -
[ ] It is unclear to where the audio object is being migrated. In this
case, the claim is broader than the Specification.
[ ] The claims are generally narrative and indefinite, failing to
conform with current U.S. practice. They appear to be a literal
translation into English from a foreign document and are replete with
grammatical and idiomatic errors.
Final Act. 6.
We will reverse this rejection for the reasons discussed in the Brief.
As a general matter, it is well-established that the determination
whether a claim is invalid as indefinite “depends on whether those skilled in
the art would understand the scope of the claim when the claim is read in
light of the specification.” North Am. Vaccine, Inc. v. American Cyanamid
Co., 1 F.3d 1571, 1579 (Fed. Cir. 1993); see Miles Lab., Inc. v. Shandon,
Inc., 997 F.2d 870, 875 (Fed. Cir. 1993). “For purposes of [Section] 112
[Para.] 2, it is the disclosure in the specification itself, not the technical form
of the disclosure that counts.” Atmel Corp. v. Information Storage Devices
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Inc., 198 F. 3d 1374 (Fed. Cir. 1999). The Specification does not appear to
have been considered. It should have been. With regard to the concern over
the audio object being migrated, as the Appellants explain, “[from reading]
claim 15, it is clear that the read audio object is being migrated onto the non­
protected area of the memory card. Also, the original specification at least at
page 25, line 15 - page 27, line 1 provides the description of the migration.
Thus, the scope of this subject matter is clear.” Br. 17. Claims are to be
given their broadest reasonable interpretation in light of the supporting
disclosure. In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).
Also, the Examiner appears to be concerned about how the invention
of claim 15 operates. That is a concern better raised under the enablement
requirement of 35 USC §112. “The definiteness inquiry focuses on whether
those skilled in the art would understand the scope of the claim when the
claim is read in light of the rest of the specification.” Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Even if
the written description does not enable the claims, the claim language itself
may still be definite. In re Hyatt, 708 F.2d 712, 714-15 (Fed. Cir. 1983);
In re Miller, 441 F.2d 689, 693 (CCPA 1971) (“[B]readth is not to be
equated with indefmiteness ....”). Union Pac. Res. Co. v. Chesapeake
Energy Corp., 236 F.3d 1625 (Fed. Cir. 2001).
Regarding claim 15 being “replete with grammatical and idiomatic
errors” (Final Act. 6), no further details have been provided. Accordingly,
we are in no position to decide whether the claim is indefinite due to an error
in the language.
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CONCLUSIONS
The rejection of claims 15 and 17 under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement is
reversed.
The rejection of claims 15 and 17 under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicants regard as the invention is
reversed.
DECISION
The decision of the Examiner to reject claims 15 and 17 is reversed.
REVERSED
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