Ex Parte Toyomura et al

Board of Patent Appeals and Interferences

Aug 8, 2012

10010630 (B.P.A.I. Aug. 8, 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.
10/010,630 11/07/2001 Yuji Toyomura MAT-8198US 4831
7590 08/08/2012
RATNER AND PRESTIA
Suite 301
One Westlakes, Berwyn
P.O. Box 980
Valley Forge, PA 19482-0980
EXAMINER
LE, DEBBIE M
ART UNIT PAPER NUMBER
2168
MAIL DATE DELIVERY MODE
08/08/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUJI TOYOMURA, TOSHIAKI SUGAUCHI, and
KAZUNORI OTSU
____________

Appeal 2010-000963
Application 10/010,630
Technology Center 2100
____________

Before CARL W. WHITEHEAD, JR., GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-000963
Application 10/010,630

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3-6, 8, 12, 14-32, and 34-58. Appeal Brief 2. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
We affirm.

Introduction
The present invention relates to a memory media. An
exemplary memory media is illustrated as memory card 25 in
Appellants’ Fig. 2 (Substitute Specification, page 16, line 2).
With regard to claim 1, as illustrated by Appellants’ Fig. 1,
Appellants’ memory media includes a plurality of directories
(e.g. directory 6, directory 7, etc.) that each store files of
respectively specific file formats (Substitute Specification, page
11, line 9). Thus, for example, directory 6 only stores music
files, directory 7 only stores still image files, etc. A further
directory (e.g. directory 9) is included for storing files in any
format different than the file format stored in the plurality of
directories (Substitute Specification, page 11, line 10).
Appeal Brief 2.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A memory media for storing data for access by an
application program being executed on a data processing
system, the memory media comprising

a plurality of directories at a directory level, each of said
directories limited to storing files of a respective one of a
plurality of file formats, so that not more than said respective
one of said plurality of file formats are permitted to be stored in
each of said directories, and
Appeal 2010-000963
Application 10/010,630

3
a further directory at said directory level, said further
directory for storing files in other than said plurality of file
formats.

Rejections on Appeal
Claims 1, 3-6, 8, 14, and 32 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Ando (U.S. Patent Number 6,341,196 B1; issued
January 22, 2002). Answer 3-7.
Claims 12, 15-31, 34-43, 46-58 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ando and Black (U.S. Patent Number
7,103,602 B2; issued September 5, 2006). Answer 7-13.
Claims 44 and 45 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Ando, Black, and Ito (U.S. Patent Application Publication
Number 2005/0219559 A1; published October 6, 2005). Ans. 13-14.

Issue on Appeal
What are the metes and bounds of the claim limitation “file formats”
as recited in the independent claims?

ANALYSIS
Appellants argue, “The entire issue under Appeal is whether or not
Ando et al. disclose or suggest: 1) a plurality of directories that are each
limited to storing files having one file format and 2) a further directory for
storing other file formats.” Appeal Brief 5.
Appellants summarize the Examiner’s arguments as follows:
The Examiner argues that the Ando reference discloses
directories that are limited to stirring files of a respective
Appeal 2010-000963
Application 10/010,630

4
one of a plurality of file formats. Appellants respectfully
disagree. The Examiner supports her position by referring
to Fig. 5 of Ando. Fig. 5 shows a video directory and an
audio directory. On page 15 of the Examiner’s Answer,
the Examiner argues that “each subdirectory is named with
a unique subdirectory name.” The Examiner then argues
that video files are recorded under a subdirectory with the
name VIDEO TS and all audio files are recorded under a
subdirectory with the name AUDIO TS.
Reply Brief 1.
Appellants distinguish the claimed invention from the cited prior art,
Ando, by arguing:
The Examiner is correct that Ando discloses audio
files in one subdirectory and video files in another
subdirectory. The flaw in the Examiner’s argument is that
the-Examiner’s argument has not dealt with the word
“format” which appears in Appellants’ claims. Audio
files, for example, have different formats. Exemplary
formats include WAV files, MIDI files, WMA (Windows
Media Audio) files, MP3 files, etc. Video files can also
have different formats. Exemplary video files include
Blu- ray, HD-DVD, MPEG3, MPEG4, etc. Appellants’
claims are clear that each directory is limited to one format
(e.g. MP3, MPEG4, etc.). Appellants’ claim 1 does not
claim that each directory is limited to one type of file (e.g.
audio or video). The Examiner’s argument is wrong
because the Examiner’s argument confuses file types with
file formats. Accordingly, withdrawal of the rejection is
respectfully requested.
Reply Brief 2.
In light of Appellants’ contentions, we are left to determine the
meaning of the word “format” which appears in the recited claims and which
the Examiner has allegedly fail to deal with or address. See, Reply Brief 2.
Appellants summarize the claimed invention as follows:
Appeal 2010-000963
Application 10/010,630

5
With regard to claim 1, as illustrated by Appellants’ Fig. 1,
Appellants’ memory media includes a plurality of
directories (e.g. directory 6, directory 7, etc.) that each
store files of respectively specific file formats (Substitute
Specification, page 11, line 9). Thus, for example,
directory 6 only stores music files, directory 7 only stores
still image files, etc. A further directory (e.g. directory 9)
is included for storing files in any format different than the
file format stored in the plurality of directories (Substitute
Specification, page 11, line 10).
Appeal Brief 2.
Appellants’ summary of the invention is more consistent with the
Examiner’s interpretation of the claimed invention and contradictory to
Appellants’ arguments in the Reply Brief. Further, Appellants referenced
their Substitute Specification page 11, line 9, multiple times throughout the
Appeal Brief in support of the “file format” limitation recited in the claims.
See for example Appeal Brief 2-5.
Looking to Appellants’ Substitute Specification we do not find
support for Appellants’ arguments that the “Examiner’s argument confuses
file types with file formats” (Reply Brief 2) and therefore the claimed
invention distinguishes over Ando.
An excerpt of Appellants’ Substitute Specification is reproduced
below:
Referring to FIG. 1, directory of the memory card
comprises a root directory 5, a directory group 8 for storing
specific format fries and a directory 9 for storing non-specific
format files. The directory group 8 for storing specific format
files comprises a directory 6 for storing music files, a directory
7 for storing still image files and other directories (not shown).
MP3 and the like files of music file format, for example, are
stored in accordance with the directory 6 for storing music files
Appeal 2010-000963
Application 10/010,630

6
in a corresponding data area. Exif and the like still image files
are stored in accordance with the directory 7 for storing still
image files in a corresponding data area. Meanwhile, no
specific format files are stored in accordance with the directory
9 for storing non-specific format files in a corresponding data
area.
A memory card of the present embodiment has a
structure where the directory group 8 for storing specific format
files which contains the directory 6 for storing music files, the
directory 7 for storing still image files and other directories for
the specific format, as well as the directory 9 for storing non-
specific format files, are disposed in the same branch locating at
one rank lower branch of the root directory 5. The above-
described structure is based on a consideration that when a CPU
accesses to files stored in the respective directories referring to
the directory entry and to the FAT (File Allocation Table), an
overhead span of pursuing the pointers should be as small as
possible, in order to make the efficiency of file search, etc. the
highest possible.
Substitute Specification 11-12.
Appellants’ Substitute Specification indicates that files are stored in
the directory groups based upon music, images, and other “non-specific
format files.” Id. There is no support within Appellants’ Substitute
Specification for Appellants’ argument that the Examiner confused file types
with file formats. See Reply Brief 2. We find that the Examiner interpreted
the claims in light of the Specification. “‘[I]t is fundamental that claims are
to be construed in light of the specifications and both are to be read with a
view towards ascertaining the invention.’” Phillips v. AWH Corp., 415 F.3d
1303, 1316 (Fed. Cir. 2005) (en banc) (quoting U.S. v. Adams, 383 U.S. 39,
49 (1966).) “T]he specification ‘is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.’” Id. at 1315 (quoting Vitronics Corp. v.
Appeal 2010-000963
Application 10/010,630

7
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). We are not at
liberty to ignore Appellants’ Substitute Specification and interpret the claims
in any other manner other than what is commensurate with the Appellants’
Substitute Specification. Therefore, we do not find that the Examiner
confused file types with file formats. We sustain the Examiner’s rejection of
independent claim 1 and independent claims 6, 8, 32, 49, and 52-57, since
they recited limitations commensurate in scope to claim 1, as well as those
claims dependent therefrom.

DECISION
The rejections of claims 1, 3-6, 8, 12, 14-32, and 34-58 are 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). See 37
C.F.R. § 41.50(f).

AFFIRMED

llw