Ex Parte Dumont

Patent Trial and Appeal Board

Mar 24, 2016

11326014 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111326,014 0110512006
24498 7590 03/28/2016
Robert D, Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
FIRST NAMED INVENTOR
Frank Dumont
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PA050006 8600
EXAMINER
CHOWDHURY, NIGAR
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
uspto@technicolor.com
pat. verlangieri@technicolor.com
russell. smith@technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK DUMONT
Appeal2014-004469
Application 11/326,014
Technology Center 2400
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of all currently pending claims 10, 11, 13-19, and 21-25. Claims
1-9, 12, and 20 have been cancelled. (Br. 2). We have jurisdiction under 35
U.S.C. § 6(b).
We reverse and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
Appeal2014-004469
Application 11/326,014
STATEMENT OF THE CASE
Appellant's invention is directed to a method for pre-programmed
recording. (Spec. 1 ). Claim 10, reproduced below, is illustrative of the
claimed subject matter:
10. A method for performing pre-programmed recordings on a
recording medium, the method comprising the steps of:
receiving a first request to perform a first pre-programmed
recording of a first program having a first start time and a first end
time, the first preprogrammed recording requiring generating
recording specific data after completing recording of the first program
on the recording medium;
receiving a second request to perform a second pre-
programmed recording of a second program having a second start
time, the second pre-programmed recording requiring generating
recording specific data after completing recording of the second
program on the recording medium; and
determining whether a difference between the first end time and
the second start time is less than a time interval, and if so, performing
the steps of:
generating the recording specific data for both the first
program and the second program after completing recording of
the second program on the recording medium; and
recording the recording specific data for both the first
program and the second program on the recording medium;
wherein the recording specific data includes at least one
of a menu chapter information, thumbnails and navigation
information.
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Application 11/326,014
The Examiner ;s Rejection
Appellant seeks our review of the following rejection:
Claims 10, 11, 13-19, and 21-25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Alexander et al. (US
6,177,931 Bl; issued Jan. 23, 2001), Nagano et al. (US 2001/0004418 Al;
published June 21, 2001) and Admitted Prior Art (Spec. 1, 11. 15-19)
(hereafter "AP A").
ANALYSIS
The Examiner relies on alleged Admitted Prior Art for teaching the
limitation of independent claims 10 and 18 reciting "generating the
recording specific data for both the first program and the second program
after completing recording of the second program on the recording
medium." (Final Act. 6-7 (citing Spec. 1, 11. 15-19); Ans. 12). In
particular, the Examiner quotes a passage from the Background section of
Appellant's Specification stating that "when a recording is finished the
recorder starts to generate recording specific data, e.g. titles and thumbnails,
which are then stored on the recording medium in addition to the main
recording." (Spec. 1, 11. 16-19 (quoted at Final Act. 6-7)).
Appellant argues:
It is not apparent in which regard the alleged [Admitted Prior
Art] could be understood to disclose generating the recording
specific data for both the first program and the second program
after completing recording of the second program on the
recording medium, and recording the recording specific data for
both the first program and the second program on the recording
medium. The Examiner merely points, twice, to a single
reference of generating and storing recording-specific data after
the recording. See Final Office Action, p. 6. The Examiner
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Appeal2014-004469
Application 11/326,014
seems to interpret the cited text in a way that is not supported by
the content of this text.
(Br. 7).
We are persuaded the Examiner has not shown how generating
recording-specific data after each recording, as taught in the Admitted Prior
Art cited by the Examiner, teaches or suggests generating such data for two
recordings (programs) for "both the first program and the second program
after completing recording of the second program on the recording
medium," as recited in claims 10 and 18. Rather, the Background section of
Appellant's Specification suggests that recording such data after each
recording causes a problem when two recordings are back-to-back, which
Appellant's invention is then directed to solving. (Spec. 1, 11. 19--25).
However, although independent claim 18 is directed to an apparatus,
independent claim 10 is directed to a method and recites
determining whether a difference between the first end time and
the second start time is less than a time interval, and if so,
performing the steps of: generating the recording specific data
for both the first program and the second program after
completing recording of the second program on the recording
medium.
(Emphasis added).
Therefore, the "generating," "recording," and "wherein" steps in
method claim 10 need not be performed if it is determined that the difference
between the first end time and the second start time is not less than a time
interval. Cf In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006)
("[O]ptional elements do not narrow the claim because they can always be
omitted."). "If the condition for performing a contingent step is not satisfied,
the performance recited by the step need not be carried out in order for the
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Appeal2014-004469
Application 11/326,014
claimed method to be performed." C'ybersettle, Inc. v. National Arbitration
Forum, Inc., 243 Fed. Appx. 603, 608 (Fed. Cir. 2007) (Unpublished case).
See also MPEP § 2111.04 regarding conditional (optional) language in a
method claim: "Claim scope is not limited by claim language that suggests
or makes optional but does not require steps to be performed .... "
Appellant contends Nagano does not disclose "determining whether a
difference between the first end time and the second start time is less than a
time interval" as recited in independent claim 10 and commensurately
recited in independent claim 18. (Br. 7). According to Appellant, "Nagano
checks whether a first recording is still being performed when the start time
of a second recording arrives," and "[i]f so, the first recording is erased and
the second recording is started." (Id.) "If not, when the first recording is
finished, the second recording is started as normal." (Id.)
The Examiner relies on Figure 4, step 004 of Nagano to teach or
suggest the disputed limitation, finding Nagano determines a time interval
between the first end time of reservation A and the second start time of
reservation B. (Ans. 13; Final Act. 5) We are persuaded the Examiner has
not shown the disputed limitation is taught or suggested in Figure 4 of
Nagano. Figure 4 of Nagano describes an embodiment where a reservation
for recording B takes precedence over a reservation for recording A.
(Nagano i-f 45). Step 004 of Figure 4 describes a decision point to determine
whether reservation A is operational (recording) when it is time for
reservation B to begin recording. (Nagano i-f 126). If reservation A is
recording, it is erased and reservation B begins recording. (Nagano i-f 127)
If reservation A is not recording, reservation B simply starts recording.
(Nagano i-f 126). We therefore agree with Appellant that the Examiner has
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Appeal2014-004469
Application 11/326,014
not shown that Figure 4 of Nagano teaches or suggests "determining whether
a difference between the first end time and the second start time is less than
a time interval." Rather, Figure 4 of Nagano is only concerned with whether
reservation A is operating when it is time for reservation B to start recording
in order to preempt reservation A with reservation B, not with determining
the difference in time between the end time of reservation A and the start
time of reservation B and whether it is less than a time interval.
However, we enter a new ground of rejection as set forth below because we
determine it would have been obvious to one of ordinary skill in the art to
determine whether the difference between the first end time and the second
start time is less than a time interval.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 103(a)
rejection of independent claims 10 and 18. For the same reasons, we do not
sustain the Examiner's 35 U.S.C. § 103(a) rejection of dependent claims 11,
13-17, 19, and 21-25.
NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
35 USC§ 103(a) Rejection
Claim 10 is rejected on a new ground of rejection under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Alexander et al. (US
6, 177,931 Bl; issued Jan. 23, 2001), Nagano et al. (US 2001/0004418 Al;
published June 21, 2001 ), and Admitted Prior Art (Spec. 1, 11. 15-19)
("APA"). We incorporate the rejection of claim 10 made by the Examiner
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Application 11/326,014
(Final Act. 4--8), but supplement it as follows with respect to the
"determining whether a difference between the first end time and the second
start time is less than a time interval" limitation.
As we find supra, the "generating," "recording," and "wherein" steps
of method claim 10 are not performed if it is determined that the difference
between the first end time and the second start time is not less than a time
interval. Nagano describes determining if the reservation time for two
recordings overlaps. (Nagano i-fi-181, 84, 85, 97, Fig 13A, step S002, Fig.
13B, step S015, Fig. 15, Fig. 16, Fig. 17). Nagano also describes that the
starting and ending time of an overlapped program may be corrected.
(Nagano i188; Fig. 15). For example, the ending time of a program may be
expedited by one hour to eliminate overlapping, or the starting time of a
program may be delayed by 30 minutes to eliminate overlapping. (Nagano
i-fi-1 94, 101, Fig. 16, Fig. 17). Such overlap may also be visually displayed to
the user. (Nagano i-f l 00, Fig. 17).
It would have been obvious to one of ordinary skill in the art to
determine the difference between the first end time and the second start time
when determining such overlap in Nagano. The ordinary artisan would
recognize that when such difference is not less than a time interval (for
example, a time interval of 0), there is no overlap. See KSR lnt '!. Co. v.
Teleflex inc., 550 U.S. 398, 418 (2007) (In making the obviousness
determination one "can take account of the inferences and creative steps that
a person of ordinmy skill in the art would employ.'')
For these reasons we newly reject independent claim 10 as
unpatentable under 35 U.S.C. § 103(a) over Alexander, Nagano, and APA.
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Appeal2014-004469
Application 11/326,014
The Patent Trial and Appeal Board is a forum for review, and not for
initial examination. We have entered a new ground of rejection for claim
10. However, we leave to the Examiner to ascertain whether claims 11 and
13-17 should be rejected under 35 U.S.C. § 103(a) as being unpatentable
over Alexander, Nagano, and APA alone or in combination with other prior
art, in view of our findings and conclusions herein, and to enter such
rejections as may be appropriate. Our failure to enter such rejections herein
does not indicate that we believe claims 11 and 13-17 are patentable.
DECISION
For the above reasons, the Examiner's rejection of claims 10, 11, 13-
19, and 21-25 is reversed.
We newly reject claim 10 under 35 U.S.C. § 103(a).
37 C.F.R. § 41.50(b) provides that, "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same record ....
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Appeal2014-004469
Application 11/326,014
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.
§ 41.50(±).
REVERSED
37 C.F.R. § 41.50(b)
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