Ex Parte DumontDownload PDFPatent Trial and Appeal BoardMar 24, 201611326014 (P.T.A.B. Mar. 24, 2016) Copy Citation 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. 2 Appeal2014-004469 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 3 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 4 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 5 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 6 Appeal2014-004469 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. 7 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 .... 8 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) 9 Copy with citationCopy as parenthetical citation