Ex Parte Kinouchi et al

Patent Trial and Appeal Board

Dec 17, 2012

11493797 (P.T.A.B. Dec. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAKASHI KINOUCHI, HIDEO TSUKAZAKI,
JUNICHIRO SAKATA, MASAAKI MIYAZAWA,
YASUHARU SEKI, and TATSUYA KONNO
____________

Appeal 2010-010953
Application 11/493,797
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-5 and 7-12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to transmitting content to a portable
reproduction apparatus. Claim 1, reproduced below, is representative of the
claimed subject matter:
1. An information-processing apparatus capable of
transmitting content to a portable reproduction apparatus which
can reproduce the content, comprising:

a content storage section configured to store contents and
identifiers respectively corresponding with and identifying the
contents;

a management list acquisition section configured to
acquire a management list, in which the identifiers of the
contents stored in the portable reproduction apparatus are
included, from the portable reproduction apparatus;

a deletion completion list acquisition section configured
to acquire a deletion completion list which includes an
identifier of any content deleted from the portable reproduction
apparatus;

a transmission content acquisition section configured to
acquire an identifier of any content stored in the content storage
section that is not included in the management list acquired
from the portable reproduction apparatus and that is also not
included in the deletion completion list acquired from the
portable reproduction apparatus;

a transmission permission/inhibition determination
section configured to permit transmission of the content, the
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identifier of which is acquired by the transmission content
acquisition section, to the portable reproduction apparatus; and

a content transmission section configured to transmit the
content, whose transmission is permitted by said transmission
permission/inhibition determination section, to the portable
reproduction apparatus.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Robbin

Silverman
US 2003/0167318 A1

US 2006/0224620 A1
Sept. 4, 2003

Oct. 5, 2006
(filed Mar. 29, 2005)

Positron User’s Guide: Version 1.0, 9 pages, (2003), (cited by Appellants in
IDS filed January 11, 2007) (hereinafter “Positron”).

REJECTION
Claims 1-5 and 7-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Silverman, Robbin, and Positron.

ANALYSIS
Regarding representative claim 1, Appellants contend that “none of
Silverman, Robbin, and the Positron Guide, alone or in combination,
teaches] or suggests] a deletion completion list ‘acquired from the portable
reproduction apparatus’” (App. Br. 6).
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This case turns on the claim construction of the word “acquire,” which
means “to come into possession of.”1 Importantly, the definition of
“acquire” does not specify how one comes into possession of that which is
acquired. Accordingly, based on its plain meaning, the clause “a deletion
completion list acquisition section configured to acquire a deletion
completion list which includes an identifier of any content deleted from the
portable reproduction apparatus” (claim 1) is not limited to a list of deleted
contents transmitted in a single instance from the “portable reproduction
apparatus” to the “information-processing apparatus.” Rather, the broadest
reasonable interpretation of this clause encompasses information collected
piecemeal by the information-processing apparatus through interaction with
the portable reproduction apparatus that, added together, represents a list of
deleted contents.
With this construction, we do not find persuasive Appellants’
argument that “the computer 102 of Silverman generates, rather than
receives, a list of files that were deleted from device 116 by comparing the
contents of the device 116 with its own record of what ‘should’ be on the
device 116” (App. Br. 6). First, claim 1 does not recite a “received” list as
Appellants argue, but rather an “acquired” list. Accordingly, Appellants’
argument is not commensurate with the scope of the claim. Second, in light
of our construction, we agree with the Examiner’s finding that Silverman
discloses “a deletion completion list acquisition section configured to
acquire a deletion completion list which includes an identifier of any content

1 WEBSTER’S ENCYCLOPEDIC UNABRIDGED DICTIONARY OF THE ENGLISH
LANGUAGE 13 (1994).
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deleted from the portable reproduction apparatus” (claim 1) (Ans. 4).
Specifically, Silverman discloses that :
[I]f the contents of device 116 have changed, computer 102 at
206 determines what the actual contents of device 116 are. It
accomplishes this by loading a record of what “should” be on
device 116 from a local data store. Computer 102, in this
example, then examines each file that “should” be on device
116 to see if it is actually present at 208 (e.g., see FIG. 3E
Verify Device Contents with respect to 202, 204, 206, and 208).
If a particular media file should be stored on device 116 but it is
not present, then computer 102 sets the local data store’s notion
of what device 116 should hold if the file had been on the
device properly.

(Silverman, ¶0034]). In other words, Silverman’s computer 102 examines
the contents of device 116 to determine which files are not on the device that
should be on the device, which would include files deleted from the device
since the last synchronization. Further, while building a list of files to place
on the device 116, the computer 102 “retrieves lists of files that were added
to, or deleted from, device 116 since the last synchronization” (Silverman,
¶ 0036]). This shows that the computer actually acquires such a list of
deleted files, and as quoted above, the list is based on an examination of the
contents of the device. Thus, the list of deleted files is “acquired from” the
device.
Appellants also argue that “t]he proposed modification of Silverman
with the Positron Guide would violate M.P.E.P. §§ 2143.01(V) and
2143.01(VI) by changing the principle of operation of Silverman and also
rendering it unsatisfactory for its intended purpose” (App. Br. 9).
Specifically, Appellants assert that
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The user-defined rules of Silverman may indicate that a file
already deleted from the device 116 should be transferred to the
device 116 with high priority. If that user-defined transfer is
stopped because of the modification of Silverman with the
functionality of the Positron Guide, then Silverman no longer
serves its purpose of allowing user-defined rules to dictate
which files that are transferred from the computer 102 to the
device 116.
(App. Br. 9). The Examiner responds that “Appellants’] argument is not
persuasive because Silverman includes an embodiment where the priority of
items is not user-assignable” (Ans. 9, citing Silverman, ¶ 0030]). To quote
Silverman: “a]lthough the priority of the items is user-assignable, some
embodiments may include pre-formed automatic settings (and/or heuristics)
to anticipate a user’s expected priority settings” (Silverman, ¶ 0030]).
Thus, the Examiner’s position is that the combination of Positron with
Silverman’s automated settings embodiment (where, in view of Positron, the
automated settings would “remember which files you have deleted and not
recopy them when you next synchronize” (Positron, p. 2)) would not cause a
conflict with Silverman’s user-assignable priority settings in the case that a
user wanted to add previously deleted files because there would be no active
user-assignable priority settings when Silverman’s automated settings were
being used.
Appellants’ Reply Brief does not address the Examiner’s response
with respect to this issue (see Reply Br. 2-4). Therefore, Appellants do not
explain why it would not have been obvious to combine Positron with
Silverman’s embodiment that uses automated settings to anticipate a user’s
priority settings such that, in view of Positron, the settings would be based
on the determination that a user would not want to add previously deleted
files to the device, or explain why this specific combination would change
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the principle of operation of Silverman or render it unsatisfactory for its
intended purpose.
We are therefore not persuaded that the Examiner erred in rejecting
claim 1, and claims 2-5 and 7-12 not separately argued.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-5 and 7-12 under 35
U.S.C. § 103(a).

DECISION
For the above reasons, we affirm the rejection of claims 1-5 and 7-12.
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

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