Ex Parte Shuster

Patent Trial and Appeal Board

Mar 16, 2017

11550953 (P.T.A.B. Mar. 16, 2017)

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.
11/550,953 10/19/2006 Gary Stephen Shuster 6657-19400 9514
35690 7590 03/20/2017
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C.
P.O. BOX 398
AUSTIN, TX 78767-0398
EXAMINER
SHIAU, SHEN C
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
patent_docketing@intprop.com
ptomhkkg @ gmail .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY STEPHEN SHUSTER
Appeal 2014-009946
Application 11/550,953
Technology Center 2100
Before ROBERT E. NAPPI, KRISTEN L. DROESCH, and
KAMRAN JIVANI, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1, 4 through 7, 12, 13, 15, 16, 18, 21, and 27. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2014-009946
Application 11/550,953
THE CLAIMED SUBJECT MATTER
Appellant’s claimed invention pertains to a system to provide access
to content that may be hidden so as to not be accessible unless a specific
sequence of links and/or code sequences are followed. Abstract. Claims 1
and 12, reproduced below, are illustrative of the subject matter on appeal.
1. A non-transitory computer-readable medium containing
machine readable instructions that, in response to reading by a
computing system, cause the computing system to perform
operations comprising:
presenting an interface to a user, wherein the interface
includes a plurality of menus that specify availability of
apparent content stored on the computer-readable medium,
wherein the computer-readable medium stores hidden content
accessible via a particular sequence of commands made through
the interface, wherein none of the plurality of menus specify
availability of the hidden content;
in response to determining that the user has not correctly
executed the particular sequence of commands, restricting the
user from being able to access the hidden content, wherein said
restricting includes preventing access to the hidden content
until a reset condition is performed, wherein performing the
reset condition is different from executing the particular
sequence of commands.
12. A method, comprising:
a media player device presenting a plurality of menus
that specify availability of apparent content stored on a digital
medium, wherein the digital medium further stores hidden
content accessible via a particular sequence of commands
performed via the plurality of menus;
in response to the particular sequence of commands not
being properly performed, the media player determining to
prevent access to view the hidden content;
the media player device subsequently receiving the
particular sequence of commands; and
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Application 11/550,953
based on the determining, the media player device
preventing access to view the hidden content.
THE REJECTIONS
The Examiner has rejected claims 12 and 16 under 35 U.S.C. § 102(b)
as being anticipated by Henkel (Guido Henkel, “The World of Easter Eggs
on DVD,” DVD Review, pp. 1—2, August 12, 1998). Final Act 2—4.1
The Examiner has rejected claims 1, 4, 6, 7, 13, 15,21, and 27 under
35 U.S.C. § 103(a) as being unpatentable over Henkel in view of Ogawa
(US 2001/0037459 Al, Nov. 1, 2001). Final Act. ^U8.
The Examiner has rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Henkel in view of Ogawa and Banning (US
2003/0093699 Al, May 15, 2003). Final Act. 8-9.
The Examiner has rejected claim 18 under 35 U.S.C. § 103(a) as
being unpatentable over Henkel in view of Banning. Final Act. 9.
ANALYSIS
Anticipation rejection of claims 12 and 16
Appellant argues Henkel fails to disclose locking out a user after an
incorrect input sequence is entered, so that even a correct sequence does not
reveal hidden content. App. Br. 13. More specifically, Appellant argues
that Henkel does not disclose the limitations of “the media player device
subsequently receiving the particular sequence of commands; and based on
1 Throughout the Opinion we refer to the Appellant’s Appeal Brief, dated
March 7, 2014 (“App. Br.”), the Reply Brief, dated September 12, 2014
(“Reply Br.”), the Final Office Action mailed June 6, 2013 (“Final Act.”)
and the Examiner’s Answer, mailed July 17, 2014 (“Answer”).
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Application 11/550,953
the determining, the media player device preventing access to view the
hidden content.” App. Br. 13.
The Examiner finds Henkel discloses the limitation directed to
preventing access if the sequence of commands are not properly performed
and states:
since hidden features can only be accessed if [the] user has
correctly pressed the key combinations in specific menus, in
other words, if [the] user has not correctly pressed the key
combinations in specific menus then the user is not able to
access the hidden features.
Final Act. 3. The Examiner further states claim 12 does not use the term
“locking out,” and that claim 12 does not specifically use the term “correct”
as a modifier for “particular sequence” in the limitation “subsequently
receiving the particular sequence of commands.” Ans. 2—3.
We concur with the Examiner’s findings. Initially we note that claim
12 recites three steps, (a) in response to the particular sequence of
commands; (b) subsequently receiving; and (c) based on the determining.
Our reviewing court has said proper construction of method claims “requires
an ordering of steps when the claim language, as a matter of logic or
grammar, requires that the steps be performed in the order written, or the
specification directly or implicitly requires” an order of steps. TAL tech Ltd.
v. Esquel Apparel, Inc., 279 F. App’x 974, 978 (Fed. Cir. 2008). Thus, we
construe claim 12 as requiring step (b) and (c) to be performed after step (a),
however, we do not find that step (c) recites a limitation requiring it to be
performed after step (b). Thus, Appellant’s arguments directed to
preventing access after subsequently receiving the particular sequence are
not commensurate with the scope of the claim. Further, we note, step (a) is a
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Application 11/550,953
conditional step, which recites performing an action if a contingent is not
satisfied. As such, the broadest reasonable interpretation of the claim is that
the claim is met if the contingent is satisfied (i.e., in response to the
particular sequence of commands being properly performed, steps (b) and
(c), which Appellant equates to the argued lock out need not be performed).
See In re Schulhauser, Appeal 2013-007847, 2016 WL 6277792 (PTAB
Apr. 28, 2016) (precedential). Thus, as Appellant’s arguments are not
commensurate with the scope of claim 12 we are not persuaded of error and
sustain the Examiner’s rejection of claim 12 and claim 16, which is grouped
with claim 12.
Obviousness rejection of claim 13
Appellant argues that dependent claim 13 recites, in response to a
resent event, discontinuing the preventing the user access to the hidden
content, which is not taught by Ogawa. App. Br. 18—19.
We are not persuaded of error by these arguments. Claim 13 recites
“in response to a reset event, discontinuing the preventing,” thus, the steps
are conditioned on a reset event occurring. As discussed above, the broadest
reasonable interpretation of a method claim includes actions when the reset
event does not occur. Appellant’s arguments are not commensurate with the
scope of claim 13, and therefore, we sustain the Examiner’s rejection of
claim 13.
Obviousness rejection of claim 21
Appellant argues that claim 21 recites that the hidden content is the
principal content of the computer readable medium and that the content of
Henkel’s Easter Eggs is not principal content. App. Br. 20.
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The Examiner responds by stating that the “content” is non-functional
descriptive material, abstract ideas stored on the medium, and not given
patentable weight. Answer 5—6. We concur with the Examiner. The
limitation is merely describing the content on the media and does not change
the underlying media. Further, we consider the limitation to be subjective,
Appellant’s Specification does not provide a definition of “principal
content” which defines over the information in Henkel’s Easter Eggs (e.g.,
actor biographies, background information, access to areas of games without
play for hours, music score, etc.). Accordingly, we are not persuaded of
error in the Examiner’s rejection of claim 21.
Obviousness rejection of claims 15 and 18
Appellant argues the Examiner’s rejection of dependent claim 18 is in
error for the same reason as claim 12. App. Br. 21. Accordingly, we sustain
the Examiner’s rejection of claim 18 for the reasons discussed with respect
to claim 12.
Appellant’s arguments group claim 15 with claim 1. Claim 15 recites
a reset event being directed to reloading of digital medium.2 We note that
Appellant’s arguments directed to claim 1 are directed to the limitation of
“preventing access to the hidden content until a reset condition is
performed,” which is not present in either claims 12 or 15. Accordingly,
Appellant’s argument directed to claim 15 is not commensurate with the
2 We note that Appellant admits that the claim does not recite how the reset
event fits into the method of claim 12. App. Br. 14 n.2.
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scope of the claim and, thus, is not persuasive of error. Thus, we sustain the
Examiner’s rejection of claim 15.
Obviousness rejection of claims 1, 4 through 7, and 27
Appellant argues the combination of Henkel and Ogawa fails to teach
in response to a user not correctly executing a particular sequence of
commands preventing access to the hidden content until a reset condition is
performed as recited in independent claims 1 and 27. App. Br. 14—18.
The Examiner finds Appellant’s Specification defines a reset
condition as ejection and re-insertion of a digital medium. Answer 4.
Further, the Examiner finds that Ogawa teaches the claimed limitation citing
paragraph 88. Id. We disagree with the Examiner’s findings. Paragraph 88
of Ogawa teaches that once the proper password is entered access to the data
on a disk is maintained until it is ejected and reloaded. We do not, however,
find that paragraph 88, prevents access after the password has incorrectly
been entered even if the proper password is later entered. Further, as
Appellant argues, paragraph 76 and Figure 14 of Ogawa seem to teach that
the user can continue to enter a password to gain access to the disk and is not
prevented from accessing information until a reset (ejection and reinsertion
of the disk). App. Br. 16—17. Accordingly, Appellant’s arguments have
persuaded us of error in the Examiner’s rejection of independent claims 1
and 27. Thus, we do not sustain the Examiner’s rejection of claims 1, 4, 6,
7, and 27.
The Examiner’s rejection of dependent claim 5 relies upon the same
findings regarding the limitations of independent claim 1, and the Examiner
has not found that Banning makes up for the deficiency in the rejection of
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clam 1. Accordingly, we similarly do not sustain the Examiner’s rejection
of claim 5.
DECISION
The decision of the Examiner to reject claims 12, 13, 15, 16, 18, and
21 is affirmed.
The decision of the Examiner to reject claims 1, 4 through 7, and 27 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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