Disney Enterprises, Inc.Download PDFPatent Trials and Appeals BoardOct 28, 20212020003893 (P.T.A.B. Oct. 28, 2021) Copy Citation 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. 14/721,793 05/26/2015 Mohammad Poswal 0260433 6644 63649 7590 10/28/2021 DISNEY ENTERPRISES, INC. C/O FARJAMI & FARJAMI LLP 26522 LA ALAMEDA AVENUE, SUITE 360 MISSION VIEJO, CA 92691 EXAMINER MCCORD, PAUL C ART UNIT PAPER NUMBER 2654 NOTIFICATION DATE DELIVERY MODE 10/28/2021 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): docketing@farjami.com farjamidocketing@yahoo.com ffarjami@farjami.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MOHAMMAD POSWAL, GIOVANNA ALAIMO, MALCOLM, RICHARD GINTER, and TAYLOR HELLAM Appeal 2020-003893 Application 14/721,793 Technology Center 2600 Before JOHNNY A. KUMAR, JASON J. CHUNG, and JOYCE CRAIG, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 6, 8, 9, 11–13, 16, and 18. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Disney Enterprises, Inc. Appeal Br. 2. Appeal 2020-003893 Application 14/721,793 2 Exemplary Claim Exemplary claim 1 under appeal reads as follows: 1. A media player device for use with a text medium, the media player device comprising: an audio output; a memory storing a text medium application software; and a processor configured to execute the text medium application software to: receive a first signal emitted from a wireless communication element of the text medium, the text medium being one of a printed publication and an electronic publication including the wireless communication element and having a plurality of pages and a text medium ID, the first signal including the text medium ID obtained from the text medium and uniquely identifying the text medium, the plurality of pages each having a plurality of words; locate, in response to receiving the text medium ID, a bookmark location in the memory associated with a user of a plurality of users associated with the text medium ID; and play an audio starting from the bookmark location associated with the user, via the audio output and in response to receiving the text medium ID, wherein the audio corresponds to the text medium ID and pronounces words corresponding to the plurality of words in a same sequence appearing in the plurality of pages. Rejection on Appeal Claims 1–3, 6, 8, 9, 11–13, 16, and 18 rejected under 35 U.S.C. § 103 as being unpatentable over Hwang (US 2014/0118800 A1, published May 1, 2014) further in view of Pallakoff (US 2013/0333055 A1, published Dec. 12, 2013. Appeal 2020-003893 Application 14/721,793 3 Appellant’s Contentions 1. Appellant contends the Examiner erred in rejecting independent claims 1 and 11 because “nowhere does Hwang disclose, teach, or suggest that its electronic bookmark plays an audio starting from the bookmark location, such that the audio pronounces words corresponding to the plurality of words in a same sequence appearing in the pages of the printed book of Hwang,” as required by the independent claims. Appeal Br. 6. 2. Appellant also contends, “the Answer conflated electronic bookmark 106 of Hwang with audio books that may utilize electronic bookmark 106 of Hwang.” Reply Br. 3. In particular, Appellant further contends: electronic bookmark 106 is a separate and distinct device from audiobooks. There is no disclosure, teaching, or suggestion in Hwang that electronic bookmark 106 is somehow integrated with an audiobook, such that upon retrieval of the bookmark location, an audio is played by the audiobook starting from the bookmark location, where the audio corresponds to the text medium ID and pronounces words corresponding to the plurality of words in a same sequence appearing in the plurality of pages, as required by independent claim 1. Id. applying the disclosure and teaching of Hwang at paragraph [0050] to audiobooks (rather than printed books) would result in electronic bookmark 106 communicating the bookmark location to the user, such that the user enters the location in the audiobook (a different and separate device from electronic bookmark 106), so the audiobook (not electronic bookmark 106) starts playing the audio from that location. Id. at 4. Appeal 2020-003893 Application 14/721,793 4 ANALYSIS We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We adopt as our own the findings and reasons set forth in the Examiner’s Answer (see Ans. 8–12). We highlight and address specific findings and arguments for emphasis as follows. Claim 1 recites, inter alia: play an audio starting from the bookmark location associated with the user, via the audio output and in response to receiving the text medium ID, wherein the audio corresponds to the text medium ID and pronounces words corresponding to the plurality of words in a same sequence appearing in the plurality of pages. Appeal Br. 10 (Claims App. (claim 1)) (hereinafter disputed limitations) As to Appellant’s contention 1, the Examiner determines, and we agree: Hwang is considered to disclose, audio which corresponds to the text medium ID and Hwang operates to pronounce words corresponding to the plurality of words in a same sequence appearing in the plurality of pages (please see at least Hwang: ¶ 31-36, 50-57). That is, a user of an audio book reader may which to resume using the Hwang taught format agnostic bookmark by which a next position in a text such as an audio book corresponds to a last position in a text, wherein the bookmarked text position may comprise a position in any of a plurality of formats including a last position in an audio book (please see at least Hwang ¶ 1, 18-25, 31-36: bookmark stored in a format-agonistic position indicator for access from different devices). As such it must be expected Appeal 2020-003893 Application 14/721,793 5 that a user wishing to resume a media content upon an audio book reader, said reader operable to obtain and audibly present a digital representation of content such as a book (Hwang: ¶ 1), employs an electronic representation of said particular users current position within the media content in the form of the Hwang format agnostic bookmark (Hwang: ¶ 1, 2: a format agnostic bookmark maintains a user's last position in a content item with regard to a particular media across a plurality of media devices: physical book, ebook reader, audio book reader); said bookmark operable to resume delivery of the content upon the audio book based upon the last position resolved by the format agnostic bookmark (Hwang: ¶ 1, 2, 18-25) which operates based on the last position in the media content and in concert with the media content upon the audio book reader to resume the media content at the users current position and thereby pronounce words corresponding to the plural of words in a same sequence appearing in the plurality of pages (Hwang: ¶ 1, 2, 18-25, 31-36, 50-57). Ans. 9, 10. In other words, on pages 9 and 10 of the Answer, the Examiner provides a well-reasoned finding, which demonstrates that Hwang teaches the claimed disputed limitations (citing Hwang ¶ 1, 2, 18–25, 31–36, and 50–57). We concur with the Examiner’s fact-finding as it is supported by Hwang’s disclosure. We determine Hwang to teach the disputed limitations and as such is cumulative to the combined teachings of Hwang and Pallakoff, as discussed above, and thus Pallakoff is not necessary to support the rejection. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (explaining that limiting an affirmance of an obviousness rejection to fewer than all of the references cited by the Examiner does not constitute a new ground of rejection); In re Bush, 296 F.2d 491, 495–96 (CCPA 1961); see also MPEP § 1207.03(a)(II) (9th ed. Rev. 10.2019, rev. June 2020). Thus, we do not find Appellant’s Appeal 2020-003893 Application 14/721,793 6 arguments related to Hwang persuasive that the Examiner’s rejection is in error. As to Appellant’s contention 2, we note that Appellant’s arguments are not commensurate with the scope of the claim because the claim does not recite “electronic bookmark integrated with an audiobook.” Accordingly, Appellant has not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner’s reading of the contested limitations of claim 1 on the cited prior art as suggested by the Examiner. For similar reasons, we also sustain the Examiner’s rejection of independent claim 11, which recites similar limitations and was not argued separately. In addition, we sustain the Examiner’s rejection of claims 2, 3, 6, 8, 9, 12, 13, 16, and 18, which depend directly or indirectly therefrom and were not argued separately. See Appeal Br. 8; see also 37 C.F.R. § 41.37(c)(1)(iv). Consequently, we conclude there is no reversible error in the Examiner’s rejections of claims 1–3, 6, 8, 9, 11–13, 16, and 18. Appeal 2020-003893 Application 14/721,793 7 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6, 8, 9, 11–13, 16, 18 103(a) Hwang, Pallakoff 1–3, 6, 8, 9, 11–13, 16, 18 TIME PERIOD FOR RESPONSE 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. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation