Ex Parte BACH

Board of Patent Appeals and Interferences

Mar 29, 2011

09327085 (B.P.A.I. Mar. 29, 2011)

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.
09/327,085 06/04/1999 JOSEPH BACH CA1378 5016
27460 7590 03/30/2011
JOSEPH BACH
17460 LAKEVIEW DRIVE
MORGAN HILL, CA 95037
EXAMINER
VIG, NARESH
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
03/30/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOSEPH BACH
____________

Appeal 2010-001955
Application 09/327,085
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001955
Application 09/327,085

2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-2, 5, and 6, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to a method of
soliciting and receiving orders for merchandise over the radio or Internet
(Spec. 1:6-9). Claim 1, reproduced below with the numbering in brackets
added, is representative of the subject matter of appeal.

1. An interactive audio system, comprising:
a home audio system having a user interlace;
a communication device connecting said home audio system to
a telephone:
an audio player receiving music signal and audibly playing
music pieces from said music
signal;
[1] a rider buffer storing data corresponding to said music
pieces;
[2] a main processor receiving a programming signal and a rider
signal from a program transmission channel and directing said
programming signal to the audio player and storing the rider signal in
the rider buffer;
[3] an ordering interrupter;
wherein upon receiving a command from the user interface, said
ordering interrupter instructs the communication device to establish
communication with an ordering center via said telephone, and places
Appeal 2010-001955
Application 09/327,085

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an order for a hard copy of the music piece corresponding to the data
stored in said rider buffer.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Noreen US 5,303,393 Apr. 12, 1994
August US 6,389,055 B1 May 14, 2002

The following rejections are before us for review:
1. Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which appellant regards as the invention.
3. Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over August and Noreen.

THE ISSUES
With regards to the rejections of the claims under 35 U.S.C. § 101, the
issue turns on whether the claims are directed to non-statutory subject
matter.
With regards to the rejections of the claims under 35 U.S.C. § 112,
second paragraph, the issue turns on whether method recitations are present
in the claim which render the claim indefinite.
Appeal 2010-001955
Application 09/327,085

4
With regards to the rejections under 35 U.S.C. § 103(a), the issue
turns on whether the Examiner has presented a prima facie case that August
discloses claim limitation [2] cited above.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. August has disclosed a method for combining digital data with a
perceptible program signal. The method is useful in encoding purchase
information or watermarking information into the signal. (Abstract).
FF2. August in Fig. 1 shows a program signal 12 combined with a data
signal 16 to produce combined signal 19. The signal 19 is converted to
acoustic signal 20. The acoustic signal 20 is received by a user 22 and also
at the microphone 14 where a data signal 34 is extracted.
FF3. August in Fig. 5 shows the transmission of both a nondiscernable
visual pattern and a nondiscernable audio signal from device 101. The
signal 103 is received by device 101 and the nondiscernable audio signal
played at speaker 106 and a visual pattern is played at 105. Fig. 5 fails to
show the device 101 storing a rider signal in a rider buffer. Devices 101
and 110 are separate elements in the system.
FF4. August in Fig. 6 shows block diagram of the components of the
device. August in Fig. 8 shows a flow diagram of the process by which data

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).

Appeal 2010-001955
Application 09/327,085

5
embedded in a non-discernable visual or non-audible message is captured
and used (Col. 2:57-59).
FF5. August in Figs. 1, 5-6, and 8 does not disclose: a main processor
receiving a programming signal and a rider signal from a program
transmission channel and directing said programming signal to the audio
player and storing the rider signal in the rider buffer. None of the cited
Figures 1, 5-6, and 8, shows a specific reference to a rider buffer.

ANALYSIS
Rejections under 35 U.S.C. § 101 and 35 U.S.C. § 112 (2nd paragraph)
The Examiner has determined that claims 1-2, 5, and 6 are
unpatentable under 35 U.S.C. § 101 because the claims overlap two different
statutory classes of invention by being directed to both a system and method
(Ans. 3-4 and 7). The Examiner has also rejected these claims under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly and distinctly claim the subject matter regarded as the invention
because the claim includes system and method recitations (Ans. 4, 7).
In contrast, the Appellant argue that the rejection of claims 1-2, 5, and
6 on both of these grounds in improper (Br. 5-7).
We agree with the Appellant. Claim 1 is directed to a “system” and
the body of the claim contains many elements of the system such as a user
interface, an audio player, and a main processor. The portions of the claim
cited by the Examiner such as main processor “receiving”, “directing”, and
“storing” (Ans. 7) are merely functions performed by the elements of the
claimed apparatus. Including such functions of the system in the body of
the claim here does not render the claim unpatentable under 35 U.S.C. § 101.
Appeal 2010-001955
Application 09/327,085

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Similarly, the cited claims are not indefinite under 35 U.S.C. § 112, second
paragraph. In claim 1, it is clear that the claim is drawn to a “system” and
any included functions of the system’s recited elements do not render the
claim indefinite as it is clear that a “system” is what is being claimed. For
these above reasons the rejection of claims 1-2, 5, and 6 under 35 U.S.C.
§ 101 and 35 U.S.C. § 112 (2nd paragraph) is not sustained.

Rejections under 35 U.S.C. § 103(a)
The Examiner has determined that claims 1-2, 5, and 6 are
unpatentable under 35 U.S.C. § 103(a) under August and Noreen (Ans. 4-6,
8-9). The Examiner has determined that August discloses claim limitation
[2] at Figs. 5-6, and 8 (Ans. 5, 8).
In contrast, the Appellant has argued that this rejection is improper
because August fails to disclose claim limitation [2] (Br. 8-9).
We agree with the Appellant. Claim limitation [2] requires: “a main
processor receiving a programming signal and a rider signal from a program
transmission channel and directing said programming signal to the audio
player and storing the rider signal in the rider buffer” and none of the cited
Figs. 5, 6, or 8 in August disclose this (FF5). The Examiner has failed to
present a prima facie case of obviousness by failing to specifically show
where claim limitation [2] is present in the cited prior art. In Figure 5 of
August, the reference does not show the device 101 to include storing a rider
signal in a rider buffer and device 110 is a separate device (FF4). For these
above reasons, the rejection of claim 1 and its dependent claims under 35
U.S.C. § 103(a) is not sustained.

Appeal 2010-001955
Application 09/327,085

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DECISION
The Examiner’s rejection of claims 1-2, 5, and 6 is reversed.

REVERSED

MP