Ex Parte Berstis et al

Board of Patent Appeals and Interferences

Jun 21, 2011

11044569 - (D) (B.P.A.I. Jun. 21, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VIKTORS BERSTIS and FABIAN F. MORGAN
____________

Appeal 2009-013665
Application 11/044,569
Technology Center 2400
____________

Before JOHN A. JEFFERY, DEBRA K. STEPHENS, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claim 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2009-013665
Application 11/044,569

2
STATEMENT OF THE CASE
Appellants’ invention stores and manipulates plural digital data
streams from multiple radio stations, enabling a user to create and
manipulate a playlist of the user’s favorite songs. Claim 1, the only claim on
appeal, is set forth below with key disputed limitations emphasized:

1. A method for processing a plurality of digital data streams, said
digital data streams being derived from transmissions received from a
like plurality of radio stations wherein portions of said digital data
streams comprise songs which are played by said radio stations, said
method comprising:

receiving said digital data streams by a processing circuit;

simultaneously storing segments of all of said digital data streams in
separate memory units, said segments being of a duration sufficient to
include complete songs being played on said radio stations from a
beginning to an end of said songs;

providing a selection means to said user, said selection means being
selectively operable by said user to play said predetermined song
from said beginning of said predetermined song; and

enabling a user to save a currently playing song and information
related to said song to a playlist by engaging a single actuating device
while said favorite song is being played, said information related to
said song being included in said received digital data streams wherein
said song-related information includes a song title of said currently
playing song, said method further including displaying said playlist on
a display device to said user, said method further including providing
a perceptible indicium to said user when said currently playing song is
being saved, said method further including determining when one or
more of said digital data streams contains a predetermined data
sequence, said predetermined data sequence being representative of
the playing of a particular song on one of said radio stations and
enabling a saving of said particular song in memory, wherein
Appeal 2009-013665
Application 11/044,569

3
said predetermined data sequence is representative of at least a key
word in a title of said particular song, wherein said predetermined data
sequence is contained within a header segment of a song file, wherein
said at least one perceptible indicium includes both an audibly
perceptible and a visually perceptible indicium, said method further
including producing an indication of a particular one of said radio
stations from which said predetermined song is being received, said
method further including enabling a switching from a currently
listened to radio station to said particular one of said radio stations
from which said predetermined song is being received, said method
further including enabling a user to create a playlist of said user’s
favorite songs, said playlist including song titles or key words within a
song title and displaying said playlist on a display device.

The Examiner relies upon the following as evidence of
unpatentability:
Bates US 6,748,237 B1 June 8, 2004
Ellis US 7,343,141 B2 Mar. 11, 2008
(filed June 15, 2004)

THE REJECTION
The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Bates and Ellis. Ans. 3-6. 1
The Examiner finds that Bates processes plural digital data streams
from multiple radio stations, enabling a user to save a currently-playing song
and information related to that song by engaging a single actuating device to
create a favorites list, while providing a perceptible indicium to the user that
the currently playing song is being saved. Ans. 3-6. The Examiner notes
that Bates does not teach (1) simultaneously storing segments of all of said

1 Throughout this opinion, we refer to the Appeal Brief filed December 29,
2008 and the Examiner’s Answer mailed April 15, 2009.
Appeal 2009-013665
Application 11/044,569

4
digital data streams in separate memory units, and (2) providing a selection
means to the user, which is operable by the user to play a predetermined
song, but notes those features are taught by Ellis in concluding that the claim
would have been obvious. Id. at 6.
Appellants argue that Bates only automates the selection of audio
broadcast signals based upon user preferences, and does not teach storing the
digital data stream content “in separate FIFO memory units as is disclosed
and claimed by the applicant.” Br. 7. Appellants also argue that Bates fails
to provide “a selection means to said user, said selection means being
selectively operable by said user to play said predetermined song from said
beginning of said predetermined song . . .” Id. at 6-7.
With regard to Ellis, Appellants argue that Ellis fails to teach
“separate FIFO memory units as disclosed and claimed . . .” (Br. 7), and that
there is “no suggestion in the references for the hypothetical combination of
references, but any combination of references would render the individual
references inoperable for their respective intended purpose . . .” (id. at 8).

ISSUES
1. Under § 103, has the Examiner erred in rejecting claim 1 by
finding Bates and Ellis collectively would have taught or suggested
(a) storing a digital data stream in separate memory units, and (b)
providing a selection means operable by a user to play a
predetermined song from the beginning of that song?
2. Has the Examiner improperly combined these two references in a
manner that renders those references inoperable for their intended
purposes?
Appeal 2009-013665
Application 11/044,569

5

PRINCIPLES OF LAW
“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read
into a claim when the claim language is broader than the embodiment.”
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citation omitted).
35 U.S.C. §103
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
If a proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, then there is no suggestion
or motivation to make the proposed modification. In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984).

Appeal 2009-013665
Application 11/044,569

6
FINDINGS OF FACT
1. Appellants’ claimed method recites “simultaneously storing
segments of all of said digital data streams in separate memory
units . . . .” (Claim 1.)
2. Bates teaches processing a plurality of digital data streams and
enabling a user to save a currently-playing song and information
regarding that song to a favorites list by engaging a set button 60.
Col. 4, lines 9 through 33 and Col. 4, line 56 through Col. 5, line
10; Fig. 2.
3. Ellis teaches simultaneously storing the content from multiple
radio receivers. Col. 3, lines 45 through 62.
4. Ellis teaches that recorded content may be replayed at the touch of
a single PRESET button 624. Col. 20, lines 29 through 36; Fig.
6A.
5. Both Bates and Ellis are directed to systems for processing
multiple radio system signals. Bates, Abstract; Ellis, Abstract.

ANALYSIS
Appellants’ contention that the cited prior art fails to show the storage
of digital data stream content “in separate FIFO memory” is not persuasive
as the Appellants have not claimed such a feature. Claim 1 merely recites
“simultaneously storing segments of all of said digital data streams in
separate memory units . . . .” We find that feature is fairly taught within the
cited prior art. As noted by the Examiner, storing the content from multiple
radio stations necessarily involves storage within separate memory units,
Appeal 2009-013665
Application 11/044,569

7
and nothing in the claim precludes these separate “units” as constituting
separate areas within memory as the Examiner indicates. Ans. 8.
Similarly, Appellants’ argument that the cited references fail to show
a selection means operable to play a predetermined song is without basis in
fact. The Ellis reference contains numerous teachings of the replay of
recorded content at the touch of a single button. See e.g., FF 4. Further,
Appellants’ unsupported assertion that there is no suggestion or support for
combining Bates and Ellis, or that such combination renders the individual
references inoperable for their respective intended purpose is likewise
unavailing. Both Bates and Ellis are directed to receiving and processing the
content of multiple radio stations (FF 5), and we find no evidence on this
record that combining these two references renders either reference
inoperable or unsatisfactory for its intended purpose.
We also note the Examiner sets forth a comprehensive listing noting
the presence of each of the features of claim 1 within the cited references.
Ans. 3-6. The Examiner also notes that Ellis teaches storing content from
multiple radio stations within memory, necessarily in separate locations (or
“units”) within that memory. Ans. 8. We adopt the Examiner’s finding that
Bates and Ellis both disclose inventions directed to monitoring and
accessing radio broadcasts. On this record, we are unpersuaded of error in
the Examiner’s combination of those references to render claim 1 obvious.
We therefore sustain the Examiner’s rejection of claim 1 over Bates
and Ellis.

Appeal 2009-013665
Application 11/044,569

8
CONCLUSION
Under § 103, the Examiner did not err in rejecting claim 1 over Bates
and Ellis.

DECISION
The Examiner’s decision rejecting claim 1 is affirmed.
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).

AFFIRMED

llw