Ex Parte Block et al

Patent Trial and Appeal Board

Feb 28, 2014

11691786 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW S. BLOCK, ANDY RIFKIN, and
BRIAN JOHANNES
___________

Appeal 2011-013091
Application 11/691,786
Technology Center 2100
____________

Before CARLA M. KRIVAK, CAROLYN D. THOMAS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

FISHMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013091
Application 11/691,786

2

This is an appeal under 35 U.S.C. § 134(a) of the final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We heard oral
arguments on February 20, 2014. A transcript will be included in the record
in due time.
We affirm.

STATEMENT OF THE CASE
THE INVENTION
Appellants’ invention relates to a portable dedicated audio Bible
device that includes an indexed and multi-formatted audio version of The
Bible. See generally, Abstract.
Claim 1, reproduced below, is representative:
1. A digital audio Bible device including:
a set of digital audio data segments, each digital audio
data segment being stored in a unit corresponding to a single
verse from The Bible;
a set of verse index entries, each verse index entry
referencing an identified one of the set of digital audio data
segments at a verse level of granularity;
a set of play lists, each play list specifying at least one
sequence of verse index entries from the set of verse index
entries;
a user interface supporting display of names associated
with the set of play lists; and
a control module for accessing and processing, at a verse
level of granularity, specified ones of the set of digital audio
data segments in response to a user selection, via the user
interface, of a play list from the set of play lists.

Appeal 2011-013091
Application 11/691,786

3

THE REJECTIONS
Claims 1-8 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stringer (US 2006/0069456 A1), Cross Country Software
(Scourby, Audio-Bible Add On For the Online Bible,
http://www.crosscountrysoftware.com/audiobible.html (2005)), and
Thruthebible.ca (Streaming Audio for Thru the Bible,
http://www.thruthebible.ca/playlists/index.htm (2005)).
Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Stringer, Cross Country Software, Thruthebible.ca, and Mack (US
2005/0243658 A1).
Claims 11-16, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stringer and Cross Country Software.
Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stringer, Cross Country Software, and Semantic Bible
(Composite Gospel Pericope Index,
http://www.semanticbible.com/cgi/2004/11/pericope-index.html (2004)).

THE CONTENTIONS
Rather than repeat all arguments, we refer to Appellants’ Appeal Brief
(“App. Br.” filed January 21, 2011), Appellants’ Reply Brief (“Reply Br.”
filed June 20, 2011), and the Examiner’s Answer (“Ans.” mailed April 18,
2011) for the respective positions of Appellants and the Examiner. Only
those arguments actually made by Appellants have been considered in this
decision. Arguments Appellants did not make in the Appeal Brief have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appeal 2011-013091
Application 11/691,786

4

In rejecting independent apparatus claim 1, the Examiner finds
Stringer discloses the set of index entries, the user interface, and the control
module, however
Stringer does not explicitly disclose each digital audio
data segment being stored in a unit corresponding to a single
verse from The Bible; that the index entries are a set of verse
index entries; a set of play lists, each play list specifying at least
one sequence of verse index entries from the set of verse index
entries; and that the control module accesses the digital audio
data segments at a verse level of granularity.
Ans. 4-5. The Examiner further finds Cross Country Software teaches
indexing an audio Bible at the verse level and articulates a reason for
combining Stringer and Cross Country Software. Ans. 5. The Examiner
further finds Thruthebible.ca teaches use of play lists and articulates a reason
for combining Stringer and Thruthebible.ca. Ans. 5-6. Appellants argue,
generally, the Examiner improperly relied on hindsight in the proposed
combination. App. Br. 5-12.

ISSUE
Appellants’ arguments present us with the issue: has the Examiner
erred in combining Stringer, Cross Country Software, and Thruthebible.ca in
rejecting claim 1?

ANALYSIS
CLAIMS 1-8 AND 10
Appellants argue the Examiner erred in combining Stringer and Cross
Country Software (also referred to by Appellants as “Audio-Bible”) because
Stringer discloses a simple portable device incapable of supporting the
Appeal 2011-013091
Application 11/691,786

5

graphical user interface and indexing features of Cross Country Software
required to access verse-level audio segments of The Bible. App. Br. 9-11.
We are not persuaded.
The Examiner finds there is no technical challenge in providing audio
files of a smaller size divided at the verse level and explains Cross Country
Software “clearly demonstrates that such a feat had already been achieved.”
Ans. 17. We agree.
Appellants argue: Stringer’s device exhibits an “absence of
GUI-based pointing functionality” (App. Br. 10); Stringer’s device is
“rudimentary” (id.); Stringer’s device presents “structural/functional
limitations” that impose a “relatively high cost” to incorporate the
verse-level selection and playback of Cross Country Software (id.);
modifying Stringer to store/index/access 31,000 Bible verses in Stringer’s
device would require “substantial effort” (App. Br. 11); and Stringer’s
device is “less sophisticated” as compared to a general purpose computer as
suggested in Cross Country Software (id.). We are not persuaded.
Appellants have not provided persuasive arguments or evidence to support
their contention that modifying Stringer’s device to incorporate the verse-
level audio information of Cross Country Software would have been
“uniquely challenging or difficult for one of ordinary skill in the art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). To
the contrary, Stringer explicitly discloses a pointing device (Fig. 2A, joystick
42; ¶¶ 0022, 0027) utilized for selecting items in a menu (i.e., a graphical
user interface). Stringer also explicitly discloses a memory (Fig. 1, memory
16) for storing audio content as well as index information (see, e.g., ¶ 0027),
Appeal 2011-013091
Application 11/691,786

6

and suggests no particular limitation precluding storing verse-level audio
files and related index information.
We further note, “[t]he test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference,” but rather “what the combined teachings of those
references would have suggested.” In re Keller, 642 F.2d 413, 425 (CCPA
1981). Here, it is not necessary that Cross Country Software’s GUI and
indexing features be bodily incorporated into Stringer’s device, but rather
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.
Appellants further contend the Examiner erred in combining Stringer
with Thruthebible.ca because the combination would not result in the set of
play lists as recited in the claims. App. Br. 11-12. Specifically, Appellants
argue Thruthebible.ca discloses only a single transient play list rather than a
set of play lists, as recited in the claims. Id. We are not persuaded.
The Examiner explains:
[T]he claimed invention utilizes play lists, which are
conventional in digital audio players, and were conventional at
the time of Appellant's invention. ThrutheBible.ca is relied
upon for teaching the desirability of using a conventional play
list (an M3U file) to bring multiple audio files, each audio file
being a segment from The Bible, into a chapter play list.
ThrutheBible.ca is relied upon, therefore, to show that
conventional playlist technology had been contemplated for
application in digital audio representations of The Bible.
Ans. 19. The Examiner further explains Stringer’s disclosure of a user
perusing a catalog of contents and navigating through menus to select an
item for playback and/or presentation implicitly discloses a play list (Ans.
20-21). We agree. Appellants’ claimed invention merely provides for
Appeal 2011-013091
Application 11/691,786

7

“predictable use of prior-art elements according to their established
functions.” KSR, 550 U.S. at 417.
In view of the above discussion, we are not persuaded the Examiner
erred by combining Stringer, Cross Country Software, and Thruthebible.ca
in rejecting claim 1. We, therefore, sustain the rejection of independent
claim 1 and claims 2-8 and 10 not argued separately.

CLAIM 9
Appellants argue the Examiner erred in rejecting claim 9 for the same
reason as claim 1. App. Br. 12. For the same reasons as claim 1, we are not
persuaded of error and we sustain the rejection of claim 9.

CLAIMS 11-16, 19, AND 20
Appellants argue the Examiner erred in rejecting claims 11-16, 19,
and 20 for the same reason as claim 1. App. Br. 12-13; Reply Br. 7. For the
same reasons as claim 1, we are not persuaded of error and we sustain the
rejection of claims 11-16, 19, and 20.

CLAIMS 17 AND 18
Appellants argue the Examiner erred in rejecting claims 17 and 18 for
the same reason as claim 15 and hence for the same reason as claim 1. App.
Br. 13. For the same reasons as claims 15 and 1, we are not persuaded of
error and we sustain the rejection of claims 17 and 18.

Appeal 2011-013091
Application 11/691,786

8

DECISION
For the above reasons, the rejections of claims 1-20 under 35 U.S.C.
§ 103 are 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

mls