Ex Parte Bloebaum et al

Patent Trial and Appeal Board

Aug 16, 2013

11315915 (P.T.A.B. Aug. 16, 2013)

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.
11/315,915 12/22/2005 L. Scott Bloebaum 9314-134 1875
54414 7590 08/16/2013
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
HOCKER, JOHN P
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
08/16/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte L. SCOTT BLOEBAUM,
IVAN NELSON WAKEFIELD, and GREGORY A. DUNKO1
____________________

Appeal 2011-000980
Application 11/315,915
Technology Center 2100
____________________

Before JOSEPH L. DIXON, CAROLYN D. THOMAS, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-25 and 35-37. Appellants have previously canceled
claims 26-34. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Sony Ericsson Mobile Communications AB.
App. Br. 1.
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STATEMENT OF THE CASE 2
The Invention
Appellants’ invention relates to communications devices and, more
particularly, to communications devices including broadcast media tuning
features, methods and computer program products related to the same. Spec.
¶ [0001] (“BACKGROUND OF THE INVENTION”).
Exemplary Claims
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphasis added):
1. A computer implemented method of accessing
downloadable content using a calendar application on a device,
comprising:
identifying an event in the calendar application of the
device that includes downloadable content identification data;
providing access information for the downloadable
content to a content access application of the device based on
the identified event and the downloadable content
identification data; and
accessing the downloadable content based on the
provided access information using the content access
application.

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
June 4, 2010); Reply Brief (“Reply Br.,” filed Oct. 19, 2010); Examiner’s
Answer (“Ans.,” mailed Sep. 10, 2010); Final Office Action (“FOA,” mailed
Mar. 17, 2010); and the original Specification (“Spec.,” filed Dec. 22, 2005).
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Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Nicholas US 2007/0043766 A1 Feb. 22, 2007 (hereinafter
“Nicholas II”), with an effective
prior art date of Aug. 18, 2005
based on benefit claim under 35
U.S.C. § 119(e) to U.S.
Provisional Appl. Ser. No.
60/710,030 (hereinafter
“Nicholas I”).
Savilampi US 2006/0212330 A1 Sep. 21, 2006
Extrinsic evidence: “cal (Unix)”
Rejections on Appeal3
1. Claims 1-25 and 35-37 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Nicholas II and the
knowledge of a person having ordinary skill in the art. Ans. 7.
2. Claims 20 and 32-344 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Nicholas II and the

3 We note that the Examiner cited a reference to “Steelberg” in the detailed
rejection of claims 4-9 and 16 (Ans. 9-10), but which is not cited in the
explicit statement of the rejection. Ans. 7. We also point out that this
discrepancy was also present in the Final Rejection (FOA 11), which
appears to have been “cut and pasted” into the Answer. Although not
dispositive to the central issues in this Appeal, we note that we find no
argument by Appellants traversing the Examiner’s detailed statement of the
rejection which erroneously cites Steelberg.
4 Appellants cancelled claims 26-34 concurrent with the filing of the Appeal
Brief, such that the rejection of claims 32-34 is moot. App. Br. 2.
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knowledge of a person of ordinary skill in the art, as evidenced by
Savilampi.5 Ans. 16.
3. The Examiner further stated:
For claims 1, 3, 12-15, 17-18, 21-24 and 35-37, Examiner
utilized a 102/103 Rejection which has support in MPEP
706.02(m). Examiner utilized this because the claim
interpretation is in dispute and thus the [sic] is an Example
where examiner has found a device that solves the same
problem. Under Examiner’s interpretation the concept as a
whole has been disclosed and the claims should be rejected
under 35 USC 102, but it is arguable they are not ‘identically
disclosed’ thus the 102/103 rejection is more appropriate in this
situation.
Ans. 15.
Our detailed claim construction analysis, infra, has been carried out
on the rejection of claim 1 for unpatentability over Nicholas II combined
with the knowledge of a person having ordinary skill in the art.
COMMENTS ON ALTERNATIVE § 102 REJECTION
The Examiner cited an alternative basis for rejection of claims 1-25
and 35-37 under 35 U.S.C. § 102 as being anticipated by Nicholas II.
Ans. 15. Although given the opportunity, Appellants have not provided any
arguments in rebuttal to this alternative basis for rejection (e.g., see App. Br.

5 The Examiner’s precise language is: “Claims 20 and 32-34 rejected under
35 U.S.C. 103(a) as being unpatentable over Nicholas in view of the
teachings, skills and motivation of one of ordinary skill, as evidenced by
‘Savilampi’ . . . .” Ans. 15. For our claim construction analysis, we
interpret “teachings, skills and motivation of one of ordinary skill” to mean
the “knowledge of a person of ordinary skill in the art.”
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4 et seq.; Reply Br. 1-6), but instead focus on the § 103(a) rejection of the
claims on appeal.
Accordingly, the Examiner’s findings with respect to the alternative
§ 102 rejection remain unrebutted, and we therefore sustain the § 102
rejection of claims 1-25 and 35-37.
ISSUE
Appellants argue (App. Br. 5-9; Reply Br. 1-5) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Nicholas II and the knowledge of a person having ordinary
skill in the art is in error. These contentions present us with the following
issue:
Did the Examiner err in finding that the combination of Nicholas II
and the knowledge of a person having ordinary skill in the art teaches or
suggests all the limitations in Appellants’ claimed computer-implemented
method, particularly “providing access information for the downloadable
content to a content access application of the device based on the identified
event and the downloadable content identification data,” as recited in
claim 1?
ANALYSIS
We disagree with Appellants’ conclusions with respect to claims 1-25
and 35-37, and we adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in
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response to Appellants’ Arguments. However, we highlight and address
specific findings and arguments regarding claim 1 for emphasis as follows.
Appellants state, “[b]y way of introduction to the issues . . . the
independent claims . . . generally relate to the use of events in a calendar
application 250 of a device (mobile terminal) 222 to access downloadable
content using a content access application (content access module) 252.”
App. Br. 6. Further, “Appellants agree that Nicholas includes references to a
‘feed based calendar’ . . . [but] disagree as to what this term in Nicholas
discloses6 . . . Appellants also agree feeds/podcasts are known and further
agree that such known feeds would fall within the scope of the
‘downloadable content’ recitation of Claim 1.” Id.
Appellants agree with the Examiner’s findings that calendar
applications were known more than one year before the filing date of
Appellants’ application, and reiterate that a podcast or RSS feed falls within
the scope of the recited “downloadable content.” Reply Br. 1. Appellants
further agree with the Examiner’s findings “that downloadable content
identification is information included in an event of a calendar application
that may be used by a content access application to download the content,
which would include data that ‘[i]dentifies the feed or podcast’ if such an
identification could be so used by a content access application and was
stored in a calendar application event.” Reply Br. 1-2.

6 Although Appellants state that they disagree with the Examiner’s
interpretation of this phrase, we find no argument or contention by
Appellants in the record before us to rebut the interpretation of the prior art
set forth by the Examiner in light of Nicholas’ teaching of a “feed based
calendar.”
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Thus, as stated above, we find that the dispositive issue in this Appeal
is whether it would have been obvious to a person with ordinary skill in the
art at the time of the invention, and in light of the prior art of record, to
include downloadable content identification data in a calendar event, and to
then provide access information for the downloadable content to a content
access application of the device based on the identified event and the
downloadable content identification data, as variously recited in the claims
on appeal.
Appellants contend the portion of Nicholas I cited by the Examiner
“appears to say little more than ‘receiving a calendar request including a
time preference from a user,’ adding a sponsor association to received feed
formatted content and ‘[p]roviding the sponsor associated feed formatted
content in response to the calendar request.’” App. Br. 6 (citing Nicholas I,
p. 43). Further, in the Reply, Appellants contend “putting information from
a ‘feed’ into a calendar teaches nothing about a method for a user to control
download of content using a calendar application as recited in independent
Claims 1 and 24.” Reply Br. 2.
In the Answer, before providing a detailed statement of the rejection,
the Examiner stated:
Before deciding the question of obviousness, Examiner
looked for an improvement. The claim language that stood out
as being beyond the realm of what is understood in the art of
the functions of a calendar application, was the claimed
additional functionality in which Downloadable Content (e.g.
RSS feeds/podcasts) could be incorporated within a calendar
application. The claimed invention further explains how the
podcasts/RSS can have a scheduled “start time” (purpose of a
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calendar). The claimed invention includes a user interface to
gather input from the user. Examiner asserts the claimed
invention is obvious in view of the prior art.
Ans. 7 (emphasis in original). The Examiner goes on to find “that claim 1 is
so broad that a method of: [downloading podcasts (feeds) in a calendar
application (including access to the podcasts)] is all that is claimed in claim
1.” Ans. 18.
We agree with the Examiner’s finding that Nicholas II teaches or
suggests a “feed based calendar”, which we interpret to mean a calendar
which contains events and/or data related to downloadable content, e.g.,
“feed formatted content” or “feed data” which can be used to access or
download content. In addition, we note that Nicholas I defines “feed
formatted content” as:
structured data, such as for example Electronic Data
Interchange (EDI), Extensible Markup Language (XML), or a
subset of a general format such as RSS (Rich Site Summary or
Really Simple Syndication), a hybrid or extension of some such
standard, or the like. Feed formatted content 100 may be
accessed through a feed, stored in a local file, or the like. A
feed is the data returned . . . .
Nicholas I, p. 1, ll. 28-34.7 We agree with the findings set forth by the
Examiner that both Nicholas II teaches “identifying an event” for a feed-
based calendar. Ans. 8 (citing Nicholas I, p. 43 and Nicholas II, ¶¶ [0054]-
[0056]). We further note that “[f]eed formatted content is received including
at least one event date marker . . . [which] may be an enclosure tag

7 We find that Nicholas II has support in the Provisional Application,
Nicholas I, for all of the teachings relied upon by the Examiner, as found
thoughout the Answer.
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referencing an iCalendar object.” Nicholas II, ¶ [0059]. Thus, we find that
Nicholas teaches or suggests the recited “identifying an event that includes
downloadable content identification data.” We also agree with the Examiner
that both Nicholas II teaches or suggests, “accessing the downloadable
content based on the provided access information using the content access
application,” as recited in claim 1. Ans. 8 (citing Nicholas II ¶ [0004]; and
see Ans. 20).
Therefore, we agree with the Examiner’s findings and claim
construction, as discussed supra. We agree with the Examiner because our
review of the record establishes that the Examiner’s case for obviousness is
based only upon knowledge which was within the level of ordinary skill at
the time of Appellants’ invention, and does not include knowledge gleaned
only from the Appellants’ disclosure.
In addition, the Examiner identifies the relevant portions of the
references relied on throughout the Examiner’s Answer. See Ans. 7-13. To
the extent that the Examiner relies on the knowledge of one of ordinary skill
in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, the Supreme Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this
analysis should be made explicit. See In re Kahn, 441 F.3d
977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements;
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instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”). As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
In this case, the Examiner’s conclusions of obviousness are clearly
articulated and based on detailed factual findings supported by the
references of record. See Ans. 8-9 and 17-35.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s obviousness rejection of independent claim 1. As
Appellants have not provided separate arguments for patentability with
respect to independent claim 24, we similarly sustain the Examiner’s
rejection of this claim under 35 U.S.C. § 103(a).
Further, while Appellants raised additional arguments for patentability
of dependent claims 19 and 35-37, rejected on the same basis as claim 1
(App. Br. 10-13), we find that the Examiner has rebutted each of those
arguments in the Answer by a preponderance of the evidence. Ans. 11, 13,
and 36-43. Therefore, we adopt the Examiner’s findings and underlying
reasoning. Consequently, we find no reversible error in the Examiner’s
rejections of claims 19 and 35-37.
Unpatentability Rejection of Claim 20
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Appellants merely argue the unpatentability rejection of dependent
claim 20 over the combination of Nicholas and Savilampi by stating “[c]laim
20 is patentable over Nicholas at least based on its dependence from Claim 1
. . . [and f]urthermore, Savilampi does not address the shortcomings of the
rejection of Claim 1.” App. Br. 13. We do not find this to be a substantive
argument different from discussed above, and therefore find no reversible
error in the Examiner’s rejections of claim 20. Ans. 15-16.
CONCLUSIONS
1. The Examiner did not err with respect to the unpatentability
rejections of claims 1-25 and 35-37 under 35 U.S.C. § 103(a), and the
rejections are sustained.
2. The Examiner did not err with respect to the alternative
anticipation rejection under 35 U.S.C. § 102 of claims 1-25 and 35-37, and
the rejection is sustained.
DECISION
The decision of the Examiner to reject claims 1-25 and 35-37 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) (2011).
AFFIRMED

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