Ex Parte Dorfstatter et al

Board of Patent Appeals and Interferences

Nov 3, 2011

11013006 (B.P.A.I. Nov. 3, 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.
11/013,006 12/15/2004 Walter A. Dorfstatter GP-305807 (2760/225) 9812
7590 11/04/2011
ANTHONY LUKE SIMON
General Motors Corporation
300 Renaissance Center, Mail Code 482-C23-B21
P.O. Box 300
Detroit, MI 48265-3000
EXAMINER
TRINH, TAN H
ART UNIT PAPER NUMBER
2618
MAIL DATE DELIVERY MODE
11/04/2011 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 WALTER A. DORFSTATTER, RUSSELL A. PATENAUDE,
and BRAD T. REESER
_____________

Appeal 2009-011594
Application 11/013,006
Technology Center 2600
____________

Before ROBERT E. NAPPI, ELENI MANTIS MERCADER,
and BRADLEY W. BAUMEISTER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011594
Application 11/013,006

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 2, 4-8, and 10-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

INVENTION
Appellants’ claimed invention is a method and system for presenting
media content to a user in a mobile vehicle (Spec. 1:8-9). A user media
content profile can be generated for a user to determine the user’s media
preferences by reading/monitoring the AM/FM, CD, MP3, and DVD players
(Spec. 14:8-17; 14:31 to 15:4; 18:10-13). The user media content profile is
used to provide the user with radio stations suited to the user’s preferences
(Spec. 14:18-21; 19:17-27).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method of presenting channels to a user of a multi-channel wireless
media service comprising:
at a telematics unit, tracking an interaction of the user with a plurality
of media devices to construct a user media preference profile;
receiving a multi-channel wireless media signal at the telematics unit;
determining at least one channel of the multi-channel wireless media
signal based upon the user media preference profile; and
presetting a media player to play the determined at least one channel
without contemporaneous user selection of the channel.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Stumphauzer US 2003/0014767 A1 Jan. 16, 2003
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Application 11/013,006

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Weisshaar US 2004/0187133 A1 Sep. 23, 2004
Prager US 2007/0256021 A1 Nov. 1, 2007
The following rejections are before us for review:
1. The Examiner rejected claims 1, 2, and 4-6 as being obvious under
35 U.S.C. §103(a) over Prager in view of Weisshaar.
2. The Examiner rejected claims 7, 8, and 10-20 as being obvious
under 35 U.S.C. §103(a) over Stumphauzer in view of Prager.

ISSUES
1. Did the Examiner err in determining that the combination of Prager
and Weisshaar teaches or suggests the limitation of “at a telematics unit,
tracking an interaction of the user with a plurality of media devices to
construct a user media preference profile” as recited in claim 1 (emphasis
added)?
2. Did the Examiner err in determining that claims 7, 8, and 10-20
would have been obvious under 35 U.S.C. § 103(a) over Stumphauzer in
view of Prager?

FINDINGS OF FACT
The following Findings of Fact are supported by a preponderance of
the evidence:
1. Prager teaches that “[t]he profile information may include or
consist of only a set of identifiers identifying media content items previously
played for the user and/or previously transmitted to the device” (¶ [0009]).
2. Rosenberg ‘894 (U.S. provisional application 60/187,894 (filed
Mar. 8, 2000)) teaches that a user fills out a profile on the Music Choice
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Application 11/013,006

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system that includes computer directory information of music already
downloaded and stored on their hard drives on their computer (Spec. 4:18 to
5:10).
3. Prager is a continuation-in-part of Rosenberg ‘946 (U.S. patent
application 11/371,946 (filed Mar. 10, 2006) (now U.S. 7,555,539)), which
is a continuation of Rosenberg ‘956 (U.S. patent application 09/800,956
(filed Mar. 8, 2001) (now U.S. 7,028,082)), which claims the benefit of
Rosenberg ‘894 (Prager ¶ [0001]).
4. All three applications, Prager, Rosenberg ‘946, and Rosenberg
‘956, incorporate by reference and claim benefit to Rosenberg ‘894 (see id.;
Rosenberg ‘539, col. 1, ll. 7-11; Rosenberg ‘082, col. 1, ll. 7-9).
5. Prager incorporated by reference Rosenberg ‘946 that incorporated
by reference Rosenberg ‘956 that incorporated by reference Rosenberg ‘894
(see Prager ¶ [0001]; Rosenberg ‘539, col. 1, ll. 7-11; Rosenberg ‘082, col.
1, ll. 7-9).

PRINCIPLE OF LAW
Patent application claiming priority to a chain of patent applications
adequately incorporates by reference entire applications by the broad and
unequivocal language “‘are hereby incorporate[d] by reference.’” Harari v.
Lee, 656 F.3d 1331, 1335 (Fed. Cir. 2011) (emphasis omitted) (brackets in
original).

Appeal 2009-011594
Application 11/013,006

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ANALYSIS
1. Analysis with respect to the rejection of claims 1, 2, and 4-6 as being
obvious under 35 U.S.C. §103(a).
Appellants argue (App. Br. 5) that Prager as supported by Rosenberg
‘894 does not meet the limitation of “‘tracking an interaction of the user with
a plurality of media devices to construct a user media preference profile’” as
recited in claim 1. Appellants contend (id.) that Prager does not teach the
disputed limitation because Rosenberg ‘894 only detects songs on one
device (stored on the computer).
We are persuaded by Appellants’ arguments. Prager teaches a profile
including identifiers for identifying media content previously transmitted to
the device (FF 1). The supporting section of Rosenberg ‘894 cited by the
Examiner (Ans. 8) teaches a profile that includes computer directory
information of music already downloaded and stored on their hard drives on
their computer (FF 2). Therefore, Prager as supported by Rosenberg ‘894
only teaches one media device (the computer) and consequently does not
meet the claim limitation of “tracking an interaction of the user with a
plurality of media devices” (emphasis added).
For these reasons, we will reverse the Examiner’s rejection of claims
1, 2, and 4-6.

2. Analysis with respect to the rejection of claims 7, 8, and 10-20 as being
obvious under 35 U.S.C. §103(a).
While Appellants contend (App. Br. 6) that the rejections of claims 7,
11, and 16 are flawed for the same reasons as those presented for claim 1,
we disagree. The argued limitation of claim 1 regarding “tracking an
interaction of the user with a plurality of media devices” (emphasis added)
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does not appear in claims 7, 11, and 16. Accordingly, we will affirm the
Examiner’s rejection of claims 7, 11, and 16.
To the extent that Appellants argue (App. Br. 5-6; Reply Br. 2) there
is no “continuity of disclosure” for the provisional application in the Prager
chain, we disagree. The two intervening applications (Rosenberg ‘946 and
Rosenberg ‘956) between Prager and Rosenberg ‘894 both incorporate by
reference the preceding applications and Rosenberg ‘894 (FF 3-5).
Therefore, Rosenberg ‘894 was disclosed in all applications in the Prager
chain and there is “continuity of disclosure” for the entire Rosenberg ‘894 in
Prager. See Harari, 656 F.3d at 1335.
We are also not persuaded by Appellants’ argument (App. Br. 5;
Reply Br. 2) that the Examiner admitted in the Advisory Action (mailed July
15, 2008) a lack of priority back to Rosenberg ‘894. Appellants
misinterpreted the Advisory Action. The Examiner merely restated
Appellants’ contentions (Adv. Action 2), and did not concede to Appellants’
argument. That is, the Examiner did not concede Appellants’ contention,
but instead, maintained that there is a continuity of disclosure in the Prager
chain. We agree with the Examiner’s finding as stated above.
For these reasons, we will sustain the Examiner’s rejection of claims
7, 8, and 10-20.

CONCLUSIONS
1. The Examiner erred in determining that the combination of Prager
and Weisshaar teaches or suggests the limitation of “at a telematics unit,
tracking an interaction of the user with a plurality of media devices to
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construct a user media preference profile” as recited in claim 1 (emphasis
added).
2. Appellants have not established that the Examiner erred in
determining claims 7, 8, and 10-20 would have been obvious under
35 U.S.C. § 103(a) over Stumphauzer in view of Prager.

ORDER
The decision of the Examiner to reject claims 1, 2, and 4-6 is reversed.
The decision of the Examiner to reject claims 7, 8, and 10-20 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-IN-PART

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