Ex Parte Fino et al

Patent Trial and Appeal Board

Jan 31, 2017

12729717 (P.T.A.B. Jan. 31, 2017)

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.
12/729,717 03/23/2010 Jorge Fino 18962-0613001/P8381US1 7738
26183 7590 02/02/2017
FISH & RICHARDSON P.C. (APPLE)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
LI, LIN
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
02/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORGE FINO and BENJAMIN A. ROTTLER
Appeal 2016-002115
Application 12/729,717
Technology Center 2600
Before: WILLIAM M. FINK, JOHN R. KENNY, and
AARON W. MOORE, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from rejections of claims
1—5, 7—16, and 20—22, which constitute all pending claims. Final Act. 1;
App. Br. 6. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2016-002115
Application 12/729,717
CLAIMED INVENTION
The Specification is directed to an application for providing a preview
of audio elements, such as songs. Spec. 11. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of seamlessly transitioning between a play mode
and a preview mode in an electronic device, the method
comprising:
playing an initial audio element in the play mode;
while playing the initial audio element, receiving a first
user request to enter into the preview mode;
responsive to receiving the first user request:
pausing the playing of the initial audio element;
automatically playing, in succession, a plurality of audio
previews of a plurality of other audio elements in the preview
mode, wherein each audio preview comprises an audio portion
of a different one of the other audio elements;
receiving a second user request to exit the preview mode;
and
responsive to receiving the second user request, resuming
play of the initial audio element in the play mode.
REJECTIONS
Claims 1, 7, 20, and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Abraham. Final Act. 2—19.
REFERENCES
Schopper
Geurts
Abraham
Brodersen
Dow
Okuda
Oron
US 2004/0221311 A1 Nov. 4, 2004
US 2005/0162559 A1 July 28, 2005
US 2007/0222768 A1 Sept. 27, 2007
US 2008/0066102 A1 Mar. 13, 2008
US 2008/0066135 A1 Mar. 13, 2008
US 2010/0016018 A1 Jan. 21, 2010
US 2011/0161348 A1 June 30, 2011
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Appeal 2016-002115
Application 12/729,717
Claims 2 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Abraham and Brodersen. Final Act.
19-23.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Abraham and Geurts. Final Act. 23—
24.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Abraham and Schopper. Final Act.
24—25.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Abraham and Oron. Final Act. 25—26.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Abraham and Dow. Final Act. 26—27.
Claims 9, 10, and 13—16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Abraham and Oron. Final Act.
9-18.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Abraham, Oron, and Okuda. Final
Act. 27-28.
ANALYSIS
Claims 1—5, 7, 8 and 20—22
The Examiner finds that Abraham teaches or suggests all elements of
claim 1. Final Act. 2—5. Appellants argue that Abraham fails to teach or
suggest (i) “automatically playing, in succession, a plurality of audio
previews of a plurality of other audio elements in the preview mode”
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Appeal 2016-002115
Application 12/729,717
(“previews limitation”) and (ii) the limitations that require playing an initial
audio element, previewing other audio elements, and then resuming play of
the initial audio element in response to user requests (the “play/preview/play
limitations”). App. Br. 9—14; Reply Br. 1—7.
First, Appellants argue that Abraham fails to teach or suggest the
previews limitation because Abraham discloses playing the preview of only
one audio element. App. Br. 9-11; Reply Br. 2-4. We are not persuaded by
this argument because although Abraham may only disclose playing the
preview of only one audio element, as the Examiner finds, Abraham also
discloses the existence of more than one preview of an audio element. Final
Act. 3^4; Ans. 4, citing Abraham || 23, 28. We agree with the Examiner
that these combined disclosures suggest previewing more than one audio
element and previewing them in succession.
Second, Appellants argue that Abraham fails to teach or suggest the
play/preview/play limitations because Abraham merely discloses
transitioning from a review mode to a play mode. App. Br. 11—13; Reply
Br. 4—7. The Examiner responds that Abraham also discloses transitioning
from a play mode to a preview mode. Ans. 4—5, citing Abraham 140. The
Examiner, however, does not explain how Abraham teaches or suggests
another feature of the play/preview/play limitations: resuming play of the
initial audio element. In particular, the Examiner does not provide a reason
why Abraham would teach or suggest resuming play of the initial audio
element after previewing other audio elements. Final Act. 3—5; Ans. 5—8.
Accordingly, we do not sustain the rejection of claim 1 or of claim 20, which
recites corresponding limitations.
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Appeal 2016-002115
Application 12/729,717
Each of dependent claims 2—5, 7, 8, 21, and 22 ultimately depend on
one of independent claims 1 and 20. Accordingly, we also do not sustain the
rejections of claims 2—5, 7, 8, 21, and 22.1
Claims 9—16
Appellants argue that Abraham does not teach or suggest the
limitation in claim 9 that a device be configured to:
play, using the output, first audio previews of a first plurality of
browsable audio element, wherein the first plurality of
browsable audio element is associated with a first category of a
first attribute, where each first audio preview comprises an
audio portion of a different one of the first browsable audio
elements, and where the first audio previews are automatically
played in succession.
In particular, Appellants argue that Abraham discloses playing only a single
video preview. App. Br. 14—15; Reply Br. 4, 7. For the reasons discussed
above, for the corresponding limitation in claim 1, we are not persuaded by
this argument. Accordingly, we sustain the rejection of claim 9 and of
claims 10-16, not separately argued. App. Br. 14—15.2
1 Therefore, Appellants’ separate arguments regarding claims 2 and 21 are
moot. App. Br. 18—21.
2 Claims 11 and 12 were rejected over the combination of Abraham, Oron,
and Okuda. Final Act. 27—28. Appellants, however, do not separately
address that rejection or the patentability of claims 11 and 12. Therefore,
claims 11 and 12 stand with their base claims (i.e., claims 9 and 10).
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Appeal 2016-002115
Application 12/729,717
DECISION
We reverse the rejections of claims 1—5, 7, 8, and 20-22.
We affirm the rejections of claims 9—16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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