Ex Parte Gage

Board of Patent Appeals and Interferences

Sep 27, 2011

10072531 (B.P.A.I. Sep. 27, 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.
10/072,531 02/08/2002 Kevin Gage 3464-031 3398
22440 7590 09/28/2011
GOTTLIEB RACKMAN & REISMAN PC
270 MADISON AVENUE
8TH FLOOR
NEW YORK, NY 10016-0601
EXAMINER
BILGRAMI, ASGHAR H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
09/28/2011 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 KEVIN GAGE
____________

Appeal 2010-003659
Application 10/072,531
Technology Center 2400
____________

Before MAHSHID S. SAADAT, KRISTEN L. DROESCH and
GREGORY J. GONSALVES, Administrative Patent Judges.

DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2010-003659
Application 10/072,531

2
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of a final rejection
of claims 1, 6, 7, 11, 14-18 and 25-381. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM-IN-PART.
BACKGROUND
Appellant’s invention relates to methods and apparatus for retrieving
and storing the audio portion of multimedia programs. Spec. 1; Abs.
Independent claim 1 is illustrative and is reproduced below (disputed
limitations in italics):
An apparatus for processing multimedia programs that
are not playable on a digital audio player, said programs being
composed of composite signals including an audio program
component and a video component comprising:
an input port used to receive a composite signal;
an extractor coupled to said input port and adapted to
selectively extract said audio component from said composite
signal without extracting said video signal2;
a processor that processes said audio component to
generate a processed audio signal in a format that can be
received and played by the digital audio player; and
an output port for outputting said processed audio signal.
Claims 1, 6, 7, 11, 14, 15, 17, 18, 25-31, 33-36 and 383 are rejected
under 35 U.S.C. § 102(e) as anticipated by Martin (U.S. Patent
No. 7,174,512 B2).

1 Claims 2-5, 8-10, 12, 13 and 19-24 have been cancelled.
2 We note that claim 1 does not earlier recite a “video signal”. Rather,
claim 1 includes a “video component” and a “composite signal”.
Appeal 2010-003659
Application 10/072,531

3
Claims 16, 32 and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Martin and Inoue (U.S. Patent No. 6,580,462 B2).
ISSUES
Did the Examiner err in finding that Martin describes: (1) an extractor
adapted to extract an audio component from a composite signal without
extracting the video signal; (2) a folder circuit adapted to fold a multichannel
audio signal to generate a stereo audio signal; and (3) extracting a metadata
component and storing it as part of an audio file?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments (Appeal Brief4 and Reply Brief). We disagree with Appellant’s
arguments and concur with the Examiner’s determination that claims 1, 6,
11, 17, 18, 25, 26, 28-31, 33, 36 and 38 are anticipated and that claims 32
and 37 are obvious. However, we concur with Appellant’s arguments that
the Examiner erred in determining that claims 7, 14, 15, 27, 34 and 35 are
anticipated and claim 16 is obvious. We provide the following additional
findings of fact and analysis.
Claims 1, 11, 17, 18, 25, 28-31, 33, 36 and 38
Independent claims 1, 11, 17 and 28 stand rejected as anticipated by
Martin. Appellant presents arguments addressing independent claims 1, 17
and 28 together as anticipated by Martin. App. Br. 10-14. In the Reply
Brief, Appellant asserts that Martin does not anticipate claims 11 and 28 for

3 In the Amended Appeal Brief (“App. Br.”) filed August 11, 2009,
Appellant mistakenly lists claims 11, 14-16, 28, 33 and 34 as rejected under
35 U.S.C. § 102 (e) as anticipated by Inoue. App. Br. 10.
4 Refers to the Amended Appeal Brief filed August 11, 2009.
Appeal 2010-003659
Application 10/072,531

4
the same reasons as claim 1. Reply Br. 4. Since the disputed limitations of
claims 11 and 28 are nearly identical to those of independent claims 1 and
17, all of which are rejected as anticipated by Martin, we treat independent
claims 1, 11, 17 and 28 together as a group, with claim 1 as the
representative claim. Further, because Appellant does not present
substantive arguments separately addressing the limitations of claims 185,
25, 29-31, 33, 366 and 38, ultimately dependent from claims 1, 11 and 17,
these claims are grouped together with claim 1. 37 C.F.R. § 41.37 (c)(vii).
We begin our analysis with the construction of independent claim 1.
“Both anticipation under § 102 and obviousness under § 103 are two-step
inquiries. The first step in both analyses is a proper construction of the
claims . . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem S.A. v. Rolabo S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted). Appellant
emphasizes that claim 1 requires the extractor to extract the audio
component from a composite signal without extracting the video component
of the composite signal. App. Br. 12-14; Reply Br. 2, 5. Appellant asserts
that Martin does not describe the disputed limitations because Martin
describes an apparatus in which both the video and audio components are
extracted. App. Br. 12-14; Reply Br. 2, 5.
While Appellant advocates a claim construction in which the extractor
extracts only the audio and not the video component, or an extractor which

5 Appellant addresses claim 18 separately, but argues the limitations found
in claim 27 instead of the limitations of claim 18. Reply Br. 3.
6 Appellant groups claim 36 together with claims 7, 26 and 35. Reply Br. 3.
Distinct from claims 7, 26 and 35, claim 36 does not recite a folder circuit or
folding the multichannel audio signal into a stereo signal.
Appeal 2010-003659
Application 10/072,531

5
is precluded from separately extracting the video signal (App. Br. 13-14), we
decline to adopt Appellant’s claim construction. The language of claim 1
does not require the extractor to extract only the audio component, nor does
it preclude the extractor from separately extracting the video signal or
component. Rather, we broadly construe the “extractor . . . adapted to
selectively extract said audio component from said composite signal without
extracting said video signal” to mean that the audio component is selectively
extracted from the composite signal by the extractor and that the extracted
audio component does not include any extracted video signals or
components.
The Examiner finds that Martin meets the disputed claim limitations
based on Martin’s description of a Set Top Box (STB) that: (1) receives a
signal containing both audio and video signals; (2) filters or extracts the
audio signals from the video signals; and (3) passes the filtered audio data to
a dedicated audio decoder or processor. Ans. 4, 10-11 (citing col. 5, l. 32 to
col. 6, l. 6; col. 7, l. 56 to col. 8, l. 1); see also Fig. 3A.
While Martin also describes that the STB Demultiplexer/Descrambler
separately filters or extracts the video signal from the audio signal and
passes the filtered video data to a dedicated video decoder or processor (col.
7, l. 56 to col. 8, l. 14; Fig. 3A), claim 1 does not require the extractor to
extract only the audio component nor does it preclude a separate extraction
of the video signal. Therefore, we are unpersuaded by Appellant’s
arguments that Martin does not describe the disputed claim limitations
because both the audio and video signals are extracted by the
Demultiplexer/Descrambler. App. Br. 12-14; Reply Br. 5.
Appeal 2010-003659
Application 10/072,531

6
Appellant’s argument that Martin teaches away from the claimed
invention (App. Br. 13) is misplaced because whether a reference teaches
away is inapplicable to anticipation. Celeritas Techs, Ltd. v. Rockwell Int’l.
Corp., 150 F.3d 1354, 1361 (1998).
Last, we are unpersuaded by Appellant’s argument that Martin does
not describe a processor that takes the audio component extracted from the
multimedia signal and converts it into a signal suitable for playing by a
digital audio player. App. Br. 14. As pointed out by the Examiner, Martin
describes that the filtered or extracted audio signals are processed separately
by a dedicated audio decoder and passed to an audio output of a set top box
(STB) (i.e., an audio player). Ans. 12-13 (citing col. 7, l. 51-col. 8, l. 1).
Moreover, Martin describes that the decoded signals may also be provided to
other devices which may include, for example, audio equipment for
outputting music. Col. 5, l. 66 to col. 6, l. 6; Figs. 2-3.
For all these reasons, we sustain the rejection of claims 1, 11, 17, 18,
25, 28-31, 33, 36 and 38 as anticipated by Martin.
Claims 6 and 26
Appellant argues that Martin does not describe an audio processor that
converts the audio component into a standard stereo signal, as required by
claims 6 and 26. App. Br. 14; Reply Br. 3. Appellant’s arguments are not
commensurate in scope with the claim limitations. Instead, claim 6,
dependent from claim 1, recites: “said audio component includes a
multichannel audio signal and wherein said processed signal includes a
stereo audio signal.” Claim 26 recites nearly identical limitations as claim 6.
Furthermore, the recitations of a “multichannel audio signal” and a “stereo
signal” merely describe the quality or attributes of the audio signal. The
Appeal 2010-003659
Application 10/072,531

7
audio signal attributes or quality does not affect or describe the function of
the processor, although it may provide insight regarding the intended use of
the processor. Accordingly, a “multichannel audio signal” and a “stereo
signal” constitute non-functional descriptive material which is not entitled to
patentable weight. See In re Ngai, 367 F.3d 1336, 1338-39 (Fed. Cir. 2004).
Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). See also Ex parte
Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential). Moreover,
as pointed out by the Examiner (Ans. 5), Martin provides for receiving the
audio data from multi-channel parallel broadcast sources (col. 6, ll. 7-24).
Martin further describes providing the processed audio data to audio
equipment for outputting music (col. 5, l. 66 to col. 6, l. 6). The claimed
stereo audio signal is well known by ordinary skilled artisans as an audio
signal applied to audio equipment for outputting music.
For all these reasons, we sustain the rejection of claims 6 and 26 as
anticipated by Martin.
Claims 7, 14-16, 34 and 35
Claim 7, dependent from claim 1 recites: “said processor includes a
folder circuit adapted to fold said multichannel audio signal . . . .” Claims
14-16, 34 and 35 either depend from or recite limitations that are nearly
identical to the disputed limitations of claim 7. The Examiner finds that
Martin meets the limitations of claim 7 (Ans. 5) and directs attention to the
following description in Martin:
In a multichannel system, multiplexer 1040 handles
audio and video data received from a number of parallel sources
and interacts with transmitter 1080 to broadcast the information
along a number of channels. In addition to audio and video
data, messages, applications (software programs), CD-quality
audio data or any other type of digital data may be introduced
Appeal 2010-003659
Application 10/072,531

8
into some or all of these channels intermixed with the
transmitted digital audio and video data. For a particular
transport stream to be received by STB 1140, the relevant
program identifier (PID) is determined, and then packets having
a matching PID value are filtered. To identify which PID
corresponds to which program, signal tables are transmitted
with a description of each program carried within the MPEG-2
transport stream. Signal tables are sent separately from the
packetized elementary stream (PES), and are not synchronized
with the elementary streams (i.e., they are an independent
control channel). The signal tables include . . . .
Col. 6, ll. 7-24. Appellant argues that the cited portions of Martin describe
receiving signals encoded using various formats and does not describe
folding signals. App. Br. 14; Reply Br. 3.
The Examiner further finds that Martin discloses processing
multichannel audio signal (Ans. 18) and directs attention to the following
description in Martin:
For the portal of FIG. 5C, the composite video stream
and all of the audio streams are carried in a single MPEG-2
program sharing a common clock reference as explained above.
The audio streams are duplicated in both the full screen
program and the portal interface program. This allows the portal
to tune to the audio of programs carried on different transport
streams as further explained above.
Col. 13, ll. 56-62.
We agree with Appellant that the cited portions of Martin do not
describe a folder circuit or folding signals. Although Martin describes a
multichannel system and duplication of audio streams, the Examiner does
not direct us to where, nor meaningfully explain how, Martin describes a
folder circuit adapted to fold a multichannel audio signal to generate the
stereo signal.
Appeal 2010-003659
Application 10/072,531

9
For all these reasons, we do not sustain the rejection of claims 7, 14,
15, 34 and 35 as anticipated by Martin. Claim 16, ultimately dependent
from claim 14, stands rejected as obvious over Martin and Inoue. As applied
by the Examiner, Inoue does not remedy the deficiencies of Martin. Ans. 8.
For these additional reasons, we do not sustain the rejection of claim 16 as
obvious over Martin and Inoue.
Claim 27
Appellant argues that Martin does not describe the limitations of claim
27 which recites: “extracting from said multimedia program a metadata
component and storing said metadata component as part of said audio file7.”
Reply Br. 3. The Examiner does not direct us to where, nor meaningfully
explain how, Martin describes the limitations of claim 27. Accordingly, we
do not sustain the rejection of claim 27 as anticipated by Martin.
Claims 32 and 37
Claim 32, ultimately dependent from claim 1, recites: “said processed
signal is a compressed signal in one of an MPEG and an ATRAC standard.”
Claim 37, ultimately dependent from claim 17, has substantially identical
limitations. Appellant does not substantively address the limitations of
claims 32 and 37. App. Br. 18-19. Instead, Appellant argues that since
Martin does not describe the limitations of independent claims 1 and 17, the
combination of Martin and Inoue do not meet all of the limitations of the
claims. App. Br. 18-19.

7 We note that claim 27, and claim 17 from which it depends, do not earlier
recite an “audio file”. Rather claims 17 and 27 recite an “audio component”
or “a processed audio signal in a format compatible with . . . .”
Appeal 2010-003659
Application 10/072,531

10
Since Appellant does not substantively address the limitations of
claim 32 and 37 nor the combined teachings of Martin and Inoue, we sustain
the rejection of claims 32 and 37 as obvious over Martin and Inoue for the
same reasons we sustain the rejection of claims 1 and 17.
DECISION
We AFFIRM the rejection of claims 1, 6, 11, 17, 18, 25, 26, 28-31,
33, 36 and 38 under 35 U.S.C. § 102(e) as anticipated by Martin.
We REVERSE the rejection of claims 7, 14, 15, 27, 34 and 35 under
35 U.S.C. § 102(e) as anticipated by Martin.
We REVERSE the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Martin and Inoue.
We AFFIRM the rejection of claims 32 and 37 under
35 U.S.C. § 103(a) as unpatentable over Martin and Inoue.
AFFIRMED-IN-PART

msc