Ex Parte Gibbs et al

Board of Patent Appeals and Interferences

Mar 18, 2009

09975749 (B.P.A.I. Mar. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ERIC PAUL GIBBS and MARK EDWARD PHILLIPS
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Appeal 2008-5906
Application 09/975,749
Technology Center 2600
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Decided:1 March 18, 2009
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and MARC S.
HOFF, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Appellants appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 28-37, which are all of the pending claims. Claims 1-27 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Rather than reiterate the arguments of Appellants and the Examiner,
reference is made to the Brief (filed May 17, 2007), Answer (mailed
September 19, 2007), and Reply Brief (filed November 23, 2007) for the
respective details. Only those arguments actually made by Appellants have
been considered in this decision. Arguments which Appellants could have
made but chose not to make in the Briefs have not been considered and are
deemed to be waived [see 37 C.F.R. § 41.37(c)(1)(vii)].

APPELLANTS’ INVENTION
Appellants’ claimed invention relates to a battery-powered portable
media player which utilizes a spinning media device for data storage.
Battery power is conserved by not powering the media storage device until
actual data transfer is required. The amount of data remaining in a random-
access-memory (RAM) component is calculated and, based on a number of
factors, a determination is made as to when it is necessary to power up the
media storage device to ensure that a continuous stream of data is provided
to the RAM component. The RAM component stores compressed data in
more than two different buffer areas, each of which is lockable and
unlockable by a processor. A coder/decoder (CODEC) reads compressed
data from the locked buffer and compressed data is written to the unlocked
buffers. (Spec. 6:3-20 and 17:27 to 18:8).
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Claim 28 is illustrative of the invention and reads as follows:

28. A portable media player comprising:
a processor that executes commands;
a random-access-memory component that stores compressed data in more
than two different random-access-memory buffer areas, each random-
access-memory buffer lockable and unlockable by the processor;
a codec component, controlled by the processor, that reads
compressed data from a locked random-access-memory buffer, the locked
random-access-memory buffer selected from among the more than two
different random-access-memory buffer areas and locked by the processor to
prevent writing of the locked random-access-memory buffer by another
component, and that generates a decompressed signal from the read
compressed data that is rendered by a data-rendering component;
a non-volatile, mass-storage component that stores compressed data
and that writes compressed data, under control of the processor, to unlocked
random-access-memory buffers; and
a battery power supply to provide electrical power to the processor,
random-access memory component, codec component, data-rendering
component, and non-volatile, mass-storage component.

THE EXAMINER’S REJECTION

The Examiner relies on the following prior art references to show
unpatentability:
Biliris US 5,720,037 Feb. 17, 1998
Birrell US 6,332,175 B1 Dec. 18, 2001
(filed Feb. 12, 1999)
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Claims 28-37, all of the appealed claims, stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Birrell in view of Biliris.
ISSUES
Under 35 U.S.C. § 103(a), with respect to appealed claims 28-37,
would one of ordinary skill in the art at the time of the invention have found
it obvious to combine Birrell and Biliris to render the claimed invention
unpatentable?

The pivotal issues before us are whether Appellants have
demonstrated that the Examiner erred in finding:
(a) in order to prevent previously played data in a retained data
portion of a RAM buffer in Birrell from being overwritten with data, the
retained data portion of the RAM buffer would inherently be locked to
prevent access.
(b) the obviousness to the ordinarily skilled artisan of modifying
the single buffer disclosure of Birrell by applying the circular plural buffer
arrangement teachings of Biliris.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence:
1. Birrell discloses (Fig. 1, col. 6, ll. 5-28) a portable media player
having play control logic which monitors the amount of data remaining in a
RAM buffer 108 and initiates the transfer of new data to the buffer from disk
104 when the amount of remaining data is below a predetermined threshold.
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2. Birrell also discloses (col. 6, ll. 29-42) that, in order to save
power, the disk 104 is powered on only long enough to copy new data into
Ram 108.
3. Birrell also discloses (col. 6, l. 64-col. 7, l. 2) an embodiment in
which RAM buffer 108 is not completely overwritten with data once a
threshold is reached but, rather, a final portion of previously played data is
retained to accommodate a user’s reversal of play or rewind.
4. Biliris discloses (Fig. 5A, col. 5, l. 48 to col. 6, l. 1) a
multimedia server utilizing RAM buffers implemented as a circular buffer
permitting improved fast-forward and rewind operations.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
“there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness” . . . . [H]owever, 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.

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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727, 1741
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claim 28, the sole independent claim on appeal, based on the
combination of and Birrell and Biliris, Appellants assert that the Examiner
has failed to set forth a prima facie case of obviousness since all of the claim
limitations are not taught or suggested by the applied prior art references.
Appellants’ arguments (App. Br. 6-8; Reply Br. 5-10) focus on the
contention that, in contrast to the claimed invention, the primarily relied
upon Birrell reference does not disclose, inter alia, the reading of
compressed data from a locked RAM buffer by a codec component, nor the
prevention of writing to the locked RAM buffer by another component. We
are in general agreement with Appellants’ position as stated in the Briefs.
The Examiner, in addressing the requirements of independent claim
28, directs attention (Ans. 4, 8, and 9) to the embodiment discussed at
column 6, line 64 to column 7, line 2 of the portable audio player disclosure
of Birrell. In this cited portion, Birrell discloses that, while RAM buffer 108
is overwritten with new data from disk 104 once the amount of unplayed
data from buffer 108 reaches a threshold, the buffer is not completely
overwritten. Rather, as described by Birrell, the final portion of previously
played data is retained to accommodate the situation in which a user reverses
the direction of play, i.e., rewinds to replay previously played data.
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The Examiner’s stated position recognizes that Birrell does not
explicitly disclose that the portion of the RAM buffer 108 which includes
the retained previously played data is locked, i.e., access to the buffer by
certain components is prevented. The Examiner, nevertheless, concludes
that it is inherent in Birrell that such retained data buffer portion would be
locked to prevent the retained data from being overwritten with new data.
As asserted by Appellants (App. Br. 7-8; Reply Br. 7-10), however,
while ensuring that the retained data portion of the buffer 108 in Birrell is
not overwritten is a worthwhile goal, it does not necessarily follow that such
retained data buffer portion would be locked to achieve such a goal. For
example, as also suggested by Appellants (App. Br. 7-8; Reply Br. 7), the
play logic in Birrell could issue instructions to the disk 104 to fill the buffer
108 only up to the retained data portion, thereby not overwriting the retained
data portion, but without putting the retained data buffer portion in a locked
state. We agree with Appellants that there is no basis in the disclosure of
Birrell or elsewhere to support the Examiner’s finding that, because a
process needs not to overwrite a buffer memory portion, the locking of the
buffer memory portion would be inherent.
We recognize that the Examiner, in the responsive to arguments
portion of the Answer at page 10, has set forth an interpretation of the
claimed term locked that is presumably based on the description appearing at
page 17, line 27 to page 18 line 8 of Appellants’ Specification. According to
the Examiner, a locked buffer memory can be reasonably interpreted as
meaning a memory in which only read operations are allowed.
Appellants have taken issue with the Examiner’s position (Reply Br.
6-10) that the cited portion of the Specification provides a definition of a
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locked memory as one in which only read operations are allowed.
According to Appellants, the allowing of only read operations is only an
exemplary result of memory locking and the term locked memory should be
given its generally accepted meaning of a memory in which access is
prevented by certain components.
It is our finding that, even if we accept, arguendo, the Examiner’s
proffered definition of the term locked as identifying a memory as one in
which only read operations are permitted, there is nothing in the disclosure
of Birrell which would support the position that it necessarily follows that
only read operations are allowed from the retained data portion of buffer 108
of Birrell.
To establish inherency, evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference and would be recognized as such by persons of ordinary skill. In
re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) citing Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). “Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” Continental, 948 F.2d at 1269.
We have also reviewed the disclosure of Biliris relied upon by the
Examiner as providing a disclosure of improving the fast-forwarding and
rewinding of multimedia streams by using a plurality of RAM buffers
arranged in a circular fashion. We find nothing, however, in the disclosure
of Biliris which overcomes the innate deficiencies of Birrell discussed supra.
In view of the above discussion, we are of the opinion that the applied
prior art references, even if combined, do not support the obviousness
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rejection. We, therefore, do not sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of independent claim 28, nor of claims 29-37 dependent thereon.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have shown the Examiner erred in rejecting claims 28-37 for
obviousness under 35 U.S.C. § 103(a).

DECISION
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 28-37, all of
the appealed claims, is reversed.

REVERSED

ELD

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