Ex Parte Gioscia et alDownload PDFPatent Trial and Appeal BoardDec 10, 201311157861 (P.T.A.B. Dec. 10, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/157,861 06/22/2005 Richard Gioscia SONY-53201 8722 102824 7590 12/11/2013 HAVERSTOCK & OWENS, LLP 162 N. WOLFE ROAD SUNNYVALE, CA 94086 EXAMINER PAN, YUWEN ART UNIT PAPER NUMBER 2649 MAIL DATE DELIVERY MODE 12/11/2013 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 RICHARD GIOSCIA, YUMI SONODA, and JAN-CHRISTOPH ZOELS ____________ Appeal 2011-0096521 Application 11/157,861 Technology Center 2600 ____________ Before: JEAN R. HOMERE, JEFFREY S. SMITH, and JOHNNY A. KUMAR, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL 1 An oral hearing was held in this appeal on November 19, 2013. Appeal 2011-009652 Application 11/157,861 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 44, 47, and 56-72, which are the only claims remaining in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Illustrative Claim 44. A method comprising: receiving a musical work simultaneous with contextual information; displaying said contextual information on a display device, said contextual information identifying said musical work; transducing said musical work into audible sound; transmitting an electronic signal during the step of transducing, said electronic signal being a request to purchase said musical work; downloading a copy of said musical work to a receiver as a response to said request, said receiver being adapted to store said copy of said musical work, wherein, in the step of downloading, said copy of said musical work is downloaded from a server, said server using said contextual information to identify said musical work for downloading. Prior Art Bernard US 5,918,213 Jun. 29, 1999 Boccon-Gibod US 2001/0016836 A1 Aug. 23, 2001 Mackintosh US 6,317,784 B1 Nov. 13, 2001 Appeal 2011-009652 Application 11/157,861 3 Examiner’s Rejections Claims 44, 47, 56-62, and 64-70 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mackintosh and Boccon-Gibod. (Ans. 4-13). Claims 63, 71, and 72 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mackintosh, Boccon-Gibod, and Bernard. (Id. at 13-14). ANALYSIS Section 103 rejection of claims 44 and 47 Appellants contend that Mackintosh does not teach “receiving a musical work simultaneous with contextual information” as recited in claim 44. App. Br. 10. The Examiner finds that Figure 7 of Mackintosh teaches a listener receiving broadcast material of a musical work simultaneous with supplemental data, or “contextual information identifying said musical work.” Ans. 15. We agree with the Examiner. The person listening to a music track while viewing the track’s image shown in Figure 7 receives the “musical work simultaneous with contextual information.” In addition, Appellants’ contention is inconsistent with column 9, lines 49-60 of Mackintosh, which teaches that digital data, including both broadcast material and program data, are provided to a user 212. The program data includes data pertaining to the broadcast material currently being broadcast. Col. 10, ll. 9-11; see also col. 9, ll. 8-48. Appellants do not provide a definition of contextual information that excludes program data pertaining to the broadcast material taught by Mackintosh. Thus, providing Appeal 2011-009652 Application 11/157,861 4 the digital data including broadcast material and program data teaches “receiving a musical work simultaneous with contextual information.” Appellants’ contention is also inconsistent with Bernard, which teaches that a clip of an audio work can be received simultaneously with text information. Abstract; col. 50, ll. 47-59. See also Mackintosh, col. 15, ll. 13-36. We find that receiving a musical work simultaneous with contextual information “was a design step well within the grasp of a person of ordinary skill in the relevant art.” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 427 (2007). Further, Mackintosh teaches the data server retrieving supplemental data identifying the broadcast material before providing the broadcast material to the user. Col. 11, l. 60 to col. 12, l. 7. Sending the retrieved supplemental data identifying the broadcast material along with digital data including the broadcast material and program data pertaining to the broadcast material was not “uniquely challenging or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)). Appellants contend that Mackintosh does not teach “displaying said contextual information on a display device, said contextual information identifying said musical work.” App. Br. 10. The Examiner finds that Figure 12 of Mackintosh teaches displaying an album cover, an artist’s name, and the name of the song currently playing. Ans. 15. We agree with the Examiner that Figure 12 displays contextual information identifying the musical work. Appeal 2011-009652 Application 11/157,861 5 Appellants contend that Mackintosh does not teach “transmitting an electronic signal during the step of transducing, said electronic signal being a request to purchase said musical work.” App. Br. 11-12. The Examiner finds that the buy now button shown in Figure 12 of Mackintosh teaches transmitting an electronic signal to purchase an album product. Ans. 16. We agree with the Examiner. Clicking the buy now button causes a web page for buying the song from a supplier to be displayed, an e-mail purchase order to be generated and sent, a phone call to be placed, or some other purchase initiating action to occur. Col. 14, l. 19 to col. 15, l. 5. Appellants contend that Mackintosh does not teach “contextual information being used to identify the musical work for downloading.” App. Br. 11; Reply Br. 3-5. The Examiner finds that the combination of Mackintosh and Boccon-Gibod teaches contextual information used to identify the musical work for downloading. Ans. 16. We agree with the Examiner. Mackintosh teaches that when a buy now button is pressed, a supplier’s URL associated with the currently playing music is displayed so that the user can purchase the music. Col. 14, ll. 36-65. Boccon-Gibod teaches that the purchased music can be downloaded over the internet. Abstract. Appellants have not persuasively rebutted the combination made by the Examiner. Appellants contend that Mackintosh does not teach “a copy of the musical work being downloaded from a server to a receiver in response to a request to purchase the musical work.” App. Br. 12-13; Reply Br. 6-8. The Examiner finds that the combination of Mackintosh and Boccon-Gibod teaches contextual information used to identify the musical work for Appeal 2011-009652 Application 11/157,861 6 downloading. Ans. 16. Appellants have not persuasively rebutted the combination made by the Examiner. Appellants contend that Boccon-Gibod does not teach “contextual information being used to identify the musical work for downloading.” App. Br. 13-14; Reply Br. 10-11. The Examiner relies on the combination of Mackintosh and Boccon-Gibod to teach contextual information used to identify the musical work for downloading. Ans. 6-7, 16-20. Appellants have not persuasively rebutted the combination made by the Examiner. Appellants contend that the Examiner did not articulate a reason with rational underpinning to support the legal conclusion of obviousness. Reply Br. 11-14. Appellants present this additional argument for the patentability of claim 44 for the first time in the Reply Brief. Appellants could have presented this argument in the Appeal Brief, such that we would have had the benefit of the Examiner’s evaluation of the arguments in the responsive Answer. Appellants do not explain what good cause there might be to consider the new argument. Appellants’ new argument is thus untimely and has, accordingly, not been considered. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). We sustain the rejection of claim 44 under 35 U.S.C. § 103. Appellants do not present arguments for separate patentability of claim 47, which falls with claim 44. Section 103 rejection of claims 56-62 and 64-70 Appellants contend that Mackintosh does not teach “displaying said contextual information on a display device, said contextual information identifying said musical work.” App. Br. 15-16. Appellants’ contention is Appeal 2011-009652 Application 11/157,861 7 inconsistent with Figures 7 and 12 of Mackintosh, which display the name of the currently playing song on a screen. Appellants contend that Mackintosh does not teach “downloading a copy of the content from a server to said receiver, said portion of the contextual information from said receiver identifying said copy of the content for downloading” as recited in claim 56. App. Br. 17-18; Reply Br. 14-16. The Examiner finds that the combination of Mackintosh and Boccon-Gibod teaches this limitation. Ans. 8-10. We agree with the Examiner for the reasons given by the Examiner in the Examiner’s Answer. Appellants contend that Boccon-Gibod does not teach “contextual information being used to identify the musical work for downloading.” App. Br. 19-20; Reply Br. 16. The Examiner finds that the combination of Mackintosh and Boccon-Gibod teaches this limitation. Ans. 8-10. We agree with the Examiner for the reasons given by the Examiner in the Examiner’s Answer. Appellants contend that the Examiner did not articulate a reason with rational underpinning to support the legal conclusion of obviousness. Reply Br. 17-23. Appellants present this additional argument for the patentability of claim 56 for the first time in the Reply Brief. Appellants could have presented this argument in the Appeal Brief, such that we would have had the benefit of the Examiner’s evaluation of the arguments in the responsive Answer. Appellants do not explain what good cause there might be to consider the new argument. Appellants’ new argument is thus untimely and has, accordingly, not been considered. Appeal 2011-009652 Application 11/157,861 8 We sustain the rejection of claim 56 under 35 U.S.C. § 103. Appellants do not present arguments for separate patentability of claims 57- 62 and 64-70, which fall with claim 56. Section 103 rejection of claims 63, 71, and 72 Appellants contend that Bernard does not teach “contextual information being used to identify the musical work for downloading.” App. Br. 20-21. However, the Examiner relies on the combination of Mackintosh and Boccon-Gibod to teach this limitation. Ans. 8-10. We agree with the Examiner for the reasons given by the Examiner in the Examiner’s Answer. We sustain the rejection of claims 63, 71, and 72 under 35 U.S.C. § 103. DECISION The rejection of claims 44, 47, 56-62, and 64-70 under 35 U.S.C. § 103(a) as being unpatentable over Mackintosh and Boccon-Gibod is affirmed. The rejection of claims 63, 71, and 72 under 35 U.S.C. § 103(a) as being unpatentable over Mackintosh, Boccon-Gibod, and Bernard 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). See 37 C.F.R. § 41.50(f). AFFIRMED Appeal 2011-009652 Application 11/157,861 9 tj Copy with citationCopy as parenthetical citation