Ex Parte Grady et al

Patent Trial and Appeal Board

Sep 26, 2013

11549618 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEFF GRADY, GAREY DE ANGELIS,
ANDREW GREEN, and VINCENT K. GUSTAFSON1
____________________

Appeal 2011-003171
Application 11/549,618
Technology Center 2400
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Before MARC S. HOFF, CAROLYN D. THOMAS, and LARRY J. HUME,
Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, and 6-16. Appellants have previously canceled
claims 3-5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Philips Electronics North America
Corporation. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellants’ invention relates to accessories for portable digital media
storage and playback devices used for on-line downloading, storing and
playing digital media files. More specifically, the invention relates in
various aspects to a multi-function docking assembly, preferably remotely
controllable, providing any of the following functions: signal transmission,
signal relaying, remote control, remote video interface, power supply and/or
charging, and authentication for portable digital media storage and playback
devices, and methods pertaining to the same. Spec. ¶ [001] (“Field of the
Invention”).
Exemplary Claim
Claim 1 is an exemplary claim representing an aspect of the invention
which we reproduce below (emphasis added):
1. A method comprising the steps of:
communicatively coupling, via a remotely controllable
docking assembly, (1) a portable digital media storage and
playback device having a first display element, with (2) an
audio and video reproduction system having a television-
compatible second display element and a first audio amplifier
adapted to drive at least one speaker, wherein the docking
assembly comprises (i) a video output port adapted to
communicate a television-compatible video signal to the second
display element, and (ii) a video processor adapted to

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Jul. 2, 2010); Examiner’s Answer (“Ans.,” mailed Aug. 30, 2010); Final
Office Action (“FOA,” mailed Feb. 2, 2010); and the original Specification
(“Spec.,” filed Oct. 13, 2006).
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communicate to the video output port a television-compatible
video signal indicative of a signal received from the portable
digital media storage and playback device for display by the
second display element, and wherein the docking assembly has
an associated wireless remote controller;
displaying on the second display element information
indicative of at least one digital media file;
selecting at least one digital media file stored in the
portable digital media storage and playback device for addition
to, or deletion from, a user-defined first playlist stored in the
portable digital media storage and playback device using the
wireless remote controller, wherein the first playlist represents
a subset of digital media files stored in the portable digital
media storage and playback device.
Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
SCHUL U.S. 2006/0274910 A1 Dec. 7, 2006
KALAYJIAN U.S. 2007/0077784 A1 Apr. 5, 2007
NOVOTNEY U.S. 2007/0234420 A1 Oct. 4, 2007
SCHUBERT U.S. 7,529,871 B1 May 5, 2009
iPod User’s Guide, Apple Computer, Inc. (2005) (hereinafter “Apple”).
Rejections on Appeal
1. Claims 1, 2, 9, 10, and 12-16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Kalayjian, Apple,
and Schubert. Ans. 4.
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2. Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kalayjian, Apple, Schubert, and
Novotney. Ans. 9.
3. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kalayjian, Apple, Schubert, and Schul.
Ans. 11.
ISSUES3
Appellants argue (App. Br. 8-20) that the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Kalayjian, Apple, and Schubert is in error. These
contentions present us with the following issues:
Issue (a)
Did the Examiner err in finding that the combination of Kalayjian,
Apple, and Schubert teaches or suggests limitations including, inter alia,
“docking assembly [having] an associated wireless remote controller . . .
[and] selecting at least one digital media file stored in the portable digital
media storage and playback device for addition to, or deletion from, a user-
defined first playlist stored in the portable digital media storage and
playback device using the wireless remote controller,” as recited in claim 1?

3 Appellants only provide separate, substantive arguments over the rejection
of independent claim 1. With respect to the § 103 rejections of claims 6-8
and 11, depending from claim 1, Appellants merely argue that these claims
are patentable for the same reasons as set forth in connection with claim 1.
App. Br. 21-22.
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Issue (b)
Did the Examiner err by failing to provide articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness of
claim 1?
ANALYSIS
We have only considered those arguments actually made by
Appellants in reaching our 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)].
We disagree with Appellants’ conclusions with respect to claim 1, and
we adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons and
rebuttals set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Arguments. However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
Issue (a)
Appellants contend that Kalayjian teaches selecting preset playlists in
a portable media player having a remote control that causes the portable
media player to jump to the selected function, but fails to teach or suggest
that Kalayjian’s remote control may be used to modify a playlist in a
portable digital media player docked to Kalayjian’s MediaPod. App. Br. 9.
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Appellants admit Kalayjian discloses use of a remote control “to
command the digital media player to navigate to a preset playlist,” (App.
Br. 9 (citing Kalayjian claim 16)), but contend Kalayjian omits any teaching
directed to the broader concepts of creating or modifying playlists stored in a
portable digital media player. App. Br. 9.
Further in this regard, and in purported contrast to Kalayjian’s
disclosure of browsing and playback control functions of an iPod portable
digital media player, Appellants contend “Kalayjian fails to disclose use of a
remote controller to select at least one digital media file for addition to or
deletion from a playlist stored in a portable digital media storage and
playback device.” Id.
Appellants further contend Apple does not teach or suggest using a
wireless remote controller in conjunction with “a remotely controllable
docking assembly,” as recited in independent claim 1. App. Br. 10.
In connection with the Examiner’s reliance upon Schubert, Appellants
contend,
Schubert merely mentions a docking station 502 (once) in connection
with FIG. 5A, but does not describe any features, functions, or
capabilities of such a docking station, and nothing in Schubert
suggests that a docking station for a media player can or should
embody wireless communication with a remote controller.
App. Br. 12. In addition, Appellants contend Schubert merely discloses a
remote connector (e.g., see Schubert Figs. 5A-5C) that permits wired remote
control; docking station 502 without any further detailed discussion thereof;
wireless dongle 508 that communicates with other devices that are
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separately connectable via 30-pin connector or remote connector to a
portable media player; and wireless communication between accessories.
App. Br. 13-14. Appellants further contend “[n]othing in Schubert discloses
or suggests any remotely controllable docking station subject to wireless
remote control and communicatively coupled between a portable digital
media storage device (having a first display element) and an audio/video
reproduction system (having a second display element).” App. Br. 14.
Finally, Appellants admit Apple enables a user to create and modify
playlists stored on a portable digital media player using controls located on
the player, and that Kalayjian discloses utilization of a remote controller to
modify playlists stored in local memory of a MediaPod docking station.
However, Appellants contend, “[n]o combination of Apple and Kalayjian
would permit a user to create an on-the-go playlist with a remote controller
and store same on a portable digital media device. App. Br. 16.
In response, the Examiner concludes, since both Kalayjian and Apple
teach or suggest using similar techniques to create and/or modify an on-the-
go playlist, and Apple explicitly teaches the creation of an on-the-go playlist
that is stored on a portable media player, the disputed limitations of claim 1
are met, i.e., “at least one digital media file stored in the portable digital
media storage and playback device for addition to, or deletion from, a user-
defined first playlist stored in the portable digital media storage and
playback device using the wireless remote controller.” Ans. 13 (citing
Kalayjian ¶¶ [0058] and [0060]; Apple 17).
In response to Appellants’ contention that the combination of
Kalayjian, Apple, and Schubert is improper and that there is no reason for
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combining the references in the manner suggested (App. Br. 16-19), the
Examiner reiterates that Schubert is cited as showing support for the idea
that a playlist can be created, modified, and stored on a media player by
using a wireless remote control, i.e., the last portion of the limitation in
dispute is met. Ans. 13. We agree with the Examiner’s findings, and also
note that both Kalayjian and Schubert teach or suggest use of a wireless
remote control, including using a remote control to create an “on-the-go”
playlist. Ans. 13 (citing Kalayjian ¶ [0029]; Schubert col. 7:24-35, col. 14:5
through col. 15:20, particularly col. 14:65-67).
We therefore agree with the Examiner’s conclusions cited above that
the prior art combination of Kalayjian, Apple, and Schubert teaches or
suggests all the limitations of claim 1.
Issue (b)
Appellants contend the combination of references is premised on
improper hindsight, using Appellants’ disclosure as a guide (App. Br. 17),
and that the Examiner has failed to meet his burden in providing articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. Ans. 19. We disagree with Appellants’ contentions, as
discussed below.
We agree with the Examiner’s finding that it would have been
obvious to combine Kalayjian and Apple to allow for creation of an on-the-
go playlist that is stored on a portable media player. Ans. 13. We also agree
with the Examiner’s conclusion that it would have been obvious to combine
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Schubert with Apple to create or modify a playlist on the media player using
a wireless remote control. Id.
We find that the cited prior art teaches or suggests all the claimed
limitations, and that a person of ordinary skill in the art would have been
motivated to combine Kalayjian, Schubert, and Apple for the reasons stated
by the Examiner. These reasons include the findings that “it would have
been obvious to one of ordinary skill in the art . . . to combine the prior art of
Kalayjian and Apple in order to allow the flexibility and efficiency of
creating a quick playlist when your portable media play was not connected
to a computer” (Ans. 6), and
it would have been obvious . . . to combine the prior art of Kalayjian,
Apple, and Schubert in order to create a connector interface system
that includes an interface and protocol in communication with the
interface (i.e. of the media player) which allows a media player to
communicate with external devices over a transport link.
Ans. 7 (citing Schubert, col. 2:7-10).
Appellants’ arguments that the combination of references is improper
are centered upon the facts that Schubert discloses a wired “in-line remote
controller” to replicate control functions of the portable digital media storage
device instead of a wireless controller (App. Br. 17-18), and that Kalayjian
teaches utilization of a remote controller to modify playlists stored in a local
memory of a MediaPod docking station, and not in the memory of the
portable device. App. Br. 18.
We are not persuaded that a person with skill in the art would not
think to utilize a wireless remote controller in lieu of Schubert’s wired
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controller, or that such a skilled person would not consider storing a
modified playlist on the portable digital media storage device instead of the
docking station, as was conventionally known, e.g., storing the playlist on an
Apple iPod®. Apple 17.
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s obviousness rejection of independent claim 1. As
Appellants have not provided separate arguments with respect to dependent
claims 2 and 6-16, we similarly sustain the Examiner’s rejection of these
claims under 35 U.S.C. § 103(a).4
CONCLUSION
The Examiner did not err with respect to the unpatentability rejections
of claims 1, 2, and 6-16 under 35 U.S.C. § 103(a) over the prior art of
record, and the rejections are sustained.
DECISION
The decision of the Examiner to reject claims 1, 2, and 6-16 is
affirmed.

4 If further prosecution of this application should ensue, we invite the
Examiner’s attention to claims 12-14 for compliance with the requirements
of 35 U.S.C. § 112, second paragraph, since it appears that the “kit” of
dependent claim 12 is not capable of performing all the recited steps of
claim 1. See In re Lyell, 17 U.S.P.Q.2d 1548 (B.P.A.I. 1990).
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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) (2011).
AFFIRMED

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