Ex Parte Gross

Board of Patent Appeals and Interferences

Aug 26, 2004

09836686 (B.P.A.I. Aug. 26, 2004)

1 Although we are treating it as such for the purposes of this
appeal, the August 23, 2002, amendment has not yet been formally
entered.
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARK T. GROSS
____________
Appeal No. 2004-0434
Application No. 09/836,686
____________
ON BRIEF
____________
Before BARRETT, DIXON, and MACDONALD, Administrative Patent
Judges.
MACDONALD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 10-16 and 23-25. Claims 17, 21, and 22 have been
indicated as allowable; and claims 1-9, 18-20, and 26-30 have
been canceled. See paper number 7, dated September 4, 2002,
which indicates the amendment filed August 23, 2002, will be
entered upon the filing of this appeal.1
Appeal No. 2004-0434
Application No. 09/836,686
2
Invention
Appellant's invention relates to controlling the sharing of
files by portable devices, and, more particularly, to controlling
the sharing of music files by portable music players. A host
system transfers at least one file to a first portable device.
Along with the file, the host system transmits a transfer count
associated with the file. The transfer count indicates the
number of times that the first portable device may transfer the
received file to other devices. Appellant's specification at
page 1, lines 3-4, and page 5, line 24, to page 6, line 3.
Claim 10 is representative of the claimed invention and is
reproduced as follows:
10. A method, comprising:
selecting at least one music file from a first portable
device to transfer to a second portable device;
transferring the music file to the second portable device;
and
transmitting a preselected transfer count to the second
portable device, wherein the preselected transfer count is
indicative of the number of times the second portable device may
transfer the music file to one or more devices.
References
The references relied on by the Examiner are as follows:
Abecassis 6,192,340 Feb. 20, 2001
(Filed Oct. 19, 1999)
Berstis et al. (Berstis) 6,282,653 Aug. 28, 2001
(Filed May 15, 1998)
Appeal No. 2004-0434
Application No. 09/836,686
2 Appellant filed an appeal brief on November 25, 2002.
Appellant filed a reply brief on September 2, 2003. The Examiner
mailed out an Examiner's Answer on July 16, 2003.
3
Rejections At Issue
Claims 10-16 and 23-25 stand rejected under 35 U.S.C. § 103
as being obvious over the combination of Abecassis and Berstis.
Throughout our opinion, we make references to the
Appellant's briefs, and to the Examiner's Answer for the
respective details thereof.2
OPINION
With full consideration being given to the subject matter on
appeal, the Examiner's rejections and the arguments of the
Appellant and the Examiner, for the reasons stated infra, we
affirm the Examiner's rejection of claims 10-16 and 23-24 under
35 U.S.C. § 103, and we reverse the Examiner's rejection of claim
25 under 35 U.S.C. § 103.
Appellant has indicated that for purposes of this appeal,
the claims stand or fall together in three groupings:
Claims 10-16 as Group I;
Claims 23-24 as Group II; and
Claim 25 as Group III.
See page 10 of the brief. Furthermore, Appellant argues each
group of claims separately and explains why the claims of each
Appeal No. 2004-0434
Application No. 09/836,686
4
group are believed to be separately patentable. See pages 10-13
of the brief and pages 1-3 of the reply brief. Appellant has
fully met the requirements of 37 CFR § 1.192 (c)(7) (July 1,
2002) as amended at 62 Fed. Reg. 53169 (October 10, 1997), which
was controlling at the time of Appellant's filing of the brief.
37 CFR § 1.192 (c)(7) states:
Grouping of claims. For each ground of
rejection which appellant contests and which
applies to a group of two or more claims, the
Board shall select a single claim from the
group and shall decide the appeal as to the
ground of rejection on the basis of that
claim alone unless a statement is included
that the claims of the group do not stand or
fall together and, in the argument under
paragraph (c)(8) of this section, appellant
explains why the claims of the group are
believed to be separately patentable. Merely
pointing out differences in what the claims
cover is not an argument as to why the claims
are separately patentable.
We will, thereby, consider Appellant's claims as standing or
falling together in the three groups noted above, and we will
treat:
Claim 10 as a representative claim of Group I;
Claim 23 as a representative claim of Group II; and
Claim 25 as a representative claim of Group III.
If the brief fails to meet either requirement, the Board is free
to select a single claim from each group and to decide the appeal
of that rejection based solely on the selected representative
Appeal No. 2004-0434
Application No. 09/836,686
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claim. In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465
(Fed. Cir. 2002). See also In re Watts, 354 F.3d 1362, 1368,
69 USPQ2d 1453, 1457 (Fed. Cir. 2004).
I. Whether the Rejection of Claims 10-16 Under 35 U.S.C.
§ 103 is proper?
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in
the art the obviousness of the invention as set forth in claims
10-17. Accordingly, we affirm.
In rejecting claims under 35 U.S.C. § 103, the Examiner
bears the initial burden of establishing a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The Examiner can
satisfy this burden by showing that some objective teaching in
the prior art or knowledge generally available to one of ordinary
skill in the art suggests the claimed subject matter. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Only if this initial burden is met does the burden of coming
forward with evidence or argument shift to the Appellant.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki,
745 F.2d at 1472, 223 USPQ at 788.
Appeal No. 2004-0434
Application No. 09/836,686
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An obviousness analysis commences with a review and
consideration of all the pertinent evidence and arguments. "In
reviewing the [E]xaminer's decision on appeal, the Board must
necessarily weigh all of the evidence and argument." Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. "[T]he Board must not only
assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings
are deemed to support the agency's conclusion." In re Lee,
277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
With respect to independent claim 10, Appellant argues at
page 11 of the brief, "Berstis does not teach or suggest
'transmitting a preselected transfer count' to a second portable
device, nor that such a count is 'indicative of the number of
times the second portable device may transfer the music file to
one or more devices' as recited in claim 10." Appellant then
points out that instead, "Berstis teaches a system in which a
count is created that indicates the number of times that a device
can transfer a file to one or more target devices." Appellant
then argues, "there is no teaching or suggestion to send a
transfer count from a first portable device to a second portable
device."
To determine whether claim 10 would have been obvious, we
must first determine the scope of the claim. Appellant's
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Application No. 09/836,686
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specification shows a system at figures 1, 3, and 6, with
portable devices for transferring files. Appellant argues that
"portable device" should be narrowly defined so as to preclude
Abecassis' multimedia player of his figure 1 and Berstis'
computers, servers, and components (items 10, 20, 26a, 26b, 26c,
40, 24, 26, and 44) in Berstis' figures 1, 3, and 4 from being
"portable devices."
Our reviewing court states in In re Zletz, 893 F.2d 319,
321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) that "claims must be
interpreted as broadly as their terms reasonably allow." Our
reviewing court further states, "[t]he terms used in the claims
bear a 'heavy presumption' that they mean what they say and have
the ordinary meaning that would be attributed to those words by
persons skilled in the relevant art." Texas Digital Sys. Inc v.
Telegenix Inc., 308 F.3d 1193, 1202, 64 USPQ2d 1812, 1817 (Fed.
Cir. 2002), cert. denied, 538 U.S. 1058 (2003).
Upon our review of Appellant's specification, we fail to
find any definition of the term "portable" that is different from
the ordinary meaning. We find the ordinary meaning of the term
"portable" is best found in the dictionary. We note that the
Appeal No. 2004-0434
Application No. 09/836,686
3 Webster’s II New Riverside University Dictionary
8
definition most suitable for "portable" is either "capable of
being carried" or "easily carried or moved."3
We appreciate Appellant's position that a "portable device"
is limited to very small devices such as a cellular phone or a
personal digital assistant (Appellant’s specification at page 4,
line 16). However, we find that the claim language does not
preclude reading on Abecassis' multimedia player and Berstis'
computers, servers, and components as such devices are "easily
moved." We note that Berstis also list a "notebook" computer as
one example of a client machine 10 at column, 13, lines 43-48.
Now, the question before us is, what would Berstis have
taught to one having ordinary skill in the art? To answer this
question, we find the following facts:
(1) Berstis teaches at figure 1, transferring (copying) a digital
file from a source device (20) to a target device (10).
(2) Berstis teaches in column 1, at lines 27-33, the source
device is a storage device.
(3) Berstis teaches in column 1, at lines 27-33, the target
device is either a rendering device or a storage device.
(4) Berstis teaches in column 5, at line 24, the digital file may
be an audio file.
Appeal No. 2004-0434
Application No. 09/836,686
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(5) Berstis teaches in column 3, at lines 14-24, copy control
information including a count of the number of permitted
copies.
(6) Berstis teaches in column 6, at lines 59-61, the digital file
and part of its copy control information, are transferred
between the source device and target device.
(7) Berstis teaches in column 9, at lines 14-15, there may be
another digital file storage device before the source device
in the file transfer string, "[i]f the file is not present at
the source, it may be necessary to obtain it."
(8) Berstis teaches a similar multi-stage transfer to (7) above
at figure 4, items 44 and 40 (which comprises items 24 and
26), as discussed in part at column 7, line 64, to column 8,
line 35.
(9) Berstis teaches in column 5, at lines 29-31, "copies are
controlled throughout the systems and networks until their
final rendering place."
(10) Berstis teaches in column 8, at lines 21-26, and column 9,
at lines 45-62, client 40 tracks the current count and
periodically reports to the management server.
Appellant's argument that, "there is no teaching or
suggestion to send a transfer count from a first portable device
to a second portable device" is not persuasive. As listed above,
Appeal No. 2004-0434
Application No. 09/836,686
10
we find that Berstis teaches performing digital audio file
transfers between first and second portable devices (facts 1-4)
where there is also a transfer of copy control information (fact
6). We note that Berstis is silent as to the specific part of
the copy control information that is transferred. However, we
find that in the situation where there is copying of a set number
of "permitted copies" (fact 5), one of ordinary skill in the art
would recognize that the copy tracking (fact 10) of Berstis would
be inoperative if the transferred copy control information (fact
6) did not include a count of the number of permitted copies
(fact 5). Therefore, Berstis teaches "sending a transfer count
from a first portable device to a second portable device."
Appellant's further argument, "nowhere does Berstis (or
Abecassis) disclose or suggest, a method in which a music file is
transferred to a second portable device from a first portable
device" is equally unpersuasive. A person skilled in the art
would recognize that Berstis teaches multi-stage file transfers
from a first device to a second device and then to a third device
(facts 7-10). See for example, Berstis figure 4, the transfer
from item 44 (a first portable device) to item 24 (a second
portable device), and then to device 26. We find that the
combination of Berstis and Abecassis teach a "method in which a
Appeal No. 2004-0434
Application No. 09/836,686
11
music file is transferred to a second portable device from a
first portable device."
Therefore, we will sustain the Examiner's rejection under
35 U.S.C. § 103.
II. Whether the Rejection of Claims 23-24 Under 35 U.S.C.
§ 103 is proper?
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would have suggested to one of ordinary skill in
the art the obviousness of the invention as set forth in claims
23-24. Accordingly, we affirm.
With respect to independent claim 23, Appellant essentially
repeats the argument made with respect to claim 10. Appellant
argues, "Berstis does not teach or suggest a controller to
'transmit an indication to the remote portable music player
indicating the number of times the remote portable music player
may transfer the transmitted file' as recited in claim 23." We
find this argument unpersuasive for the reasons noted above with
respect to claim 10.
Therefore, we will sustain the Examiner's rejection under
35 U.S.C. § 103.
Appeal No. 2004-0434
Application No. 09/836,686
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III. Whether the Rejection of Claim 25 Under 35 U.S.C.
§ 103 is proper?
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 25. Accordingly, we reverse.
With respect to dependent claim 25, Appellant argues at page
12 of the brief, "nowhere does Berstis or Abecassis disclose or
suggest transmitting a file to 'a Secure Digital Music Initiative
[SDMI] compliant music player' as recited by the claim."
We find that SDMI is a specific standard in the art, and we
agree with Appellant that Abecassis and Berstis do not teach or
suggest using the SDMI standard. We note that Appellant has
admitted that the SDMI standard is a known standard. See
Appellant's specification at page 1, lines 17-20. While an
argument might be made that an extension of the process of claim
23 using the SDMI standard is obvious in the extreme given
Appellant's admission, no such rejection was made by the
Examiner. We leave it to the Examiner to decide if a rejection
of claim 25 is appropriate under 35 U.S.C. § 103 as being obvious
over the combination of Abecassis and Berstis and Appellant's
admitted prior art.
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Application No. 09/836,686
13
Therefore, we will not sustain the Examiner's rejection
under 35 U.S.C. § 103.
Other Issues
In Appellant's specification at page 8, lines 2 and 18, and
page 9, line 18, "Figure 2" should read "Figure 3."
Conclusion
In view of the foregoing discussion, we have sustained the
rejection under 35 U.S.C. § 103 of claims 10-16 and 23-24, and we
have not sustained the rejection under 35 U.S.C. § 103 of claim
25.
Appeal No. 2004-0434
Application No. 09/836,686
14
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )
ARM/lbg
Appeal No. 2004-0434
Application No. 09/836,686
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TIMOTHY N. TROP
TROP, PRUNER & HU, P.C.
8554 KATY FWY, STE 100
HOUSTON, TX 77024-1805