Ex Parte Halliday

Board of Patent Appeals and Interferences

Dec 14, 2009

09922487 (B.P.A.I. Dec. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHRISTOPHER I. HALLIDAY
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Appeal 2009-001932
Application 09/922,487
Technology Center 2400
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Decided: December 14, 2009
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
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Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 41-43, 45-53, 55-64 and 74-81. App. Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm.

STATEMENT OF THE CASE
Appellant invented a method of alerting the user when a work of
authorship matching the work stored by the user in the memory of a receiver
is playing on another satellite audio radio channel other than the current
user’s channel.1
Claim 61,2 which further illustrates the invention, follows:
61. A method of selecting a satellite audio radio channel, comprising the
steps of:
receiving one or more digital satellite audio radio channels using a single
mobile receiver, wherein one or more of the channels includes additional
information that indicates the content of one or more of the channels;
comparing the information on one or more of the received digital satellite
audio radio channels with a designation of a work of authorship that was
selectively saved in a memory by a user when the work of authorship was
playing on the receiver to determine whether the user designated work of
authorship is currently playing on one or more of the digital satellite audio
radio channels receivable by the receiver, wherein the step of comparing the
information occurs while the receiver is providing audio to the user; and
alerting the user to a satellite audio radio channel other than the channel that

1 See generally App. Br. 10-11.
2 Appellant states claim 61 is generally representative of the claims (App.
Br. 17).
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the user is currently listening to, wherein the channel to which the user is
alerted is playing the user designated work of authorship.

The Rejections3
The Examiner relies upon the following prior art references as
evidence of unpatentability:
Wall, Jr. US 6,055,244 Apr. 25, 2000
Owens US 6,067,278 May 23, 2000
Barton US 6,233,398 B1 May 15, 2001
Robbins US 6,317,882 B1 Nov. 13, 2001
Titlebaum US 6,549,774 B1 Apr. 15, 2003

Claims 41-43, 45, 47, 48, 50-53, 55, 56, 58, 604-64, 74-78 and 81
stand rejected under 35 U.S.C. § 103(a), as being unpatentable over
Robbins, Titlebaum and Owens (Ans. 3-15).
Claims 46 and 57 stand rejected under 35 U.S.C. § 103(a), as being
unpatentable over Robbins, Titlebaum, Owens and Barton (Ans. 16).
Claims 49, 59, 79 and 80 stand rejected under 35 U.S.C. § 103(a), as
being unpatentable over Robbins, Titlebaum, Owens and Wall, Jr. (Ans. 16-
17).

3 Examiner has withdrawn the 35 U.S.C. § 112, first paragraph rejection of
claims 41-43, 45-53, 55-64 and 74-81 (Ans. 17).

4 Although the Examiner’s statement of the rejection omits claim 60, the
Examiner nevertheless addresses claim 60 in the body of the rejection
Compare Ans. 3 with Ans. 7. Accordingly, we presume that the Examiner
intended to include claim 60 in this rejection and treat the Examiner’s error
as harmless.
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Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Brief and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Brief have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).

Obviousness Rejection
Appellant argues that Robbins relies upon a receiver system which
consists of multiple receivers to accomplish what the claimed invention does
with only one receiver. See App. Br. 20-23. Further, Appellant argues that
the ID codes disclosed in Robbins are automatically stored in the receiver’s
memory as opposed to the claimed invention which stores ID codes based
upon the user’s selection (App. Br. 23).

ISSUES
Has Appellant shown that the Examiner erred in finding that the
claimed single mobile receiver is obvious in view of Robbins’ receiver
system?
Has Appellant shown that the Examiner erred in finding that the
claimed ID codes were obvious in view of the ID codes disclosed in the
Robbins reference?

FINDINGS OF FACTS
Robbins
1. Figure 8a of Robbins is reproduced below:
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Figure 8(a) discloses an embodiment of the invention having a receiving
system that includes several receivers.

2. Figure 8b of Robbins is reproduced below:

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Figure 8(a) discloses an embodiment of the invention having a receiving
system with several receivers including multiple auxiliary receivers.

3. FIG. 8(a) discloses a receiving system 802 that includes a main receiver
804 for receiving a spectrum of data streams that carry data signals; an
auxiliary receiver 806 for scanning the spectrum of data streams; a
comparator 808 for comparing data; a controller 810 for controlling the
auxiliary receiver 806 and receiver unit 804, an input 814 for inputting the
spectrum of data streams into the main receiver 804, and the auxiliary
receiver 806; a message generator 812 for generating a reminder message for
a user; and an output 816 for outputting the signal to a respective video
and/or speaker (Col. 40, ll. 11-20).

4. Robbins discloses that a user activates a specific function of a receiver
and the receiver detects and stores an identification (ID) code that was
transmitted within the received signal (Col. 4, ll. 15-20).

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“‘On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.’” (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998))).
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[T]he court erred in concluding that a patent claim cannot be
proved obvious merely by showing that the combination of
elements was obvious to try. When there is a design need or
market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary
skill in the art has good reason to pursue the known options
within his or her technical grasp. If this leads to the anticipated
success, it is likely the product not of innovation but of ordinary
skill and common sense.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402-03 (2007).

It is an obvious expedient to the skilled artisan to integrate into a
single unit individual devices that were known in the art to be separate but
operating together. In re Larson, 340 F.2d 965, 968 (CCPA 1965).

“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (citations and internal quotation marks omitted). See also
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely
disclosing more than one alternative does not teach away from any of these
alternatives if the disclosure does not criticize, discredit, or otherwise
discourage the alternatives).

“Where claimed subject matter has been rejected as obvious in view
of a combination of prior references, a proper analysis under § 103 requires,
inter alia, considerations of two factors: (1) whether the prior art would have
suggested to those of ordinary skill in the art that they should make the
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claimed composition or device, or carry out the claimed process; and (2)
whether the prior art would also have revealed that in so making or carrying
out, those of ordinary skill would have had a reasonable expectation of
success.” In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991) (citations
omitted). “Obviousness does not require absolute predictability of success .
. . . For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).

ANALYSIS
Robbins employment of multiple receivers
Appellant argues that none of the references employs the same
receiver to save a designation of work of authorship while scanning for
selections in real time (App. Br. 20). Further, Appellant argues that none of
the references employs the same receiver to scan for selections in real time
while providing the user audio and notification alerts. Id. See also Reply Br.
4. The Examiner takes the position that Robbins’ receiver system is the
entire box 802 composed of multiple components but still functions as a
singular receiver in the same manner as the claimed invention. See Ans. 18.
The Examiner acknowledges Robbins uses a receiver system, but argues that
the only actual difference between the claimed invention and Robbins is
nomenclature (Ans. 18).
We agree with the Examiner’s characterization because while it is
clear that Robbins employs multiple receivers to form one homogenous
receiver system, the internal components of Appellant’s receiver have not
been disclosed. Appellant does not provide any support for his position that
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the claimed receiver differs from the receiver system employed by Robbins.
In fact, Appellant argues that the claimed invention accomplishes with one
satellite audio receiver that which previously would have required two or
more receivers (App. Br. 22). Robbins accomplishes the same feat by
combining multiple receivers into a singular receiver system. See FF 1-3.
Appellant provides examples of how the components of Robbins interact
with each other to accomplish what his invention does with only one
receiver (App. Br. 23-25). However, just because Robbins employs multiple
receivers to achieve what the claimed invention does with one receiver is not
enough to patentably distinguish the claimed invention over Robbins since
integrating separate components into one singular component is an obvious
expedient to the skilled artisan. See Larson, 340 F.2d at 968. Thus, we do
not find the Appellant’s argument persuasive.
Appellant attempts to specify a distinction between Robbins’ auxiliary
receivers storing ID codes that are not user selected and Robbins main
receivers storing ID codes that are user selected (App Br. 23). Upon
integrating the multiple receivers into a single receiver, which is an obvious
expedient, this becomes a moot argument because the single receiver would
store the user selected ID codes. Further, the ID codes stored in the
auxiliary receivers are actually a consequence of user preferences and
therefore they are user selected. See FF 4. Thus we do not find the
Appellant’s arguments persuasive.

Robbins teaching away from employment of one receiver
Appellant argues that Robbins teaches away from the use of a single
receiver because one of skill in the art would not have been motivated to
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integrate the auxiliary and main receivers together with any expectation of
success (App. Br. 26). Appellant’s assertion that Robbins teaches away
from the use of multiple receivers is based upon Robbins’ disclosure of
reducing the number of auxiliary receivers while maintaining that auxiliary
receivers are still required (App. Br. 27). We disagree with Appellant’s
assertion. Robbins states, “[t]he reduction in cost may be reflected in the
decrease in the needed auxiliary receivers” (Col. 35, ll. 53-54). Robbins
does not teach away from consolidating the receivers; in fact, Robbins
suggests just the opposite by disclosing that reducing the number of
receivers is a cost saving option. See Kahn, 441 F.3d at 990; Fulton, 391
F.3d at 1201 (noting that merely disclosing more than one alternative does
not teach away from any of these alternatives if the disclosure does not
criticize, discredit, or otherwise discourage the alternatives).

No expectation of success
Appellant further argues that forcibly modifying Robbins in the
manner suggested by the Examiner would render Robbins unsatisfactory for
its intended purpose and function (Ans. 29). It is the Appellant’s theory that
in the absence of one or more auxiliary receivers, no scanning occurs and
therefore Robbins becomes non-functional. Id. As we pointed out
previously, however, Robbins indicates that the number of receivers can be
reduced without derailing the original purpose and intent of the invention.
Therefore one skilled in the art would have had a reasonable expectation of
success when integrating the multiple receivers. Further, Appellant has
provided no evidence, other than a mere assertion, that one skilled in the art
would not reasonably expect success when integrating the multiple
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receivers. Mere lawyer's arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). Thus, we do not find Appellant’s
arguments persuasive.

Examiner rejects limitations not present in the claims
Appellant argues that the Examiner rejects claim limitations that are
not currently present in the claims (App. Br. 30-31). This is an error of no
consequence and has no bearing upon the issues as long as Examiner
addresses the limitations that are actually in the claims.

Claims 46, 49, 57, 59, 79 and 80
Appellant asserts that continued rejections in view of Brown were in
error because Brown was not germane to the issues of the instant application
other than for the fact that the reference establishes that one of skill in the art
would have not proceeded in the same technical direction as the Appellant
(App. Br. 31). The Examiner acknowledges the error of referring to Brown
in the rejections and states that the prosecution history clearly shows Brown
was replaced by Titlebaum (Ans. 17). The Examiner maintains that while
the rejection statements reflected reliance upon the Brown reference, the
substance of the rejection nevertheless relied upon the Robbins and
Titlebaum combination. See Ans. 17. Appellant acknowledges this
oversight, but nonetheless fails to timely address the rejections based upon
Titlebaum instead of Brown. See App Br. 31. Since the Examiner’s clerical
errors in this regard are undisputed (and are deemed to be harmless in any
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event), Appellant has not persuasively rebutted the Examiner’s prima facie
case of obviousness for dependent claims 46, 49, 57, 79 and 80 based upon
the combination of Robbins and Titlebaum. See App. Br. 31.

Claims 43, 52, 74 and 76
Appellant asserts that the Examiner failed to address claim limitations
generally directed to alerting a user (App. Br. 31). However, in rejecting
claims 43 and 52, Examiner indicated Robbins discloses alerting a user of
desired content if the user designation of a work of authorship matches a
station designation of a work authorship (Ans. 5). Therefore, Appellant has
not persuasively rebutted the Examiner’s prima facie case of obviousness
established in the rejection of claims 43, 52, 74 and 76. See App. Br. 31.

Claims 43 and 52
Appellant’s argument centralizes upon Robbins’ reliance upon
auxiliary receivers that repeatedly scans a channel (App. Br. 31). It is
Appellant’s position that Robbins only use the term repeatedly in context
with scanning that occurs in the auxiliary receivers and therefore Robbins
fails to disclose using only one receiver for scanning. See Id. We do not find
this argument persuasive for the same reasons we have stated previously. It
would have been an obvious expedient of one of ordinary skill in the art to
integrate the multiple receivers into a single receiver and therefore the
scanning would occur within one receiver. Therefore, Appellant has not
persuasively rebutted the Examiner’s prima facie case of obviousness
established in the rejection of claims 43 and 52.

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Claims 41, 42, 45, 47, 48, 51, 53, 55, 56, 58-60, 62-64, 75, 77, 78 and 81
Appellant did not address the merits of independent claims 41 and 75
individually and since Appellant has not persuasively rebutted the
Examiner’s prima facie case of obviousness over Robbins, Titlebaum and
Owens, we will sustain the Examiner’s rejection of independent claims 41
and 75. Therefore, claim 42 falls with claim 41 from which it depends;
while claims 45, 47, 48, 50 and 51 fall with claim 43 from which they
depend; claims 53, 55, 58-60 and 56 (which ultimately depend upon claim
52) fall with claim 52 from which they depend; claims 62-64 fall with claim
61 from which they depend; and claims 77, 78 and claim 81(which
ultimately depend upon claim 76) fall with claim 76 from which they
depend. See In re Nielson, 816 F.2d 1567, 1569, 1572 (Fed. Cir. 1987)
(dependent claims, not argued separately, fall with the independent claim,
even though the dependent claims were rejected based on additional (or
different) references.).

CONCLUSIONS
Appellant has not shown that the Examiner erred in finding that the
claimed single mobile receiver is obvious in view of Robbins’ receiver
system.
Appellant has not shown that the Examiner erred in finding that the
claimed ID codes were obvious in view of the ID codes disclosed in the
Robbins reference.

ORDER
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We will sustain the Examiner’s decision rejecting claims 41-43, 45-
53, 55-64 and 74-81.
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).

AFFIRMED

ke

Christina M. Halliday
900 Spring City Road
Phoenixville PA 19460