Ex Parte HallidayDownload PDFPatent Trial and Appeal BoardMay 15, 201511805430 (P.T.A.B. May. 15, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/805,430 05/23/2007 Christopher I. Halliday 3426 7590 05/18/2015 Chris Halliday 900 Spring City Road Phoenixville, PA 19460 EXAMINER STRANGE, AARON N ART UNIT PAPER NUMBER 2448 MAIL DATE DELIVERY MODE 05/18/2015 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 CHRISTOPHER I. HALLIDAY ____________________ Appeal 2013-003378 Application 11/805,430 Technology Center 2400 ____________________ Before ALLEN R. MacDONALD, JON M. JURGOVAN, and CARL L. SILVERMAN, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–18. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.2 1 According to Appellant, the real party in interest is Christina M. Halliday. App. Br. 3. 2 Our Decision refers to the Appeal Brief filed Oct. 17, 2012 (“App. Br.”), the Examiner’s Answer mailed Oct. 24, 2102 (“Ans.”), the Reply Brief filed Dec. 21, 2012 (“Reply Br.”), the Final Office Action mailed April 19, 2012 (“Final Act.”), and the Specification filed May 23, 2007 (“Spec.”). Appeal 2013-003378 Application 11/805,430 2 STATEMENT OF CASE Claimed Subject Matter The claims recite a mobile receiver for digital audio radio broadcast channels. See, e.g., claims 1, 3, 7, and 16. The receiver provides an audio work of authorship, such as a song or news broadcast, from one of the broadcast channels to a user. At the same time, the claims recite searching other channels for a user-designated work of authorship. The user is alerted when a user-designated work is found playing on another channel. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of selecting a station among a plurality of stations, comprising the steps of: receiving on a single mobile receiver a plurality of stations, each station comprising a digitally encoded stream containing a designation representative of a work of authorship that is being broadcast over a global communication network, said global communication network having a plurality of stations; decoding a selected station from among the plurality of stations; comparing the decoded station with a user designated work of authorship that was selectively saved in a memory by a user while the work of authorship was playing to determine an indication that the user designated work of authorship is playing on the decoded station received by the receiver, wherein the step of comparing occurs while the receiver is providing audio to the user; alerting a user to a station other than the station that the user is currently listening to, wherein the other station is playing the user designated work of authorship; and wherein the global communication network comprises a digital satellite audio radio network. Appeal 2013-003378 Application 11/805,430 3 Evidence Robbins US 6,317,882 B1 Nov. 13, 2001 Bates US 7,398,051 B1 July 8, 2008 Titlebaum US 6,549,774 B1 Apr. 15, 2003 Owens US 6,067,278 May 23, 2000 Wall US 6,055,244 Apr. 25, 2000 Patsiokas US 7,010,263 B1 Mar. 7, 2006 Declaration of Frank Flaherty (“Declaration”), App. Br. 23. Rejections R1. Claims 1–18 stand provisionally rejected for statutory-type double patenting under 35 U.S.C. § 101 over copending Application No. 09/922,487. Final Act. 2–4. R2. Claims 1–6, 8, 9, and 12 stand rejected under 35 U.S.C. § 103(a) based on Robbins, Titlebaum, and Owens. Final Act. 5–10. R3. Claims 10–11 stand rejected under 35 U.S.C. § 103(a) based on Robbins, Titlebaum, Owens, and Wall. Final Act. 10–11. R4. Claims 1–7 and 9–12 stand rejected under 35 U.S.C. § 103(a) based on Bates and Robbins. Final Act. 11–16. R5. Claim 8 stands rejected under 35 U.S.C. § 103(a) based on Bates, Robbins, and Titlebaum. Final Act. 17. R6. Claims 13–17 stand rejected under 35 U.S.C. § 103(a) based on Bates, Robbins, and Patsiokas. Final Act. 17–20. Appeal 2013-003378 Application 11/805,430 4 R7. Claim 18 stands rejected under 35 U.S.C. § 103(a) based on Bates, Robbins, Patsiokas, and Titlebaum. Final Act. 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)). We give claims their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Claim terms are given their ordinary and customary meaning, as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181 (Fed. Cir. 1993). Limitations not appearing in the claims cannot be relied upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982). To support a rejection under 35 U.S.C. § 103(a), the Examiner must provide articulated reasoning with some rational underpinning to support the motivation to combine prior art references. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Conversely, to defeat an examiner’s combination of references, an appellant must present evidence sufficient to show that Appeal 2013-003378 Application 11/805,430 5 combining the prior art was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418–19). “[A]ttorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of obviousness.” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. Id.; In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Unless good cause is shown, the Board is not required to address arguments in a Reply Brief that could have been presented in the Appeal Brief. Ex parte Borden, 93 USPQ2d, 1473, 1474 (BPAI 2010)(informative). ANALYSIS We adopt the findings of fact made by the Examiner in the Final Rejection and the Examiner's Answer as our own. We agree with the Examiner's decision to reject claims 1–18 for the reasons given in the Examiner's Answer and Final Office Action. We highlight the following for emphasis of the Examiner’s findings and conclusions. R1. Provisional Statutory-Type Double Patenting Rejection The Examiner provisionally rejected claims 1–18 under 35 U.S.C. § 101 over copending Application No. 09/922,487. This rejection remains provisional because the copending application has not issued as a patent as of the mailing date of this decision. Given its provisional status, this rejection is not ripe for decision by the Board. Appeal 2013-003378 Application 11/805,430 6 R2–R7. The Prior Art Rejections of Claims 1–18 Appellant addresses the R2–R7 rejections in two sets of arguments. The first set addresses rejections R2 and R3 based on Robbins in combination with other references, and the second set includes rejections R4–R7 based on Robbins and Bates, in some cases combined with other references. We follow Appellant’s arrangement of arguments in our analysis. R2, R3. Rejections based on Robbins in Combination with Other References – Claims 1–6, 8, and 9–12. “It is [A]ppellant’s position that none of the references, alone or in combination, teach or suggest a single receiver useful to save a user selection, scan in real time for the selection while also providing audio to a user, and then alerting a user to another channel.” App. Br. 12–15, Reply Br. 6. Appellant also argues “[t]he claimed invention requires use of a single receiver structure in the course of saving, scanning and alerting a user to an earlier saved work of authorship,” citing for evidentiary support the Declaration, paragraph 7. App. Br. 14. Appellant argues Robbins requires two receivers, the main receiver 804 and the auxiliary receiver 806 of Figure 8(a), to perform the recited functions. App. Br. 15. Because the claimed invention has only a “single mobile receiver,” Appellant concludes the claimed invention distinguishes over Robbins and the other combined references. Id. We agree with the Examiner there is no relationship between the “single mobile receiver” and the recited functions of decoding, saving, comparing, scanning, or alerting. See Ans. 3 and 5; claims 1 and 3. Under Appeal 2013-003378 Application 11/805,430 7 the broadest reasonable interpretation, these functions could be performed by any element. Also, the Examiner made a showing that the recited functions are taught by Robbins. Ans. 4, Final Act. 5–11. In particular, the Examiner points to Robbins, Fig. 8(a), element 802, as the “single mobile receiver.” Appellant does not address, let alone refute, the Examiner’s showing. Furthermore, Appellant argues the “single mobile receiver” performs functions that are not present in the claims (for example, there is no “scanning” in the claims). The Examiner is correct that it is improper to read limitations concerning these functions from the Specification into the claims when interpreting their meaning. See Van Geuns, supra. Thus, Appellant’s arguments do not persuade us the Examiner erred in the rejection. R4–R7. Rejections Based on Robbins and Bates Combined with Other References – Claims 1–18. A. Argument that Bates and Robbins Disclose Two Receivers, Not One, As Claimed Appellant argues “Robbins already discloses the same thing as Bates and yet Robbins still teaches that two or more receivers are required to accomplish what applicant has done with one single receiver.” App. Br. 16– 17, Reply Br. 5. The Examiner finds Robbins teaches a single receiver system 802, which, as shown in Figure 8(a), contains the comparator 808, the controller 810, and the message generator 812, and associated functionality, to perform the claimed decoding, comparing, and alerting, in addition to the main receiver 804 and the auxiliary receiver 806. See Ans. 4 and Final Act. 20–22 discussing Robbins Fig. 8(a). The Examiner also finds Appeal 2013-003378 Application 11/805,430 8 Bates discloses a single receiver. Ans. 5 citing Bates Fig. 5, antenna 530; Final Act. 22–24. Thus, under the broadest reasonable interpretation, the Examiner has shown that Robbins and Bates each teach single receivers. Appellant has not addressed the Examiner’s findings. Consequently, we are not persuaded the Examiner erred in the rejection. B. Argument Concerning Motivation to Combine Bates and Robbins Appellant argues taking the disclosure of Bates and without explanation blending it with Robbins, is insufficient to show obviousness. App. Br. 16, Reply Br. 5. In the Final Office Action, the Examiner stated: It would have been obvious to one of ordinary skill in the art at the time the invention was made to use Robbin’s teaching the radio receiver to automatically check other stations for programmed content in Bates’s receiver system to allow the listener of a radio receiver to receive active alerts when a designed [sic] program or song first starts playing rather than the user having to search the catalog for particular songs. See Final Act. 12–16, 19. Thus, the Examiner provided an articulated reasoning with some rational underpinning to support the motivation to combine Robbins and Bates, see In re Kahn, supra, notwithstanding Appellant’s assertion to the contrary. Appellant’s conclusory statement is not evidence that would effectively rebut the Examiner’s finding. See Geisler, De Blauwe, and Pearson, supra. As Appellant does not explain why he considers the Examiner’s finding of motivation to combine Bates and Robbins to be in error, which the Appellant has the burden of proving on appeal, we sustain the Examiner’s rejection. Appeal 2013-003378 Application 11/805,430 9 C. Argument Concerning Scanning Functionality Appellant argues Robbins and Bates fail to teach the claimed “scanning functionality” as follows: The scanning functionality is only supplied by the auxiliary receivers of Robbins (Declaration, pgh. 25). The “selectively saving a designation in a memory” and “while providing audio to the user” functionalities require the main receiver of Robbins (Declaration, pgh. 25). Thus, should Bates be modified with the teachings of Robbins to supply missing features, at a minimum the combination of references still requires two or more receivers (Declaration pgh. 26). We agree with the Examiner’s finding that no “scanning” is present in the claims. See Ans. 5, Final Act. 23, claims 1, 3, 7, and 16. Appellant’s arguments are thus not commensurate in scope with the claims as presented. See In re Self, supra. In any case, the Examiner showed that the functionality Appellant may regard as “scanning” is taught by Bates and Robbins. See Ans. 4–6 citing Bates col. 1, ll. 46–60, col. 2, ll. 7–16, Fig. 5, element 530; Robbins col. 6, ll. 39–67; Final Act. 20–24. Appellant has not addressed, let alone rebutted, the Examiner’s findings. D. Teaching Away Argument Appellant argues Robbins “teaches away” from the claimed invention in that Robbins uses a main receiver and auxiliary receivers, and the number of auxiliary receivers cannot be reduced to less than one. App. Br. 17 citing Declaration ¶¶ 7, 12, 27, and 28. As support for this proposition, Appellant cites Robbins, column 35, lines 49 to 54, stating “[t]he reduction in cost may be reflected in the decrease in the needed auxiliary receivers” (emphasis added). Id. Because of the word “needed” in the Robbins statement, Appellant concludes Robbins must have at least one auxiliary receiver in Appeal 2013-003378 Application 11/805,430 10 addition to the main receiver. As the claims recite only “a single mobile receiver” Appellant concludes Robbins “teaches away” from the claimed invention. The Examiner states Appellant’s argument is moot, because the receiving system 802 of Robbins Figure 8(a) is what the Examiner relies on to teach the claimed single receiver, not the main receiver 804 and auxiliary receiver(s) 806 contained within the receiving system 802. Ans. 6; Final Act. 24. Appellant has not shown the Examiner’s finding is unreasonable. E. Argument Concerning Indicia of Unobviousness Appellant argues the claims recite a “single satellite audio radio receiver” which omits the auxiliary receiver of Robbins and yet retains the desired scanning function of that omitted element. App. Br. 18. Appellant cites In re Edge for the proposition that omission of an element and retention of its function is indicia of unobviousness, which renders the claims patentable as a “matter of law.” Similar to the “teaching away” argument addressed in the previous section, the Examiner finds this argument is moot because the Examiner interpreted Robbins’ receiving system 802 as the “single satellite audio radio receiver,” and not the main receiver 804 and auxiliary receiver(s) 806 within it. Ans. 6, Final Act. 24. Again, Appellant’s arguments do not address the Examiner’s finding or persuade us the Examiner erred in this interpretation. F. Argument Concerning Impermissible Hindsight Reasoning Appellant argues the Examiner used impermissible hindsight because the alleged features of Bates already exist in Robbins, and yet without first using multiple receivers, Robbins itself cannot achieve what the Examiner Appeal 2013-003378 Application 11/805,430 11 asserts to be an obvious modification, as detailed in the Declaration. Ans. 18–19. Regarding this argument, the Examiner finds as follows: The proposed rejection is to implement a function (alerts for songs being played on different channels) which had been utilized on a receiver system regarding broadcast mediums including television, radio, UHF, VHF, AM, FM. See Col. 4, ll. 37–41. Bates introduces a receiver system which receives a plurality of stations from digital satellite radio. See Col. 3, l. 15. The proposed combination entails using functionality available to pervious [sic] broadcast mediums and utilizing that functionality on the new medium, thus taking advantage of old technology on a new broadcast medium. This type of improvement is not relying on hindsight reasoning, but is within the ability of one of ordinary skill at the time the invention was made. Ans. 7. The Examiner’s finding is reasonable. A person of ordinary skill in the art would have applied functionality used on previous broadcast mediums (UHF/VHF television and AM/FM radio) to a newer broadcast medium (digital audio satellite radio). The Appellant has not provided a basis that one skilled in the art would have faced difficulty in combining Robbins and Bates without resorting to impermissible hindsight by using Appellant’s Specification to piece together the claimed subject matter. See Leapfrog, supra. Accordingly, we are not persuaded the Examiner erred. Remaining Issues In the Reply Brief, the Appellant submits a chart showing claim 3 limitations compared with Bates and Robbins. Reply Br. 4–5. To the extent this chart is introduced as argument or evidence, we do not consider it because Appellant has not demonstrated any “good cause” for the belated Appeal 2013-003378 Application 11/805,430 12 presentation. See Borden, supra. The remaining arguments presented in the Reply Brief were present in the Appeal Brief and have been addressed in our analysis. Dependent Claims Because Appellant’s arguments relate to independent claims 1, 3, 7, and 16, and no separate arguments were made for the dependent claims, the rejection of the dependent claims is affirmed for the same reasons as stated for their respective independent claims. DECISION For the above reasons, the Examiner’s rejection of claims 1–18 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)(1)(iv). AFFIRMED kme Copy with citationCopy as parenthetical citation