Ex Parte Hans et al

Board of Patent Appeals and Interferences

Sep 3, 2010

10210263 (B.P.A.I. Sep. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MATHIEU CLAUDE HANS and MARK TAYLOR SMITH
____________

Appeal 2009-004844
Application 10/210,263
Technology Center 2600
____________

Before MAHSHID D. SAADAT, THOMAS S. HAHN,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 through 42, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to a digital audio system configured to
facilitate a collaborative audio session between two or more digital audio
devices and a server that communicates with the devices over a network
(Spec. 1-3). Claims 1, 37, and 42, which are illustrative of the invention,
read as follows:
1. A method for operating a digital audio device in a DJ
mode, thereby facilitating a collaborative audio session with
another digital audio device, comprising:
(a) at a first digital audio device operated by a first user,
obtaining a first digital audio stream;
(b) joining a second user having a second digital audio
device as a participant in a collaborative audio session
with said first digital audio device;
(i) said second digital audio device being under
independent operational control of said first digital
audio device;
(c) obtaining a second digital audio stream from said second
digital audio device;
(d) digitally integrating, at said first digital audio device, at
least a portion of said first digital audio stream and said
second digital audio stream; and
(e) providing said integrated digital audio stream to at least
said second digital audio device.

37. In connection with a first digital audio device including a
computer-readable memory for storing an encoded first digital
audio stream, a processor for decoding said first digital audio
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stream, and an output interface for playing said decoded first
digital audio stream; an improvement comprising an add-on
module for converting said first digital audio device into a
personal DJ station operable by a first user, including:
(a) an interface to said first digital audio device;
(b) an interface to a second digital audio device operable by
a second user:
(i) under operational control independent of said first
digital audio device; and
(ii) configured to receive a second digital audio stream
from said second digital audio device; and
(c) a mixer configured to:
(i) receive said first digital audio stream and said
second digital audio stream;
(ii) integrate at least a portion of said first digital audio
stream and said second digital audio stream; and
(iii) provide said integrated digital audio stream to at
least one of said digital audio devices.

42. A method for operating a digital audio device in a DJ
mode and facilitating a collaborative audio session, comprising:
(a) obtaining at least one digital audio stream from an
external source at a first digital audio device operable by
a first user;
(b) performing an audio manipulation on said at least one
digital audio stream while the stream is being obtained,
said manipulation including integrating said at least one
digital audio stream with another digital audio stream;
and
(c) providing said manipulated digital audio stream to at
least a second digital audio device operable by a second
user.
The Examiner relies on the following prior art in rejecting the claims:
Sakata US 4,998,281 Mar. 5, 1991
Segers US 6,541,690 B1 Apr. 1, 2003
Redmann US 6,653,545 B2 Nov. 25, 2003
Christofferson US 6,807,563 B1 Oct. 19, 2004
Shaffer US 6,839,416 B1 Jan. 4, 2005
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Curtin US 6,898,637 B2 May 24, 2005
Dal Farra US 7,006,617 B1 Feb. 28, 2006

J. Rosenberg & H. Schulzrinne, Models for Multi Party Conferencing
in SIP, INTERNET ENGINEERING TASK FORCE, Nov. 5, 2001,
http://www.ietf.org/proceedings/01dec/I-D/draft-ietf-sipping-
conferencing-models-00.txt.

Appellants’ Admitted Prior Art (APA), Spec. 2.

Claims 37, 38, 41, and 42 stand rejected as unpatentable under 35
U.S.C. § 102(e) as anticipated by Curtin.
Claims 1-3, 13-15, 17-19, 22, 24-26, and 29-32 stand rejected as
unpatentable under 35 U.S.C. § 103(a) over Curtin in view of Dal Farra.
Claims 16 and 23 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) over Curtin in view of Dal Farra and further in view of Shaffer and
Christofferson.
Claims 4, 5, 20, 27, and 33 stand rejected as unpatentable under 35
U.S.C. § 103(a) over Curtin in view of Dal Farra and further in view of
Segers.
Claim 39 stands rejected as unpatentable under 35 U.S.C. § 103(a)
over Curtin in view of Segers.
Claims 6 and 9 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) over Curtin in view of Dal Farra, in view of Segers, and further in
view of APA.
Claims 4, 7, 8, 20, 27, and 33 stand rejected as unpatentable under 35
U.S.C. § 103(a) over Curtin in view of Dal Farra and further in view of
Sakata.
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Claim 39 stands rejected as unpatentable under 35 U.S.C. § 103(a)
over Curtin in view of Sakata.
Claims 10, 11, 21, 28, and 34-36 stand rejected as unpatentable under
35 U.S.C. § 103(a) over Curtin in view of Dal Farra and further in view of
Redmann.
Claim 40 stands rejected as unpatentable under 35 U.S.C. § 103(a)
over Curtin in view of Redmann.
Claim 12 stands rejected as unpatentable under 35 U.S.C. § 103(a)
over Curtin in view of Dal Farra and further in view of Rosenberg.
We make reference to the Briefs (Appeal Brief, filed on July 16, 2008,
and Reply Brief, filed on October 14, 2008) and the Answer (filed August
11, 2008) for their respective details. Only those arguments actually made
by Appellants have been considered in this decision. Arguments which
Appellants could have made but did not make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

ISSUES
Claims 1, 17, 24, 30, 35, 37, and 42 are independent claims.
Appellants have presented no arguments for the patentability of dependent
claims 2-16, 18-23, 25-29, 31-34, 36, and 38-41, other than those presented
for the claims from which they depend, so the dependent claims stand or fall
with the independent claims from which they depend. Furthermore,
Appellants rely only on the arguments presented for the patentability of
claim 1 to support the patentability of claims 17, 24, 30, and 35. Similarly,
Appellants rely only on the arguments presented for claim 37 to support the
patentability of claim 42. In particular, Appellants have submitted no
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arguments regarding the applicability of Redmann to claim 35 or of any
reference other than Curtin and Dal Farra that has been applied by the
Examiner to any of the dependent claim, so the applicability of those
references is deemed to be admitted.
In arguing for the patentability of claim 1 (and claims 2-36)
Appellants contend that the Examiner improperly combined Dal Farra and
Curtin to reject claim 1 under 35 U.S.C. 103(a) because Dal Farra is non-
analogous art (App. Br. 18-20; Reply Br. 4-5) and the combination was
impermissible hindsight reconstruction (App. Br. 20-21). In arguing for the
patentability of claim 37 (and claims 38-42) Appellants contend that Curtin
fails to disclose certain elements of the claims, and in particular an “add-on
module for a first digital audio device” which “transmits [an] integrated
stream to at least a second digital audio device” (App. Br. 23).
The issues are:
1. Is Dal Farra properly combinable with Curtin to reject claim 1
as obvious under 35 U.S.C. § 103(a)?
2. Does Curtin contain all the elements of claim 37 to reject claim
37 as anticipated under 35 U.S.C. § 102(e)?
3. Does Curtin contain all the elements of claim 42 to reject claim
42 as anticipated under 35 U.S.C. § 102(e)?

FINDINGS OF FACT (FF)
Curtin
1. Curtin, in the embodiment depicted in Figures 1, 3, and 6,
discloses audio nodes 11 operated to facilitate a collaborative audio session,
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which may be either a musical collaboration or a conference call (col. 3, ll.
1-7).
2. Curtin describes a musical collaboration or conference call
using two or more audio nodes 11 in which any one of the audio nodes 11
(herein “node A”), which is operated by a musician or vocalist, generates an
encoded audio signal as the corresponding internet transmission 15. Another
musician or vocalist at any other one of audio nodes 11 (herein “node B”) is
joined as a participant (col. 3, ll. 8-15).
3. Curtin further discloses obtaining an encoded audio signal as
the internet transmission 15 corresponding to node B, which is mixed with
the encoded audio signal from node A and the mixed signal provided to a
plurality of audio nodes 11 including nodes A and B (col. 3, ll. 16-26).
4. Curtin’s embodiment of Figures 1, 3, and 6 performs the
mixing step in the mixer module 31 at the server computer 13 (col. 4, ll. 5-
19).
5. Each of Curtin’s audio nodes 11 depicted in Figure 6 is a
computer inherently having memory for at least temporarily storing encoded
audio, a decoder 45 for decoding encoded audio, and an output interface for
providing the Internet 15 transmission from the server 13 to a musician
monitoring device 49 (col. 5, ll. 12-20).
Dal Farra
6. Dal Farra discloses a telephone conference calling system in
which a plurality of telephone terminals (col. 2, l. 8) are joined in a
conference call in which audio signals are combined by bridging or voice-
path mixing (col. 2, ll. 21-37).
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7. Dal Farra combines the signals at a conference originator’s
terminal (col. 2, ll. 11-14) and sends combined signals to a plurality of other
audio devices (col. 2, ll. 20-58; col. 5, ll. 24-31).

PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. . . . [I]f a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.”
Id. at 417.

ANALYSIS
1. Claim 1
Appellants argue that the Examiner improperly combined Dal Farra
with Curtin to reject claim 1 under 35 U.S.C. § 103(a) because Dal Farra is
not within Appellants’ field of endeavor, nor is it reasonably pertinent to the
particular problem with which Appellants were concerned, and further argue
that the combination was an impermissible hindsight reconstruction (App.
Br. 18-21). The Examiner’s Answer responds that “both Dal Farra and the
instant invention relate to systems designed to increase the ability of remote
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parties to audibly interact” (Ans. 18). The Examiner also points out that
“Dal Farra provides a system related to the problems of manipulating audio
from other users and streaming that audio mixed . . . to another user” (Ans.
18-19). We agree with the Examiner. The instant invention, Dal Farra, and
Curtin are all related to combining signals representing audible information
(FF 1, 6). Contrary to Appellants’ attempt to distinguish voice from music
(Reply Br. 4), to one having ordinary skill in the art it is insignificant
whether those signals represent audible music, vocal, instrumental, as in a
data file format (e.g., MP-3 or MIDI), or voice conversation, as in a
telephonic conference. Furthermore, we note that Curtin expressly points
out (col. 3, ll. 1-7) that its disclosure relates to both musical collaboration
and conference calling, a further indication of the close relationship between
the two arts, such that a person having ordinary skill in the music
collaboration art would be led to look to the conference calling art. See
KSR, 550 U.S. at 417.
We also agree with the Examiner that the combination does not
constitute impermissible hindsight reconstruction, as the reference teachings
make the advantages of the implementation of Del Farra’s audio bridge
(voice path mixing) location (FF 7) located at one of the digital audio
devices of Curtin’s collaborative audio session participants apparent to a
person having ordinary skill in the art.
2. Claim 37
Appellants contend that Curtin fails to disclose certain elements of
claim 37 and in particular “an add-on module at a first digital audio device
operable by a first user” which “transmits [an] integrated stream to at least a
second digital audio device” (App. Br. 23). As an initial matter we note that
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Appellants’ argument mischaracterizes the final element of claim 37 which
states, “(iii) provide said integrated digital audio signal to at least one of said
digital audio devices” (App. Br. 33 (emphasis added)). As the “provid[e] . .
. to at least said second digital audio device” limitation is absent from claim
37, Appellants’ reliance on it is misplaced with regard to that claim.
Appellants argue that the claim limitation of “an add-on module” that
operates “[i]n connection with” the first digital audio device “for
converting” the first digital audio device into a “personal DJ station operable
by a first user” requires that the add-on module be physically located at the
first digital audio device (App. Br. 19-20; Reply Br. 5). The Examiner has
stated that the server 13 of Curtin meets the claimed add-on module, that it is
clearly “[i]n connection with” the first digital audio device, and that the
claim does not require that the add-on module to be physically “at” the first
digital audio device (Ans. 19-20). Implicit in the Examiner’s argument is
the observation that the claim language does not require that the first user be
able to operate any of the claimed structural elements of the add-on module
nor does it require that the first user be able to operate the first digital audio
device.
Therefore, the claim merely requires that the first user be able to
operate the resulting personal DJ station. We agree with the Examiner. “In
connection with” reasonably encompasses “connected to,” or “related to”
and is not narrowed to exclusively encompassing “attached to” or “located
at” (see Ans. 20). Further, the recitation in the preamble of claim 37 that the
personal DJ station be operable by a first user does not delimit any of the
structural features recited in the body of the claim and, therefore, supports
our conclusion supra. Additionally, we find that Curtin’s server generates
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the claimed integrated stream that is provided to another node or audio
device (FF 2-4). Thus, we conclude that Curtin discloses all the elements
recited in claim 37.
3. Claim 42
Claim 42 does not include the language regarding the add-on module
argued by Appellants with regard to claim 37, but does include the limitation
of “providing said manipulated digital audio signal to at least a second
digital audio device operable by a second user.” The Examiner points to
column 3, lines 16-29, and column 4, lines 15-19, of Curtin and states (Ans.
3-4) that “server 13 of Curtin obtains a digital audio stream from an external
audio node, mixes it with another stream and provides the mix to the nodes.”
We find that Curtin discloses mixing a digital audio stream obtained from a
first external node with another stream from a second node and providing
the streams to both nodes, which necessarily includes the second node (FF 2-
4). Therefore, we agree with the Examiner that Curtin discloses all of the
elements of claim 42.

CONCLUSIONS
On the record before us and in view of the analysis above, we find
that the Examiner properly combined the teachings of Curtin and Dal Farra
to reject independent claims 1, 17, 24, 30, and 35 and all the claims that
depend from them under 35 U.S.C. § 103(a). We further find that the
Examiner correctly rejected independent claims 37 and 42 and all the claims
that depend from them as being anticipated by Curtin under 35 U.S.C.
§ 102(e).

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ORDER
The decision of the Examiner rejecting claims 1-42 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).

AFFIRMED

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