Ex Parte Kang

Board of Patent Appeals and Interferences

Sep 4, 2007

09790726 (B.P.A.I. Sep. 4, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONG-SEOK KANG
____________

Appeal 2007-2021
Application 09/790,726
Technology Center 2100
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Decided: September 4, 2007
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Before ALLEN R. MACDONALD, JAY P. LUCAS, and JOHN A.
JEFFERY, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-8 and 23. Claims 9-22 have been withdrawn from
consideration (Br. 4). We have jurisdiction under 35 U.S.C. § 6(b), and we
heard the appeal on August 7, 2007. We affirm.
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Application 09/790,726

STATEMENT OF THE CASE
Appellant invented an electronic music distribution service that
associates a hyper text markup language (HTML) file with an uploaded
synchronous multimedia integration language (SMIL) file for display as a
web page. Claim 23 is illustrative:
23. A multimedia file service method in an electronic music
distribution service system, the multimedia file service method comprising:

uploading a synchronous multimedia integration language (SMIL) file
to be associated with a corresponding hyper text markup language (HTML)
file; and

displaying the HTML file corresponding to the SMIL file and/or other
HTML files.

The Examiner relies on the following prior art references to show
unpatentability:
Lin US 6,381,597 B1 Apr. 30, 2002
(filed Oct. 7, 1999)
Wiser US 6,385,596 B1 May 7, 2002
(filed Feb. 6, 1998)
Balabanovic US 6,480,191 B1 Nov. 12, 2002
(filed Sep. 28, 1999)
Friend US 6,728,757 B1 Apr. 27, 2004
(filed Jun. 4, 1998

1. Claims 1, 2, 4-8, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wiser in view of Lin and further in view of
Balabanovic.
2. Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Wiser in view of Lin, Balabanovic, and further in view of Friend.
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Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs 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 Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).

OPINION
Claims 1, 2, 4-8, and 23
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966).
Discussing the question of obviousness of a patent that claims a
combination of known elements, the Court in KSR Int’l v. Teleflex, Inc., 127
S. Ct. 1727, 82 USPQ2d 1395 (2007) explains:
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. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if 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. Sakraida [v. AG
Pro, Inc., 425 U.S. 273, 189 USPQ 449 (1976)] and
Anderson's-Black Rock [, Inc. v. Pavement Salvage Co.,
396 U.S. 57, 163 USPQ 673 (1969)] are illustrative—a court
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must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1396. If the claimed subject matter
cannot be fairly characterized as involving the simple substitution of one
known element for another or the mere application of a known technique to
a piece of prior art ready for the improvement, a holding of obviousness can
be based on a showing that “there was an apparent reason to combine the
known elements in the fashion claimed.” Id., 127 S. Ct. at 1740-41,
82 USPQ2d at 1396. Such a showing requires “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. . . . [H]owever, the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id., 127 S. Ct. at 1741, 82 USPQ2d
at 1396 (quoting In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336
(Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding the independent claims, the Examiner's rejection essentially
finds that Wiser teaches an electronic music distribution service system with
every claimed feature except for (1) uploading an SMIL multimedia file, and
(2) generating a corresponding HTML file. The Examiner cites Lin as
teaching uploading a multimedia file and generating and displaying a
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corresponding HTML file. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time of the invention to
provide such a feature in Wiser to enable access via a web browser. The
Examiner also cites Balabanovic as teaching uploading SMIL media files
and concludes that it would have been obvious to one of ordinary skill in the
art at the time of the invention to use SMIL files in the prior art system to
enable playing media files on the internet (Answer 3-5).
Appellant presents two main arguments. First, Appellant contends
that the proposed combination fails to teach or suggest an HTML file
corresponding to an SMIL file as claimed. Appellant argues that only one
cited reference, Balabanovic, even mentions SMIL, but only does so in two
very limited contexts: (1) in connection with storing a resulting presentation
from an audio narrative recorded with respect to photographs uploaded from
a digital camera, and (2) describing various viewing options for received
email messages (Br. 12-13; Reply Br. 6).
Second, Appellant argues that the Examiner failed to provide a valid
line of reasoning to combine the teachings of the cited references. Appellant
contends that Lin merely teaches how web bots extract prices for goods from
various merchant websites and has nothing to do with the electronic music
distribution service system of the claimed invention. Appellant adds that
Balabanovic merely mentions creating and playing back walk through
narratives, nor can HTML itself provide a motivation to combine the
references’ teachings (Br. 14-15; Reply Br. 5-6).
The Examiner responds that Wiser teaches uploading a multimedia
file to a database, and Lin teaches generating an HTML corresponding to an
uploaded multimedia file. Modifying Wiser to generate an HTML file in
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view of Lin would have been obvious since using an HTML file allows the
developer to specify hyperlinks that point to other information, including
media files (Answer 11-12). The Examiner adds that uploading a SMIL file
in Wiser/Lin system would also have been obvious since Balabanovic
teaches that SMIL files allow playback of synchronized audio and video
(Answer 13).
We will sustain the Examiner’s rejection of the independent claims.
We note at the outset that independent claim 23 is considerably broader than
independent claim 1. Since Appellant has argued the independent claims as
a group, we therefore select claim 23 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Claim 23 merely calls for, in pertinent part, (1) uploading a SMIL file
to be associated with a corresponding HTML file, and (2) displaying the
HTML file corresponding to the SMIL file and/or other HTML files
(emphasis added). The first emphasized limitation merely indicates that the
uploaded SMIL file is intended to be associated with a corresponding HTML
file at some future time. There is simply no requirement of such an
association in this limitation.
The second limitation does recite displaying the HTML file
corresponding to the SMIL file. But due to the presence of the “and/or”
limitation, the limitation merely calls for displaying this HTML file in the
alternative. That is, the limitation recites in pertinent part “displaying the
HTML file corresponding to the SMIL file or other HTML files.”
In short, the sheer scope and breadth of claim 23 is fully met by an
electronic music distribution service that involves (1) uploading an SMIL
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file; and (2) displaying any HTML file other than the one that corresponds to
the SMIL file.
With this interpretation in mind, we turn to the prior art. Wiser
discloses a secure online music distribution system that enables users to
preview and purchase media files, including media files created by artists
and uploaded to the system. To this end, an artist constructs a media data
file 200 using an authoring tool 102. As shown in Fig. 2, the media data file
200 comprises not only audio data (i.e., audio images 208), but also various
other types of data including text and images associated with the audio data
(e.g., cover and promotional art, lyrics, etc.) (Wiser, col. 6, l. 47 – col. 8, l.
17; Fig. 2).1
After the artist creates the media data file, it is uploaded to the content
manager 112 where it is imported and catalogued into the media information
database 106 (Wiser, col. 12, ll. col. 12, ll. 55-60). The media data file is
then available for preview and purchasing (Wiser, Abstract, col. 11, ll. 15-
25; Fig. 1).
Following registration, users can preview media data files prior to
purchase. As shown in Fig. 8, previewing begins with the user viewing a
web page in browser 128 that has a link to preview a desired media file via
HTTP server 122. When the user selects a desired media file on the web
page, a request is sent from the user’s browser 128 to the HTTP server 122.
Ultimately, delivery server 118 streams the media data file to the user’s

1 See also Wiser, col. 3, ll. 50-63 (noting that a single media data file can
combine encrypted and unencrypted versions of a song along with
descriptive text, artwork, and other information).
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media player 116 responsive to the user’s request (Wiser, col. 14, l. 36 - col.
16, l. 25; Figs. 7 and 8).
In our view, Wiser’s electronic music distribution system fully meets
every limitation of claim 23 except for the uploaded media data file being a
SMIL file. In Wiser, the HTML file that is displayed in the user’s browser
at the beginning of the preview process “corresponds,” at least in part, to the
uploaded media data file. When uploaded media data files are included in
the media information database, these media data files are made available
for previewing. As such, these media data files are included in an HTML
file that is ultimately displayed in the user’s browser.2 In short, the content
of this HTML file corresponds to the media data files that are uploaded to
the system.3
Although the media data files of Wiser are not SMIL files, we find
that designating the file recited in claim 23 as an “SMIL file” merely
describes the format of the data stored in the file. Because this data format
limitation does not further limit the file itself either functionally or
structurally, it essentially constitutes non-functional descriptive material.
Such non-functional descriptive material, however, does not patentably
distinguish over prior art that otherwise renders the claims unpatentable. See
In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004).

2 See Wiser, Fig. 8 (showing web page in user’s browser with links to
preview media files).
3 Although not pertinent to representative claim 23, but rather independent
claim 1, we add that this HTML file would have reasonably been stored in a
database in Wiser’s system since its content depends on the media data files
that are likewise stored in a database (i.e., the media information database).
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Nevertheless, we find the Examiner’s reliance on Balabanovic
reasonable for the teaching of utilizing SMIL files for synchronized
playback of media content. While Balabanovic relates to walkthrough
narratives, the reference ultimately pertains to recording and playing back
multimedia content in a predetermined manner. In this regard, Balabanovic
notes that an SMIL formatted file enables viewing various diverse media
types, such as audio clips, corresponding electronic documents, etc., in a
predetermined order using a viewer such as the RealPlayer G2 (Balabanovic,
col. 10, ll. 17-25).
We see no reason why such functionality based on the SMIL file
format could not also be utilized in an electronic music distribution system
such as that disclosed by Wiser. As we indicated previously, Wiser enables
the artist to incorporate diverse media into the media data file prior to
uploading (e.g., text and images associated with the audio data (Wiser, col.
6, ll. 47 – col. 8, l. 17; Fig. 2)). Providing an SMIL file format would, at a
minimum, enable artists to present the diverse media related to the audio in a
sequenced format similar to a presentation (e.g., commensurate with a music
video) with a relatively modest file size using readily-available media
players.4 Such value-added synchronization achieved by an SMIL file

4 See Specification ¶ 0019 (“Since only text files and image files are added
to the original music file in an SMIL file, the size is raised to only 1 or 2
megabits over an MP3 file, and a service of contents similar to a music video
can be provided.”); see also Lloyd Rutledge, SMIL - Synchronized
Multimedia Integration Language: Moving to the Beat, iX, Magazin für
professionelle Informationstechnik, Oct. 1999, at 58, available at
http://www.heise.de/ix/artikel/E/1999/10/058/ (last visited Aug. 7, 2007)
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would only enhance the artist’s ability to present their artistic works in a
creative and compelling fashion.5
For at least these reasons, we conclude that Appellant has not
persuasively rebutted the Examiner’s prima facie case of obviousness of
representative claim 23 based on the collective teachings of the cited
references – references which we find are reasonably combinable. We will
also sustain the Examiner’s rejection of claims 1, 2, and 4-8 since they fall
with representative claim 23.6 See In re Nielson, 816 F.2d 1567, 1572, 2
USPQ2d 1525, 1528 (Fed. Cir. 1987); see also 37 C.F.R. § 41.37(c)(1)(vii).

(“SMIL encodes what media items are to be presented, where on the screen
to display them and how the user can navigate through their display, as well
as when to play them.”).
5 We further note that Balabanovic discloses a conversion capability that
suggests generating a file (e.g., an HTML file) that corresponds to the
claimed multimedia file. Specifically, Balabanovic teaches that the contents
of a multimedia chronicle can be transferred and stored on a web server.
When a user receives an email containing an XML URL, the XML
representation is parsed to create and play the message if the user has the
appropriate application to view the XML representation. Alternatively, the
message can be displayed as a standard HTML-based web page or translated
into an SMIL-formatted file (Balabanovic, col. 9, l. 62 – col. 10, l. 25). Such
a conversion capability from one file format to another, as well as the ability
to present multimedia presentations in different file formats, would have
suggested generating a file (e.g., an HTML file) that corresponds to the
multimedia file as claimed.
6 We also find that the collective teachings of the cited prior art amply
suggests the limitations of at least the other independent claims for the
reasons previously discussed.
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Claim 3
Likewise, we will sustain the Examiner's rejection of claim 3 under 35
U.S.C. § 103(a) as being unpatentable over the teachings of over Wiser in
view of Lin, Balabanovic, and further in view of Friend. We find that (1)
the Examiner has established at least a prima facie case of obviousness for
these claims on Page 7 of the Answer, and (2) Appellant has not
persuasively rebutted the Examiner's prima facie case, but merely noted that
Friend fails to cure the deficiencies of the other cited references in
connection with independent claim 1. For the reasons previously discussed,
however, the rejection is therefore sustained.

DECISION
We have sustained the Examiner's rejections with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-8 and 23 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).

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AFFIRMED

eld

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