Ex Parte Karaoguz et al

Patent Trial and Appeal Board

Oct 31, 2012

10672664 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JEYHAN KARAOGUZ and JAMES D. BENNETT
____________________

Appeal 2011-010084
Application 10/672,664
Technology Center 2400
____________________

Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-7, 9-18, 20-34, and 36-61. Claims 8, 19, and 35 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
Appellants’ invention relates to a system providing support for the
delivery of media to an authorized vehicle (Spec. 5, ¶ [11]).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A system providing support for the delivery of media to an
authorized vehicle, the system comprising:

a storage for storing media, and having an associated first
network address;

set top box circuitry communicatively coupled to the
storage, the set top box circuitry arranged to exchange media
via a communication network using a first communication
interface, the set top box circuitry supporting wireless
communication of media using a second communication
interface, the set top box circuitry being remotely located from
the authorized vehicle;

at least one vehicle system within the authorized vehicle
remotely located from and communicatively coupled to the set
top box circuitry via the second communication interface, the
at least one vehicle system having an associated second
network address, the at least one vehicle system comprising an
entertainment system;
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a user interface to support the delivery of media, the user
interface having at least one view comprising a representation
of a sequence of media available for delivery to the at least one
vehicle system, the at least one view comprising a first personal
media channel that facilitates a user-defined transfer from the
set top box circuitry, via the at least one vehicle system, of a
video game to one or both of the entertainment system and/or a
handheld electronic game system;

at least one server for storing media, and having an
associated third network address; and

server software that receives a request, via the
communication network, identifying one or more of the
associated first, second, and/or third network addresses and
authorization information, and responds by identifying at least
one other of the one or more of the associated first, second,
and/or third network addresses to support the delivery of media
to the at least one vehicle system.

C. REJECTION

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Witkowski US 2004/0203379 Al Oct. 14, 2004
(filed Dec. 20, 2002)
Lee US 6,799,201 Bl Sep. 28, 2004
(filed Sep. 19, 2000)
Lavelle US 2004/0073932 Al Apr. 15, 2004
(effectively filed Oct. 27, 2000)
Novak US 2003/0097655 Al May 22, 2003

Claims 1-7, 9-18, 20-24, 31-34, 36-40, 42-46, 48-51, 56-58, 60 and 61
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lee and
Lavelle.
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Claims 25-30, 52, 54, and 55 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lee, Lavelle and Novak.
Claims 41, 47, and 59 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lee, Lavelle and Witkowski.
Claim 53 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee, Lavelle, Novak and Witkowski.

II. ISSUES
The main issues before us are whether the Examiner has erred in
finding that the combination of Lee in view of Lavelle teaches or would
have suggested:
1) a “set top box circuitry” that is “arranged to exchange media via a
communication network” and “supporting wireless communication of
media,” wherein the set top box circuitry is “remotely located from the
authorized vehicle” (claim 1, emphasis added). In particular, the issue turns
on whether Lee teaches or suggests a circuitry that supports wireless
communication of media to a vehicle but is remotely located from the
vehicle; and
2) a user interface having a “view” comprising “a first personal media
channel that facilitates a user-defined transfer from the set top box circuitry
… of a video game” (id.).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.

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Lee
1. Lee discloses a remotely configurable multimedia entertainment and
information system for vehicles with normal radio channel function provided
along with programmable content and channel selection as well as internet
access through wireless communications, wherein programmability is
achieved off-line via a web page and remote computer (Abstract).
2. The system consists of a remotely programmable, microcomputer
controlled multimedia device 20 in a vehicle with a wireless IP address for
Internet access, an Internet gateway network 30 that provides programming
information and Internet access to the multimedia device 20, and one or
more remote programming devices 40 (col. 6, ll. 8-14; Fig. 1).
3. A user operates an application by tuning to a “channel,” wherein two
types of channels preferably available are audio broadcasts (e.g., AM, FM,
TV, digital, Internet audio broadcasts and recorded material) and personal
information services (e.g., navigation, email, traffic alerts, etc) (col. 6, ll. 17-
23).
4. Remote programmable devices 40, such as a computer connected to
the Internet 60, are used to download information from the Internet gateway
network 30 to the multimedia device 20 in the vehicle 184 (col. 6, ll. 43-46).
Lavelle
5. Lavelle discloses a multimedia entertainment unit for use in a vehicle
that allows a plurality of passengers in the vehicle to each watch and/or
listen to a different media through the use of a wireless transmitter and
wireless headphones (p. 2, ¶ [0033]), wherein an external audio/video
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processor is adapted to input audio and video signals from an external source
(p. 1, ¶ [0008]).
6. An antenna 136 located within the entertainment unit 100 is used to
receive frequencies associated with AM/FM radio stations and television
stations and may have the capability of receiving frequencies corresponding
to satellite communications including movie and other media types from a
satellite or satellite network (p. 3, ¶ [0041]).
7. External audio/video signal processor 124 is employed to receive
signals from an external device (i.e. one not included in the entertainment
unit 100) so as to couple the external device to the entertainment unit 100 for
reproduction of the signals output therefrom, the external devices including
handheld video games, handheld TV’s, portable DVD players, portable CD
players, and so forth (col. 3, ¶ [0042]).

IV. ANALYSIS
Claims 1, 14, and 31
As for claim 1, Appellants contend that “reference numeral 30, which
the Office Action relies on as ‘set top box circuitry’… is an ‘Internet
gateway network’… but not set top box circuitry” because “[a] gateway that
serves as an ISP is by no means set top box circuitry” (App. Br. 11).
According to Appellants, “a television set-top box is different than, and
includes functionality not found in, the internet gateway network of Lee”
because “[i]t is … well known in the art that a ‘set-top box’ is a device that
converts a satellite TV signal to an input to the TV set” (App. Br. 11-12).
Appellants argue that “[t]here is nothing in Lee that describe, teaches, or
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suggests that the ‘Internet Gateway 30’ connects to a television” (App. Br.
12).
Furthermore, although Appellants admit that Lee discloses an
“interactive audio game,” Appellants contend that “Lee does not describe,
teach or suggest a ‘personal channel’ that is operative to download a ‘video
game’” (App. Br. 13). Further, although Appellants admit that “Lavelle
discloses a ‘multimedia entertainment unit for use in a vehicle’” wherein
“[t]he unit may include a ‘video game player 126,’” Appellants contend that
“Lavelle does not describe, teach, or suggest that video games are
downloaded to the entertainment unit through an external source” (App. Br.
14). Thus, Appellants contend that “[n]either Lee, nor Lavelle, describes,
teaches, or suggests that video games are downloaded to the entertainment
through an external source” (id.).
However, the Examiner finds that “the Gateway 30 [of Lee] has the
same hardware structure as set-top box circuitry, [which] includes [a] CPU
[that] provides programming, [and] interfaces where the information and
Internet access to the multimedia device 20” wherein it was “well-known in
the art that video/audio stream may be transporting over Internet (VoIP)
between Internet Gateway [30] to the multimedia device 20” (Ans. 25-26).
The Examiner points out that Appellants’ Specification defines “set-top box”
as being “arranged to exchange media via a communication network” (Ans.
26, citing Spec. ¶ [15]). Thus, the Examiner finds that “Lee does describe,
teach or suggest a ‘set-top box circuitry’ remote from a vehicle and a vehicle
system network as define in paragraph 0015 of invention specification” (id.).
Further, the Examiner finds that “Lee depicts a multimedia device
[20]” that “includes the display screen 160 … connected to Gateway
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transceiver [130]” wherein the multimedia device 20 “communicates with
Set-top box circuitry [30]” and “transfer[s] from the set top box circuitry
requests for navigation data, advertisement responses, purchase requests,
etc.” (Ans. 27). The Examiner also finds that “in [the] vehicle, [the] user
selects a preset button [that] can also be assigned to any personal
information channel application (as a first personal media channel that
facilitates a user defined [transfer])” wherein “this Preset button 166 on the
display screen 160 [can] allow the user to select any one channel, group of
channels or even channels from different categories” (id.).
The Examiner then finds that Lavelle “illustrates an entertainment unit
[100] … installed in a vehicle, [which] includes a video game player [126]”
and “external audio/video game signal processor [124]”, wherein received
signals “may include a video game from … external devices [that] include
handheld video games” (Ans. 28).
We find no error with the Examiner’s findings. We note that by
arguing as to what Lee and Lavelle fail to teach (App, Br. 11-14), Appellants
appear to be arguing that the references fail to anticipate the claimed
invention. However, since the Examiner rejects the claims as obvious over
the combined teachings, the test for obviousness is not what the references
show individually but what the combined teachings would have suggested to
one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Further, Appellants’ argument that “[i]t is also well known in the art
that a ‘set-top box’ is a device that converts a satellite TV signal to an input
to the TV set” (App. Br. 11-12), and that “[t]here is nothing in Lee that
describe, teaches, or suggests that the ‘Internet Gateway 30’ connects to a
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television” (App. Br. 12) is not commensurate in scope with the recited
language of claim 1. In particular, claim 1 does not recite any “set top box”
or connection to “a television.” Rather, claim 1 merely recites a “set-top box
circuitry” (claim 1, emphasis added).
We give the claims their broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 does not place any limitation on what “set top box circuitry”
is to mean, comprise, or represent other than the circuitry is “arranged to
exchange media via a communication network” and “supporting wireless
communication of media” wherein the circuitry is “remotely located from
the authorized vehicle.” Further, Appellants’ Specification does not provide
any clear definition for the terms. As the Examiner points out, Appellants’
Specification merely defines “set-top box” as being “arranged to exchange
media via a communication network” (Ans. 26, citing Spec. [0015]).
Additionally, the description of “set top box” does not limit or change
how the media is exchanged from the circuitry. Rather, this term is merely a
label describing the circuitry being arranged. When descriptive material is
not functionally related to the claimed medium, the descriptive material will
not distinguish the invention from the prior art in terms of patentability. See
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) and In re Gulack, 703 F.2d
1381, 1385 (Fed. Circ. 1983). That is, the descriptive material will not be
given patentable weight absent a new and unobvious functional relationship
between the descriptive material and the medium. See In re Lowry, 32 F.3d
1579, 1582-1583 (Fed. Cir. 1994); Ngai, 367 F.3d at 1339 (nonfunctional
descriptive material cannot render nonobvious an invention that would have
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otherwise been obvious). See also Ex parte Mathias, 84 USPQ2d 1276
(BPAI 2005) (nonprecedential), aff’d, 191 Fed.Appx. 959 (Fed. Cir. 2006).
Accordingly, even though Appellants labeled the “circuitry” as “set-
top box” circuitry, we will not give the term patentable weight. Instead, we
give “set-top box circuitry” its broadest reasonable interpretation defined in
the claim as a circuitry remote from a vehicle that supports wireless
communication and that is capable of exchanging media via a network.
Lee discloses a remotely configurable multimedia entertainment and
information system for vehicles with internet access through wireless
communications (FF 1), wherein an Internet gateway network provides
programming information and Internet access to the multimedia device (FF
2) and remote programmable devices are used to download information from
the Internet gateway network to the multimedia device in the vehicle (FF 4).
We find Lee’s Internet gateway network to comprise circuitry remote from a
vehicle that supports wireless communication and that is capable of
exchanging media via a network. We find no error in the Examiner’s
finding that “the Gateway 30 [of Lee] has the same hardware structure as
set-top box circuitry, [which] includes [a] CPU [that] provides
programming, [and] interfaces where the information and Internet access to
the multimedia device 20” (Ans. 25-26). Accordingly, we find Lee to at
least suggest “circuitry” that is “arranged to exchange media via a
communication network” and “supporting wireless communication of
media” wherein the set top box circuitry is “remotely located from the
authorized vehicle” as required by claim 1.
Lee also discloses that TV audio broadcasts are available to a user (FF
3). Thus, contrary to Appellants’ contention that “[t]here is nothing in Lee
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that describe, teaches, or suggests that the ‘Internet Gateway 30’ connects to
a television” (App. Br. 12), Lee at the least suggests connection to a device
that receives television broadcasts. Furthermore, Lavelle discloses that a
multimedia entertainment unit for use in a vehicle may receive frequencies
associated with television stations and satellite communications including
movie and other media types (FF 5-6). Accordingly, even if we were to give
consideration to Appellants’ contention that the Internet Gateway 30 must be
connected to a television, the combined teachings of Lee and Lavelle at the
least suggests connection to a television to receive TV broadcasts.
In Lee, a user operates an application by tuning to a “channel” which
includes broadcasts and personal information services (FF 3). We agree
with the Examiner’s finding that Lee discloses “a first personal media
channel that facilitates a user-defined transfer” of media as required by claim
1 (Ans. 27). Further, Lavelle discloses that the multimedia unit allows a
plurality of passengers in the vehicle to each watch and/or listen to a
different media (FF 5). Thus, we find Lavelle also discloses “a first personal
media channel that facilitates a user-defined transfer”of media as required by
claim 1.
In Lavelle, an external audio/video signal processor receives signals
from an external device (i.e. one not included in the entertainment unit)
wherein the external devices include handheld video games and the like (FF
7). We find Lavelle to at the least suggests a channel that facilitates a user-
defined transfer of media such as a video game from an external device (i.e.
a device not included in the entertainment unit) to the entertainment system,
as required by claim 1. Thus, although Appellants contend that “Lavelle
does not describe, teach, or suggest that video games are downloaded to the
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entertainment [unit] through an external source” (App. Br. 14), we find no
error in the Examiner’s finding that received signals by the entertainment
unit “may include a video game from … external devices [that] include
handheld video games” (Ans. 28).
We note that, though Appellants contend that “Lee does not describe,
teach or suggest a ‘personal channel’ that is operative to download a ‘video
game’” (App. Br. 13), that “Lavelle does not describe, teach, or suggest that
video games are downloaded to the entertainment unit through an external
source” (App. Br. 14), and that “[n]either Lee, nor Lavelle, describes,
teaches, or suggests that video games are downloaded to the entertainment
through an external source” (id.), such arguments are not commensurate in
scope with the specifically recited language of claim 1. That is, claim 1 does
not require any such downloading step. Instead, claim 1 merely requires that
the user interface has a “view” that “facilitates” transfer of a video game,
i.e., transfer of data. We find both Lee and Lavelle disclose a user interface
with a “view” that “facilitates” data transfer.
Accordingly, we find that Appellants have not shown that the
Examiner erred in rejecting claim 1 over Lee and Lavelle. Since Appellants
do not provide arguments for claims 14 and 31 separate from those of claim
1, claims 14 and 31 fall with claim 1. Claims 2-7, 9, 10, 12, 13, 15-18, 20,
21, 23, 24, 32-34, 36, 37, 39, 42-45, 48-51, 56, 57, 60, and 61, depending
from claims 1, 14, and 31 respectively, are also not argued separately and,
therefore, fall with claims 1, 14, and 31.
Claims 11, 22, and 38
As for claim 11 and claims 22 and 38 falling therewith, Appellants
merely list the claim language and then assert that the Office Action fails to
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show where the cited references teaches or suggests the claim language
(App. Br. 14-15). However, the Examiner has given a detailed finding that
Lee at the least suggests these features (Ans. 10 and 29-30). Thus,
Appellants’ statement which merely points out what a claim recites will not
be considered an argument for separate patentability of the claim. See 37
C.F.R. § 41.37(c)(1)(vii). See also In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and Ex
parte Belinne, No. 2009-004693, 2009 WL 2477843, at *3-4 (BPAI Aug.
10, 2009) (informative). Accordingly, we also affirm the rejection of claims
11, 22, and 38 over Lee and Lavelle.
Claims 40, 46, and 58
As for claim 40 and claims 46 and 58 falling therewith, although
Appellants admit that “Lee discloses location information from the GPS
receiver and the gateway 30 providing mapping services,” Appellants
contend that “Lee simply does not describe, teach or suggest a user defining
a navigation update, in general, or one through another personal media
channel, in particular” (App. Br. 17). However, claim 40 merely requires “a
navigation system” and “at least one view” that “facilitates” a user-defined
navigation update. That is, contrary to Appellants’ contention, claim 14
does not recite any such user defining a navigation update.
As Appellants admit, Lee discloses a “navigation system” (GPS)
(App. Br. 17). Further, as discussed above, we find both Lee and Lavelle to
disclose “a view” that “facilitates” transfer of media/data. Thus, we find no
error in the Examiner’s finding that Lee and Lavelle teach or at the least
suggest “a navigation system” and “a view” that “facilitates” updates.
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Accordingly, we also affirm the rejection of claims 40, 46, and 58 over Lee
and Lavelle.
The Examiner finds that it would have been obvious “to modify a
media distribution system to deliver a media to a vehicle of Lee with a video
game player in [the] vehicle as taught by Lavelle to provide a multimedia
entertainment unit for a vehicle which allows for a plurality of passengers to
each watch and/or listen to a different media” (Ans. 8). Although
Appellants contend that “[t]he Office Action is unclear as to which Rationale
it uses to reject the claims” (App. Br. 19), Appellants have provided no
evidence that combining Lavelle’s downloading media such as a video game
to a multimedia entertainment unit with the Lee’s teaching of downloading
media to a multimedia entertainment unit was “uniquely challenging or
difficult for one of ordinary skill in the art,” Leapfrog Enterprises, Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007), nor have
Appellants presented evidence that this incorporation yielded more than
expected results.
Rather, we find that both Lee and Lavelle are directed to the same
field of endeavor of downloading media to a multimedia unit in a vehicle,
and Appellants’ invention is simply a combination of the known teachings of
downloading media. The Supreme Court has determined that the conclusion
of obviousness can be based on the interrelated teachings of multiple
patents, the effects of demands known to the design community or present in
the marketplace, and the background knowledge possessed by a person
having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). The skilled artisan would “be able to fit the teachings of
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multiple patents together like pieces of a puzzle” since the skilled artisan is
“a person of ordinary creativity, not an automaton.” Id. at 420-21.
Claim 25
As for claim 25, Appellants merely repeat that “Lavelle makes no
mention of transferring games from outside the vehicle to the ‘entertainment
unit 100’” (App. Br. 16, emphasis omitted). However, such “transferring”
argument is not commensurate in scope with the recited language of claim
25 since claim 25 merely requires the step of “facilitating” a transfer.
Further, as discussed above, we find Lavelle to at least suggests
downloading of video games from an external device. Thus, we also affirm
the rejection of claim 25 over Lee, Lavelle, and Novak.
Claims 26-30, 41, 47, 52- 55, and 59
Appellants provide no argument for claims 26-30, 41, 47, 52-55 and
59 separate from those for claims 1, 14, 25, 31, 40, 46, and 58 above (App.
Br. 20-21). Accordingly, we also affirm the rejection of claims 26-30, 52,
54 and 55 over Lee and Lavelle in further view of Novak; of claims 41, 47,
and 59 over Lee and Lavelle in further view of Witkowski; and of claim 52
over Lee and Lavelle in further view of Novak and Witkowski.

V. CONCLUSION AND DECISION
We affirm the Examiner’s rejection of claims 1-7, 9-18, 20-34 and 36-
61 under 35 U.S.C. § 103(a).
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
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