Ex Parte Kelly et al

Patent Trial and Appeal Board

Feb 26, 2018

14143052 (P.T.A.B. Feb. 26, 2018)

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.
14/143,052 12/30/2013 James F. Kelly 16113-5313001 4026
26192 7590 02/28/2018
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
ANDERSEN, KRISTOPHER E
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
02/28/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES F. KELLY, DANIEL R. SANDLER, and
GLENN KASTEN
Appeal 2017-010053
Application 14/143,0521
Technology Center 2100
Before ELENI MANTIS MERCADER, JASON J. CHUNG, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—20, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the Applicant, Google Inc., as the real party in interest.
App. Br. 1.
Appeal 2017-010053
Application 14/143,052
THE INVENTION
According to Appellant, the disclosed and claimed invention is
directed “to media identification and, in one particular implementation, to
reducing the power consumption of a device that may be identifying
sequentially played songs.” Spec. 11.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method comprising:
receiving, by a computing device, an audio recording of
an item of media content;
determining, based on the audio recording, an identifier
associated with the item of media content, and a timestamp;
determining, based on the identifier of the item of media
content and the timestamp, an amount of remaining time that
the item of media content has to play;
in response to determining the amount of remaining time
that the item of media content has to play, providing an
indication for a microphone of the computing device to
deactivate;
determining that the amount of time has elapsed; and
in response to determining that the amount of time has
elapsed, providing an indication for the microphone of the
computing device to reactivate.
REFERENCE
The prior art relied upon by the Examiner as
claims on appeal is:
Samari US 2014/0105447 A1
REJECTION
Claims 1—20 stand rejected under 35 U.S.C. § 102(a)(2) as being
anticipated by Samari. Final Act. 3—9.
evidence in rejecting the
Apr. 17, 2014
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Application 14/143,052
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
disagree with Appellant’s arguments with respect to claims 1—20. Instead,
we agree with the Examiner’s findings and conclusions and incorporate
herein and adopt as our own: (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 3—9), and
(2) the reasons and rebuttals set forth in the Examiner’s Answer in response
to Appellant’s arguments (Ans. 2—8). We incorporate such findings,
reasons, and rebuttals herein by reference unless otherwise noted. However,
we highlight and address specific findings and arguments for emphasis as
follows.
Claims 1, 2, 4, 6—11, 13, and 15—20
Appellant argues the Examiner erred in finding that Samari’s receiver
500 includes a microphone. See App. Br. 5—6. Specifically, Appellant
argues that although Samari discloses that device 100 can include a
microphone, Samari “provides no indication that the receiver 500 is a
microphone.” Id. (citing Samari H 71, 74). Appellant also argues that
because the receiver 500 can be implemented as software modules, it cannot
be a microphone, which “is something that must be implemented in
hardware and cannot be implemented in software by a processor executing
instructions.” Id. at 6 (citing Samari 171). Finally, Appellant argues
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Samari describes a second receiver 1700, and that is not a microphone. Id.
(citing Samari | 116).
The Examiner finds Samari discloses a receiver 500 that may include
a microphone:
Samari discloses in paragraph [0075] that “the receiver 500
receives audio . . . further digitizes the audio.” In paragraph
[0071] Samari teaches that the “personal electronic device 100
comprises a component for receiving the data. For example, the
personal electronic device 100 can comprise a microphone to
detect the audio and circuitry associated therewith to translate
the detected audio into data signals.” Because Samari teaches
in [0071] that the “component for receiving the data ... can
comprise a microphone,” Samari teaches this element as
claimed.
Notice of Decision from Post-Prosecution Program (P3) Conference
(hereinafter “Notice”), 2; see also Ans. 2—3 (“Samari teaches the limitation
as claimed and explicitly discloses that a microphone can be used to receive
audio data in paragraph [0071]. The evidence to support this conclusion
draws from paragraphs [0068], [0071], and [0075]-[0076].”).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Moreover, the reference must also “disclos[]
within the four comers of the document not only all of the limitations
claimed but also all of the limitations arranged or combined in the same way
as recited in the claim.” Net Money IN, Inc. v. Verisign, Inc., 545 F.3d 1359,
1371 (Fed. Cir. 2008). However, “the reference need not satisfy an
ipsissimis verbis test.” In re Cleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Moreover, “it is proper to take into account not only specific teachings of the
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reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
(CCPA 1968); see also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
(holding that prior art references must be “considered together with the
knowledge of one of ordinary skill in the pertinent art” (quoting In re
Samour, 571 F.2d 559, 562 (CCPA 1978))).
Samari states that the personal electronic device 100 can include
various “component[s] for receiving the data. For example, the personal
electronic device 100 can comprise a microphone to detect the audio.”
Samari 171 (emphasis added); see also id. 174 (stating that personal
electronic device 100 can include input and output peripherals including a
microphone). A component for receiving data is a receiver.
Samari further states the system can comprise a receiver 500, which
“is configured to capture data that the personal electronic device 100 is
exposed to. For example, the receiver 500 [is configured to capture data]
receives audio 600 transmitted from a source, such as audio source 300.” Id.
176. Furthermore, Figure 3 shows personal electronic device 100 receiving
audio from an audio source 300. Although not explicitly stated, because a
microphone was described as being used by a receiver to detect audio and
receiver 500 can detect audio from an audio source, a person of ordinary
skill in the art would understand that Samari is describing a single
embodiment in which receiver 500 includes a microphone.
Appellant’s argument that a microphone cannot be implemented as
software is not persuasive. Although the paragraph cited by Appellant
discusses how the receiver 500 can be implemented as software, it also states
it can be implemented as hardware or a combination of hardware and
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software. There is no requirement that every embodiment of the prior art
must anticipate, just that the prior art discloses at least one embodiment that
contains all of the limitations of the claim arranged in the way recited in the
claim. See Net Money IN, 545 F.3d at 1371. Thus, it is of no importance that
the software only embodiment cannot include a microphone so long as either
the hardware or software/hardware combination embodiments do.
We are unpersuaded similarly by Appellant’s argument that a
different receiver, receiver 1700, may not include a microphone. Even if
that was true, it is irrelevant to the Examiner’s finding that a different
receiver, receiver 500, includes a microphone.
Appellant further argues that even if receiver 500 includes a
microphone, Samari does not disclose “providing an indication for a
microphone of the computing device to deactivate,” as recited in claim 1.
App. Br. 6. Specifically, Appellant argues:
Samari provides no indication that the receiver 500 is
deactivated while “stop [ping] transmission of generated
fingerprints or generation and transmission of fingerprints.”
Samari describes that the “generator 512 is configured to
generate digital signatures” (Samari, | [0091]) that “can be
transmitted to the compressor 514 ... to create . . . fingerprints”
(Samari, | [0093]). Accordingly, the Applicant submits that if
“generation ... of fingerprints” is “stop[ped],” then the
“compressor 514” is “stop[ped].”
Id.
The Examiner concludes that claim 1 does not “require the
microphone to deactivate, but merely that an indication is provided for it to
deactivate.” Notes 2; see also Ans. 4.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
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interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations
omitted). There is a presumption that a claim term carries its ordinary and
customary meaning. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). An applicant may rebut this presumption, however, by acting as
his own lexicographer, providing a definition of the term in the specification
with “reasonable clarity, deliberateness, and precision.” See In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition,
limitations are not to be read from the specification into the claims. In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). “[Although the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments. . . . [CJlaims may embrace ‘different subject matter than is
illustrated in the specific embodiments in the specification.’” Phillips v.
AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (enbanc) (citations
omitted).
We agree with the Examiner that claim 1 does not require the
microphone to actually be deactivated. Claim 1 merely recites “providing an
indication” and there is nothing in the language of the claim that requires
actually instructing the microphone to be turned off. See App. Br. 13
(Claims App.). This interpretation is consistent with the Specification,
which draws a distinction between an indication and an instruction:
The device 105 provides, in response to determining the
amount of remaining time that the item of media content has to
play, providing an indication for one or more components of
the device 105 to deactivate (340). In some implementations,
the device 105 may instruct the microphone, analog-to-digital
convert, buffers, or any combination of the three to deactivate.
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Spec. 1 62 (emphasis added). That is, although the Specification says the
device does send an indication—-just as recited in the claim—the actual
instruction to turn off the microphone is optional and may, but does not have
to be, included. Because Appellant’s argument is not commensurate with
the scope of the claims, it is unpersuasive. See In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
Finally, Appellant argues that if the microphone is not deactivated, it
cannot be sent a command to reactive. However, because that argument is
premised on a claim construction we rejected, we are not persuaded by it
that the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejections of claims 10 and 19, which are argued on the same
grounds (see App. Br 9, 11), and the rejections of dependent claims 2, 4, 6—
9, 11, 13, 15—18, and 20, which are not argued separately.
Claims 3 and 12
Appellant argues the Examiner erred in finding Samari discloses
“determining a confidence score” as recited in claim 3. Specifically,
Appellant argues
Samari describes that “[w]hen the comparison between a
received digital signature and a reference digital signature
meets a predefined threshold, the server 140 determines that
there is a match between the received digital signature and the
reference digital signature.” Samari, | [0066]. Samari further
describes “compar[ing] the fingerprints bit-by-bit for similarity
and can declare that there is a match when the similarity meets
a certain threshold or falls within a certain range. Samari,
| [0119]. The Appellant submits that “determin[ing] that there
is a match between the received digital signature and the
reference digital signature” does not include “determining a
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confidence score.” Similarly, “comparing] the fingerprints bit-
by-bit” does not include “determining a confidence score.”
App. Br. 7
The Examiner finds Samari discloses determining a confidence score:
“Samari teaches wherein comparing the audio fingerprint of the item of
media content to one or more audio fingerprints comprises determining a
confidence score (see Samari [0066], ‘comparison,’ where [0119] discloses a
‘bit-by-bit’ confidence score).” Final Act. 7; see also Ans. 5—6.
Samari discloses using a comparator to determine whether or not the
similarity of the fingerprint meets a threshold:
The generated meter fingerprints and the retrieved reference
fingerprints are transmitted to the comparator 1730. The
comparator 1730 is configured to compare the meter and
reference fingerprints at operation 2008 and to determine
whether there is a match between the compared fingerprints at
operation 2010. For example, the comparator 1730 can
compare the fingerprints bit-by-bit for similarity and can
declare that there is a match when the similarity meets a
certain threshold or falls within a certain range.
Samari 1119 (emphasis added). Although Samari does not use the words
“confidence score,” determining a similarity and comparing it to a threshold
is an example of determining a confidence score. See Spec. 132 (describing
the use of a confidence score and threshold). To be an anticipatory
reference, “the reference need not satisfy an ipsissimis verbis test.” Gleave,
560 F.3d at 1334.
Accordingly, we sustain the Examiner’s rejection of claim 3, along
with the rejection of claim 12, which is argued on the same grounds. See
App. Br. 9-10.
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Claims 5 and 14
Appellant argues the Examiner erred in finding Samari discloses the
additional limitations recited in dependent claim 5. See App. Br. 8-0.
Similar to the argument for claim 1, Appellant argues that Samari does not
provide an indication that the received is deactivated. Id.
Similar to our conclusion regarding claim construction in claim 1,
claim 5 merely requires an indication that a component is to be deactivated,
it does not require the component to be deactivated. Therefore, because
Appellant’s argument is not commensurate with the scope of the claims, we
are not persuaded the Examiner erred. Instead, we agree with and adopt the
Examiner’s findings and conclusions regarding claim 5.
Accordingly, we sustain he Examiner’s rejection of claim 5, along
with the rejection of claim 14, which is argued on the same grounds. See
App. Br. 10-11.
DECISION
For the above reasons, we affirm the Examiner’s decision rejecting
claims 1—20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. §41.50(f).
AFFIRMED
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