Ex Parte Knoop

Board of Patent Appeals and Interferences

May 15, 2009

10059538 (B.P.A.I. May. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DALE KNOOP
_____________

Appeal 2008-5291
Application 10/059,538
Technology Center 2600
______________

Decided:1 May 18, 2009
_______________

Before KENNETH W. HAIRSTON, JOSEPH F. RUGGIERO and
ROBERT E. NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5291
Application 10/059,538

This is a decision on appeal under 35 U.S.C. § 6(b) of the final
rejection of claims 1 through 11, 18 through 22, 24, and 25. Claims 12
through 17 and 23 have been canceled.
We reverse the Examiner’s rejections of these claims.

INVENTION
The invention is directed towards a method for use in streaming media
to a user’s wireless handset based upon the handset’s capabilities. In one
embodiment the list of media content made available to the user is based in
part upon specifications input by the user. See page 5 of Appellant’s
Specification. Claim 1 is representative of the invention and reproduced
below:
1. A method of selecting a transmission mode for streaming
media content to a wireless handset, the method comprising:
presenting on the wireless handset a set of choices indicating
transmission modes for streaming media content to the wireless
handset, wherein the set of choices is tailored based on at least one
presentation capability of the wireless handset;
receiving from a user of the wireless handset an indication of a
transmission mode selected from the set of choices;
sending from the wireless handset to a media server an
indication of the selected transmission mode;
receiving a list of available media content, wherein all media
content in the list of available media content is compatible with the
indicated transmission mode;
receiving from a user a selection of one of the media content in
the list of available media content; and
receiving into the wireless handset the selected media content
streamed from the media server at the selected transmission mode.

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Application 10/059,538

REFERENCES
Mosher US 2002/0099790 A1 Jul. 25, 2002

Gourraud US 2003/0079020 A1 Apr. 24, 2003
(filed Oct. 23, 2001)

Oishi US 6,779,195 B2 Aug. 17, 2004
(filed Jun. 7, 1999)

Iida US 6,952,279 B1 Oct. 4, 2005
(filed may 20, 1999)

REJECTIONS AT ISSUE
The Examiner has rejected claims 1 through 11 and 18 through 22
under 35 U.S.C. § 103(a) as being unpatentable over Mosher and Gourraud.
The Examiner’s rejection is on pages 3 through 7 of the Answer.2
The Examiner has rejected claim 24 under 35 U.S.C. § 103(a) as
being unpatentable over Mosher, Gourraud, and Iida. The Examiner’s
rejection is on page 8 of the Answer.
The Examiner has rejected claim 25 under 35 U.S.C. § 103(a) as
being unpatentable over Mosher, Gourraud, and Oishi. The Examiner’s
rejection is on pages 8 and 9 of the Answer.

ISSUE
Rejection of claims 1 through 11, and 18 through 22
Appellant argues that the combination of Mosher and Gourraud does
not teach presenting on the wireless handset choices of indicating

2 Throughout the opinion we refer to the Answer mailed October 31, 2007.
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Application 10/059,538

transmission modes for streaming media content based on one presentation
capability of the wireless handset. Brief3 page 7.
Thus, Appellant’s contentions present us with the issue: did the
Examiner err in finding that the combination of Mosher and Gourraud teach
presenting choices for transmission mode as claimed.
Rejections of claims 24 and 25
Appellant’s arguments directed to the rejections of these claims assert
that the additional teachings of Iida and Oishi do not make up for the
deficiencies noted in the rejection of independent claim 22.
Thus, Appellant’s contentions with respect to the rejections of claims
24 and 25 present us with the same issue as discussed above with respect to
the rejection of claims 1 through 11 and 18 through 22.

FINDINGS OF FACT
Mosher
1. Mosher teaches organizing various multimedia services and allowing
the user to select a desired multimedia service. Abstract.
2. The various multimedia is organized in a framework of mode and
theme which is used to allow the user to select a multimedia service.
These options are presented in a GUI to the user. Paras 0023-0037,
0080.
3. Figures 4A through 4D depict screen shots of the GUI. Para 0020.

3 Throughout the opinion we refer to the Brief filed Aug. 24, 2007 and the
Reply Brief filed December 28, 2007.
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4. Mosher’s teaching can be used in many types of electronic devices.
Para. 0039.
Gourraud
5. Gourraud teaches a system to provide program on demand service via
a telecommunication device. The telecommunications provider
determines the service provider which stores the program and
establishes a session to stream the selected program. Abstract.
6. Using Gourraud’s system, the user first selects the program to be
viewed or listened to and then the service provider containing the
program is contacted to transmit the program. Para. 0032.

PRINCIPLES OF LAW
In analyzing the scope of the claim, Office personnel must rely on
Appellant’s disclosure to properly determine the meaning of the terms used
in the claims. Markman v. Westview Instruments, Inc., 52 F.3d 967, 980
(Fed. Cir. 1995). “[I]nterpreting what is meant by a word in a claim is not to
be confused with adding an extraneous limitation appearing in the
specification, which is improper.” (Emphasis original) In re Cruciferous
Sprout Litigation, 301 F.3d 1343, 1348 (Fed. Cir. 2002) (citations and
quotations omitted).

ANALYSIS
Claims 1 through 11, 18 through 21
Appellant’s contentions have persuaded us that the Examiner’s
rejection of claims 1 through 11 and 18 through 21 under 35 U.S.C. § 103(a)
as being unpatentable over Mosher and Gourraud is in error. Independent
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claim 1 recites “presenting on the wireless handset a set of choices
indicating transmission modes for streaming media content to the wireless
handset” wherein a mode is selected, a list of media content compatible with
the mode is received at the handset for the user to select the media to be
streamed using the selected mode. Independent claims 18 and 19 recite
similar limitations. Appellant asserts that the term “transmission mode”
should be interpreted as described in the Specification on page 9 as “[a]
transmission mode generally specifies parameters used to send media
content to the wireless handset.” Brief 8. We concur with Appellant’s
proffered interpretation of the term.
In rejecting independent claims 1, 18, and 19 the Examiner finds that:

Gourraud teaches receiving the set of choices is tailored based on at
least one presentation capability of the wireless handset ("viewed or
listened" see [0032] and [0038]); and receiving a list of available
media contents wherein all media content in the list of available media
content is compatible with the indicated transmission mode (fig. 7 see
[0038]-[0044]). . . .

Answer 4. Further, in response to the argument that Gourraud’s teaching of
a list that includes different media types (e.g. video and audio) does not meet
the claimed selecting a mode, the Examiner states “the reference only need
to show 'view' as the presentation capability of the terminal[)]. Appellant
specifies ‘a transmission mode’ as ‘video only, audio only.’” Answer 11.
While we concur with the Examiners’ finding that Gourraud teaches that a
user can select media content from a mobile device including audio only or
video only (Fact 6), we do not find that this meets the claimed selection of a
transmission mode as claimed. As discussed above, the claimed method
involves the user making a selection of the transmission mode (per the
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Examiner’s findings video only or audio only). The claim further recites
that from this selection a list of media content is presented and based upon a
further user selection, of media content from the list, a program is streamed
to the device. The findings of Gourraud show that the user selects media
which may be of different modes but does not show that the user selects the
modes before the list of media is presented to the user. The Examiner has
not found, nor do we find, that the teachings of Mosher teach this feature.
Thus, Appellant’s arguments have persuaded us of error in the Examiner’s
finding that the combination of Mosher and Gourraud teaches presenting
choices for transmission mode as claimed in independent claims 1, 18, and
19, and claims 2 through 11 and 20 which depend upon these independent
claims.
Claim 22
Independent claim 22 differs from claims 1, 18, and 19 in that a list of
media content is provided to the user, based upon the selection of media
content, a list of transmission modes for the user selected media content is
provided to the user, and then the media content is presented based upon the
selected mode. The Examiner’s rationale to reject claim 22 is the same as
applied to claims 1, 18, and 19. Answer 3. As discussed above, we concur
with the Examiner’s finding that Gourraud teaches presenting the user with a
selection of media, some of which is of different type. However, we do not
find that the combination of Mosher and Gourraud teaches that the user is
presented with a selection of transmission modes. Accordingly, we will not
sustain the Examiner’s rejection of independent claim 22.

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Rejections of claims 24 and 25
Claims 24 and 25 depend upon claim 22. As discussed supra
Appellant’s arguments have persuaded us that the Examiner erred in finding
that the combination of Mosher and Gourraud teaches presenting choices for
transmission mode as claimed. The Examiner has not found, nor do we find
that the additional teachings of Iida and Oishi teach this feature.
Accordingly, we will not sustain the Examiner’s rejections of claims 24 and
25 for the reasons discussed with respect to claim 22.

ORDER
The decision of the Examiner is reversed.

REVERSED

ELD

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