Ex Parte Koch

Board of Patent Appeals and Interferences

Feb 18, 2010

10487686 (B.P.A.I. Feb. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HARTWIG KOCH
____________

Appeal 2009-002840
Application 10/487,686
Technology Center 2600
____________

Decided: February 18, 2010
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Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and ELENI MANTIS
MERCADER, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 11-14 and 16-20, which are all of the pending claims. Claims 1-10
and 15 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Brief (filed September 18, 2007), the Answer
(mailed December 31, 2007), and the Reply Brief (filed March 3, 2008) for
the respective details. Only those arguments actually made by Appellant
have been considered in this decision. Arguments which Appellant could
have made but chose not to make in the Briefs have not been considered and
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to the playing of multimedia files in a
terminal in which audio files are used to manage the multimedia files. The
audio files are played in predefined situations when managing the
multimedia files, thereby providing a blind management capability for the
multimedia files to a user. (See generally Spec. 1:20-27).

Claim 11 is illustrative of the invention and reads as follows:
11. A method for playing multimedia files in a terminal, the multimedia
files being used for at least one of entertainment and information purposes,
the method comprising:
using audio files to manage the multimedia files;
playing the audio files in predefined situations when managing the
multimedia files;
creating, by a user, at least a portion of the audio files;
classifying and assigning the multimedia files to individual file folders
on a basis of markers in the multimedia files; and
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assigning, to the individual folders, audio files that are played
depending on the predefined situations when the folder is selected.

The Examiner’s Rejections

The Examiner’s Answer cites the following prior art references:
Morris US 5,911,118 Jun. 8, 1999
Chan US 6,600,908 B1 Jul. 29, 2003
(filed Feb. 2, 2000)
Nakatsuyama US 6,658,062 B1 Dec. 2, 2003
(filed May 9, 2000)
Berstis US 6,944,430 B2 Sep. 13, 2005
(filed May 23, 2001)

Claims 11-13 and 17-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chan in view of Morris.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chan in view of Morris and Berstis.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chan in view of Morris and Nakatsuyama.

ISSUES
The pivotal issues before us are whether Appellant has demonstrated
that the Examiner erred in determining that:
a) Chan’s received multimedia data packets, which are grouped
into classifiable types, correspond to the claimed multimedia “files,” and
b) Chan’s grouping of transmitted data packet types into sets of
classifiable types of information such as “sports,” “weather,” “traffic,” etc.
corresponds to the claimed assigning of multimedia files into “file folders.”
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FINDINGS OF FACT
The record supports the following relevant findings of fact (FF) by a
preponderance of the evidence:
1. Appellant’s Specification provides no definition for the terms
“file” and “file folder.”
2. Computer Desktop Encyclopedia defines “file” as “a collection
of bytes stored as an individual entity. All data on disk is stored as a file
with an assigned file name that is unique within the folder (directory) it
resides in.”1
3. Chan discloses (Fig. 1, col. 1, ll. 53-65 and col. 2, ll. 40-65) a
broadcast system that transmits radio frequency signals containing on-
demand, main program, and index material which is received and separated
at the system receivers (in Fig. 1, receivers 102 and 118).
4. Chan further discloses (Fig. 2, col. 3, ll. 46-53) that on-demand
program material and associated index material are encoded as digital data
and transmitted as data packets.
5. Also disclosed by Chan (Fig. 2, col. 3, ll. 54-67) is the grouping
of packet data into a plurality of sets corresponding to classifiable types of
information such as “weather” and “sports.”
6. Chan further discloses (Figs. 5A, 5B, and 6, col. 10, ll. 4-20 and
col.10, l. 51-col. 11, l. 30) that compressed audio index material is used to

1 Computer Desktop Encyclopedia, The Computer Language Company, Inc.,
Point Pleasant, PA 18950, http://www.computerlanguage.com, Ver. 14.3m,
3rd Quarter 2001, © 1981-2001.
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manage the selection of the various types of on-demand information such as
“traffic condition,” “weather,” and “sports scores.”
7. Chan teaches that the payload of each index packet contains
compressed audio data of the name of the corresponding on demand data.
For example, the payload of the index packet for “traffic condition” contains
compressed audio data of a human voice for the words “traffic condition”
(col. 4, ll. ).

PRINCIPLES OF LAW
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
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). “[T]he words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005).
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 (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 (1966) (stating that 35 U.S.C.
§ 103 leads to three basic factual inquiries: the scope and content of the prior
art, the differences between the prior art and the claims at issue, and the
level of ordinary skill in the art). Furthermore,
“there must be 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
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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.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

ANALYSIS

I. The obviousness rejection of claims 11-13 and 17-20
based on the combination of Chan and Morris.

Appellant’s arguments with respect to independent claims 11 and 18
do not attack the Examiner’s basis for combining Chan and Morris but,
rather, focus on the alleged deficiency of either Chan or Morris in disclosing
the claimed assignment of multimedia files, including audio files, to
individual file folders based on multimedia file markers. According to
Appellant (App. Br. 5-7; Reply Br. 2-5), the Chan reference, relied upon by
the Examiner for a teaching of file and file folder assignment, merely
teaches that received broadcast packet data is assigned to specific memory
block locations classified into index and on-demand areas.
We do not find Appellant’s arguments to be persuasive of any error in
the Examiner’s stated position (Ans. 3, 4, and 9). Since Appellant has
provided no definition of the terms “file” or “file folder” in the Specification
(FF 1), we look to the ordinary and customary meaning of the terms. See
Phillips, 415 F.3d at 1312. The ordinary and accepted meaning of the term
“file” is a collection of bytes stored as an individual entity (FF 2). The
various collections of bytes are grouped together in “file folders” and given
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assigned file names that are unique within their resident folders (directory)
(FF 2).
Thus, we agree with the Examiner’s finding (Ans. 9) that Chan’s
transmitted data packets, which are a collection of bytes grouped into
classifiable types, correspond to the claimed “files.” (FF 4). We further
agree with the Examiner that Chan’s grouping of transmitted data packet
types into sets of classifiable types of information such as “weather,” and
“sports” corresponds to the claimed assigning of multimedia files into “file
folders.” (FF 5). Further, with the above discussion in mind, we find no
error in the Examiner’s finding (Ans. 9) that an ordinarily skilled artisan
would have recognized the compressed audio data, included as part of the
payload of an index packet corresponding to an on-demand program such as
“traffic” in Chan (FF 7), as an audio “file” as claimed.
For the above reasons, since Appellant has not demonstrated any error
in the Examiner’s determination of obviousness based on the teachings of
Chan and Morris, the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claims 11 and 18, as well as dependent claims 12, 13, 17, 19,
and 20 not separately argued by Appellant, is sustained.

II. The obviousness rejections of claims 14 and 16.

We also sustain the Examiner’s obviousness rejections of claims 14
and 16 in which the Examiner has applied the Berstis and Nakatsuyama
references in separate combinations with Chan and Morris to address,
respectively, the priority assignment and advertisement audio file features of
the rejected claims. Appellant’s arguments (App. Br. 8-10; Reply Br. 5) rely
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on those previously made with respect to independent claims 11 and 18,
which arguments we found to be unpersuasive as discussed supra.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting appealed
claims 11-14 and 16-20 for obviousness under 35 U.S.C. § 103.

DECISION
The Examiner’s 35 U.S.C. § 103 rejection of claims 11-14 and 16-20,
all of the appealed claims, 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).

AFFIRMED

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