Ex Parte Kridner

Board of Patent Appeals and Interferences

Jun 9, 2011

10306493 (B.P.A.I. Jun. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JASON D. KRIDNER
____________________

Appeal 2009-007576
Application 10/306,4931
Technology Center 2400
____________________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
JAMES R. HUGHES, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed November 27, 2002. The real party in interest is Texas
Instruments, Inc. (App. Br. 3.)
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STATEMENT OF THE CASE
Appellant appeals from the Examiner’s rejection of claims 11-19 and
22-25 under authority of 35 U.S.C. § 134(a). Claims 1-10, 20, 21, and 26-35
have been canceled (App. Br. 5). The Board of Patent Appeals and
Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
The invention at issue on appeal relates to a system and method for
identifying digital audio and video files stored on a storage media utilizing a
unique identifier attached to the media and retrieving the files in an encoded
format over the internet from the storage media. The unique identifier may
be, for example, a bar code. Specifically, consumers may “retrieve audio
and video files in formats different than on the storage media purchased”
(Spec. ¶ [0007]) because “each storage media device (such as a compact disk
. . . ) ha[s] a unique identifier” (id.); the identifier is “scanned or entered into
a hardware device, which then retrieves the digital information in the format
desired . . . via the [I]nternet” (id.). (Spec. ¶¶ [0003], [0007]-[0008].)2
Representative Claim
Independent claim 11 further illustrates the invention and is
reproduced below with the key disputed limitations emphasized:
11. A system comprising:
a digital signal processor configured to locally encode
information stored on a storage media;

2 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”)
filed December 17, 2007; and Reply Brief (“Reply Br.”) filed May 16, 2008.
We also refer to the Examiner’s Answer (“Ans.”) mailed March 19, 2008.
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an indicia reader coupled to the digital signal processor;
and
a network interface coupled to the digital signal
processor;
wherein the system is adapted to read, using the indicia
reader, an indicia coupled to a storage media storing
information in a first format, and based on the indicia read,
accessing a remote device using the network interface to
retrieve the information in an encoded format; and
wherein the retrieval is initiated upon reading the
indicia, and once initiated, retrieval of the information is
accomplished without additional user input.

References
The Examiner relies on the following references as evidence in
support of the rejections:
Roberts US 5,987,525 Nov. 16, 1999

Brady US 6,100,804 Aug. 8, 2000

Ritz US 2003/0109944 A1 Jun 12, 2003
(filed Dec. 6, 2001)

Ikezoye US 6,834,308 B1 Dec. 21, 2004
(filed Feb. 17, 2000)

Rejections on Appeal
1. The Examiner rejects claims 11-19 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ritz, Roberts, and Ikezoye.
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2. The Examiner rejects claims 22-25 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ritz, Roberts, Ikezoye, and
Brady.3

ISSUE
Based on our review of the administrative record, Appellant’s
contentions, and the Examiner’s findings and conclusions, the pivotal issues
before us are as follows:
Does the Examiner err in finding Ritz, Roberts, and Ikezoye are
properly combinable and would have taught or suggested an information
retrieval system as recited in Appellant’s claim 11? The issue turns on
whether the combination of Ritz, Roberts and Ikezoye would have taught or
suggested (1) a “system . . . adapted to read . . . an indicia coupled to a
storage media storing information in a first format,” utilizing an “indicia
reader;” (2) “based on the indicia read, accessing a remote device . . . to
retrieve the information in an encoded format;” and (3) “wherein the

3 Appellant states that claims 11-19 and 22-25 are rejected as obvious under
35 U.S.C. § 103(a) over the combination of Ritz, Roberts, and Ikezoye.
(App. Br. 8.) The Examiner states that this ground of rejection is correct
(Ans. 2) but then lists this separate ground for rejecting claims 22-25 (over
the combination of Ritz, Roberts, Ikezoye, and Brady). (Ans. 3.) The
Examiner previously made this rejection in the Non-Final Office Action
(“Last Action”) mailed October 5, 2007; however, the statement of rejection
(Last Action 2) did not list this separate ground of rejection. (See Last
Action 2, 8-13; compare Ans. 3, 9-14.) Appellant does not address or object
to this ground of rejection, nor does Appellant separately discuss claims 22-
25. (App. Br. 8-12; Reply Br. 1-3.) Therefore, we find the Examiner’s
misstatement in the Answer (Ans. 2) and the Examiner’s failure to
separately list the ground for rejecting claims 22-25 (Last Action 2) are
harmless error.
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retrieval is initiated upon reading the indicia, and once initiated, retrieval of
the information is accomplished without additional user input.” (App. Br.
14, claim 11.)

FINDINGS OF FACT (FF)
We adopt the Examiner’s findings in the Answer and Last Office
Action as our own, except as to those findings that we expressly overturn or
set aside in the Analysis that follows. We also add the following factual
findings:
Appellant’s Claims & Specification
1. Appellant’s claim 11 recites, in relevant part, “an indicia reader
. . . the system is adapted to read, using the indicia reader, an indicia coupled
to a storage media . . . and wherein the retrieval is initiated upon reading the
indicia, and once initiated, retrieval of the information is accomplished
without additional user input.” (App. Br. 14, claim 11.) Appellant does not
explicitly define any of the relevant claim terminology in their Specification,
in particular an “indicia reader.”
Ritz Reference
2. Ritz describes a system for creating files comprising “an end-
user-customized selection of audio tracks” (¶ [0004]) by accessing a network
hub site (service provider) and providing code information identifying a
medium including one or more audio tracks to the hub site. The hub
site/service provider retrieves corresponding audio track information from a
database and provides this information to the user. (¶¶ [0004], [0015]-
[0017].) The code information may include, for example, a UPC code
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scanned from a CD package using a scanning device connected to a personal
computer or a wireless scanner, which then provides the code information to
the service provider. (¶ [0016].) The user may select the desired tracks and
create a customized CD or file containing encoded compressed audio
information. (¶¶ [0017], [0029]-[0030].) A third-party service provider may
supply the audio information (audio tracks (songs)) to the service provider
(hub site). (¶¶ [0017]-[0018], [0030].)
3. In particular, Ritz describes scanning UPC codes from CD
jewel boxes and automatically uploading the code information (¶¶ [0021]-
[0022]) to hub site maintained by a service provider (¶¶ [0017], [0021]; Fig.
1). The hub site then automatically “resolves” the code information
(¶ [0023]) and provides the user with additional information associated with
the code information, for example, a menu list including the names of the
scanned CD and its associated recording artist, as well as audio track (song)
titles associated with the CD. (¶¶ [0017], [0023], [0027]; Figs. 1, 3, 5.)
4. Also, Ritz describes that the system provides a mechanism for
the user to listen to “clips” (portions) of the audio tracks (songs) provided to
the user through the hub site. (¶ [0028].) The system utilizes an audio
player (application) to play the selected clip. (Id.) The audio track (clip)
may be supplied by a third-party service provider (¶¶ [0017]-[0018],
[0030].)
Roberts Reference
5. Roberts describes a system for delivering and synchronizing
complementary entertainment content with an audio recording. When a user
plays (activates) an audio recording, Roberts’ system automatically retrieves
and displays information such as photographs and video clips. (Abstract;
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col. 6, ll. 15-42.) Specifically, Roberts describes computing and utilizing a
“unique identifier” associated with a CD accessed by a computer to retrieve
and display information from a database. The retrieved information may
include photographs and video clips:
A unique identifier for a musical recording may be
employed as a database key. A site may maintain a database of
information about CDs . . . . Upon detection of the presence of
the CD in the drive, a script in the Web page computes the
unique identifier corresponding to the CD and sends it to the
server. The server then displays information about the CD
retrieved from a database on the basis of that unique identifier.
This information may include a Web address (URL) that is
related to the audio CD (e.g., that of the artists’ home page),
simple data such as the names of the songs, and also
complementary entertainment, including potentially
photographs (e.g., of the band), artwork, animations, and video
clips. It is also possible to arrange things so that, when the user
inserts an audio CD into the computer, (i) the Web browser is
launched if not already running, (ii) the browser computes the
CD's unique identifier and from that unique identifier derives a
URL, and (iii) the browser does an HTTP get transaction on
that URL.
(Col. 6, ll. 15-42.)
Ikezoye Reference
6. Ikezoye describes a system for identifying media content and
presenting associated information to a user. (Abstract; col.1, ll. 10-15; col.
2, ll. 49-58.) Ikezoye further describes a sampling unit (element 34)
sampling (creating a sample of) a song being played through a media player
using digital signal processing techniques. (Col. 10, ll. 13-16.) Specifically,
Ikezoye describes the sampling unit creating a sample of the media content
played on the media player, transmitting the sample to the lookup server
through a network interface (see col. 6, ll. 64-67; Fig. 1, element 28), and the
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lookup server (element 12) providing information related to the media
sample. (col. 8, ll. 20-31; Fig. 1, elements 12, 42.) Ikezoye’s lookup unit
(element 42) compares the sample to “frames” in a memory structure
(element 47) and returns information from a database (element 46) when a
match is found. (Col. 8, l. 39 to col. 9, l. 2; col. 9, ll. 9-14; Fig. 1.)

ANALYSIS
Appellant argues independent claim 11 and dependent claims 12-19
and 22-25 together as a group based on claim 11 and does not separately
argue the dependent claims. Therefore, we select independent claim 11 as
representative of Appellant’s arguments and groupings with respect to the
Examiner’s obviousness rejections. 37 C.F.R. § 41.37(c)(1)(vii). See In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987).
We have considered only those arguments that Appellant has actually
raised in the Briefs. Arguments that 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 has the opportunity on appeal to the Board of Patent
Appeals and Interferences (BPAI) to demonstrate error in the Examiner’s
position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (citing In re
Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner sets forth a
detailed explanation of a reasoned conclusion of obviousness in the
Examiner’s Answer with respect to each of Appellant’s claims (Ans. 4-17),
and in particular claim 11 (Ans. 4-5, 14-17). Therefore, we look to the
Appellant’ Briefs to show error in the proffered reasoned conclusions. See
Kahn, 441 F.3d at 985-86.
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Arguments Concerning the Examiner’s Rejection of
Representative Claim 11 Under § 103
The Examiner rejects Appellant’s independent claim 11 as being
obvious over the combination of Ritz, Roberts, and Ikezoye. (Ans. 4-5, 14-
17.) The Examiner finds that Ritz teaches each of the limitations of claim 11
except that Ritz does not explicitly teach “the retrieval being accomplished
without additional user input.” (Ans. 4.) The Examiner finds that Roberts
teaches retrieval of encoded information without additional user input.
(Ans. 5.) The Examiner further finds that Ikezoye teaches a digital signal
processor as recited in the claim. (Id.) The Examiner also provides a
rationale for combining Ritz, Roberts, and Ikezoye. (Ans. 5 (top and
bottom).)
Appellant contends that Ritz, Roberts, and Ikezoye:
fail to teach or fairly suggest “wherein the system is adapted to
read, using the indicia reader, an indicia coupled to a storage
media storing information in a first format, and based on the
indicia read, accessing a remote device using the network
interface to retrieve the information in an encoded format;
and wherein the retrieval is initiated upon reading the indicia,
and once initiated, retrieval of the information is accomplished
without additional user input.”
(App. Br. 9-10 (quoting claim 11).) Specifically, Appellant asserts that: (1)
Ritz does not teach retrieving information without additional user input –
“Ritz . . . is silent as to retrieving an encoded format of the information on
the audio CD without any user input” (App. Br. 9); (2) Roberts doesn’t teach
retrieving encoded information – “Roberts . . . is silent as to retrieving an
encoded format of the information on the audio CD” (App. Br. 11); (3)
Ikezoye does not teach a DSP that encodes information – “Ikezoye . . . is
silent as to encoding the information on a storage media” (App. Br. 12); and
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(4) making the proposed modifications changes the principle of operation of
Ritz and would render Ritz unsatisfactory for its intended purpose (App. Br.
10-11; see also Reply Br. 1-3.)
Based on the record before us, we do not find error in the Examiner’s
obviousness rejection of Appellant’s claim 11. We agree with the Examiner
that Ritz describes a system that reads an UPC code on a CD case using a
scanning device (an indicia reader reading indicia), accesses a hub site via
the internet (accesses a remote device using a network interface), and
automatically retrieving information. (Ans. 15; FF 2-3.) We also agree that
Roberts teaches automatically retrieving encoded information (Ans. 15-16;
FF 5), and Ikezoye teaches the recited DSP (Ans. 17; FF 6).
Initially, we find that the Examiner does not fully appreciate the
teachings of Ritz – only briefly stating that “a preferred embodiment permits
the end user to listen to clips of each song communicated to the platform
through codes.” (Ans. 15.) We find Ritz describes (teaches) scanning UPC
codes from CD packages, automatically uploading the codes to hub site
maintained by a service provider, and the hub site automatically processing
(resolving) the codes to provide the user with additional information. (FF 2-
3.) Ritz also describes providing a mechanism for the user to listen to clips
of songs from the menu list of songs (audio tracks) provided through the hub
site. When the user selects a clip from the information provided from the
hub site, Ritz’s system utilizes an audio player application to play the
selected clip. The clip (encoded audio information) is provided by the hub
site to the user. The audio information may in turn be provided to the hub
site from a third-party service provider. (FF 4.)
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Appellant does not define indicia or an indicia reader (FF 1);
therefore, we give this claim terminology the “broadest reasonable
interpretation consistent with the [S]pecification” in accordance with our
mandate that “claim language should be read in light of the [S]pecification
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) (citations
omitted). Thus, we broadly but reasonably interpret this terminology to
simply mean identifying information and a means for providing the
identifying information. This interpretation is consistent with Appellant’s
Specification as well as the commonly understood meaning that would be
attributed by one of ordinary skill in the art.
Accordingly, we find activating an audio clip which requires
transferring information (indicia) from a user’s computer to a hub site and/or
information (indicia) from a hub site to a third-party and then providing the
corresponding encoded audio information to a media player to play the
requested clip discloses the disputed limitations – “based on the indicia read,
accessing a remote device using the network interface to retrieve the
information in an encoded format; and wherein the retrieval is initiated upon
reading the indicia, and once initiated, retrieval of the information is
accomplished without additional user input.”
Although ultimately unnecessary for a prima facie case of
obviousness, Roberts also teaches automatic retrieval of encoded
information from a remote device. (FF 5.) Roberts describes retrieving
information such as photos and video over the Internet. (Id.) Such
information is well known to be encoded in, for example, a JPEG format.
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Ikezoye teaches a digital signal processor (DSP)) that
processes/encodes information – specifically, the sampling unit samples
(creates a sample of) media content played on the media player and
transmits the sample to the lookup server through a network interface, which
then provides information related to the media sample. (FF 6.) Thus, we
find that Ikezoye teaches a DSP as recited in the claim – i.e., “configured to
locally encode information stored on a storage media” (media content played
on the media player – such as a CD) and “coupled” to “a network interface”
and “an indicia reader” (lookup unit).
In any case we find that the automatic information retrieval taught by
Ritz (supra) expressly contradicts and negates Appellant’s arguments that
modifying Ritz to include automatic retrieval of encoded information would
somehow change Ritz’s principle of operation or would render Ritz
unsatisfactory for its intended purpose (See App. Br. 10-11.) We also find
Appellant’s other contrary arguments unpersuasive. Appellant attempts to
attack the references individually, instead of addressing the combination of
references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(noting that one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Thus, we find that Ritz, Roberts, and Ikezoye would have taught or
fairly suggested the disputed limitations to one of ordinary skill in the art at
the time of Appellant’s invention. Appellant does not separately argue
dependent claims 12-19 and 22-25 (supra), all of which depend on and fall
with claim 11. It follows that Appellant does not persuade us of error in the
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Examiner’s obviousness rejection of claims 11-19 and 22-25, and we affirm
the Examiner’s rejection of these claims.

CONCLUSION OF LAW
Appellant has not shown that the Examiner erred in rejecting claims
11-19 and 22-25 under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 11-19 and 22-25 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)(v).

AFFIRMED

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