Ex Parte Marcinkiewicz et al

Patent Trial and Appeal Board

Nov 25, 2014

11860767 (P.T.A.B. Nov. 25, 2014)

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.
11/860,767 09/25/2007 Walter M. Marcinkiewicz 2002-691 / PU07 0203US2 7175
54472 7590 11/26/2014
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
EDWARDS, JAMES A
ART UNIT PAPER NUMBER
2448
MAIL DATE DELIVERY MODE
11/26/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WALTER M. MARCINKIEWICZ, GARY R. COLE,
TOBY JOHN BOWEN, YOJAK HARSHAD VASA, and
MATS PETTERSSON
___________

Appeal 2012-007742
Application 11/860,767
Technology Center 2400
____________

Before STEPHEN C. SIU, ERIC B. CHEN, and JEREMY J. CURCURI,
Administrative Patent Judges.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

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This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 3, 4, 7–21, and 23–35. Claims 2, 5, 6, and 22 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
Appellants’ invention relates to distributing units of multimedia files.
The multimedia files are downloaded using a transportation provider
wireless device associated with a fare-based transport vehicle (e.g., a taxi,
bus, ferry, or airplane). The downloaded multimedia files are stored in a
data storage unit operatively connected to the transportation provider
wireless device. In response to passenger input data received from a
passenger wireless device, a desired multimedia file selected by the
passenger is transferred to the passenger wireless device. (Abstract.)
Claim 1 is exemplary, with disputed limitations in italics:
1. A method for distributing multimedia content,
comprising:
downloading a plurality of multimedia files using a
transportation provider wireless device associated with a fare-
based transport vehicle;
storing the downloaded multimedia files in a data storage
unit operatively connected to the transportation provider
wireless device;
receiving passenger input data from a passenger wireless
device, the passenger input data including a file selection
corresponding to a desired multimedia file; and
outputting the desired multimedia file in response to the
passenger input data, wherein outputting the desired multimedia
file in response to the passenger input data comprises
transferring the desired multimedia file from the data storage
unit to the passenger wireless device.
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Claims 1, 3, 4, 9–11, 17–21, 24–27, 30–32, and 35 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Dukach (US 2004/0036622 A1;
Feb. 26, 2004).
Claims 12, 14–16, and 33 stand rejected under 35 U.S.C. § 103(a) as
obvious over Dukach and Takatori (US 2002/0138423 A1; Sept. 26, 2002).
Claims 7 and 28 stand rejected under 35 U.S.C. § 103(a) as obvious
over Dukach and Vasant (US 2008/0014908 Al; Jan. 17, 2008).
Claims 8 and 29 stand rejected under 35 U.S.C. § 103(a) as obvious
over Dukach and Eichenberger (US 2005/0219208 A1; Oct. 6, 2005).
Claims 13, 23, and 34 stand rejected under 35 U.S.C. §103(a) as
obvious over Dukach, Takatori, and Moshir (US 2008/0167060 A1; July 10,
2008).

ANALYSIS
We are persuaded by Appellants’ arguments (Reply Br. 4–5) that
Dukach does not describe the limitations “downloading a plurality of
multimedia files using a transportation provider wireless device” and
“receiving passenger input data from a passenger wireless device,” as recited
in independent claim 1.
The Examiner found that the mobile unit of Dukach corresponds to
the claimed “transportation provider wireless device.” (Ans. 5.) The
Examiner further found that the passenger interface of Dukach, which is a
subcomponent of the mobile unit, corresponds to the claimed “passenger
wireless device.” (Ans. 5, 20.) We do not agree.
Claim 1 recites “downloading a plurality of multimedia files using a
transportation provider wireless device” and “receiving passenger input data
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from a passenger wireless device” (emphases added). Accordingly, claim 1
requires both a transportation provider wireless device and a passenger
wireless device.
Dukach relates to “[a] system [that] shows messages on electronic
displays” (e.g., advertising) on a vehicle. (Abstract.) Figure 21 of Dukach
illustrates a block diagram of a mobile unit for a taxicab (¶ 95), such that
“mobile unit 104E . . . includes a passenger interface 400[,] . . . a passenger
display 402, a passenger speaker 404, a passenger microphone 406, and a
passenger input 408” (¶ 201). Mobile unit 104E of Dukach further includes
wireless system 152, such that passenger interface 400 and wireless
system 152 are both subcomponents of mobile unit 104E. (Fig. 21.)
However, because mobile unit 104E of Dukach has only a single wireless
system 152, the Examiner has provided insufficient evidence to support a
finding that passenger interface 400, when separated from mobile unit 104E,
is also a “wireless device,” as required by claim 1.
Accordingly, we are persuaded by Appellants’ argument that “Dukach
discloses a single wireless device for use in a taxi, and does not disclose
separate passenger and transportation provider wireless devices,” and as a
result, “[t]his is a different arrangement than that claimed in independent
claim 1, as there is no transfer of files to a passenger wireless device.”
(Reply Br. 5.) The question of whether it would have been obvious to
modify Dukach, such that both passenger interface 400 and mobile unit
104E are wireless, is not before us.
Therefore, we do not agree with the Examiner that Dukach describes
the limitations “downloading a plurality of multimedia files using a
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transportation provider wireless device” and “receiving passenger input data
from a passenger wireless device.”
Accordingly, we do not sustain the rejection of independent claim 1
under 35 U.S.C. § 102(b). Claims 3, 4, and 9–11 depend from independent
claim 1. We do not sustain the rejection of claims 3, 4, and 9–11 under
35 U.S.C. § 102(b) for the same reasons discussed with respect to
independent claim 1.
Independent claims 17 and 21 recite limitations similar to those
discussed with respect to independent claim 1. We do not sustain the
rejection of 17 and 21, as well as dependent claims 18–20, 24–27, 30–32,
and 35 for the same reasons discussed with respect to claim 1.
Claims 12, 14–16, and 33 depend from independent claims 1 and 21.
Takatori was cited by the Examiner for teaching the additional features of
claims 12, 14–16, and 33. (Ans. 12–14.) However, the Examiner’s
application of Takatori does not cure the above noted deficiencies of
Dukach.
Claims 7 and 28 depend from independent claims 1 and 21. Vasant
was cited by the Examiner for teaching the additional features of claims 7
and 28. (Ans. 14–15.) However, the Examiner’s application of Vasant does
not cure the above noted deficiencies of Dukach.
Claims 8 and 29 depend from independent claims 1 and 21.
Eichenberger was cited by the Examiner for teaching the additional features
of claims 8 and 29. (Ans. 15–17.) However, the Examiner’s application of
Eichenberger does not cure the above noted deficiencies of Dukach.
Claims 13, 23, and 34 depend from independent claims 1 and 21.
Takatori and Moshir were cited by the Examiner for teaching the additional
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features of claims 13, 23, and 34. (Ans. 17–19.) However, the Examiner’s
application of Takatori and Moshir does not cure the above noted
deficiencies of Dukach.

DECISION
The Examiner’s decision to reject claims 1, 3, 4, 7–21, and 23–35 is
reversed.

REVERSED

msc