Ex Parte Mueller et al

Patent Trial and Appeal Board

Oct 22, 2012

09816526 (P.T.A.B. Oct. 22, 2012)

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.
09/816,526 03/23/2001 Thomas Mueller 10191/1773 8027
26646 7590 10/22/2012
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
MEI, XU
ART UNIT PAPER NUMBER
2654
MAIL DATE DELIVERY MODE
10/22/2012 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 THOMAS MUELLER, MATTHIAS WANSCHURA,
TORSTEN MLASKO, and VOLKER LAUKE
_____________

Appeal 2010-012012
Application 09/816,526
Technology Center 2600
______________

Before KARL D. EASTHOM, KEVIN F. TURNER, and
BRYAN F. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

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Application 09/816,526

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This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 2-17 which constitute all the claims
pending in this application. App. Br. 4. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a device for playing back
multimedia data files from a storage device in an automotive sound
system. See Spec., col. 1, ll. 2-3.
Claim 2 is representative of the invention and is reproduced
below:

2. A device for playing back multimedia data files
stored in an automotive sound system, comprising:
a display;
a loudspeaker for performing a playback of the
multimedia data files;
an input apparatus;
a storage device; and
a processor for decoding the multimedia data files,
wherein:
the processor includes an element for displaying
directories located in the storage device and in which the
multimedia data files are contained, as different virtual
data carriers, and the multimedia data files as different
titles on the display, and the different virtual data carriers
and the different titles are selectable in accordance with
an operation of the input apparatus; and
wherein:
the processor, together with the operation of the
input apparatus, is capable of linking the multimedia data
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files, located on the storage device, to at least one new
directory, and
the processor provides an option to store the
multimedia data files once again.

REFERENCES

Lee US 6,292,440 B1 Sep. 18, 2001
Lau US 6,990,208 B1 Jan. 24, 2006

REJECTIONS AT ISSUE
Claim 2-17 stands rejected as unpatentable under 35 U.S.C. § 103(a)
as being obvious over the combination of Lee and Lau. Ans. 3-9.

ISSUE
Did the Examiner err in finding that the combination of Lee and Lau
renders obvious the following limitations recited in claim 2:
1. a “processor [that] includes an element for displaying directories
located in the storage device and in which the multimedia data files
are contained, as different virtual data carriers,” and
2. “the processor, together with the operation of the input apparatus,
is capable of linking the multimedia data files, located on the
storage device, to at least one new directory”?

ANALYSIS
Appellants argue the above limitations of claim 2. Claims 3-17 are
not argued separately and therefore stand or fall with claim 2.
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As to limitation 1 from the issues above, Appellants argue that “Lee
merely refers to the features of a basic MP3 audio system, and Lau merely
refers to directories with more than one playlist, but their playlist is not in
any way disclosed as a virtual data carrier.” App. Br. 12. (Emphasis
omitted). Specifically, Appellants argue that the “Lau displays the ‘real’
directory structure of playlists that actually exist as such on the storage
medium.” Id at 13. (Emphasis omitted). We are not persuaded by this
argument. The Examiner notes that “this broadly claimed limitation of
‘different virtual data carriers’ . . . clearly can be interpreted as merely a
different way of naming ‘an element for displaying directories’, as the way it
was written in independent claims 17, 2, 5 and 9.” Ans. 10.
Appellants argue that the “presently claimed subject matter provides
for the display of virtual data carriers which do not exist as such, but which
are provided as part of the display so that a user can more easily search MP3
files in a format he or she may be more familiar with since the user may
have previous operating CD changers.” App. Br. 18. (Emphasis in original).
This argument is not commensurate with the claimed invention. Appellants
imply that the claim requires providing a structure different than the
directory structure of the physical file directory. However, the claim only
recites displaying directories as virtual data carriers. The claim is silent as to
how the virtual data carrier displays the directory. We conclude that there is
ample support for the Examiner’s finding that the broadest reasonable
interpretation of “virtual data carriers” in the context of the invention is “an
element for displaying directories.” See Ans. 10. Therefore, we are not
persuaded by this argument.
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Independent Claim 2 also requires that the “the processor, together
with the operation of the input apparatus, is capable of linking the
multimedia data files, located on the storage device, to at least one new
directory.” Appellants argue that “Lee and Lau, whether taken alone or
combined, do not disclose or even suggest a processor that, together with an
operation of an input apparatus, is capable of linking multimedia data files,
located on a storage device, to at least one new directory, and that provides
an option to store the multimedia data files once again, as provided for in the
context of claim 2, as presented.” App. Br. 14. Lau teaches that “software
allows the user to create play lists, add or remove tracks from a play list, add
or remove tracks from disk cartridge.” Lau, col. 13, ll. 33-35; see also Ans.
7. Lau further teaches that “tracks are added to the track list by moving
tracks into a directory or dragging tracks into window 1206.” Lau at col. 13,
ll. 42-44; see also Ans. 7. (Emphasis omitted). Based on these textual
portions in Lau, we conclude that there is ample support for the Examiner’s
finding that Lau does, in fact, disclose linking music files to a new directory.
Ans. 7. Therefore, we agree with the Examiner that Lau teaches that “the
processor, together with the operation of the input apparatus, is capable of
linking the multimedia data files, located on the storage device, to at least
one new directory.” Id.
Appellants further argue that “the references relied on, whether taken
alone or combined, do not suggest in any way modifying or combining the
references so as to provide the presently claimed subject matter for
addressing the problems and/or providing the benefits of the ‘virtual data
carrier’ feature of the claimed subject matter as explained herein and in the
specification.” The Examiner must provide an articulated reasoning with a
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rational underpinning to substantiate the obviousness rejection. See KSR
Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Upon reviewing the
record before us, we find that the Examiner’s stated suggestions for
modifying Lee and Lau suffice as articulated reasons with some rational
underpinning to justify the legal conclusion of obviousness. Lee and Lau
both disclose automotive MP3 music players with a display. Lee, col. 3, ll.
10-43; Lau, ABSTRACT. We find that an ordinarily skilled artisan in the
art, at the time of the claimed invention, would have combined Lee and Lau
because the proffered combination would “enhance[] the visual management
and selection of the multimedia files for the automotive/car sound system.”
Ans. 11.
Moreover, we note that the Examiner’s proposed combination of these
known elements and features is well within the level of an ordinarily skilled
artisan. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”). We agree with the
Examiner that combining Lee and Lau “would have been considered in the
knowledge generally available to one of ordinary skill in the art.” Id.
For the reasons stated above, we find no error in the Examiner’s
decision to reject claims 2-17 as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of Lee and Lau.

SUMMARY
The Examiner’s decision to reject claims 2-17 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).
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AFFIRMED

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