09870377 (B.P.A.I. Jun. 29, 2011)

Ex Parte Pudar

Board of Patent Appeals and InterferencesJun 29, 2011

09870377 (B.P.A.I. Jun. 29, 2011)

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. 09/870,377 05/30/2001 Nick J. Pudar GP-300259 7233 60770 7590 06/30/2011 General Motors Corporation c/o REISING ETHINGTON P.C. P.O. BOX 4390 TROY, MI 48099-4390 EXAMINER MYHRE, JAMES W ART UNIT PAPER NUMBER 3682 MAIL DATE DELIVERY MODE 06/30/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte NICK J. PUDAR ________________ Appeal 2011-002003 Application 09/870,377 Technology Center 3600 ________________ Before TERRY J. OWENS, HUBERT C. LORIN and STEVEN D.A. McCARTHY, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2 decision finally rejecting claims 26-42 under 35 U.S.C. § 103(a) as being 3 unpatentable over Dimitriadis (US 5,664,948, issued September 9, 1997) and 4 Hite (US 5,774,170, issued Jun. 30, 1998). The remaining claims are 5 cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.6 Appeal No. 2011-002003 Application No. 09/870,377 2 Claim 26 is typical of the claims on appeal: 1 26. A radio system for a vehicle to 2 provide broadcasted radio programming and 3 advertising content to an occupant of the vehicle, 4 comprising: 5 a vehicle radio having an input for receiving 6 audio data and at least one output for providing 7 audio signals representative of the received audio 8 data; 9 a radio broadcast receiver having an antenna 10 for receiving two or more radio broadcast streams, 11 with a first one of the radio broadcast streams 12 including radio advertisements and a second one of 13 the broadcast streams including audio content that 14 contains intermittent advertising slots each 15 identified by a marker contained with that 16 broadcast stream, the radio broadcast receiver 17 being coupled to the input of the vehicle radio to 18 provide the vehicle radio with the received audio 19 content; and 20 an advertising control unit connected to said 21 radio broadcast receiver to receive at least some of 22 the radio advertisements contained in the first 23 radio broadcast stream, said advertising control 24 unit including a recording device which stores 25 radio advertisements received from said radio 26 broadcast receiver; 27 wherein, upon receipt of one of the markers 28 contained within the second broadcast stream, said 29 advertising control unit is operable to access one of 30 the stored radio advertisements, with the accessed 31 radio advertisement being inserted into the 32 advertising slot identified by the received marker 33 so that the accessed radio advertising is included 34 within the audio content sent to the input of the 35 vehicle radio. 36 Appeal No. 2011-002003 Application No. 09/870,377 3 The Appellant is correct in contending (see App. Br. 9) that 1 Dimitriadis fails to describe a system including an advertising control unit 2 “operable to access one of the stored radio advertisements, with the accessed 3 radio advertisement being inserted into the advertising slot identified by the 4 received marker so that the accessed radio advertising is included within the 5 audio content sent to the input of the vehicle radio.” (Italics added.) Even 6 assuming that Dimitriadis’ amplifier 68 most closely corresponds to the 7 vehicle radio recited in claim 26, Figure 2 of Dimitriadis depicts the audio 8 content or voice signal 66 entering the amplifier 68 separately from the 9 advertising content routed through the advertisement or message 10 presentation block 104. At the very least, Dimitriadis fails to describe any 11 inclusion of accessed radio advertisement with the audio content or voice 12 signal 66 before the audio content is sent to the amplifier 68. 13 As the Appellant points out, this functional distinction implies a 14 structural difference between Dimitriadis’ amplifier 68 and the vehicle radio 15 recited in claim 26. Dimitriadis’ amplifier 68 requires an auxiliary input for 16 receiving the accessed radio advertisement. The vehicle radio recited in 17 claim 26 receives the accessed radio advertisement, albeit included within 18 the audio content sent to the input of the vehicle radio, without requiring an 19 auxiliary input for receiving the accessed radio advertisement. (See App. Br. 20 9). “While it may often be true that the mere omission of an element 21 together with its function does not produce a patentable invention, it may 22 also be unobvious to omit an element while retaining its function.” In re 23 Edge, 359 F.2d 896, 899 (CCPA 1966). 24 As the Appellant points out (see App. Br. 9), the Examiner’s 25 motivation statements fail to mention any reason why one of ordinary skill 26 Appeal No. 2011-002003 Application No. 09/870,377 4 in the art might have incorporated into a radio system for a vehicle an 1 advertising control unit “operable to access one of the stored radio 2 advertisements, with the accessed radio advertisement being inserted into the 3 advertising slot identified by the received marker so that the accessed radio 4 advertising is included within the audio content sent to the input of the 5 vehicle radio.” (See, e.g., Ans. 10-11, 14-15 and 22-23). Even assuming 6 that the Examiner is correct in finding that “Hite also discloses inserting 7 advertisements into the broadcast stream at the marked locations and 8 transmitting the combined data stream to the vehicle radio” (Ans. 9 21)(underlining omitted), the Examiner has provided no reason why one of 10 ordinary skill in the art familiar with the teachings of Dimitriadis and Hite 11 might have had reason to modify Dimitriadi’s system so as to include the 12 accessed radio advertising within the audio content sent to the input of an 13 element corresponding to the recited vehicle radio. 14 We do not sustain the rejection of claims 26-42 under § 103(a) as 15 being unpatentable over Dimitriadis and Hite. In view of this decision, we 16 do not address any procedural issues relating to the rejection of claims 26-42 17 in the wake of our Decision in Ex Parte Pudar, Appeal No. 2008-0410, 18 mailed April 30, 2008. 19 20 DECISION 21 We REVERSE the decision of the Examiner rejecting claims 26-42. 22 23 REVERSED 24 25 26 27 Klh 28