Ex Parte Pyhalammi et al

Patent Trial and Appeal Board

Sep 22, 2016

10970329 (P.T.A.B. Sep. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/970,329 10/21/2004 Seppo Pyhalammi
100809 7590 09/26/2016
Core Wireless Licensing Ltd
5601 Granite Parkway
Suite 1300
Plano, TX 75024
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
NC45394-US-PAT 4432
EXAMINER
HILLERY, NATHAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipadmin-core@core-wireless.com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEPPO PYHALAMMI, KAJ HAGGMAN,
JOUNI SOITINAHO, and TUOMO SIHVOLA
Appeal2015-000070
Application 10/970,329
Technology Center 3700
Before LINDA E. HORNER, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1, 4, 8-10,
12, 16-22, 24--30, 32-37, 39-53, and 55-76, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 The real party in interest is identified as Core Wireless Licensing S.a.r.l.
App. Br. 1.
Appeal2015-000070
Application 10/970,329
Claimed Subject Matter
Claim 58, reproduced below, is illustrative of the claimed subject
matter:
58. A method comprising:
bonding a slave device to a master device according to
predetermined media file transfer parameters;
receiving, at the slave device, selected media content and
metadata about the selected media content from the master
device, wherein the metadata describes a plurality of selected
media items of the selected media content, and the selected
media content is selected by the master device;
directing display of an indication of the metadata on a first
display of the slave device;
directing display of the selected media content on the slave
device;
searching for related media content previously stored in
the slave device that is associated with the selected media content
based on the metadata, the related media content comprising at
least one related media item not included in the plurality of
selected media items;
accessing the related media content determined by
searching;
directing display of display items for the selected media
and the accessed related media content substantially
simultaneously on the first display;
receiving an indication that identifies one of the display
items; and
directing transfer of identified media content based on the
indication.
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Appeal2015-000070
Application 10/970,329
Rejections
Claims 1, 4, 8-10, 12, 16-22, 24--30, 32-37, 39-53, 55-72, and 74--76
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cho et al.,2
Van De Sluis et al.,3 Nygaard,4 and Jensen-Grey. 5 Final Act. 2-30.
Claim 73 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Cho, Van De Sluis, Nygaard, Jensen-Grey, and Burr.6 Final Act. 30-
31.
ISSUE7
The dispositive issue raised by Appellants' contentions is whether the
Examiner provides sufficient reasoning as to why one of ordinary skill in the
art would have combined the teachings of Cho and Van De Sluis with
Jensen-Grey.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (App. Br. 6-14; Reply Br. 1-3). We concur with Appellants'
argument (App. Br. 11) that the Examiner has not sufficiently articulated a
2 US 2002/0197993 Al, published Dec. 26, 2002.
3 US 2006/0146765 Al, published July 6, 2006.
4 US 2007/0094703 Al, published Apr. 26, 2007.
5 US 2002/0099697 Al, published July 25, 2002.
6 US 2004/0203797 Al, published Oct. 14, 2004.
7 Because the rejections of all claims on appeal rely on the Examiner's
reasoning for combining the teachings of Cho and Van De Sluis with the
teachings of Jensen-Grey, this issue is dispositive as to all claims on appeal.
Accordingly, we need not reach additional issues raised by Appellants'
arguments.
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Appeal2015-000070
Application 10/970,329
reason why one of ordinary skill in the art would have combined the
teachings of Cho and Van De Sluis with Jensen-Grey.
The Examiner finds Cho and Van De Sluis do not teach the following
steps of claim 58 ("the searching and accessing steps"):
searching for related media content previously stored in
the slave device that is associated with the selected media content
based on the metadata, the related media content comprising at
least one related media item not included in the plurality of
selected media items;
accessing the related media content determined by searching.
Final Act. 5 (emphasis omitted). The Examiner concludes it would have
been obvious to combine Cho and Van De Sluis with Jensen-Grey's teaching
of a spider that crawls web pages and file directories searching for media
files, reasoning that such a combination "would provide the users of Cho et
al. and Van De Sluis et al. with a distributed storage network (paragraph
block 0001 ). " Id. at 6.
ii .. s 1A .. ppellants argue, the "distributed storage netv,rork" benefit could
be achieved without meeting the missing elements of the searching and
accessing steps of claim 58. App. Br. 11. We agree that the identified
benefit of adopting teachings from Jensen-Grey does not sufficiently explain
why Jensen-Grey's teachings related to the searching and accessing steps of
claim 58 would be combined with the teachings of Cho and Van De Sluis.
The Examiner responds by reiterating the reasoning from the Final Action,
and stating that "had the Office provide[ d] a motivation to combine that
essentially met the missing claim elements, then Appellant[ s] would be
crying impermissible hindsight." Ans. 6. Although the particular
motivation of the applicant for patent is not controlling, see KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007), and "any need or problem known in
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Application 10/970,329
the field of endeavor at the time of invention ... can provide a reason for
combining the elements" from multiple prior art references, id. at 420, the
reasoning must relate to combining the elements "in the manner claimed,"
id. On this record, there is insufficient evidence or explanation as to why
one of ordinary skill in the art would use Jensen-Grey's teachings regarding
searching for media files with the teachings of Cho and Van De Sluis. 8
In view of the foregoing, we do not sustain the rejection of claim 58
under 35 U.S.C. § 103(a) as unpatentable over Cho, Van De Sluis, Nygaard,
and Jensen-Grey. Because the rejections of all claims on appeal rely on the
Examiner's reasoning for combining the teachings of Cho and Van De Sluis
with the teachings of Jensen-Grey, we also do not sustain the rejections of
claims 1, 4, 8-10, 12, 16-22, 24--30, 32-37, 39-53, 55-57, and 59-76.
DECISION
We reverse the Examiner's decision to reject claims 1, 4, 8-10, 12,
16-22, 24--30, 32-37, 39-53, and 55-76.
REVERSED
8 Although the Board is authorized to enter a new ground of rejection under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02.
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