Ex Parte Schrempp et al

Board of Patent Appeals and Interferences

May 7, 2012

09910680 (B.P.A.I. May. 7, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
09/910,680 07/20/2001 James B. Schrempp 5219P005 (25397-24) 2531
7590 05/07/2012
Patent Docket Administrator
Lowenstein Sandler PC
65 Livingston Avenue
Roseland, NJ 07068
EXAMINER
PATEL, DHAIRYA A
ART UNIT PAPER NUMBER
2451
MAIL DATE DELIVERY MODE
05/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES B. SCHREMPP, VANCE IKEZOYE, ERLING H.
WOLD, THOMAS L. BLUM, DOUGLAS F. KEISLAR, and
JAMES A. WHEATON
____________

Appeal 2009-014458
Application 09/910,680
Technology Center 2400
____________

Before ALLEN R. MacDONALD, KRISTEN L. DROESCH, and
BRUCE R. WINSOR, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014458
Application 09/910,680

2
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-4, 6-29, 31-35, and 37-59, which constitute all the claims pending
in this application. Claims 5, 30, and 36 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention “relates to data communications, and, in
particular, to . . . the automatic generation of media playlists”. (Spec. 1:10-
11). An analysis module receives and analyzes an unknown work and
generates a corresponding representation thereof. An identification (ID)
server receives the representation from the analysis modules and determines
the identity of the unknown work. (Abstract). Claim 1, which is illustrative
of the invention, reads as follows:
1. A playlist generation system comprising:
at least one analysis module for receiving signals
that include data wherein said data includes an arbitrary portion
of data of an unknown work,
analyzing said data, generating a representation of
said data including said arbitrary portion of data of said
unknown work, and transmitting said representation over a
network to an identification server;
at least one identification (ID) server for receiving
said representation over said network from said at least one
analysis module and determining the identity of said unknown
work from said representation.

The Examiner relies on the following prior art in rejecting the claims:
Lert US 4,230,990 Oct. 28, 1980
Aberson US 5,732,193 Mar. 24, 1998
Appeal 2009-014458
Application 09/910,680

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Lai US 6,006,183 Dec. 21, 1999
Chowdhury US 6,026,439 Feb. 15, 2000
Brouwer US 6,279,124 B1 Aug. 21, 2001

Claims 1-4, 6-8, 11-13, 16-19, 22-23, 26, 31-34, 37-39, 42-44, 47-50,
52-55, 58, and 59 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Lert.1 (Ans. 3).
Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lert in view of Aberson. (Ans. 16).
Claims 24, 25, 27, 28, 51, 56, and 57 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lert in view of Chowdhury. (Ans. 17).
Claims 9, 10, 14, 15, 40, 41, 45, and 46 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lert in view of Lai. (Ans. 20).
Claim 29 stands rejected under 35 U.S.C. §103(a) as unpatentable
over Lert in view of Chowdhury and Brouwer. (Ans. 23).
Claim 35 stands rejected under 35 U.S.C. §103(a) as unpatentable
over Lert in view of Brouwer. (Ans. 23).2
Rather than repeat the arguments here, we make reference to the
Briefs (App. Br. filed Aug. 24, 2007; Reply Br. filed Feb. 5, 2008) and the
Answer (Ans. mailed Dec. 5, 2007, as corrected Aug. 10, 2009) for the
respective positions of Appellants and the Examiner. Only those arguments
actually made by Appellants have been considered in this decision.

1 Also referred to in the record as “Lert1.”
2 Claims 29 and 35 were not addressed by Appellants’ Briefs (see e.g., App.
Br. 5; see also Ans. 3). However, Appellants have not indicated an intent to
cancel claims 29 and 35 (see App. Br. 3). Therefore, for purposes of this
appeal, we treat claims 29 and 35 as being argued with the claims from
which they depend.
Appeal 2009-014458
Application 09/910,680

4
Arguments that Appellants did not make in the Briefs have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2010).

PRINCIPLES OF LAW
[The USPTO] applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “Though understanding
the claim language may be aided by the explanations contained in the
written description, it is important not to import into a claim limitations that
are not a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358
F.3d 870, 875 (Fed. Cir. 2004).

ISSUES
Based on Appellants grouping of claims (App. Br. 5), we will decide
the appeal by reference to claim 1. The issues presented by Appellants’
contentions are as follows:
Does Lert disclose “receiving signals that include data wherein said
data includes an arbitrary portion of data of an unknown work,” as recited in
claim 1? (See App. Br. 6).
Does claim 1, as properly construed, “recite[] receiving an arbitrary
portion of data of a work, generating a representation of said work from said
arbitrary portion of data and determining an identity of said work from said
representation” (emphasis added) (id.)?
Appeal 2009-014458
Application 09/910,680

5

ANALYSIS
Appellants contend that “Lert[] does not teach receiving an arbitrary
portion of data.” (App. Br. 6). The Examiner finds (Ans. 4) that Lert
discloses receiving broadcast signals that include data. The Examiner
explains that “[i]t is inherent that broadcast signals which contains cue
signals of broadcast program contain[] arbitrary part[s] of signals because a
whole signal contains an arbitrary portion of [the] signal therefore it is
inherent that signals contain an arbitrary portion.” (Id.). We agree with the
Examiner.
The Examiner has properly given the claim its broadest reasonable
interpretation. See Morris, 127 F.3d at 1054. Claim 1 recites “receiving
signals that include data wherein said data includes an arbitrary portion of
data of an unknown work” (emphasis added). Lert’s unidentified broadcast
signals would be recognized by one of ordinary skill in the art as including
data, which is data of an unknown3 work. Furthermore, the data of the
unknown work necessarily (i.e., inherently) includes an arbitrary portion of
the data of the unknown work. This is true under any of the definitions of
“arbitrary” proposed by Appellants (App. Br. 9; Reply Br. 3-4) and the
Examiner (Ans. 25). We note that claim 1 does not recite that the “arbitrary
portion” of the data is identified or distinguished from the data as a whole,
merely that it is included in the data. Accordingly, we find that the
Examiner did not err in finding that Lert discloses “receiving signals that

3 We note that “unknown” is merely a subjective label for the “work” and
that the steps of the process do not depend on whether the user knows or
does not know the “work.”
Appeal 2009-014458
Application 09/910,680

6
include data wherein said data includes an arbitrary portion of data of an
unknown work,” as recited in claim 1.
Appellants further contend “[c]laim 1 recites receiving an arbitrary
portion of data of a work, generating a representation of said work from said
arbitrary portion of data and determining an identity of said work from said
representation.” (App. Br. 6). “The critical distinction between the present
invention and Lert[] is that the present invention attempts to match
representations of segments of streaming data with representations of known
works in order to identify the work in which the segments exist.” (Reply Br.
2). The Examiner responds that Appellants are arguing limitations not found
in claim 1. (Ans. 26). We agree with the Examiner.
We give claim 1 its broadest reasonable meaning in light of the
Specification, see Morris, 127 F.3d at 1054, without importing limitations
into the claim from the Specification, see SuperGuide, 358 F.3d at 875.
Claim 1 recites an analysis module for receiving signals that include data
that includes an arbitrary portion of data of an unknown work. Claim 1 also
recites analyzing the data, generating a representation of said data including
said arbitrary portion of said data, and identifying the unknown work based
on the representation. We conclude that the claim does not recite that the
representation of the work is generated from the arbitrary portion of the data
as asserted by Appellants. Rather, the claim, as properly construed, recites
that the representation is generated from the received data generally, and
encompasses generating the representation from the entirety of the data or
any portion of the data. Therefore, because Appellants are arguing
limitations not found in the claim, we are not persuaded of error in the
Examiner’s finding that Lert anticipates claim 1.
Appeal 2009-014458
Application 09/910,680

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For the foregoing reasons we sustain the rejection of claim 1, and of
claims 2-4, 6-29, 31-35, and 37-59, the patentability of which was not
separately argued.

ORDER
The decision of the Examiner to reject claims1-4, 6-29, 31-35, and 37-
59, 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) (2010).

AFFIRMED

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