Ex Parte Sharp

Board of Patent Appeals and Interferences

May 14, 2010

09765985 (B.P.A.I. May. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL A. SHARP
____________

Appeal 2009-010968
Application 09/765,985
Technology Center 3600
____________

Decided: May 14, 2010
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on March 17, 2010.
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STATEMENT OF THE CASE
Michael A. Sharp (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 14-37. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART but denominate the affirmed rejection of
claims 14-34 as NEW GROUNDS OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b).1

THE INVENTION
The invention relates to “distribution of advertising via computer
networks.” Specification 1:11.
Claim 14, reproduced below, is illustrative of the subject matter on
appeal.
14. A distribution system that comprises:
at least one network server that provides a web site having
audio files available for download by web site visitors,
wherein one or more of the audio files includes an embedded
audio message from a sponsor.

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Oct. 14, 2008) and Reply Brief (“Reply Br.,” filed Mar. 9, 2009),
and the Examiner’s Answer (“Answer,” mailed Jan. 9, 2009).
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Wolfe US 5,931,901 Aug. 3, 1999
The following rejection is before us for review:
1. Claims 14-37 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Wolfe.

ISSUES
The principle issue is whether the use of the term “download” in the
claims renders the subject matter claimed nonobvious over Wolfe’s
“streaming.”

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. The claims use the term “download.”
2. The Specification does not provide a definition for “download”
3. According to a general dictionary, the definition of “download” is “to
transfer (as data or files) from a usually large computer to the memory
of another device (as a smaller computer).” (See Merriam-Webster’s
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online Dictionary, 1979. (http://www.merriam-
webster.com/dictionary/download.)(Entry for “download.”).
4. According to a more technical dictionary, the definition of
“download” is “to transfer a file from another computer to your
computer by means of a modem and a telephone line.” (See
Webster’s New World Dictionary of Computer Terms, p. 174 (8th Ed.
2000.)(Entry for “download.”) .

The scope and content of the prior art
5. Wolfe relates to a “stream” of data.

Any differences between the claimed subject matter and the prior art
6. The claims use the term “download” and Wolfe uses the term
“stream”.

The level of skill in the art
7. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of transferring data or files. We will
therefore consider the cited prior art as representative of the level of
ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350,
1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level
of skill in the art does not give rise to reversible error ‘where the prior
art itself reflects an appropriate level and a need for testimony is not
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp.,
755 F.2d 158, 163 (Fed. Cir. 1985)).
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Secondary considerations
8. A Declaration of Rod Underhill, dated February 15, 2008, has been
submitted as evidence of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides a definition
for claim terms, but otherwise apply a broad interpretation. As
this court has discussed, this methodology produces claims with
only justifiable breadth. In re Yamamoto, 740 F.2d 1569, 1571
(Fed. Cir. 1984). Further, as applicants may amend claims to
narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
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the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
Claims 14, 15, and 17-23
The Appellant argued claims 14, 15, and 17-23 as a group (App. Br.
8-12 and Reply Br. 1-3). We select claim 14 as the representative claim for
this group, and the remaining claims 15 and 17-23 stand or fall with claim
14.
Claim 14 is drawn to a system comprising a network server having the
capability of providing a web site having audio files “available for download
by web site visitors”, wherein one or more of the audio files include an
embedded audio message from a sponsor.
Wolfe discloses a system comprising a network server having the
capability of providing a web site having audio files, wherein one or more of
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the audio files includes an embedded audio message from a sponsor, is not
disputed.
The dispute is over whether Wolfe shows a web site having audio files
“available for download by web site visitors”.
Appellant takes the position that Wolfe discloses an entirely different
technique for delivering content than what is claimed. According to
Appellant, the subject matter claimed requires audio files available for
download while Wolfe provides audio files available only for streaming.
According to Appellant, one of ordinary skill in the art given Wolfe’s
system for providing streaming audio files would not be led to a system
where audio files are provided for download as claimed because one of
ordinary skill in the art would know that downloading and streaming are
independent and distinct techniques for delivering content. “Despite the
examiner’s assertions, Wolfe fails to teach or suggest “a web site having
audio files available for download by web visitors as recited by the claim.
Wolfe discloses only the delivery or program content and advertising using a
streaming technique, and does not teach delivery by download. Downloaded
data is stored, whereas streamed data is not.” App. Br. 9-10. Emphasis
original.
Appellant’s position is premised on (a) the claim term “download”
being reasonably broadly construed to include the ability of the delivered
downloaded content to be stored for a significant amount of time and (b)
Wolfe disclosing a streaming delivery technique that does not allow the
delivered streamed content to be stored for any significant amount of time.
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The Examiner has not questioned the first premise, appearing to have
agreed with Appellant that the claim term “download” is reasonably broadly
construed to include the ability of the delivered downloaded content to be
stored for a significant amount of time. Instead, the Examiner departs from
Appellant as to the second premise, finding that the streaming delivery
technique that Wolfe discloses does allow the delivered streamed content to
be stored for a significant amount of time.
While Wolfe does not explicitly disclose that the combined file being
downloaded is stored on the user device, the disclosure that the user
may attempt to disseminate the file at least implies that it has been or
could be stored on the user device. By discussing how the security
measures can prevent the user from being able to copy and
disseminate the files. Wolfe is explicitly teaching that without the
security procedures a user could copy and disseminate the file. Thus,
the system designer is given two options: either allowing the user to
copy and disseminate the file or using encryption to prevent the user
from doing so.
Answer 3. The Examiner also took Official Notice “that it was old and well
known at the time of the invention that any incoming data file can be locally
stored, either on the receiving device’s hard drive or on any one or more
types of removable storage devices . . . .” Answer 3-4. Appellant disputes
that Wolfe suggests that its stream-able files can be stored or that one of
ordinary skill would be led to do so, even if known.
The fundamental, real-time nature of Wolfe’s system would be
altered in undesirable ways if one attempted to substitute the
download technique [i.e., the ability of the delivered
downloaded content to be stored for a significant amount of
time] for the streaming technique [i.e., a streaming delivery
technique that does not allow the delivered streamed content to
be stored for any significant amount of time].
App. Br. 11.
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Our difficulty lies with the first premise - that the claim term
“download” should be construed narrowly to only mean having the ability of
the delivered downloaded content to be stored for a significant amount of
time. We are not persuaded that the evidence currently on record adequately
supports this narrow construction.
[T]he PTO 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).
That means claim terms “are generally given their ordinary and customary
meaning.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en
banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582
(Fed. Cir. 1996)). The "ordinary and customary meaning of a claim term is
the meaning that the term would have to a person of ordinary skill in the art
in question at the time of the invention, i.e., as of the effective filing date of
the patent application." Phillips, 415 F.3d. at 1313.
While “claims themselves [can] provide substantial guidance as to the
meaning of particular claim terms,” Phillips, 415 F.3d at 1314, here claim 14
provides no additional guidance. Claim 14 simply states: “a web site having
audio files available for download by web site visitors.” The claim uses the
term “download” plainly without further elaboration or in a context that
would change or further limit its ordinary and customary meaning.
Turning to the Specification, that too provides no additional guidance.
Claims “must be read in view of the specification, of which they are a part.”
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Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995)
(en banc), aff'd, 517 U.S. 370 (1996). A patent's specification “is always
highly relevant to the claim construction analysis.” Phillips, 415 F.3d at
1315). When consulting the specification to clarify the meaning of claim
terms, limitations may not be imported into the claims from the
specification. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
Cir. 2003). But here there is no danger of importing limitations into the
claim because there is nothing in the Specification that one can point to (and
Appellant does not in fact do so) as a basis for arguing that the claim term
“download” has a meaning any different from its ordinary and customary
meaning. The Specification uses the term “download” plainly without
further elaboration or discussion that would change or further limit its
ordinary and customary meaning. The Specification provides no special
definition for “download.” Nor does it discuss the process of downloading.
The Specification uses the term “download” broadly and only in conjunction
with the delivery or distribution of content. This is an example: “Before a
song is made available for public distribution (download) via the Internet,
the song is combined with an advertisement, to form a single audio file.”
Specification 5:17-18. Accordingly, the Specification cannot be said to lead
a person of ordinary skill in the art in question at the time of the invention to
necessarily understand the term “download” to only mean having the ability
of the delivered downloaded content to be stored for a significant amount of
time but rather it supports the view that a person of ordinary skill in the art
in question at the time of the invention would give the claim term
“download” its ordinary and customary meaning.
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In this circumstance where neither the claim language nor the
Specification provide any further guidance as to the meaning of the claim
term “download,” the meaning to be given the term “download” is its
ordinary and customary meaning to a person of ordinary skill in the art in
question at the time of the invention. In ascertaining a claim term’s ordinary
and customary meaning, it is appropriate to refer to a dictionary. Courts
may “rely on dictionary definitions when construing claim terms, so long as
the dictionary definition does not contradict any definition found in or
ascertained by a reading of the patent documents.” Phillips, 415 F.3d at
1322–23. In that regard, the dictionaries are consistent in defining
“download” as transferring a file from one computer to another. FF 3-4.
The definition of “download” as transferring a file or data from one
computer to another is consistent with the use of the term “download” in the
Specification which, as we have explained, uses the term “download”
broadly and in conjunction with the delivery or distribution of content.
Appellant urges a more narrow meaning for the claim term
“download” directed to a delivery technique in which the delivered content
is characterized by having the capability to be stored locally for a significant
amount of time.2 Appellant contends that this “storing” characteristic is what

2 In support thereof, Appellant relies on the declaration of David Austerberry
(dated Jun. 13, 2008). However, this Declaration was filed with the Appeal
Brief and does not meet any of the criteria for admission into the record
under Rules 41.33(d)(1) and (2). Accordingly, this Declaration will not be
considered.

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distinguishes “download” as claimed from Wolfe’s streaming technique.
App. Br. 11.
We are not persuaded that the record supports the Appellant’s
position.
As we have explained, the claim language and the Specification use
the term “download” broadly. In the case of the Specification, the term
“download” is used in conjunction with content delivery and distribution.
We are of the view that the Specification would lead one of ordinary skill in
the art at the time of the invention to give the term “download” a meaning
with a scope commensurate with delivering and distributing content. The
definition Appellant would have us apply would narrow the scope of the
meaning of “download” such that it includes a storing operation, and not just
any storing but one that would allow the content to be stored for a significant
amount of time. However, no discussion or suggestion of subsequent
storing of the downloaded content is present in the Specification. In our
view, the broad meaning given in the dictionaries comports more closely to
the way the term is used in the claim and the Specification than the one
Appellant would have us apply. In our view, the totality of the evidence
weighs in favor of giving the claim term “download” an ordinary and
customary meaning that is broader than the one Appellant submits.
Accordingly, we find that the ordinary and customary meaning that,
one of ordinary skill in the art at the time of the invention would give the
claim term “download” is the one the dictionaries give; that is, it broadly
means transferring a file or data from one computer to another.
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Therefore, claim 14 is reasonably broadly construed to be drawn to a
system comprising a network server having the capability of providing a
web site having audio files available for transfer from one computer to
another by web site visitors, wherein one or more of the audio files include
an embedded audio message from a sponsor. Given this construction, the
subject matter claimed reads on the system disclosed in Wolfe. As the
Examiner has shown, and the Appellant has not disputed, Wolfe discloses a
network server with one or more audio files available to visitors wherein the
audio files are embedded with audio messages from a sponsor. Answer 3.
Wolfe’s audio files, with the embedded messages, are made available for
“streaming” which necessarily requires data to be transferred from one
computer to another computer (i.e., audio data is transferred from the
transmitting computer to the receiving computer). This is supported by
statements made in Wolfe to the effect that audio information is
“transmitted” from a CPU over the Internet to subscriber operating PCs. See
e.g., Wolfe col. 3, ll. 48-56; see also Fig. 1. Wolfe’s audio files are therefore
“available for download.” For this reason, we find that claim 14 covers
Wolfe’s system.
The Appellant has provided evidence of secondary considerations of
non-obviousness. App. Br. 11-12. We do not find them adequate to
overcome the prima facie case as reasoned above. The Declaration of Rod
Underhill, dated February 15, 2008, appears to say that Mr. Underhill was
involved with a system for downloading audio files at the time of the
invention and was somewhat impressed by the Appellant’s effort to have
commercials embedded in downloadable audio files. Mr. Underhill appears
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to have been curious about the Appellant’s effort and speculates that the
Appellant’s invention may be commercially viable. These are personal
subjective observations about the Appellant’s invention that provide little or
no information about, for example, the commercial success of or the long-
felt need for the invention. We do not see in what way these observations
would overcome a prima facie case of obviousness. The Appellant also cites
a commercial website that the Appellant asserts uses the Appellant’s ad-
sponsored music distribution model. App. Br. 12. Again, the relevance of
the existence of such a website for overcoming a prima facie case of
obviousness is unclear. Moreover, there is no objective evidence on record
to support the allegation that the website mentioned implements the
Appellant’s invention and even if true whether this website is even
commercially successful.
Having now considered all the evidence presented by Appellant
against obviousness and weighing all the evidence anew, it is our conclusion
that the evidence for obviousness greatly outweighs the evidence against
obviousness. See In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the court
balanced the Patent Office's case against the strength of Appellant's
objective evidence of non-obviousness.)
Accordingly, it is our legal conclusion that the subject matter of claim
14 is unpatentable under 35 U.S.C. §103(a) over Wolfe. Because claims 15
and 17-23 stand or fall with claim 14, we reach the same conclusion as to
those claims. We will therefore affirm the rejection. However, our
reasoning in affirming the rejection is significantly different from that used
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by the Examiner. Accordingly, we will denominate the affirmance as a new
ground of rejection.

Claim 16
Claim 16 calls for the website to calculate royalties based in part on a
number of times an audio file is downloaded. The Examiner stated that this
is shown in Wolfe at col. 5, ll. 34-37. Answer 4. The Appellant disputes
that Wolfe discloses calculating royalties based on a number of times an
audio file is downloaded. According to the Appellant, what is disclosed
there is calculating royalties based on the number of times an audio file is
played. App. Br. 12. However, calculating royalties based on the number of
times an audio file is played is disclosed in Wolfe as an “example.” Wolfe’s
system also records “the frequency of play and transmission of music” (col.
5, l. 31). Given this, it would have been obvious to one of ordinary skill in
the art to calculate royalties based on a number of times an audio file is
transmitted. Since we have construed the claim term “download” as
meaning transmitting, Wolfe renders obvious the claimed subject matter to
one of ordinary skill in the art.
Our reasoning in affirming the rejection of claim 16 depends on
reasoning different from that of the Examiner. Accordingly, we will
denominate the affirmance as a new ground of rejection.

Claims 24 and 27-29
The Appellant argued claims 24 and 27-29 as a group (App. Br. 12-13
and Reply Br. 3-4). We select claim 24 as the representative claim for this
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group, and the remaining claims 27-29 stand or fall with claim 24. 37
C.F.R. § 41.37(c)(1)(vii) (2007).
The Appellant takes issue with the Examiner’s taking of Official
Notice that “it is well known within the computer industry that . . . incoming
data stream files may be transferred to removable storage devices, such as
CD-ROMs, smart cards, tapes etc. For example, users have been recording
radio and television broadcast onto audio tape for years” (Answer 13). App.
Br. 12-13.
We agree with the Examiner. The claimed subject matter is a
playback method comprising the steps of downloading to a computer, which,
as we have reasonably broadly construed it, reads on Wolfe, and
“transferring the audio file to an external playing device that plays the
audible advertisement when playing the audio file.” As the Examiner has
stated, external devices such as videotape recorders that are capable of
receiving transferred audio files for playback are notoriously well known.
Appellant does not dispute this. (Appellant’s argument appears to be
focused on locally storing a stream of data of the type disclosed in Wolfe).
The claimed method would have been obvious because all the claimed
elements were known in the prior art and one skilled in the art could have
combined the elements as claimed by known methods with no change in
their respective functions. The combination would have yielded nothing
more than predictable results (i.e., playback of downloaded content) to one
of ordinary skill in the art at the time of the invention. See KSR, 550 U.S. at
417
Finally, in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct.
1532, 47 L.Ed.2d 784 (1976), the Court derived from the
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precedents the conclusion that when a patent “simply arranges
old elements with each performing the same function it had
been known to perform” and yields no more than one would
expect from such an arrangement, the combination is obvious.
Id., at 282, 96 S.Ct. 1532.

Accordingly, it is our legal conclusion that the subject matter of claim
24 is unpatentable under 35 U.S.C. §103(a) over Wolfe. Because claims 27-
29 stand or fall with claim 24, we reach the same conclusion as to those
claims.
Our reasoning in affirming the rejection of claims 24 and 27-29
depends on reasoning different from that of the Examiner. Accordingly, we
will denominate the affirmance as a new ground of rejection.

Claims 25 and 26
The Appellant argued claims 25 and 26 as a group (App. Br. 13-14
and Reply Br. 4). We select claim 25 as the representative claim for this
group, and the remaining claim 26 stands or falls with claim 25. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
Claim 25 depends on claim 24 and requires further that the external
playing device play the audible advertisement each time it plays the audio
file. Both the Examiner and Appellant appear to agree that Wolfe shows an
inseparable stream of audio content and advertisement. Assuming this is
true, in our view, it necessarily follows that an external device to which such
a stream is transferred would play it back in the same inseparable condition.
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Accordingly, it is our legal conclusion that the subject matter of claim
25 is unpatentable under 35 U.S.C. §103(a) over Wolfe. Because claim 26
stands or falls with claim 25, we reach the same conclusion as to that claim.
Our reasoning in affirming the rejection of claims 25 and 26 depends
on reasoning different from that of the Examiner. Accordingly, we will
denominate the affirmance as a new ground of rejection.

Claims 30, 32, and 33
The Appellant argued claims 25 and 26 as a group (App. Br. 13-14
and Reply Br. 4). We select claim 25 as the representative claim for this
group, and the remaining claim 26 stands or falls with claim 25. 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
The arguments raised in challenging this rejection are those that were
raised in challenging the rejection of 15, 17-24, and 27-29. App. Br. 14-17.
We addressed them above. For the same reasons given supra, we find that
the subject matter of claim 30 is unpatentable under 35 U.S.C. §103(a) over
Wolfe. Because claims 32 and 33 stand or fall with claim 30, we reach the
same conclusion as to those claims.
Our reasoning in affirming the rejection of claims 30, 32, and 33
depend on reasoning different from that of the Examiner. Accordingly, we
will denominate the affirmance as a new ground of rejection.

Claim 31
The arguments raised in challenging this rejection are those that were
raised in challenging the rejection of 16. App. Br. 17-18. We addressed
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them above. For the same reasons given supra, we find that the subject
matter of claim 31 is unpatentable under 35 U.S.C. §103(a) over Wolfe.
Our reasoning in affirming the rejection of claim 31 depends on
reasoning different from that of the Examiner. Accordingly, we will
denominate the affirmance as a new ground of rejection.

Claim 34
Claim 34 depends on claim 30 and adds the step of transmitting the
combined file to a second different user to store for later playback.
We have addressed the argument about whether it would have been
obvious to provide for a playback method comprising the steps of
downloading to a computer, which, as we have reasonably broadly construed
it, reads on Wolfe, and transferring the audio file to an external playing
device, such as a videotape recorder, that play the combined audio file. See
the discussion with respect to the rejection of claims 24 and 27-29. For a
similar reason, it would have been obvious to one of ordinary skill in the art
over Wolfe and known external devices, such as videotape recorders, to
transmit Wolfe’s combined audio file to a user to store the combined audio
file on an external device for later playback. We find no patentable
significance in adding a second user to that method such that, for example, a
second external playing device could be used to store and play the combined
audio file. It merely duplicates the function of transferring the audio file to a
first user having an external device. Cf. In re Harza, 274 F.2d 669, 774
(CCPA 1960) ("It is well settled that the mere duplication of parts has no
patentable significance unless a new and unexpected result is produced".) In
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that regard, the Appellant does not show that the addition of a second
different user to store for later playback produces an unexpected result.
Our reasoning in affirming the rejection of claim 34 depends on
reasoning different from that of the Examiner. Accordingly, we will
denominate the affirmance as a new ground of rejection.

Claims 35, 36, and 37
Independent claim 35 (on which claims 36 and 37 depend) adds a step
of saving a transmitted downloadable combined audio file to a user
computer. The issue here is whether Wolfe shows or would have led one of
ordinary skill in the art to save a download to a user’s computer.
The Examiner concedes that Wolfe does not expressly disclose locally
storing its streamed audio file. Answer 8. However, according to the
Examiner, Wolfe’s discussion of a security measure for preventing copying
implies that if the security measure is not adopted, the audio file can be
copied, an act which requires the file to first be saved. Answer 8. The
difficulty with this argument is that copying a file does not necessarily
require a file to first be saved on a computer.
The Examiner also argues that “Official Notice is taken that it was old
and well known at the time of the invention that incoming data file can be
locally stored [e.g.,] on the receiving device’s hard drive . . . .” Answer 8.
However, the Appellant extensively argues that the type of streaming Wolfe
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conducts is incapable of being locally stored. App. Br. 21-22.3 Appellant
has provided adequate information and argument to create on its face a
reasonable doubt regarding the circumstances justifying Examiner’s Notice
that locally storing a streamed audio file is well known to one of ordinary
skill in the art. In re Boon, 439 F.2d 724, 728 (CCPA 1971). Under this
circumstance, it was incumbent on the Examiner to support the Official
Notice with evidence. Since that was not done, the record as it now stands
does not establish a prima facie case of obviousness for the claimed subject
matter.

DECISION
The decision of the Examiner to reject claims 14-37 is affirmed-in-
part.
We reverse the rejection of claims 35-37.
We affirm the rejection of claims 14-34 but denominate the affirmed
rejection of claims 14-34 as new grounds of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).

3 We should point out that we have not found Appellant’s argument with
respect to storing a stream of data of the type disclosed in Wolfe on an
external device to be similarly adequate. See the discussion with respect to
claims 24 and 27-29 supra.

Appeal 2009-010968
Application 09/765,985

22
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .

AFFIRMED-IN-PART; 37 C.F.R. 41.50(b)

mev

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