Sony Mobile Communications Inc.

Patent Trials and Appeals Board

Dec 17, 2020

2019003297 (P.T.A.B. Dec. 17, 2020)

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.
14/882,490 10/14/2015 Tomas Wässingbo PS15 0493US1 1002
58342 7590 12/17/2020
RENNER, OTTO, BOISSELLE & SKLAR, LLP
(Sony)
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
KURIEN, CHRISTEN A
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
12/17/2020 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TOMAS WÄSSINGBO
____________________

Appeal 2019-003297
Application 14/882,490
Technology Center 2400
____________________

Before ROBERT E. NAPPI, MARC S. HOFF, and
LINZY T. McCARTNEY, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 through 12, 14 through 18, and 20 through 22.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). According to Appellant, Sony Mobile Communications
Inc. is the real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a device and method of automatically
pausing media content executing on the electronic device when the sound in
the ambient environment exceeds a prescribed sound threshold. Spec., Abstr.
Claim 1 is reproduced below.
1. An electronic device, comprising:
an electronic processor;
a memory operatively coupled to the processor;
and
a media player module for executing media
content on the electronic device, the media player module
stored in the memory and executable by the processor,
wherein when executed by the processor the media
player module causes the electronic device to
i) monitor sound within an ambient
environment in which the electronic device
resides;
ii) compare the monitored sound in the
ambient environment to a prescribed sound
threshold; and
iii) pause execution of the media content
upon the sound in the ambient environment
exceeding the prescribed sound threshold.

REJECTIONS2
The Examiner rejected claims 1 through 12, 14 through 18, and 20
through 22 under 35 U.S.C. § 101 for being directed to patent-ineligible

2 Throughout this Decision we refer to the Appeal Brief filed December 19,
2017 (“Appeal Br.”); Reply Brief filed February 14, 2019 (“Reply Br.”);
Final Office Action mailed May 19, 2017 (“Final Act.”); and the Examiner’s
Answer mailed June 18, 2018 (“Ans.”).
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subject matter. Ans. 2.
The Examiner rejected claims 1 through 12, 14 through 18, and 20
through 22 under 35 U.S.C. § 103 as unpatentable over Yoo (US
2016/0029016 A1; published Jan. 28, 2016) and Lau (US 2011/0292299 A1;
published Dec. 1, 2011). Ans. 3–6.

Patent Eligibility Rejection.
PRINCIPLES OF LAW
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.3 We note the
USPTO current eligibility guidance is found in the Ninth Edition, Revision
10.2019 (revised June 2020) of the Manual of Patent Examination Procedure
(MPEP), and particularly within Sections 2103 through 2106.07(c).
“Because the MPEP now incorporates the 2019 Revised Patent Subject
Matter Eligibility Guidance (2019 PEG), October 2019 Patent Eligibility
Guidance Update (October 2019 Update), and the Berkheimer Memo,4 all
references to those materials should now be directed to the MPEP.” See

3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at
1.
4 Referring to Berkheimer v. HP, Inc., 881 F.3d. 1360, 1369 (Fed. Cir.
2018).

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https://www.uspto.gov/patent/laws-and-regulations/examination-
policy/subject-matter-eligibility (emphasis added).
We note that all references to the MPEP throughout this Decision are
to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless
otherwise indicated.
Under MPEP § 2106, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or
mental processes) (“Step 2A, Prong One”); and

(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).5

Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See MPEP § 2106.05(d)).

5 “Examiners evaluate integration into a practical application by (a)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
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ANALYSIS
The Examiner rejects independent claims 1, 9, and 22 as reciting
concepts involving human activity similar to those found abstract by the
courts. Ans. 2. Specifically, the Examiner finds that claim 1 recites steps: of
monitoring sound in an ambient environment, comparing the sound to a
threshold and pausing execution of media content; which the Examiner
considers to be similar to a concept of collecting information analyzing it
and displaying the result, which was found to be abstract by our reviewing
court. Ans. 7, 9 (citing Intellectual Ventures I LLC vs Capital One 850 F.3d
1332 (Fed Cir. 2017)). Further, the Examiner considers the claim to not
recite additional elements that are sufficient to amount to significantly more
than the abstract idea. Ans. 2. The Examiner find that the elements of a
processor and media play module are recited at a high level of generality and
are recited as performing functions that are well understood, routine and
conventional. Ans. 8, 9.
Appellant argues that the Examiner erred in finding the claims recite
an abstract concept similar to that discussed in Intellectual Ventures as the
claim does not involve a display function, rather they recite a step which
involves controlling the operation of the media player. Reply Br. 2–3.
Appellant asserts that the Examiner’s finding that pausing of media content
is similar to the presentation of the results from the analysis of data is not
reasonable. Reply Br. 3. Further, Appellant argues that the claims recite an
improvement to the technology of media player as it solves a problem where
users rewind and replay content when they are disturbed while watching
media. Reply Br. 4–5 (citing Spec. 1, ll. 15–21).
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Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. We concur with the Examiner, that the claims recite an abstract
process, a mental process, however we agree with Appellant that the claims
are directed to an improvement to a machine and thus we consider the claims
to recite a practical application. Specifically, we agree with the Examiner
that the steps of monitoring sound in an ambient environment and comparing
the sound to a threshold, in each of independent claims 1, 9, and 22 are
reciting steps of collecting data and analyzing the data, and as such are
similar to concepts held to be abstract by our reviewing court in Intellectual
Ventures I LLC. See also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (“[W]e have treated collecting information,
including when limited to particular content (which does not change its
character as information), as within the realm of abstract ideas.”)); Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir.
2011) (claim to collecting and comparing known information determined to
be steps that can be practically performed in the human mind); Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition,
and storage is undisputedly well-known. Indeed, humans have always
performed these functions.”). However, we disagree with the Examiner that
the step of pausing execution of the media content when the sound in the
ambient environment exceeds the sound threshold, is similar to the step of
displaying the results of the mental process of data analysis. Nonetheless,
we consider the claims to recite an abstract concept as the claims recite steps
of data collection and manipulation which are steps that can be performed by
a person, a mental process. Accordingly, we proceed to “Step 2A, Prong
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Two” and evaluate whether the additional elements that integrate the judicial
exception into a practical application.
Each of independent claims 1, 9, and 22 recites a limitation directed to
a media player module executing content, which is paused when the sound
in the ambient environments exceeds the prescribed sound threshold.
Appellant’s Specification identifies that the application of the monitoring
ambient sound and pausing execution is to overcome a problem experienced
by users of media players being distracted by ambient noise and requiring
replaying media content. Thus, we consider the claims to recite a practical
application of the abstract concept as they recite an improvement to in the
technology of media players. See, e.g., Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 80, 84, 101 USPQ2d 1961, 1968–69,
1970 (2012) (noting that the Court in Diamond v. Diehr found ‘‘the overall
process patent eligible because of the way the additional steps of the process
integrated the equation into the process as a whole.”). Thus, we consider the
claims to recite a practical application and do not sustain the Examiner’s
rejection of claims 1 through 12, 14 through 18, and 20 through 22 under 35
U.S.C. § 101 for being directed to patent-ineligible subject matter.

Obviousness Rejection.
Appellant argues that the proposed modification of Yoo to pause the
media playback changes the principle operation of Yoo, and, thereby, the
Examiner’s obviousness rejection is in error. Appeal Br. 11–15;6 Reply Br.

6 We note that the Appeal Brief does not include page numbers. For
reference convenience, we designate the cover page of the Appeal Brief as
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7–9. Appellant asserts:
The System of Yoo allows a person to continue to watch
media content even when the ambient sound is excessive (see,
e.g., paragraphs [0045] and [0080] of Yoo, reproduced below,
emphasis added). In this regard, the system of Yoo generates
subtitles when the ambient sound exceeds a threshold level. In
this manner, the user can continue to watch the media content
without interruption.
. . . .
In contrast, Lau proposes to pause media content when a
doorbell sound is detected. Such pausing of the media content is
contrary to the purpose of the system of Yoo, which allows a
user to continue to view media content despite excessive
ambient noise. Thus, modifying Yoo so as to implement the
features of Lau changes the principle of operation of the device
of Yoo, namely, that it changes the system from one that
enables a user to watch the media content uninterrupted to one
the interrupts playback of media content.
Appeal Br. 13 (emphases omitted). Further, Appellant argues that even if
Yoo were modified to include the pause feature of Lau, the claim is not
taught as:
Lau teaches a system that provides a pause function when a
doorbell sound is detected. In other words, the method of Lau is
based on the type of sound (e.g., a door bell, a door closing,
etc.) and not that such sound has exceeded a threshold.
Therefore, any sound level will trigger the pause function, even
if the sound level is relatively low and does not interfere with
the playing media content.
Appeal Br 15.
Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection. The Examiner has found that Yoo teaches all of the

page 1 and number the pages consecutively therefrom, including the
Appendices
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limitations of claim 1 except limitation iii) which recites pausing the
execution of the media content. Final Act. 3 (citing Yoo ¶¶ 44–47). The
Examiner finds that Lau teaches pausing the executing of the media content
of a system for example when a door bell is rung. Final Act 3 (citing Lau
¶ 88). The Examiner reasons that the skilled artisan would combine the
references as it gives “the user the option to continue watching their program
without interruption if they are interrupted.” Final Act 4. Further, in
response to Appellant’s arguments, the Examiner states that “Yoo teaches an
interruption of an ambient sound being excessive, that it interrupts the user
and the user not being able to hear, therefore displaying subtitles” and that
modifying to teach pausing the video, instead of adding subtitles, allows the
user to resume play after the interruption. Ans. 10.
We have reviewed the teachings of Yoo and Lau and are not
persuaded of error by Appellant’s arguments. Initially, we disagree with
Appellant that the modification changes the principle operation of the Yoo,
as we consider Appellant’s arguments to assert a narrow principle of
operation of Yoo as one where subtitles are required. Yoo acknowledges
that ambient noise interferes with a video display as such the principle
operation of Yoo is that the user device that may “display a video adaptively
to a surrounding environment.” Yoo ¶¶ 6–7. Yoo teaches that the adaptation
can be to add subtitles or to adjust volume (i.e., it is not limited to just
subtitles as implied by Appellant’s argument). Yoo ¶¶ 9, 51, 80. We
consider the principle operation of Yoo to be the adaptation of the video
based upon ambient sound and do not consider changing the adaptation to
change the principle operation (i.e., changing the adaptation from subtitles to
pausing is still a system which adapts to ambient conditions). Thus,
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Appellant’s arguments have not persuaded us that the combination of Yoo
and Lau changes the principle operation of Yoo.
We are similarly not persuaded by Appellant’s further argument that
the combination does not teach the claimed invention, as Lau teaches that
video is paused based upon the type of sound and not a comparison to a
threshold as claimed. Appeal Br. 15. Initially, we note that the is argument
is not commensurate with the scope of representative claim 1, as claim 1
merely states that sound is monitored and compared to a threshold, there is
nothing in the claim that identifies that the threshold cannot be based upon a
type of sound. Further, this argument is not persuasive as the Examiner has
found, and Appellant has not contested, that Yoo teaches determining an
ambient sound is an interruption based a comparison of the sound to a
threshold. Thus, Appellant’s argument is not addressing the combination of
the references. Finally, we note that Lau teaches the analysis of the sensed
sound is filtered and converted to a value which is compared to values in a
lookup table to determine which control to apply to the sound. Lau ¶¶ 109–
112. The process of filtering and using a lookup table are akin to comparing
to a threshold. Thus, Appellant’s arguments, that references do not teach
video is paused based upon the type of sound and not a comparison to a
threshold as claimed, has not persuaded us the Examiner’s rejection is in
error.
As these are the only arguments presented with respect to claims 1
through 3, 5, 6, 8 through 11, 15 through 18, 20, and 22, we sustain the
Examiner’s obviousness rejection of these claims.

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Claims 4 and 14
With respect to claims 4 and 14, Appellant additionally argues that
these claims recite a limitation directed to comparing a frequency of the
sound in the ambient environment with a frequency of sound output by the
electronic device, and pause the content when the frequencies are
substantially different from each other. Appeal Br. 16–17. Appellant argues
that Yoo, which the Examiner relies upon to teach this limitation, teaches
various thresholds but does not teach a comparison based upon the
frequency of output by the electronic device. Appeal Br. 17. Further, the
Appellant argues that the teachings of Lau, cited by the Examiner in the
Answer, similarly do not teach a comparison based upon the frequency of
output by the electronic device. Reply Br. 10–12.
The Examiner, in the Final Office Action, cites to Yoo’s discussion of
comparing the sound output by the electronic device to the ambient noise in
a library as teaching is limitation. Final Act. 4 (citing Yoo ¶¶ 49, 50).
Further, in response to Appellant’s arguments, the Examiner states:
Yoo teaches a processor may be configured to measure the
ambient noise based on signals received through a microphone
in response to earphones being connected to the user terminal
and measure the ambient noise by excluding a voice signal of
the video form the signals in response to the earphones not
being connected to the user terminal, therefore the sound output
by the electronic device is measured. Further Lau teaches
comparing the frequency of sounds in the ambient environment
( ¶065, ¶0083, ¶0109). Therefore, examiner does not find it
unreasonable to conclude that this limitation is taught by the
combination of references of Yoo and Lau.
Ans. 12.
Appellant’s arguments have persuaded us of error. Both claims 4 and
14 recite a limitation directed to comparing the frequency of sound in the
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ambient environment to the frequency of sound output by the media player.
We have reviewed the cited teaching of Yoo and Lau and concur with
Appellant that neither reference teaches comparing the frequencies of the
ambient and output sound as claimed. Yoo, in paragraph 49 and 50,
identifies that the output sound may be reduced if the output sound in a place
with low ambient sound, such as a library, but does not discuss this
determination being based upon a comparison as claimed. Further, as
discussed above, Lau teach filtering monitored sounds and comparing the
sounds to a look up table, but we do not find that there is a discussion of
comparison to the output sounds. Lau ¶¶ 109–112. Accordingly, we do not
sustain the Examiner’s rejection of claims 4 and 14.

Claims 7 and 21
With respect to claims 7 and 21, Appellant additionally argues that
these claims recite a limitation directed to the media player resuming
execution of the media content when the ambient sound falls below a
threshold for a prescribed period of time. Appeal Br. 18–19. Appellant
argues that Lau, which the Examiner relies upon to teach this limitation,
teaches that playback is resumed when a predetermined sound is detected,
but does not teach that it is made with respect to the sound falling being
below a threshold for a prescribed period of time. Appeal Br. 19 (citing
Final Act. 5–6; Lau ¶ 88).
The Examiner in the Final Office Action cites to Lau’s teaching of
resuming the program as teaching the limitation of claim 7. Final Act. 5
(citing Lau ¶ 88). Further in response to Appellant’s arguments the
Examiner states:
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Lau teaches resuming execution of the media content, in
combination with the teachings of Yoo, which teaches once the
sound threshold is in the allowable range, the action of
removing the subtitles would be done (similar to resuming the
video). The references in combination teach the sound threshold
being monitored and resuming the media content based on that.
Ans. 12.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of claims 7 and 21. Each of these claims recite a limitation
directed to resuming execution when the sound in the ambient environment
falls below a threshold for a prescribed period of time. We concur with the
Examiner that Lau teaches, in paragraph 88, that play may be resumed (the
media player resuming execution) based upon a monitored sound, but we do
not find that this is based upon the ambient sound falling below a threshold
for a period of time. Similarly, we concur with the Examiner that Yoo
teaches when ambient sound goes below a lower threshold, the subtitles are
turned off (which in combination would be releasing the pause or the media
player resuming execution). However, the Examiner has not shown, nor do
we find that Yoo teaches that the ambient sound must below the threshold
for a prescribed period of time as claimed. Accordingly, we do not sustain
the Examiner’s rejection of claims 7 and 21.

Claim 12
With respect to claim 12, Appellant additionally argues that claim 12
recite a limitation that the monitoring of ambient sound comprises using
another device, separate from the electronic device, to collect the sound data
which is not taught by the combination of Yoo and Lau. Appeal Br. 19–20.
Appellant argues that paragraph 12 of Lau, which the Examiner relies upon
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to teach this limitation “is completely silent with respect using another
electronic device to collect sound data, the another electronic device separate
from the electronic device.” Appeal Br. 20 (emphasis omitted).
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. In the Final Office Action and the Answer, the Examiner cites to
Lau as teaching this limitation. Final Act 4–5 (citing Lau ¶ 12); Ans. 13.
We have reviewed paragraph 12 of Lau and do not consider it to support the
Examiner’s finding. Paragraph 12 discusses the controller as comprising a
platform, having a sensor, which may include an acoustic sensor such as
microphone. However, we do not find that paragraph 12 discusses the
acoustic sensor as a separate electronic device from the controller, rather
only that the acoustic sensor is in communication with the controller. In the
absence of evidence cited by the Examiner of a teaching or suggestion that
the acoustic sensor and controller are in separate electronic devices, we are
constrained by the record to reverse the Examiner’s rejection of claim 12.

CONCLUSION
In summary:
Claim
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–12, 14–18,
20–22
101 Eligibility 1–12, 14–
18, 20–22
1–12, 14–18,
20–22
103 Yoo, Lau 1–3, 5, 6, 8–
11, 15–18,
20, 22
4, 7, 12,
14, 21
Overall
Outcome
1–3, 5, 6, 8–
11, 15–18,
20, 22
4, 7, 12,
14, 21
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2018).
AFFIRMED IN PART