Theater Ears, LLC

Patent Trials and Appeals Board

Jan 8, 2021

2019005115 (P.T.A.B. Jan. 8, 2021)

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.
15/371,365 12/07/2016 Danny Mangru 1270-007U 9734
29973 7590 01/08/2021
Shutts & Bowen LLP
ATTN: STEVEN M. GREENBERG, ESQ.
525 Okeechobee Blvd
Suite 1100
West Palm Beach, FL 33401
EXAMINER
SHIBRU, HELEN
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
01/08/2021 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):
docketing@crgolaw.com
patents@shutts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANNY MANGRU
Appeal 2019-005115
Application 15/371,365
Technology Center 2400
Before JASON V. MORGAN, JON M. JURGOVAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Theater Ears, LLC.
Appeal Br. 2.
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Application 15/371,365
2
CLAIMED SUBJECT MATTER
The claims are directed to a continuous automated synchronization of
an audio track in a movie theater. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for the continuous automated audio
synchronization of an alternative audio track with the playback
of the combined audio and video of a motion picture, the method
comprising:
selecting a motion picture in a user interface to an audio
synchronization application executing in memory of a mobile
computing device;
downloading an alternative audio file for the selected
motion picture;
detecting a location of the mobile computing device; and,
responsive to a determination that the mobile computing
device is proximate to a movie theater, determining a start time
of a next scheduled presentation of the selected motion picture
and triggering audio synchronization of the alternative audio file
by the application at a time that is within a threshold of the
determined start time.
REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date
Meek et al. (“Meek”) US 2008/0209482 A1 Aug. 28, 2008
Pierce, Jr. et al.
(Pierce”)
US 2012/0064874 A1 Mar. 15, 2012
Luo et al. (“Luo”) US 2015/0332329 A1 Nov. 19, 2015

REJECTIONS
Claims 1–2, 4–7, 9–12, and 14–15 have been rejected under 35 U.S.C.
§ 103 as being unpatentable over Meek in view of Pierce.
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Claims 3, 8, and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Meek in view of Pierce and further in view of Luo.
OPINION
Appellant has argued both rejections together. See Appeal Br. 5. As
the issue for both rejections is the same, namely the teachings of Meek and
Pierce, we shall address the rejections together.
Issue
The issue before us is whether the subject matter of the rejected
claims would have been obvious to one of ordinary skill in the art at the time
the invention was made over Meek combined with Pierce or with Pierce and
Luo.
The Examiner finds that Meek teaches a method for continuous
automated audio synchronization of an alternative audio track with the video
of a motion picture including selecting a motion picture on a mobile device
and downloading an alternative audio file for the selected motion picture.
Final Act. 5–6. The Examiner finds
Claim 1 differs from Meek in that the claim further
requires detecting a location of the mobile computing device;
and, responsive to a determination that the mobile computing
device is proximate to the movie theater, determining a start
time of a next scheduled presentation of the selected motion
picture and triggering audio synchronization of the alternative
audio file by the application at a time that is within a threshold
of the determined start time.

Id. at 6. The Examiner finds that Pierce teaches
detecting a location of the mobile computing device; and,
responsive to a determination that the mobile computing device
is proximate to the movie theater, determining a start time of a
next scheduled presentation of the selected motion picture and
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triggering audio synchronization of the alternative audio file by
the application at a time that is within a threshold of the
determined start time (see paragraph 0016 identify when device
is within the event location through Wi-Fi transmitter
identification . . .).

Id.
The Examiner concludes
Therefore in light of the teaching in Pierce it would have
been obvious to one of ordinary skill in the art before the
effective filing date of the claimed invention to modify Meek
by adding the feature of location of a device and synchronizing
the alternate file when the device is closer to specific location in
order to change the setting of the device and to seek access to a
content.

Id. at 7.
Appellant contends that Pierce uses a signal to trigger the
synchronization of the alternate audio track as opposed to the claimed
system that does not require the use of embedded watermarks. Appeal Br. 5–
6. Appellant contends that Pierce does not teach or suggest determining the
start time of a presentation responsive to determining that the mobile device
is in a movie theater. Id. at 7–8. Appellant contends that while Pierce
discloses the use of a timer as part of the synchronization process, the timer
is triggered by an embedded signal and not based on a determined start time
of a next schedule presentation responsive to a determination that the mobile
device is in a movie theater. Id. at 9–10.
Principles of Law
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. . . .
If that burden is met, the burden of coming forward with evidence or
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Application 15/371,365
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argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992).
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer regarding this rejection. We find the Examiner has established a
prima facie showing that the subject matter of the claims would have been
obvious over Meek combined with Pierce or with Pierce and Luo to a person
of ordinary skill in the art at the time the invention was made. Appellant has
not produced evidence showing, or persuasively argued, that the Examiner’s
determinations on obviousness are incorrect. Only those arguments made by
Appellant in the Briefs have been considered in this Decision. Arguments
not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv). We
have identified claim1 as representative; therefore, all claims fall with claim
1. We address Appellant’s arguments below.
Appellant contends that Pierce teaches the use of an audible sonic
system that “awards the user with the desired content.” Appeal Br. 6.
Appellant contends that this is in contrast with the claimed system which
synchronizes the playback of and alternative audio file without requiring the
use of embedded watermarks. Id. at 7; see also id.at 8–9. We are not
persuaded by Appellant’s argument.
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While the Specification teaches that the claimed method can operate
“without requiring the use of embedded watermarks in the particular motion
picture” we discern nothing in claim 1 which excludes the use of
watermarks. See Appeal Br. 11 (Claims App’x).
While a court may look to the specification and
prosecution history to interpret what a patentee meant by a
word or phrase in a claim, extraneous limitations cannot be read
into the claims from the specification or prosecution history. . . .
In other words, a court may not read into a claim a limitation
from a preferred embodiment, if that limitation is not present in
the claim itself.

Bayer AG v. Biovail Corp., 279 F.3d 1340, 1348, (Fed. Cir. 2002).
Moreover, as the Examiner points out, Pierce teaches that the method
disclosed therein can be practiced without embedding the signals in the
sound track of a movie. Ans. 8 (citing Pierce ¶ 19.)
Appellant contends that neither Meek nor Pierce teaches or suggests,
“synchronizing an alternative audio file by determining a start time of a next
schedule presentation responsive to the determination that the mobile device
is in a movie theater.” Appeal Br. 7–8. Appellant contends that while Pierce
teaches the use of a timer, the timer is responsive to an audio or visual signal
and the determined start time of the next presentation of a movie. Id. at 9.
Again, we are unpersuaded by this argument.
Claim 1 calls for “determining the start time of a next scheduled
presentation of the selected movie.” Appeal Br. 11. Claim 1, however, does
not specify how the start time is determined. Pierce teaches transmitting a
signal to a device “at the beginning of the event such as before the beginning
of a feature movie presentation.” Pierce ¶ 31 (emphasis added). Pierce
teaches that there may be a lapse between the receipt of the signal and the
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start of the movie. Id. Referring to Figure 3, reproduced below, Pierce
teaches
For example, the signal at step 440 may be presented at the
beginning of a feature movie, with the content 140 to be
displayed during the movie credits more than an hour after the
signal in step 440. The application will associate the signal 220
detected at step 450 with the appropriate movie 210 and content
140, and will therefore know that it should awaken after a given
time interval.

Id.

Figure 3 of Pierce showing a flow chart of a method disclosed therein.
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Under this scenario, receipt of the signal in advance of the start of the
movie teaches the limitation of determining the start time of a next
scheduled presentation of the selected movie.
Pierce then teaches using the timer to trigger synchronization at the
start of the movie teaching the limitation of triggering audio synchronization
of the alternative audio file by the application at a time that is within a
threshold of the determined start time. Id.
Appellant contends that while Pierce teaches the use of a timer, the
timer does not operate based on a determined start time of a next scheduled
presentation of a movie. Appeal Br. 9–10; Reply Br. 3–4. This argument is
also unpersuasive.
Again referring to Figure 3 above, Pierce teaches that the timer
“determines when the movie content 210 has reached the point at which the
device 100 will provide access to the content 140 that was downloaded
along with or as part of the application 120.” We agree with the Examiner
that to accomplish this step, the device must determine the start time of the
selected movie. Ans. 11.
Conclusion
Based on the foregoing, we conclude that a preponderance of the
evidence supports the Examiner’s conclusion that the subject matter of
claim 1 would have been obvious to one skilled in the art at the time the
invention was made over Meek combined with Pierce. Claims 2–15 have not
been argued separately and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
The Examiner’s rejections are affirmed.
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More specifically,
The Examiner’s decision to reject claims 1–2, 4–7, 9–12, and 14–15
under 35 U.S.C. § 103 as being unpatentable over Meek in view of Pierce 1–
15 is affirmed.
The Examiner’s decision to reject claims 3, 8, and 13 under 35 U.S.C.
§ 103 as being unpatentable over Meek in view of Pierce and further in view
of Luo is affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35
U.S.C. §
References Affirmed Reversed
1–2, 4–7,
9–12, 14–15
103 Meek, Pierce 1–2, 4–7,
9–12, 14–15

3, 8, 13 103 Meek, Pierce, Luo 3, 8, 13
Overall
Outcome
1–15

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED