Ex Parte Kotera

Board of Patent Appeals and Interferences

Feb 27, 2012

12172864 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MASAMICHI KOTERA
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Appeal 2010-007652
Application 12/172,864
Technology Center 2600
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Before MARC S. HOFF, CARLA M. KRIVAK, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/172,864

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Appellant invokes our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b). An
oral hearing was held on February 14, 2012. We reverse.

STATEMENT OF THE CASE
Appellant claims an apparatus and method for reproducing multiple
stored sound contents. A separate identification sound is output to indicate
selection of a first sound content to be reproduced. Switchover sounds are
output upon selection of sound contents to be reproduced that are subsequent
to the selected first sound content. The output switchover sounds are
repeated without variation for the selected subsequent sound contents, but
the switchover sounds are different from the identification sound output to
signal that the first selected sound content is to be reproduced. (See
generally Abstract.)
Appealed claim 1 is exemplary and reads:
1. An apparatus for reproducing sound comprising:
reproducing means for reproducing plural sound contents in accordance
with a reproduction order thereof;
operating means for operating to skip the sound contents reproduced by
said reproducing means;
controlling means for skipping said sound contents circularly in said
reproduction order thereof or a reversed order of said reproduction order
in accordance with an operation of said operating means, and for
controlling said reproducing means to reproduce newly selected sound
contents; and
sound-outputting means,
wherein each time an operation to skip the sound contents is performed
with said operating means and sound contents that are different from the
sound contents first in the reproduction order are selected, said
controlling means controls said sound-outputting means to output a same
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switchover sound, and when sound contents first in the reproduction
order are selected, said controlling means controls said sound-outputting
means to output an identification sound that is different from said
switchover sound.
Rejections
The Examiner, under 35 U.S.C. § 103(a), rejected:
1. Claims 1, 4, and 7 as obvious over Murata (JP 2000-076833; Mar. 14,
2000) (Final Action 2-5); and
2. Claims 2, 3, 5, and 6 as obvious over Murata and Platt (US
2003/0221541 A1; Dec. 4, 2003) (Final Action 5-10).
Pivotal Issue
Has the Examiner erred, under 35 U.S.C. § 103(a), in finding Murata
teaches or fairly suggests identifying selection of a first sound content for
reproduction with an output identification sound and then identifying every
subsequent selected sound content for reproduction with an unvaried
switchover sound that is different from the identification sound? (See
generally App. Br. 6-9.)

ANALYSIS
The Examiner’s obviousness rejections have been reviewed in light of
Appellant’s contentions, and Appellant’s conclusions are found to be
correct.
Claims 1, 4, and 7
A. Claim 1
The Examiner and Appellant agree that Murata teaches a sound
reproducing apparatus that outputs varied identifying sounds for signaling
selection of each stored sound content selected for reproduction (Ans. 3-4;
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App. Br. 2). Acknowledging that Murata does not teach outputting a
repeated switchover sound for each sound content selected after the first
sound content as covered in claim 1, the Examiner concludes “it would have
been obvious to one of ordinary skill in the art to output a same switchover
sound for second and subsequent tracks” (Ans. 4). The Examiner’s
reasoning is that “the makeup of all [Murata] changeover sounds would have
been set by the preference of the designer” (id.). The Examiner concludes
that the modification of Murata “would have been obvious to try and would
not produce any unexpected result” (id.).
Appellant argues that claim 1 is patentable by inter alia contending
“Murata does not describe outputting a same switchover sound when a song
is skipped over, as the device of Murata intentionally outputs a unique sound
for each track number to identify the next track” (App. Br. 5-6 (emphases
omitted) (footnote omitted); see Murata ¶¶ [0013]-[0018]). Appellant
further argues that “modifying Murata to create the claimed invention would
make Murata unsuitable for its intended purpose, which . . . is identifying
each track number with a [unique] sound” (App. Br. 6 (emphases omitted)).
The Examiner disputes Appellant’s argument with the following:
[T]he Murata reference teaches many embodiments that
improve upon a prior art model (paragraph [0003]) that
produces the same sound for each song skipped in a skipping
operation. The embodiments of Murata improve upon this prior
art to give auditory information to the user that a selection has
been skipped as well as position in the reproduction order. The
notification that a selection has been skipped is maintained in
the present invention. As to the reproduction order position, the
user is notified when the first selection in the reproduction
order is reached via a first sound. From there each sounding of
a second sound means the switching to the next selection. So
the first of a second sound means the second selection, the
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second time the sound is heard represents the third selection,
and so on. Although the present invention is not as
sophisticated as the Murata embodiments, they are proceeding
in the same direction from the prior art, and therefore Murata
does not teach to the contrary.
Regarding [A]ppellant’s arguments that such a
modification would make it unsuitable for its intended purpose,
the [E]xaminer disagrees. The resulting modification would
notify a user that a skipping operation was in effect. Also the
modification would retain enough detail to allow the user to
know if the first selection was selected and from there would be
given information as each subsequent selection was selected as
the skipping operation progressed.
(Ans. 11-12.) Appellant disputes the Examiner’s reasoning and contends the
modification renders Murata unsuitable for its intended purpose.
[T]he purpose of Murata is to identify each selection to a user
by making a unique sound for each selection. Page 11 of the
Examiner’s Answer acknowledges that Murata identifies to the
user the position in the reproduction order. The Examiner’s
Answer then asserts that a user could simply count the number
of switchover sounds of the claimed invention to determine the
position in the reproduction order, and thus the claimed
invention is allegedly obvious in view of Murata. However, it
is respectfully noted that a user may begin reproduction in the
middle of a playlist, and thus cannot simply count the number
of switchover sounds to determine the position in a
reproduction order. This is why Murata provides a unique
sound for each position in the reproduction order. If Murata
could rely on the user simply counting the number of sounds,
then the exact same sound could be provided for every single
track. In fact, unique identification of each track is so
important to Murata that paragraph 29 of Murata describes how
to provide unique sounds for each of 30+ tracks in a playlist.
As Murata clearly identifies that the switchover sounds need to
be unique for a user to be able to determine the reproduction
order, modifying Murata as proposed would make the device of
Murata unsuitable for its intended purpose.
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(Reply Br. 2 (emphases omitted).)
This record and reviewing Murata show the reference teaches using
varied signal sounds both to identify stored sound contents are selected for
reproduction and to specify which sound contents are selected.
Accordingly, the Examiner erred in concluding that Murata can be modified
to output repeated switchover sounds because that modification renders
Murata unsuitable for the taught purpose of specifying the identities of the
selected sound contents.
For the foregoing reason the Examiner’s rejection of claim 1 is not
sustained. The rejection of dependent claim 7, which is not separately
argued, also is not sustained.
B. Claim 4
Independent claim 4 substantively covers the same disputed subject
matter identified supra for claim 1. Appellant argues the patentability of
claim 4 by repeating the argument addressed supra that the Examiner’s
modification of Murata renders the reference unsuitable for its intended
purpose (App. Br. 7-8). Consequently, for the foregoing discussed reason
the Examiner’s rejection of claim 4 is not sustained.
Claims 2, 3, 5, and 6
A. Claim 3
Independent claim 3 is rejected as being obvious over Murata and
Platt (Ans. 6-8). This claim recites outputting an identification sound when
a first sound content is selected and reproducing a “same switchover sound”
when other than the first sound content are to be reproduced (see App. Br.
8). Appellant argues the patentability of claim 3 by relying on the argument
addressed supra that the Examiner’s modification of Murata to output the
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same switchover sound for sound contents selected subsequent to the first
renders the reference unsuitable for its intended purpose (App. Br. 7-8).
Appellant further contends, and the Examiner does not disagree, that Platt
fails to cure the argued deficiency of Murata. Consequently, for the
foregoing discussed reason directed to claim 1, the Examiner’s rejection of
claim 3 is not sustained.
B. Claim 6
Independent claim 6 is rejected as being obvious over Murata and
Platt (Ans. 9-10). This claim recites outputting an identification sound when
a first sound content is selected and reproducing a “same switchover sound”
when other than the first sound content are to be reproduced (see App. Br.
9). Appellant argues the patentability of claim 6 by relying on the argument
addressed supra that the Examiner’s modification of Murata to output the
same switchover sound for sound contents selected subsequent to the first
sound content renders the reference unsuitable for its intended purpose (App.
Br. 7-8). Appellant further contends, and the Examiner does not disagree,
that Platt fails to cure the argued deficiency of Murata. Consequently, for
the foregoing discussed reason directed to claim 1, the Examiner’s rejection
of claim 6 is not sustained.
C. Claims 2 and 5
Claims 2 and 5 respectively depend from independent claims 1 and 4.
Appellant relies on the asserted patentability of these independent claims to
contend that claims 2 and 5 are patentable (App. Br. 9). Appellant further
contends, and the Examiner does not disagree, that Platt fails to cure the
argued deficiency of Murata. Consequently, for the foregoing discussed
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reason directed to claims 1 and 4, the Examiner’s rejection of claims 2 and 5
is not sustained.

CONCLUSION
The Examiner erred in rejecting claims 1-7 under § 103.1

DECISION
The Examiner’s decision rejecting claims 1-7 is reversed.

REVERSED

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1 This application is a continuation of U.S. application serial number
10/918,409 for which all claims are rejected under § 103 as being obvious
over Okazaki (US 6,604,082 B1; Aug. 5, 2003) and Murata. The rejection
has been appealed to this Board (Appeal 2011-013722). The disputed
claimed subject matter is substantively identical to that argued for the claims
addressed supra, and the rejection is affirmed.