Ex Parte MuranamiDownload PDFPatent Trial and Appeal BoardNov 12, 201310981182 (P.T.A.B. Nov. 12, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MASAHIKO MURANAMI ___________ Appeal 2011-010218 Application 10/981,182 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, MEREDITH C. PETRAVICK, and THOMAS F. SMEGAL, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010218 Application 10/981,182 2 STATEMENT OF THE CASE Masahiko Muranami (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-42. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE and pursuant to 37 C.F.R. §41.50(b) enter a NEW GROUND OF REJECTION. 1 THE INVENTION Claims 1 and 21, reproduced below, are illustrative of the subject matter on appeal. 1. A method, comprising: receiving, by a computer, a text input from a user of the computer; comparing, by the computer, the text input with text of a plurality of media content files stored in an electronic library; identifying, by the computer, at least one matching media content file based upon the text input; and displaying for the user, by the computer, identification information for each matching media content file. 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed Dec. 16, 2010) and Reply Brief (“Reply Br.,” filed Jun. 9, 2011), and the Examiner’s Answer (“Ans.,” mailed Apr. 11, 2011). Appeal 2011-010218 Application 10/981,182 3 21. A method, comprising: receiving, by a computer, an analog audio waveform; digitizing, by the computer, the analog audio waveform to a digitized audio waveform; comparing, by the computer, the digitized audio wave form with waveform patterns stored in media content files of an electronic library; identifying, by the computer, at least one matching media content file based upon the digitized audio waveform; displaying, by the computer, identification information for each matching media content file to enable a user to select at least one of the matching media content files for download from electronic library to the computer. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Kopra Cue Teo US 2005/0227674 A1 US 2005/0240494 A1 US 2006/0021494 A1 Oct. 13, 2005 Oct. 27, 2005 Feb. 2, 2006 The following rejections are before us for review: 1. Claims 1-4, 6, 7, 10-14, 16, 17, 20-24, 26, 27, 30-34, 36, 37, and 40 are rejected under 35 U.S.C. §102(e) as being anticipated by Kopra. 2. Claims 5, 8, 15, 25, 28, 35, 38, 41, and 42 are rejected under 35 U.S.C. §103(a) as being unpatentable over Kopra and Cue. Appeal 2011-010218 Application 10/981,182 4 3. Claims 9, 19, 29, and 39 are rejected under 35 U.S.C. §103(a) as being unpatentable over Kopra, Cue, and Teo. FINDINGS OF FACT We find that the findings of fact, which appear in the Analysis below, 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). ANALYSIS Anticipation Rejection We are persuaded by Appellant’s argument (see, for example, App. Br. 12-13 and Reply Br. 3-6) that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(e) as being anticipated by Kopra. We agree with Appellant that claim 1 requires the receiving, comparing, identifying, and displaying steps all be performed by the same computer, and that Kopra describes a system where the receiving and displaying is performed by a mobile station 26 and the comparing and identifying is performed by a separate commercial song recognition service 34 (see ¶¶ [0022]-[0028]). Apparently recognizing this deficiency of Kopra (see Ans. 4 (“Kopra does not explicitly disclose[] comparing . . .)), the Examiner turns to page 33 of Appellant’s Specification and to paragraph [0052] of Cue to fill the gaps. Ans. 19. However, the rejection is based upon the grounds of anticipation. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, Appeal 2011-010218 Application 10/981,182 5 631 (Fed. Cir. 1987). “If it is necessary to reach beyond the boundaries of a single reference to provide missing disclosure of the claimed invention, the proper ground is not § 102 anticipation, but § 103 obviousness.” Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991). Therefore, we find that the Examiner failed to establish a prima facie showing of anticipation. Independent claims 11, 21, and 31 recite similar limitations (see Reply Br. 2-3) and were similarly rejected. Accordingly, the rejection of claims 1, 11, 21, and 31, and claims 2-4, 6, 7, 10, 12-14, 16, 17, 20, 22-24, 26, 27, 30, 32-34, 36, 37, and 40, dependent thereon, under 35 U.S.C. §102(e) as being anticipated by Kopra is reversed. Obviousness Rejections We are persuaded by Appellant’s argument (App. Br. 17-18 and Reply Br. 6) that the Examiner erred in rejecting independent claims 41 and 42 under 35 U.S.C. §103(a) as being unpatentable over Kopra and Cue. Though the Examiner rejects these claims under § 103 based upon a combination of Kopra and Cue, the body of the Examiner’s rejection only relies upon Kopra and contains no rationale with logical underpinning to support an obviousness rejection. See Ans. 15-17. Claims 41 and 42 recite similar limitations to those at issue above, and for the reasons discussed above, we find that the Examiner failed to establish a prima facie showing of obviousness. Claims 5, 8, 9, 15, 19, 25, 28, 29, 35, 38, and 39 are dependent upon claims 1, 11, 21, and 31, whose rejections we have reversed above. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are Appeal 2011-010218 Application 10/981,182 6 nonobvious if the independent claims from which they depend are nonobvious.”). Accordingly, the rejection of claims 5, 8, 15, 25, 28, 35, 38, 41, and 42 under 35 U.S.C. §103(a) as being unpatentable over Kopra and Cue and the rejection of claims 9, 19, 29, and 39 under 35 U.S.C. §103(a) as being unpatentable over Kopra, Cue, and Teo are reversed. NEW GROUND OF REJECTION Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection on claim 21 under 35 U.S.C. § 103(a) as being unpatentable over Kopra and Teo. As discussed supra, Kopra teaches the method of claim 21 except that the method of Kopra is performed by a mobile station 26 (i.e., a cell phone, see fig. 4B and ¶ [0020]) acting in conjunction with a separate commercial song recognition service 34 (see, for example, ¶¶ [0022]-[0028]). Kopra fails to teach a single computer performing all of the claimed method. However, Teo teaches a very similar music retrieval method and teaches that the method can be performed using a “PC, cell phone, portable jukebox, music kiosk or the like.” See ¶ [0076]. Teo also states: A possible application of the invention is a music retrieval system whereby humming forms the query to some search engine. Music retrieval . . . can be applied to different applications such as PC, cellular phone, portable jukebox, music kiosk and car jukebox. ¶ [0049]. Given these teachings of Teo, we find that one of ordinary skill in the art would have been led to perform the method of Kopra using a single computer, such as a PC or music kiosk, as an alternative to using a cell Appeal 2011-010218 Application 10/981,182 7 phone and server system, as it is nothing more than the simple substitution of one known element for another to yield a predictable result. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” (citation omitted)). We have exercised our discretion in entering a new ground of rejection for claim 21. However, no inference should be drawn from our failure to exercise that discretion with respect to the remaining claims. Upon any further prosecution, we leave it up to the Examiner to evaluate the remaining claims for patentability. DECISION The decision of the Examiner to reject claims 1-42 is reversed. We enter a new ground of rejection for claim 21. The decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[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 Appellant, WITHIN TWO MONTHS FROM THE DATE OF THIS 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. Appeal 2011-010218 Application 10/981,182 8 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. 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)(iv). REVERSED; 37 C.F.R. § 41.50(b) mls Copy with citationCopy as parenthetical citation