Ex Parte Newman et al

Patent Trial and Appeal Board

Jan 27, 2016

12603457 (P.T.A.B. Jan. 27, 2016)

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.
12/603,457 10/21/2009 Lucas Christopher Newman 04860.P7684 6558
45217 7590 01/27/2016
APPLE INC./BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
EXAMINER
NGUYEN, LE V
ART UNIT PAPER NUMBER
2174
MAIL DATE DELIVERY MODE
01/27/2016 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LUCAS CHRISTOPHER NEWMAN and
CHARLES JOHN PISULA
____________________

Appeal 2014-002259
Application 12/603,4571
Technology Center 2100
____________________

Before LARRY J. HUME, NATHAN A. ENGELS, and
JOHN D. HAMANN, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1–30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Apple Inc. App.
Br. 1.
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STATEMENT OF THE CASE2
The Invention
Appellants' claimed invention "relate to systems and methods for
playing media content on a device." Spec. ¶ 2 ("FIELD OF THE
INVENTION").
Exemplary Claims
Claims 9 and 20, reproduced below, are representative of the subject
matter on appeal (emphases and formatting added to contested limitations):
9. A non-transitory machine readable storage
medium storing executable instructions which when executed
by a processor cause the processor to perform operations
comprising:
playing content by a native media player in response to
receiving a request from a third party application,
the native media player and the third party application
both executing on the processor, and the content being
associated with the request and inaccessible by the third party
application;[3]
continuing playing the content by the native media player
after the third party application terminates;

2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed
June 10, 2013); Reply Brief ("Reply Br.," filed Nov. 12, 2013); Examiner's
Answer ("Ans.," mailed Sept. 11, 2013); Final Office Action ("Final Act.,"
mailed Sept. 12, 2012); and the original Specification ("Spec.," filed
Oct. 21, 2009).
3 In the event of further prosecution, we invite the Examiner's attention to
the recitation in claim 9 of "and the content being associated with the request
and inaccessible by the third party application" to ensure clarity and
compliance with the definiteness requirements of 35 U.S.C. § 112, second
paragraph. (Emphasis added).
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displaying a graphical user interface of the native media
player in response to a request from a user, wherein the
graphical user interface includes information corresponding to
the content playing in response to the request from the third
party application.
20. A system comprising:
a processor coupled to a memory through a bus;
a sensor coupled to the processor through the bus;
executable instructions stored in the memory which when
executed by the processor cause the processor to:
receive a first third party media request from
a third party application executing on the
processor,
send a first native media player request to a
native media player in response to receiving the
first third party media request,
wherein the native media player is also
executing on the processor and performs a content
operation on content associated with the first third
party media request that is inaccessible to the third
party application in response to receiving the first
native media player request,
receive a second third party media request
from the third party application,
wherein the second third party media request
is generated in response to an input from the
sensor,
send a second native media player request to
the native media player in response to receiving
the second third party media request,
wherein the native media player performs a
modified content operation in response to
receiving the second native media player request.

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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Edery et al. ("Edery") US 2006/0026677 A1 Feb. 2, 2006
Malabuyo et al. ("Malabuyo") US 2006/0205517 Al Sept. 14, 2006
Turner US 2007/0079691 A1 Apr. 12, 2007
Patsiokas et al. ("Patsiokas") US 2008/0162358 A1 July 3, 2008
Rejections on Appeal4
R1. Claims 1–19 and 23–30 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Patsiokas, Malabuyo, and Edery.
Ans. 2.
R2. Claims 20–22 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Patsiokas, Turner, and Edery. Ans. 12.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 4–6), we decide the appeal
of obviousness Rejection R1 of claims 1–19, and 23–30 on the basis of
representative claim 9; and we decide the appeal of obviousness Rejection
R2 of claims 20–22 on the basis of representative claim 20.

4 "Appellant[s] respectfully draw[] the Board's attention to the fact that
claim numbers 7 and 8 were duplicated in the originally filed claims. The
second instances of claims 7 and 8 were cancelled and re-entered as claims
29–30." App. Br. 2. Because Appellants do not separately argue these
claims, we leave it to the Examiner to determine the correct status of the
claims in light of our Decision herein and Appellants' admission quoted
above.
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ISSUES AND ANALYSIS
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellants' arguments with respect to claims 1–30,
and we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 9
and 20 for emphases as follows.
1. Rejection R1 of Claims 1–19 and 23–30
Issue 1
Appellants argue (App. Br. 4–6; Reply Br. 2–3) the Examiner's
rejection of claim 9 under 35 U.S.C. § 103(a) as being obvious over the
combination of Patsiokas, Malabuyo, and Edery is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] non-transitory machine readable storage medium storing
executable instructions which when executed by a processor cause the
processor to perform . . . playing content by a native media player in
response to receiving a request from a third party application," wherein,
inter alia, "the native media player and the third party application both
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execut[e] on the processor, and the content . . . associated with the request
[is] inaccessible by the third party application," as recited in claim 9?
Analysis
Appellants contend the Examiner erred in finding Patsiokas' media
player in device 22 is equivalent to the claimed native media player executed
by the processor, and also erred in finding Patsiokas' client application 34
executing on computer 24 is equivalent to the claimed third party
application, which Appellants allege is also executed by the processor. App.
Br. 5. Appellants argue the Examiner purportedly erred because device 22
and computer 24 in Patsiokas are different devices and, therefore, have
different processors. Id.
In response to Appellants' arguments, the Examiner finds, and we
agree:
While claim 9 recites "a processor", it is well known in the art
to use a single processor system instead of a multiple
processors system to process computer data. Therefore, it
would have been obvious to one of ordinary in the art to use
single processor system instead a multiple processor system to
execute both the native media player and third party
application.
Ans. 16.
We agree with the Examiner because Appellants have not
demonstrated the Examiner's proffered combination of references would
have been "uniquely challenging or difficult for one of ordinary skill in the
art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007). Nor have Appellants provided objective evidence of secondary
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considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Rather, we find that Appellants' invention is simply a combination of
known teachings that realize a predictable result. The Supreme Court has
determined the conclusion of obviousness can be based on the interrelated
teachings of multiple patents, the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art. KSR, 550 U.S. at 418.
The skilled artisan would "be able to fit the teachings of multiple patents
together like pieces of a puzzle" since the skilled artisan is "a person of
ordinary creativity, not an automaton." Id. at 420–21.
Appellants further allege:
Although Patsiokas discloses the client application 34 can
request content download from a remote location, such as an
online media store, for content, Appellant [sic] respectfully
submits a request to download content from a remote location is
not technically equivalent to a request to a media player to play
inaccessible content as claimed by Appellant [sic]. Therefore,
Patsiokas cannot be properly interpreted as teaching or
suggesting Appellant[s’] claimed third party application.
App. Br. 5–6. Appellants additionally contend, "Edery's potentially
malicious application cannot be properly interpreted as teaching or
suggesting Appellant[s'] claimed third party application that requests the
native media player play content that is inaccessible to the third party
application," because "Edery does not disclose any type of application that
itself accesses a file in response to a file access request from a potentially
malicious application." App. Br. 6.
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We note, "[i]n the patentability context, claims are to be given their
broadest reasonable interpretations . . . limitations are not to be read into the
claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
"must be sufficiently clear in the specification that any departure from
common usage would be so understood by a person of experience in the
field of the invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written description.").
Absent an express intent to impart a novel meaning to a claim term, the
words take on the ordinary and customary meanings attributed to them by
those of ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical,
Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)(citation omitted); accord Phillips
v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (“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 . . . at the time of the
invention”).
As pointed out by the Examiner, we find Appellants have not cited to
a definition of "content . . . inaccessible by the third party application"
(claim 9) in the Specification that would preclude the Examiner's broader
reading. Ans. 16.
We specifically note Appellants' challenge to the references
individually with respect to claim 9 (Reply Br. 2) is not convincing of error
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in the Examiner's position because all of the features of the secondary
reference need not be bodily incorporated into the primary reference, but
consideration should be given to what the combined teachings, knowledge of
one of ordinary skill in the art, and the nature of the problem to be solved as
a whole would have suggested to those of ordinary skill in the art. See In re
Keller, 642 F.2d 413, 425–26 (CCPA 1981)("[O]ne cannot show non-
obviousness by attacking references individually where . . . the rejections are
based on combinations of references."). Furthermore, the artisan is not
compelled to blindly follow the teaching of one prior art reference over the
other without the exercise of independent judgment. See Lear Siegler, Inc.
v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984).
Further, with respect to claim 9 and the contested "inaccessible"
limitation added during prosecution, Appellants point to paragraph 28 of
their Specification as allegedly providing support for Appellants'
interpretation.5 We disagree, however, that the portion of the Specification
cited by Appellants rises to the level of a definition sufficiently explicit to
preclude the Examiner's broad but reasonable interpretation, nor have
Appellants presented any evidence on this record that demonstrates the
Examiner's interpretation is inconsistent with Appellants' Specification.
In addition, and for the first time in the Reply Brief, Appellants
attempt to separately argue independent method claim 1, i.e., "the
Examiner's interpretation of Patsiokas as disclosing Appellant[s’] data

5 "In some embodiments, third party application 102 is prohibited from
directly accessing content 108 or metadata 110. In other embodiments, third
party application 102 also does not receive any content data from content
108 and content playback occurs in native media player 106." Spec. ¶ 28
(emphasis added).
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processing system that executes both a third party application and a native
media player as claimed in claim 1 is improper and Appellant[s] respectfully
requests the Board to find accordingly." Reply Br. 2 (emphasis added).6
However, under our rules, we find Appellants' argument to be untimely.
See 37 C.F.R. § 41.41(b)(2).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 9, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 9, and grouped
claims 1–8, 10–19, and 23–30, which fall therewith. See Claim Grouping,
supra.
2. Rejection R2 of Claims 20–22
Issue 2
Appellants argue (App. Br. 7–8; Reply Br. 3) the Examiner's rejection
of claim 20 under 35 U.S.C. § 103(a) as being obvious over the combination
of Patsiokas, Turner, and Edery is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a system that includes "a processor coupled to a memory through

6 Appellants erroneously appear to characterize method claim 1 as a system
claim. "[T]he Examiner is interpreting Appellant[s’] data processing system
as having two processors, one equivalent to the processor of device 22 in
Patsiokas and one equivalent to the processor of computer 24 in Patsiokas, to
find that Patsiokas reads on claim 1." Reply Br. 1.
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a bus" and "executable instructions stored in the memory," wherein, inter
alia, "the native media player is also executing on the processor and
performs a content operation on content associated with the first third party
media request that is inaccessible to the third party application in response to
receiving the first native media player request," as recited in claim 20?
Analysis
Appellants contend the Examiner erred in rejecting claim 20,
essentially for the same reasons set forth with respect to Rejection R1 of
claim 9.7 We disagree with Appellants' arguments, and incorporate the
Examiner's findings and legal conclusions herein as our own. Ans. 12–16.8
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 20, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 20, and grouped
claims 21 and 22, which fall therewith. See Claim Grouping, supra.

7 "Neither Patsiokas nor Edery . . . [teach or suggest the contested
limitation]. Therefore, the obviousness rejection of independent claim 20 is
only proper if Turner discloses Appellant[s’] claimed native media player
and third party application, both executing on the claimed processor, and
Appellant[s’] claimed request." App. Br. 7.
8 Appellants unpersuasively argue "the Examiner has provided no response
to Appellant[s’] arguments for independent claim 20, which was argued
separately from claims 1 and 9." Reply Br. 3; cf. Ans. 12–16.
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REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1–3) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections R1
and R2 of claims 1–30 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1–30.
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).
AFFIRMED

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