Ex Parte Chen et al

Board of Patent Appeals and Interferences

Jun 19, 2012

10351102 (B.P.A.I. Jun. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YANCY T. CHEN, ELIZABETH B. DIAZ, DAVID R. SMITH,
MICHAEL C. IP, and PETER LEE
____________________

Appeal 2009-013623
Application 10/351,102
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, ERIC S. FRAHM, and
KRISTEN L. DROESCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-013623
Application 10/351,102

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-30 and 71. We have jurisdiction under 35 U.S.C. § 6(b).

Exemplary Claims
Exemplary claims 1 and 71 under appeal read as follows:
1. An apparatus for providing entertainment functions to
multiple users, the apparatus comprising:
a computer configured to receive audio data, and process the
audio data for subsequent transmission as a streaming audio data, the
computer configured to provide an entertainment function to a first
user, wherein the computer generates a first audio signal in the audio
data as a first audio output; and
a variable function device configured to receive the streaming
audio data from the computer and output the streaming audio data as
an entertainment function for a second user;
wherein the computer is configured to select and stream one of
the first audio signal and a second audio signal in the audio data to the
variable function device and wherein the variable function device
generates the selected one of the first audio signal and second audio
signal as a second audio output.

71. A method for providing multi-user entertainment
comprising:
providing a variable-function device communicatively coupled
to a function-producing device comprising a processor;
duplicating a function from the function-producing device;
providing the duplicated function in the variable-function
device;
accessing, via the variable-function device, the function from
the function-producing device; and
accessing the duplicated function from the variable-function
device.

Appeal 2009-013623
Application 10/351,102

3
Rejection 1
The Examiner rejected claims 1-30 and 71 under 35 U.S.C. § 102(e)
as being anticipated by Putterman (US 2003/0135859 A1).
Appellants’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
because Putterman does not teach or suggest “the limitations that the
computer is configured to generate the first audio signal in the audio data as
a first audio output and select and stream one of the first audio signal and a
second audio signal in the audio data to the variable function device.” (App.
Br. 5) (emphasis omitted).
2. In the Reply Brief, Appellants also contend that the Examiner erred
in rejecting claim 1 because:
The Examiner states in the Response to Argument section
(10)(A) of the Examiner's Answer at page 10 that “a second
audio signal ... is not necessary as the claim uses language in
the alternative (one of the first audio signal and a second
audio signal) that requires only one of the conditions to be
met.” Appellant respectfully notes that independent claim 1
recites “the computer is configured to select and stream one
of the first audio signal and a second audio signal in the
audio data to the variable function device and wherein the
variable function device generates the selected one of the
first audio signal and second audio signal as a second audio
output.” Thus, both the first audio signal and the second
audio signal are required as defined in independent claim 1,
because this is not language that defines only one of the
conditions to be met. Rather, the claim language of
independent claim 1 specifically requires that the computer
is configured to make a selection between two audio signals

1 Separate patentability is not argued for claims 2-30. Except for our ultimate
decision, these claims are not discussed further herein.
Appeal 2009-013623
Application 10/351,102

4
(i.e., the required first audio signal and the required second
audio signal) and stream the selected one of the two audio
signals to the variable function device, which generates the
selected one of the two audio signals as a second audio
output.

(Reply Br. 2)(emphasis omitted).
3. In the Reply Brief, Appellants also contend that the Examiner erred
in rejecting claim 1 because:
The Examiner states in the Response to Argument section
(10)(A) of the Examiner's Answer at pages 9 and 10 that the
above the limitations of impendent [sic] claim 1 related to
the computer being configured to select and stream one of
the first audio signal and a second audio signal in the audio
data to the variable function device are disclosed in the
Putterman et al. Publication at page 3, paragraph [0032].
Appellant respectfully notes that paragraph [0032] of the
Putterman et al. Publication is at page 2 and the text the
Examiner is referring to appears to be in paragraph [0033] at
page 3, which states that “set-top box 220 may be playing
audio files from a particular music play list in a
predetermined order.” This language of the Putterman et al.
Publication of “playing audio files from a particular music
play list in a predetermined order” does not at all teach or
suggest the limitations of independent claim 1 of “the
computer is configured to select and stream one of the first
audio signal and a second audio signal in the audio data to
the variable function device,” which requires the selection
between the required first audio signal and the required
second audio signal and then the streaming of the selected
one of the two audio signals.

(Reply Br. 2-3)(emphasis omitted).
Appeal 2009-013623
Application 10/351,102

5
4. Appellants contend that the Examiner erred in rejecting claim 71
because Putterman “does not teach or suggest the limitations of independent
claim 71 of accessing, via the variable-function device, the function from the
function producing device, and accessing the duplicated function from the
variable-function device.” (App. Br. 7) (emphasis omitted).
Issue on Appeal
Did the Examiner err in rejecting the claims as being anticipated
because Putterman fails to describe the argued limitations?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
conclusions.
We 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) except as
noted below, the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusion reached by the Examiner.
As to Appellants’ above contentions 1 and 3, we agree with the
Examiner that Putterman at paragraphs 32-36 describes the claimed
invention. (Ans. 3-4 and 9-11). We conclude that contrary to Appellants’
arguments, Putterman explicitly teaches the PC commanding the set top box
to select a different file to stream from the set top box to the PC. (Putterman,
paragraph 33, last three sentences).
As to Appellants’ above contention 2, we agree with Appellants that
the Examiner’s alternative reasoning (Ans. 10, second full paragraph) was in
Appeal 2009-013623
Application 10/351,102

6
error. However, this is not sufficient to show that the Examiner’s rejection
was erroneous given that we agree with the Examiner’s reasoning as
discussed directly above.
As to Appellants’ above contention 4, we agree with the Examiner
that Putterman at paragraphs 32-36 describes the claimed invention. (Ans. 8
and 11). We conclude that contrary to Appellants’ arguments, Putterman
explicitly teaches the PC having the function of commanding the set top box
to organize files (paragraph 33, first full sentence on page 3), and that the set
top box itself is adaptable to organize and manage content (Putterman,
paragraph 34, first two sentences). We agree with the Examiner that a
duplicate function is provided in Putterman.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-30 and 71 as
being anticipated under 35 U.S.C. § 102(e).
(2) Claims 1-30 and 71 are not patentable.

DECISION
The Examiner’s rejection of claims 1-30 and 71 is affirmed.
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

tj