11315867 (P.T.A.B. May. 31, 2013)

Ex Parte Dunko et al

Patent Trial and Appeal BoardMay 31, 2013

11315867 (P.T.A.B. May. 31, 2013)

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. 11/315,867 12/22/2005 Gregory A. Dunko 9314-137 1040 54414 7590 05/31/2013 MYERS BIGEL SIBLEY & SAJOVEC, P.A. P.O. BOX 37428 RALEIGH, NC 27627 EXAMINER BATISTA, MARCOS ART UNIT PAPER NUMBER 2642 MAIL DATE DELIVERY MODE 05/31/2013 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 GREGORY A. DUNKO and JEFFREY JASON GRIFFIN ____________________ Appeal 2010-009122 Application 11/315,867 1 Technology Center 2600 ____________________ Before JOSEPH F. RUGGIERO, MARC S. HOFF, and CAROLYN D. THOMAS, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 1-24.We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Appellants’ invention is a mobile terminal, or a method of operating a mobile terminal. A podcast is stored in a mobile terminal, the podcast including an embedded link to content stored outside of the mobile terminal. 1 The real party in interest is Sony Ericsson Mobile Communications AB. Appeal 2010-009122 Application 11/315,867 2 Activation of the embedded link is controlled responsive to a communications status of the mobile terminal (Spec. 2). Claim 1 is exemplary of the claims on appeal: 1. A mobile terminal comprising: a radio communications interface circuit; and a processor operatively associated with the radio communications circuit and configured to store a podcast including an embedded link to content outside of the mobile terminal and to control activation of the embedded link responsive to a communications status of the mobile terminal and/or a configuration of a user interface of the mobile terminal. The Examiner relies upon the following prior art in rejecting the claims on appeal: Lee US 2001/0049296 A1 Dec. 6, 2001 Houh US 2007/0106760 A1 May 10, 2007 Kotola US 2007/0110010 A1 May 17, 2007 Kreitzer US 2007/0118853 A1 May 24, 2007 Claims 1-3, 5, 7-11, 13-17, 19, 20, and 22-24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kotola in view of Kreitzer. Claims 4 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kotola in view of Kreitzer and Lee. Claims 6, 12, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kotola in view of Kreitzer and Houh. Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed Dec. 2, 2009) and the Examiner’s Answer (“Ans.,” mailed Mar. 1, 2010) for their respective details. Appeal 2010-009122 Application 11/315,867 3 ISSUES Appellants argue that Kotola fails to teach storing a podcast including an embedded link to content outside of the mobile terminal, or activating an embedded link responsive to a communications status of the mobile terminal (App. Br. 5). Appellants further contend that Kreitzer teaches a link to a podcast, rather than a link embedded in a podcast. Appellants assert that the sidecar files described in Kreitzer are not embedded (App. Br. 6). Last, Appellants argue that the Examiner used impermissible hindsight in combining the references (Id.). Appellants’ contentions present us with the following issues: 1. Does the combination of Kotola and Kreitzer teach or fairly suggest storing a podcast including an embedded link to content outside of the mobile terminal, and controlling activation of the embedded link responsive to a communications status of the mobile terminal? 2. Does the combination of Kotola and Kreitzer teach or fairly suggest a processor configured to control activation of the embedded link responsive to a current display mode of the mobile terminal? PRINCIPLES OF LAW The Examiner’s articulated reasoning in the rejection must possess a rational underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Appeal 2010-009122 Application 11/315,867 4 ANALYSIS CLAIMS 1, 2, 5, 7-11, 13-16, 19, 20, AND 22-24 Appellants’ attacks on the individual references do not persuade us that the Examiner erred in rejecting the claims as being obvious over the combination of Kotola in view of Kreitzer. Appellants argue that Kotola does not teach or suggest activation of a link embedded in a podcast (App. Br. 5). The Examiner finds that Kotola teaches activation of links, but admits that Kotola lacks a teaching of links “embedded in a podcast,” citing Kreitzer for this feature (Ans. 3). Appellants then argue that Kreitzer describes transmitting a link to a podcast, not a link embedded in a podcast (App. Br. 5). Appellants contend that Kreitzer does not teach selective activation of links in the sidecar files described, responsive to a communications status of the mobile terminal (App. Br. 6). The Examiner responds that Kotola teaches activation of links responsive to communications status, and finds that Kreitzer teaches activation of links in the sidecar files (Ans. 3, 10). We do not agree with Appellants that Kreitzer’s sidecar files are not “embedded” in the podcast (App. Br. 6). Appellants do not specifically define the term “embedded.” The dictionary definition of “embed” is “to incorporate or contain as an essential part or characteristic.” 2 We agree with the Examiner’s further finding that the sidecar is an integrated function of the podcast of Kreitzer (Ans. 10). As a result, we agree with the Examiner that the sidecar is contained as an essential part of, or “embedded” in, the podcast. 2 See available at http://dictionary.reference.com/browse/embedded?s=t. last visited May 29, 2013. Appeal 2010-009122 Application 11/315,867 5 Finally, we do not agree with Appellants that the Examiner used conclusory reasoning not based on the prior art. The Examiner concludes that the skilled artisan would have combined Kotola and Kreitzer in order to provide customized retrieval of podcast related information while playing the podcast, citing to paragraph [0005] of Kreitzer (Ans. 3). We find that the Examiner’s reasoning possesses a rational underpinning to support the legal conclusion of obviousness. See Kahn, 441 F.3d at 988. We find that the combination of Kotola and Kreitzer suggests all the limitations of claims 1, 2, 5, 7-11, 13-16, 19, 20, and 22-24. Accordingly, we will sustain the Examiner’s § 103 rejection. CLAIMS 3 AND 17 We are persuaded by Appellants that the combination of Kotola and Kreitzer does not teach or fairly suggest controlling activation of an embedded link responsive to a current display mode of a mobile terminal (App. Br. 7). We have reviewed the section of Kotola relied upon by the Examiner, and we find no teaching of controlling activation of a link responsive to a current display mode (¶ [0083]). Accordingly, we will not sustain the Examiner’s § 103 rejection of claims 3 and 17. CLAIMS 4 AND 18 Claims 4 and 18 depend respectively from claims 1 and 16, whose rejection we sustain supra. Because Appellants present no separate arguments for patentability, we will sustain the § 103 rejection of claims 4 and 18 for the same reasons given with respect to claims 1 and 16. Appeal 2010-009122 Application 11/315,867 6 CLAIMS 6, 12, AND 21 Appellants argue that Houh fails to teach “activation of a link embedded in a podcast,” the same argument made against Kotola and Kreitzer with respect to claim 1 (App. Br. 8). As explained supra, however, we find that the combination of Kotola and Kreitzer does teach activation of a link embedded in a podcast. Accordingly, we conclude that the Examiner did not err in rejecting claims 6, 12, and 21, for the same reasons expressed supra with respect to claim 1. We will sustain the § 103 rejection. CONCLUSIONS 1. The combination of Kotola and Kreitzer fairly suggests storing a podcast including an embedded link to content outside of the mobile terminal, and controlling activation of the embedded link responsive to a communications status of the mobile terminal. 2. The combination of Kotola and Kreitzer does not teach or fairly suggest a processor configured to control activation of the embedded link responsive to a current display mode of the mobile terminal. ORDER The Examiner’s rejection of claims 1, 2, 4-16, and 18-24 is affirmed. The Examiner’s rejection of claims 3 and 17 is reversed. Appeal 2010-009122 Application 11/315,867 7 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-IN-PART kis