Ex Parte Grady et alDownload PDFPatent Trials and Appeals BoardSep 26, 201311549618 - (D) (P.T.A.B. Sep. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JEFF GRADY, GAREY DE ANGELIS, ANDREW GREEN, and VINCENT K. GUSTAFSON1 ____________________ Appeal 2011-003171 Application 11/549,618 Technology Center 2400 ____________________ Before MARC S. HOFF, CAROLYN D. THOMAS, and LARRY J. HUME, 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, 2, and 6-16. Appellants have previously canceled claims 3-5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Real Party in Interest is Philips Electronics North America Corporation. App. Br. 2. Appeal 2011-003171 Application 11/549,618 2 STATEMENT OF THE CASE2 The Invention Appellants’ invention relates to accessories for portable digital media storage and playback devices used for on-line downloading, storing and playing digital media files. More specifically, the invention relates in various aspects to a multi-function docking assembly, preferably remotely controllable, providing any of the following functions: signal transmission, signal relaying, remote control, remote video interface, power supply and/or charging, and authentication for portable digital media storage and playback devices, and methods pertaining to the same. Spec. ¶ [001] (“Field of the Invention”). Exemplary Claim Claim 1 is an exemplary claim representing an aspect of the invention which we reproduce below (emphasis added): 1. A method comprising the steps of: communicatively coupling, via a remotely controllable docking assembly, (1) a portable digital media storage and playback device having a first display element, with (2) an audio and video reproduction system having a television- compatible second display element and a first audio amplifier adapted to drive at least one speaker, wherein the docking assembly comprises (i) a video output port adapted to communicate a television-compatible video signal to the second display element, and (ii) a video processor adapted to 2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed Jul. 2, 2010); Examiner’s Answer (“Ans.,” mailed Aug. 30, 2010); Final Office Action (“FOA,” mailed Feb. 2, 2010); and the original Specification (“Spec.,” filed Oct. 13, 2006). Appeal 2011-003171 Application 11/549,618 3 communicate to the video output port a television-compatible video signal indicative of a signal received from the portable digital media storage and playback device for display by the second display element, and wherein the docking assembly has an associated wireless remote controller; displaying on the second display element information indicative of at least one digital media file; selecting at least one digital media file stored in the portable digital media storage and playback device for addition to, or deletion from, a user-defined first playlist stored in the portable digital media storage and playback device using the wireless remote controller, wherein the first playlist represents a subset of digital media files stored in the portable digital media storage and playback device. Prior Art The Examiner relies upon the following prior art in rejecting the claims on appeal: SCHUL U.S. 2006/0274910 A1 Dec. 7, 2006 KALAYJIAN U.S. 2007/0077784 A1 Apr. 5, 2007 NOVOTNEY U.S. 2007/0234420 A1 Oct. 4, 2007 SCHUBERT U.S. 7,529,871 B1 May 5, 2009 iPod User’s Guide, Apple Computer, Inc. (2005) (hereinafter “Apple”). Rejections on Appeal 1. Claims 1, 2, 9, 10, and 12-16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kalayjian, Apple, and Schubert. Ans. 4. Appeal 2011-003171 Application 11/549,618 4 2. Claims 6-8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kalayjian, Apple, Schubert, and Novotney. Ans. 9. 3. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kalayjian, Apple, Schubert, and Schul. Ans. 11. ISSUES3 Appellants argue (App. Br. 8-20) that the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Kalayjian, Apple, and Schubert is in error. These contentions present us with the following issues: Issue (a) Did the Examiner err in finding that the combination of Kalayjian, Apple, and Schubert teaches or suggests limitations including, inter alia, “docking assembly [having] an associated wireless remote controller . . . [and] selecting at least one digital media file stored in the portable digital media storage and playback device for addition to, or deletion from, a user- defined first playlist stored in the portable digital media storage and playback device using the wireless remote controller,” as recited in claim 1? 3 Appellants only provide separate, substantive arguments over the rejection of independent claim 1. With respect to the § 103 rejections of claims 6-8 and 11, depending from claim 1, Appellants merely argue that these claims are patentable for the same reasons as set forth in connection with claim 1. App. Br. 21-22. Appeal 2011-003171 Application 11/549,618 5 Issue (b) Did the Examiner err by failing to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness of claim 1? ANALYSIS We have only considered those arguments actually made by Appellants in reaching our decision. Arguments which Appellants could have made but chose not to make in the Briefs have not been considered and are deemed to be waived [see 37 C.F.R. § 41.37(c)(1)(vii)]. We disagree with Appellants’ conclusions with respect to claim 1, and 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) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Arguments. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Issue (a) Appellants contend that Kalayjian teaches selecting preset playlists in a portable media player having a remote control that causes the portable media player to jump to the selected function, but fails to teach or suggest that Kalayjian’s remote control may be used to modify a playlist in a portable digital media player docked to Kalayjian’s MediaPod. App. Br. 9. Appeal 2011-003171 Application 11/549,618 6 Appellants admit Kalayjian discloses use of a remote control “to command the digital media player to navigate to a preset playlist,” (App. Br. 9 (citing Kalayjian claim 16)), but contend Kalayjian omits any teaching directed to the broader concepts of creating or modifying playlists stored in a portable digital media player. App. Br. 9. Further in this regard, and in purported contrast to Kalayjian’s disclosure of browsing and playback control functions of an iPod portable digital media player, Appellants contend “Kalayjian fails to disclose use of a remote controller to select at least one digital media file for addition to or deletion from a playlist stored in a portable digital media storage and playback device.” Id. Appellants further contend Apple does not teach or suggest using a wireless remote controller in conjunction with “a remotely controllable docking assembly,” as recited in independent claim 1. App. Br. 10. In connection with the Examiner’s reliance upon Schubert, Appellants contend, Schubert merely mentions a docking station 502 (once) in connection with FIG. 5A, but does not describe any features, functions, or capabilities of such a docking station, and nothing in Schubert suggests that a docking station for a media player can or should embody wireless communication with a remote controller. App. Br. 12. In addition, Appellants contend Schubert merely discloses a remote connector (e.g., see Schubert Figs. 5A-5C) that permits wired remote control; docking station 502 without any further detailed discussion thereof; wireless dongle 508 that communicates with other devices that are Appeal 2011-003171 Application 11/549,618 7 separately connectable via 30-pin connector or remote connector to a portable media player; and wireless communication between accessories. App. Br. 13-14. Appellants further contend “[n]othing in Schubert discloses or suggests any remotely controllable docking station subject to wireless remote control and communicatively coupled between a portable digital media storage device (having a first display element) and an audio/video reproduction system (having a second display element).” App. Br. 14. Finally, Appellants admit Apple enables a user to create and modify playlists stored on a portable digital media player using controls located on the player, and that Kalayjian discloses utilization of a remote controller to modify playlists stored in local memory of a MediaPod docking station. However, Appellants contend, “[n]o combination of Apple and Kalayjian would permit a user to create an on-the-go playlist with a remote controller and store same on a portable digital media device. App. Br. 16. In response, the Examiner concludes, since both Kalayjian and Apple teach or suggest using similar techniques to create and/or modify an on-the- go playlist, and Apple explicitly teaches the creation of an on-the-go playlist that is stored on a portable media player, the disputed limitations of claim 1 are met, i.e., “at least one digital media file stored in the portable digital media storage and playback device for addition to, or deletion from, a user- defined first playlist stored in the portable digital media storage and playback device using the wireless remote controller.” Ans. 13 (citing Kalayjian ¶¶ [0058] and [0060]; Apple 17). In response to Appellants’ contention that the combination of Kalayjian, Apple, and Schubert is improper and that there is no reason for Appeal 2011-003171 Application 11/549,618 8 combining the references in the manner suggested (App. Br. 16-19), the Examiner reiterates that Schubert is cited as showing support for the idea that a playlist can be created, modified, and stored on a media player by using a wireless remote control, i.e., the last portion of the limitation in dispute is met. Ans. 13. We agree with the Examiner’s findings, and also note that both Kalayjian and Schubert teach or suggest use of a wireless remote control, including using a remote control to create an “on-the-go” playlist. Ans. 13 (citing Kalayjian ¶ [0029]; Schubert col. 7:24-35, col. 14:5 through col. 15:20, particularly col. 14:65-67). We therefore agree with the Examiner’s conclusions cited above that the prior art combination of Kalayjian, Apple, and Schubert teaches or suggests all the limitations of claim 1. Issue (b) Appellants contend the combination of references is premised on improper hindsight, using Appellants’ disclosure as a guide (App. Br. 17), and that the Examiner has failed to meet his burden in providing articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. Ans. 19. We disagree with Appellants’ contentions, as discussed below. We agree with the Examiner’s finding that it would have been obvious to combine Kalayjian and Apple to allow for creation of an on-the- go playlist that is stored on a portable media player. Ans. 13. We also agree with the Examiner’s conclusion that it would have been obvious to combine Appeal 2011-003171 Application 11/549,618 9 Schubert with Apple to create or modify a playlist on the media player using a wireless remote control. Id. We find that the cited prior art teaches or suggests all the claimed limitations, and that a person of ordinary skill in the art would have been motivated to combine Kalayjian, Schubert, and Apple for the reasons stated by the Examiner. These reasons include the findings that “it would have been obvious to one of ordinary skill in the art . . . to combine the prior art of Kalayjian and Apple in order to allow the flexibility and efficiency of creating a quick playlist when your portable media play was not connected to a computer” (Ans. 6), and it would have been obvious . . . to combine the prior art of Kalayjian, Apple, and Schubert in order to create a connector interface system that includes an interface and protocol in communication with the interface (i.e. of the media player) which allows a media player to communicate with external devices over a transport link. Ans. 7 (citing Schubert, col. 2:7-10). Appellants’ arguments that the combination of references is improper are centered upon the facts that Schubert discloses a wired “in-line remote controller” to replicate control functions of the portable digital media storage device instead of a wireless controller (App. Br. 17-18), and that Kalayjian teaches utilization of a remote controller to modify playlists stored in a local memory of a MediaPod docking station, and not in the memory of the portable device. App. Br. 18. We are not persuaded that a person with skill in the art would not think to utilize a wireless remote controller in lieu of Schubert’s wired Appeal 2011-003171 Application 11/549,618 10 controller, or that such a skilled person would not consider storing a modified playlist on the portable digital media storage device instead of the docking station, as was conventionally known, e.g., storing the playlist on an Apple iPod®. Apple 17. Accordingly, Appellants have not provided sufficient evidence or argument to persuade us of any reversible error in the Examiner’s characterization of the cited art and related claim construction. Therefore, we sustain the Examiner’s obviousness rejection of independent claim 1. As Appellants have not provided separate arguments with respect to dependent claims 2 and 6-16, we similarly sustain the Examiner’s rejection of these claims under 35 U.S.C. § 103(a).4 CONCLUSION The Examiner did not err with respect to the unpatentability rejections of claims 1, 2, and 6-16 under 35 U.S.C. § 103(a) over the prior art of record, and the rejections are sustained. DECISION The decision of the Examiner to reject claims 1, 2, and 6-16 is affirmed. 4 If further prosecution of this application should ensue, we invite the Examiner’s attention to claims 12-14 for compliance with the requirements of 35 U.S.C. § 112, second paragraph, since it appears that the “kit” of dependent claim 12 is not capable of performing all the recited steps of claim 1. See In re Lyell, 17 U.S.P.Q.2d 1548 (B.P.A.I. 1990). Appeal 2011-003171 Application 11/549,618 11 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) (2011). AFFIRMED tj Copy with citationCopy as parenthetical citation