13453624 (P.T.A.B. Jan. 31, 2018)

Ex Parte Helm

Patent Trial and Appeal BoardJan 31, 2018

13453624 (P.T.A.B. Jan. 31, 2018)

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. 13/453,624 04/23/2012 Sean L. Helm 22562-642/2011-265 4828 96411 7590 01/31/2018 Dinsmore & Shohl LLP 255 East Fifth Street, Suite 1900 Cincinnati, OH 45202 EXAMINER LOTFI, KYLE M ART UNIT PAPER NUMBER 2489 MAIL DATE DELIVERY MODE 01/31/2018 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 SEAN L. HELM ____________________ Appeal 2017-004268 Application 13/453,624 Technology Center 2400 ____________________ Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and SHARON FENICK, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-004268 Application 13/453,624 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. Representative Claim Representative claim 1 under appeal reads as follows (emphasis added): 1. A method for providing an in-vehicle image supplement comprising: receiving a broadcast media signal, the broadcast media signal including a content portion and a metadata portion; determining whether a primary image is included in the metadata portion; in response to determining that the primary image is included in the metadata portion, providing the primary image for display; in response to determining that the primary image is not included in the metadata portion, determining whether the primary image is otherwise available and in response to determining that the primary image is otherwise available, retrieving the primary image and providing the primary image for display; and in response to determining that the primary image is not otherwise available, determining whether a secondary image is available, retrieving the secondary image, providing the secondary image for display, and in response to determining that the primary image becomes available, replacing the secondary image with the primary image. Appeal 2017-004268 Application 13/453,624 3 Rejections 1. The Examiner rejected claims 1–4, 6–11, 13–17, 19, and 20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Johnson et al. (US 2010/0265398 A1, pub. Oct. 21, 2010) and Kraft et al. (US 2009/0275306 Al, pub. Nov. 5, 2009).1 2. The Examiner rejected claims 5, 12, and 18 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Johnson, Kraft, and Mudd et al. (US 2008/0222546 A1, Sept. 11, 2008). 2 Appellant’s Admissions 1. Appellant states in his Background: As media signals, such as terrestrial radio, satellite radio, internet radio, etc. are received by a vehicle, the media signals may include a content portion and a metadata portion. Spec. ¶ 2. 2. Appellant also states in his Background: A vehicle audio system may playback the content portion, while the metadata may include information about the received content portion. Specifically, the metadata may include information regarding the title, artist, album, etc. of the received content portion. Id. 1 Separate patentability is not argued for claims 2–4, 6–11, 13–17, 19, and 20. Except for our ultimate decision, these claims are not discussed further herein. 2 Separate patentability is not argued for claims 5, 12, and 18. Thus, the rejections of these claims turns on our decision as to claim 1. Except for our ultimate decision, these claims are not discussed further herein. Appeal 2017-004268 Application 13/453,624 4 3. Appellant further states in his Background: Additionally, the metadata may include imagery that may be provided to a display device in the vehicle. The imagery may include an album cover image to provide additional information regarding the content portion being played. While the album cover image may enhance the visual data provided on the display device, oftentimes the imagery may not be included in the metadata and/or may otherwise not be immediately displayed when the content portion begins playback. As a consequence, oftentimes important and/or aesthetic information is not provided while the content portion is being played. Id. (emphasis added). Appellant’s Contention3 Appellant contends that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because: Johnson does not teach “determining whether a primary image is included in the metadata portion” as recited in claim 1 because Johnson never sends the image data in the metadata portion. App. Br. 6 (emphasis omitted). Further: [T]he Examiner has never provided any citation in Johnson (or other cited references) that explicitly teaches “determining whether a primary image is included in the metadata portion” as recited in claim 1. App. Br. 7 (emphasis omitted). Also: [T]he system of Kraft is similar to that of Johnson in that Kraft receives a broadcast that includes an image identifier (and never the image). The system of Kraft then searches locally for an 3 The arguments supporting this contention underpin all the points raised by Appellant. Appeal 2017-004268 Application 13/453,624 5 image associated with the image identifier. If there is an image stored locally, that image is displayed. App. Br. 8. Appellant is arguing that Johnson (as well as Kraft) fails to teach that a determination is made regarding whether a primary image is included in the metadata portion of a broadcast media signal. Reply Br. 4. Issue on Appeal Did the Examiner err in rejecting claim 1 as being obvious? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments (Appeal Brief and Reply Brief) that the Examiner has erred. Claim 1 As to the Appellants’ above contention, we agree with the Examiner’s reasoning to the extent that Johnson and Kraft each disclose determining a primary image is available (Johnson at paragraph 104 “identifies,” and Kraft at paragraph 26 “a match is found”), but we agree with Appellants that the primary image is “included in the metadata portion” as recited in claim 1 is not disclosed in Johnson or Kraft. The Examiner’s reasoning of the Final Rejection and Answer are not sufficient to show that the combination alone renders obvious claim 1. However, we none-the-less conclude Appellants’ claimed invention is unpatentable under 35 U.S.C. §103(a). Including an image in the metadata was well-known to a person of ordinary skill in the art in question at the time of the invention. First, Appellant has admitted (Appellant’s Admissions 1–3 Appeal 2017-004268 Application 13/453,624 6 supra) it is known that (a) metadata can include imagery that may be displayed, and (b) when imagery is not included it is not provided (displayed). Further, an overview of the use of “expensive metadata” versus “inexpensive metadata” is taught by Omernick (US 8,763,058 B2; iss. June 24, 2014; filed June 27, 2008; assigned to Apple, Inc.) at column 9, line 34 through column 14, line 38. Particularly, Omernick discloses: As another example, only some expensive metadata portions, such as those associated with listing portions 510a, 510b, etc. can be automatically downloaded, in response to determining that they are to be included in the initial display. In this manner, only the expensive metadata that can be at least partially used in a display, is downloaded initially and the corresponding thumbnails (or other visual representation of the payload data) are presented, in response to the initial user. Column 10, lines 27–35 (emphasis added). Also, including image information and other so-called “expensive metadata” in music metadata is taught by Lesser et al. (US 8868602 B2; iss. Oct. 21, 2014; filed Apr. 19, 2012). Basically, the metadata 260 are therefore organized into a first portion of metadata 261 and into a second portion of metadata 262. Preferably, the first portion 261 comprises the basic or essential metadata such as author, name of the song or so, while the second portion metadata typically has a larger number of bytes and, for example, comprises more information on the media data such as the text of a song or a thumbnail picture of the album, the artist or any other image information. Column 6, lines 42–56, and Figure 2c (emphasis added). We modify the Examiner’s rejections by adding Lesser, Omernick, and Appellants’ Admissions. Our review finds nothing more than the application of an admittedly known technique (a primary image is included Appeal 2017-004268 Application 13/453,624 7 in the metadata portion) to the improvement of a similar known device in the same way. [I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson’s-Black Rock are illustrative-a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We designate our analysis in combination with the Examiner’s analysis to be a new ground of rejection of claim 1 under 35 U.S.C. § 103 over Johnson, Kraft, Lesser, Omernick, and Appellants’ Admissions. Claims 2–4, 6–11, 13–17, 19, and 20 We also reject claims 2–4, 6–11, 13–17, 19, and 20 under 35 U.S.C. § 103 over Johnson, Kraft, Lesser, Omernick, and Appellants’ Admissions for the reasons above and the reasons set forth by the Examiner in the rejection of claims 2–4, 6–11, 13–17, 19, and 20. Claims 5, 12, and 18 We also reject claims 5, 12, and 18 under 35 U.S.C. § 103 over Johnson, Kraft, Mudd, Lesser, Omernick, and Appellants’ Admissions for the reasons above and the reasons set forth by the Examiner in the rejection of claims 5, 12, and 18. Appeal 2017-004268 Application 13/453,624 8 37 C.F.R. § 41.50(b) This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[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 THE DECISION, must exercise one of the following two options with respect to the new grounds 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. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1–20 as being unpatentable under 35 U.S.C. § 103(a). (2) We reject claims 1–20 as being unpatentable under 35 U.S.C. § 103(a). (3) Claims 1–20 are not patentable. Appeal 2017-004268 Application 13/453,624 9 DECISION The Examiner’s rejections of claims 1–20 are reversed. Claims 1–20 are newly rejected. REVERSED 37 C.F.R. § 41.50(b)