Ex Parte Hyatt

Board of Patent Appeals and Interferences

Jul 5, 2012

11608373 (B.P.A.I. Jul. 5, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/608,373 12/08/2006 Edward Craig Hyatt PU06 0456US1 9248
58342 7590 07/05/2012
WARREN A. SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
BIRKHIMER, CHRISTOPHER D
ART UNIT PAPER NUMBER
2186
MAIL DATE DELIVERY MODE
07/05/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EDWARD CRAIG HYATT
____________________

Appeal 2011-006044
Application 11/608,373
Technology Center 2100
____________________

Before STEPHEN C. SIU, JEFFREY B. ROBERTSON, and
JOSIAH C. COCKS Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-006044
Application 11/608,373

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
5, 8, 9, 11-16, 19, 21-24, and 26-30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

THE INVENTION
The claims are directed to electronic equipment, such as electronic
equipment for engaging in voice communications and/or for playing back
audiovisual content to a user, and particularly to a device and method for
caching files on electronic equipment for later use. (Spec. 1, ll. 4-7.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for providing media content to an electronic
device, comprising:
transferring media content to the electronic device,
wherein at least part of incoming media content transferred to
the electronic device is stored in memory of the electronic
device for use at a later time;
using rules to determine how pre-existing media content
and the incoming media content are stored in memory of the
electronic device when free memory in the electronic device is
insufficient to store both the incoming media content and the
pre-existing media content; and
wherein determining how the pre-existing media content
and the incoming media content are stored in memory includes
replacing at least part of the pre-existing media
content with the incoming media content, or transferring
only a part of the incoming media content to the
electronic device; and
creating at least one leader file for i) pre-existing
media content that has been at least partially replaced by
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the incoming media content or ii) incoming media
content that has been partially transferred to the
electronic device.
(Appeal Brief, Claims Appendix1 33.)

THE REJECTIONS
I. The Examiner rejected claims 8, 9, and 21 under 35 U.S.C.
§ 112, second paragraph, as indefinite. (Final Rejection, dated
February 17, 2010, “Final” 3-4.)2

II. The Examiner rejected claims 1-5, 8, 9, 11-12, 14, 24, and 27
under 35 U.S.C. § 103(a) as unpatentable over Shaw (US
5,870,553, dated February 9, 1999) in view of Zhou (article
entitled “Algorithms,” dated April 29, 2001). (Examiner’s
Answer, dated December 14, 2010, “Ans.” 4-11.)

III. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Shaw in view of Zhou in further view of
Primetime Podcast Receiver (article entitled “PPR - Your
Premier Podcast Receiver,” dated April 25, 2005). (Ans. 11-
12.)

IV. The Examiner rejected claims 15, 16, 19, 21, 23, 28, and 30
under 35 U.S.C. § 103(a) as unpatentable over Shaw in view of
Zhou in further view of Admitted Prior Art (APA). (Ans. 12-
16.)

V. The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Shaw in view of Zhou, APA, and PPR. (Ans.
16-17.)

VI. The Examiner rejected claims 26 and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Shaw in view of Zhou in further

1 Appeal Brief filed October 18, 2010, hereinafter “App. Br.” and Claims
App’x, respectively.
2 The Examiner withdrew this rejection. (Advisory Action, dated July 14,
2010.)
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Application 11/608,373

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view of Topshareware (article from topshareware.com, dated
November 6, 2003). (Ans. 17-18.)

DISCUSSION
Claim Interpretation
The present appeal turns on the proper interpretation of the instant
claims, and more specifically, whether the independent claims require media
content to be partially transferred to an electronic device prior to creating a
leader file for that media content. Our reviewing court has adopted a two-
part test for determining if the steps of a method claim that do not otherwise
recite an order, must nonetheless be performed in the order in which they are
written. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir.
2003) (citations omitted).
“First, we look to the claim language to determine if, as a matter of
logic or grammar, they must be performed in the order written.” Altiris, 318
F.3d at 1369-70 (citing Loral Fairchild Corp. v. Sony Electronics Corp., 181
F.3d 1313, 1321 (Fed. Cir. 1999) (holding that the claim language itself
indicated that the steps had to be performed in their written order because
the second step required the alignment of a second structure with a first
structure formed by the prior step); also citing Mantech Envtl. Corp. v.
Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1375-76 (Fed. Cir. 1998)
(holding that the steps of a method claim had to be performed in their
written order because each subsequent step referenced something logically
indicating the prior step had been performed)). “If not, we next look to the
rest of the specification to determine whether it ‘directly or implicitly
requires such a narrow construction.’” Altiris, 318 F.3d at 1370 (citations
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Application 11/608,373

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omitted). “If not, the sequence in which such steps are written is not a
requirement.” Altiris, 318 F.3d at 1370 (citations omitted).
Here, Appellant’s recitation of “that has been partially transferred”
refers to a completed result of a prior step (i.e., “transferring only a part of
the incoming media content to the electronic device”), such that there is a
temporal limitation implicit from a plain reading of the claim language. See
e.g. E-Pass Technologies, Inc. v. 3Com Corp, 473 F.3d 1213, 1222 (Fed.
Cir. 2007) (holding that because the language of most of the steps of its
method claim refer to the completed results of the prior step (e.g.,
“transferring a data set ...; storing said transferred data set”), Appellant must
show that all of those steps were performed in order). The Examiner has not
directed us to any language in the Specification that would suggest
otherwise.
In our view, therefore, one of ordinary skill in the art, in interpreting
the claims in light of the Specification, would have understood that the
claims require a partial transfer of media content before a leader file is
created.

35 U.S.C. § 103 Rejections
The Examiner’s rejection is premised on the position that “[t]here is
no limitation as to where the creating [of the leader file] takes place, how the
creating takes place, or where the leader file is stored.” (Ans. 20.)
However, in light of the claim interpretation discussed above, we agree with
Appellant (App. Br. 19) that there is an implicit limitation in the claims with
respect to the sequence of when the leader file is created.
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The Examiner has not shown that Shaw discloses creating a leader file
for incoming media content after that incoming media content has been
partially transferred to the electronic device. Rather, Shaw discloses that the
video data is imported to tape as two files – a leader file and a remainder
file. (Col. 9, ll. 37-40, 52-54; Fig. 5A.)
Because all the independent claims on appeal require a partial transfer
of the incoming media content prior to the creation of a leader file, we
reverse the Examiner’s rejections of the claims.

DECISION
We reverse the Examiner’s rejection of claims 1-5, 8, 9, 11-16, 19,
21-24, and 26-30.

REVERSED

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