Ex Parte Karlberg

Patent Trial and Appeal Board

May 31, 2013

11447374 (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.
11/447,374 06/06/2006 Lars Johan Ragnar Karlberg 9342-374 3560
54414 7590 05/31/2013
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
P.O. BOX 37428
RALEIGH, NC 27627
EXAMINER
UDDIN, MOHAMMED R
ART UNIT PAPER NUMBER
2167
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 LARS JOHAN RAGNAR KARLBERG
____________

Appeal 2011-000345
Application 11/447,374
Technology Center 2100
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-27 (App. Br. 1). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2011-000345
Application 11/447,374

2
STATEMENT OF THE CASE
Appellant’s claimed invention is directed to electronic devices for
playing multimedia files, such as audio files, video files, and/or image files
(Spec. ¶ [0001]).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A communication terminal comprising:

a communication module that is configured to
communicate with other communication terminals over a
communication interface; and

a controller that is configured to establish a connection
with a participant communication terminal via the
communication module, to maintain a play list that comprises a
list of multimedia files to be played, to receive a participant
multimedia file identification from the participant
communication terminal that identifies a participant multimedia
file stored on the participant communication terminal, the
participant multimedia file comprising a playable audio/video
signal, to add the participant multimedia file identification to
the play list, to automatically prioritize the play list according to
at least one criteria, and to thereafter execute playback of the
multimedia files represented by the play list, including
retrieving the participant multimedia file from the participant
communication terminal for playback.

REFERENCES and REJECTION
The Examiner rejected claims 1-27 under 35 U.S.C. § 103(a) as being
unpatentable based upon the teachings of Khedouri (U.S. Patent App. Pub.
2006/0008256 A1, published January 12, 2006) and Chatfield (U.S. Patent
App. Pub. 2003/0227478 A1, published December 11, 2003) (Ans. 3-22).

Appeal 2011-000345
Application 11/447,374

3
ANALYSIS
Appellant asserts the Examiner is incorrect in finding Chatfield
discloses or suggests a participant multimedia file is resident at a participant
communication terminal as recited in claim 1. That is, Chatfield does not
disclose media files can be stored in a media terminal 20. (App. Br. 7).
Appellant contends Chatfield discloses creating a playlist using input from
members of a group but does not recite participant multimedia file
identifications from a participant communication terminal (App. Br. 8). With
respect to Khedouri, Appellant contends Khedouri is directed to a peer-to-
peer file sharing system and also does not disclose the claimed steps (id.).
Appellant, in the Reply Brief contends Chatfield’s multimedia databases 16
are remote databases and thus, cannot meet the claimed requirement “stored
on the participant communication terminal” (Reply Br. 4).
We agree with and adopt the Examiner’s findings as our own.
Appellant has merely set forth recitations of the claim elements without
providing substantive arguments as to how the cited references do not meet
the claimed limitations. Particularly, we concur with the Examiner’s
conclusion the combination of Khedouri and Chatfield teaches and fairly
suggests Appellant’s claimed invention (Ans. 23-27).
As to Appellant’s contentions in the Reply Brief, it is noted we are not
required to consider arguments raised in Appellant’s Reply Brief that were
not raised in the Appeal Brief. In the absence of a showing of good cause,
we conclude that the regulations set out in 37 C.F.R. § 41 do not require the
Board to consider such belated arguments. (See Ex Parte Borden, 93
USPQ2d 1473 (BPAI 2010) (Informative)). However, even if we consider
Appellant’s arguments in the Reply Brief, we agree with the Examiner that
Appeal 2011-000345
Application 11/447,374

4
Chatfield discloses a media database 14 that is not remote and is used to
store files on a participant communication terminal (Ans. 24-25).
With respect to claim 26, although argued separately, Appellant
asserts the same arguments applied to the rejection of claim 1 (App. Br. 10).
In light of the above, we find the weight of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness. We are not persuaded the Examiner’s reading of the claims on
the cited combination of references is overly broad, unreasonable, or
inconsistent with the Specification. Accordingly, we sustain the Examiner’s
rejection of claims 1-27.

DECISION
The Examiner’s decision rejecting claims 1-27 under 35 U.S.C. § 103
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

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