Ex Parte Kotera

Board of Patent Appeals and Interferences

Apr 27, 2010

10918409 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MASAMICHI KOTERA
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Appeal 2009-008523
Application 10/918,409
Technology Center 2600
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Decided: April 28, 2010
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Before MARC S. HOFF, CARLA M. KRIVAK, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant invokes our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-3, 5-7, and 9-13. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on April 13,
2010. We affirm.

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STATEMENT OF THE CASE
Appellant claims an apparatus and method for controlling
reproduction of plural sound contents, such as recorded music selections
(Spec. 1:8-10). The apparatus and method provide for selecting a first stored
content from the plural sound contents and outputting an identification
sound when this first content is reproduced.1 Independent claim 5, with key
disputed limitations emphasized, is illustrative:
5. A method for reproducing plural sound contents in accordance with
a reproduction order thereof, said method comprising:
storing plural contents and reproduction lists, each reproduction list
indicating a reproduction order of at least one of the stored contents;
deciding whether an operation is performed to skip said sound
contents to be reproduced in any one of a reproduction order thereof
and a reversed order of said reproduction order of a reproduction list;
and
selecting said stored contents in any one of said reproduction order
and said reversed order when it is decided by said deciding that the
operation to skip said contents is performed; and
outputting an identification sound to indicate that a first sound
content in the reproduction order is selected only when reproducing a
first content in the reproduction list.

1 See generally Spec. 6:1-3; 6:14-7:11; 8:1-6; 8:12-10:21; Fig. 1.
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The Examiner relies on the following as evidence in support of the
rejection:
Okazaki US 6,604,082 B1 Aug. 5, 2003
Toshiko (“Murata”) JP 2000-076833 Mar. 14, 20002
The Examiner rejected claims 1-3, 5-7, and 9-13 under 35 U.S.C.
§ 103(a) as unpatentable over Okazaki and Murata (Ans. 3-7).
Rather than repeat Appellant or Examiner arguments, we refer to the
Appeal Brief (filed Dec 9, 2008), the Answer (mailed Dec. 26, 2008), and
the Reply Brief (filed Feb. 26, 2009) for their respective details. Only
arguments actually made by Appellant have been considered in this decision.
Arguments that Appellant could have made but are not made are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant’s Argument
Appellant separately argues independent claims 1, 5, and 10 by
asserting that the cited Okazaki and Murata references do not teach or
suggest outputting, as claimed, an identification sound only when a first
content is reproduced (App. Br. 4-6).3

2 This document is a computer prepared English translation.
3 Appellant, at pages 2-3 of the Reply Brief, made arguments for dependent
claims 3, 7, and 12 that were not raised in the Appeal Brief. Consequently,
issues from these arguments are raised for the first time in the Reply Brief,
and, therefore, are deemed to be waived. See Optivus Tech., Inc. v. Ion
Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not
raised by an appellant in its opening brief . . . is waived.”) (citations and
quotation marks omitted); see also Fuji Photo Film Co. v. Jazz Photo Corp.,
394 F.3d 1368, 1375 n.4 (Fed. Cir. 2005) (Arguments first raised in the reply
brief and not properly raised in the opening brief are not addressed.).
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ISSUE
Has Appellant shown the Examiner erred under § 103(a) by
finding Okazaki and Murata, either alone or in combination, teach or
suggest outputting an identification sound only when a first content is
reproduced?

FINDINGS OF FACT
A preponderance of the evidence supports the following Findings of
Fact (FF):
Present Application
1. Appellant’s Specification discloses that an identification sound is
output when a first sound content is reproduced (3:17-28) and that this
identification sound is differentiated from other output sounds
indicating what sound content is being reproduced by including
“different lapses of time and/or frequencies” for the indication sound
(9:27-10:2).
Okazaki
2. Okazaki discloses an apparatus for voice recording/reproduction (col.
1, ll. 8-11) that outputs a predetermined alarm sound at the end of
reproducing each sound file (col. 8, ll. 13-32).
Murata
3. Murata discloses an apparatus and method for reproducing audio
information, which information is a selected succession of recorded
music pieces. A different pattern of monotone signals are actuated to
indicate when each of the selected pieces is reproduced (Abstract; ¶¶
[0001], [0007]).
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4. Murata discloses that when a track number 1 of recorded audio
information is reproduced a monotone “PI” sound at a frequency of
800 Hertz (Hz) is generated for 50 to 120 milliseconds (ms) (¶ [0013];
Fig. 3(a)), and when a track number 2 is reproduced the “PI” sound is
generated twice with a 50 to 125 ms silent time between the “PI”
sounds (¶ [0015]; Fig. 3(b)). The number of generated “PI” sounds
for each signal corresponds to the track number (Fig. 3).

PRINCIPLES OF LAW
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831,
833 (Fed. Cir. 1990); see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004).

ANALYSIS
We do not find error in the Examiner’s rejection under § 103(a) of
claims 1-3, 5-7, and 9-13 as being unpatentable over Okazaki and Murata.
Appellant contends Okazaki teaches generating an audible alarm as
reproduction of each sound file ends (App. Br. 4), and the Examiner has
likewise acknowledged Okazaki teaches outputting the same, not a different
sound to indicate reproduction of each selected file (Ans. 4; see FF 2).
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Turning to Murata, the Examiner, though, finds “an identification sound
(single ‘short sound 'PI'’, paragraph [0013]) to indicate that a first sound
content in the reproduction order is selected only when reproducing a first
content in the reproduction list (each track change sound is different, figure
3, see machine translation provided by appellant, Detailed description
paragraphs [0013] to [0018]).” (Ans. 4; see FF 3, 4).
Appellant, in response, argues:
Figure 3 and paragraph 13 of Murata clearly describe that the "PI"
sound is the only sound used in Murata to identify the first track. As
this sound is also used (twice) to identify the second track, Murata
cannot teach or suggest outputting an identification sound to indicate
that a first sound content in the reproduction order is selected from
said sound-outputting device only when the reproducer reproduces a
first content, as the entire "identification sound" of the first track as
alleged by the outstanding rejection is also outputted when the second
track is reproduced, and in fact is outputted twice when the second
track is reproduced.
(Reply Br. 1, 2). Appellant contends that these arguments show independent
claims 1, 5, and 10 (and all their dependent claims) to be patentable (Reply
Br. 2). Indeed, each of independent claims 1, 5, and 10 recite the outputting
of an “identification sound” only when reproducing a first content (see
Reply Br. 1, 2).
The substance of Appellant’s contentions center on how to construe
the recited “identification sound,” i.e., as a unitary signal that is not repeated
in some later combination of signals. The appealed claims are silent as to
what is or is not to be construed as an “identification sound.” Accordingly,
we must consult Appellant’s Specification to determine if clarifying
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teachings for construing the term are disclosed. Bond, 910 F.2d at 833.
From the Specification we find “identification sound” taught as including
characteristics for differentiation from other output sounds, and that such
differentiation characteristics are disclosed as having the “identification
sound” include time lapses and/or different frequencies (FF 1).
We, therefore, are not persuaded by Appellant’s argument because
Murata teaches outputting a signal consisting of a single “PI” sound for a
reproduced first track, and outputting another signal consisting of the “PI”
sound reproduced twice with an interposed 50-125 ms silent time for a
second reproduced track (FF 4). Thus, including time lapses between
Murata “PI” sounds (FF 4) produces different “identification sound[s]” as
disclosed in Appellant’s Specification (FF 1). Further, the disputed
limitations read on the Murata single “PI” sound output for a reproduced
first track irrespective of whether the “PI” sound is also included in other
output signal combinations for identifying reproduction of other tracks. We
do not find a reasonably broad interpretation of the appealed claims
construed in accord with Appellant’s Specification avoids reading on
Murata’s single “PI” sound as a signal for reproduction of a first track.
Accordingly, we find the Examiner’s rejection to be reasonable.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claims 1, 5, and 10, and dependent claims 2, 3,
6, 7, 9, and 11-13 that fall for similar reasons. Therefore, we will sustain the
Examiner’s rejection of these claims.
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CONCLUSION
The Examiner did not err under § 103(a) by finding Okazaki and
Murata, either alone or in combination, to teach or suggest outputting an
identification sound only when a first content is reproduced.

ORDER
The Examiner’s decision rejecting claims 1-3, 5-7, and 9-13 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

KIS

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314