Ex Parte LaBiche

Patent Trial and Appeal Board

Oct 20, 2016

11306470 (P.T.A.B. Oct. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111306,470 12/29/2005
54494 7590 10/24/2016
MOORE AND VAN ALLEN PLLC FOR SEMC
P.O. BOX 13706
3015 Carrington Mill Boulevard, Suite 400
RESEARCH TRIANGLE PARK, NC 27709
FIRST NAMED INVENTOR
Maurice Jerome LaBiche
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PU05 0512US1.233 1469
EXAMINER
RIES, LAURIE ANNE
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
10/24/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
iplaw@mvalaw.com
usptomail@mvalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAURICE JEROME LABICHE
Appeal2015-004430
Application 11/306,4 70
Technology Center 2100
Before JOSEPH L. DIXON, MATTHEW J. McNEILL, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-11, 13, and 15-23, which constitute all claims
pending in the application. Claims 12 and 14 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The claimed invention relates to bookmarking a specific location
within a multimedia content file, such as a podcast, such that playback
1 Appellant identifies Sony Ericsson Mobile Communications AB as the real
party in interest. App. Br. 2.
Appeal2015-004430
Application 11/306,4 70
begins at that location. Spec. iii! 1--4; Abs. Claims 1, 7, and 21 are
independent. Claim 7 is illustrative of the invention and the subject matter
of this appeal, and reads as follows (with the disputed limitation
emphasized):
7. A method for bookmarking a content file comprising:
receiving a content file in a first user device, the content
file presenting multimedia content via the first user device,
wherein the first user device comprises a processor;
in response to receiving the content file, creating, using the
first user device, a bookmark file associated with the content file,
the bookmark file being separate from the content file;
creating, using the first user device, a bookmark pointer
that indicates a location associated with content consumed data
based on content consumed from the content file;
storing address information for the content file in the
bookmark file; and
storing the bookmark pointer in the bookmark file,
wherein opening the bookmark file at a second user device
causes downloading of the content file and causes playback of
the content file to begin from the location indicated by the
bookmark pointer, and
wherein playback of the content file and downloading of
the content file occur at least partially simultaneously.
App. Br. 14 (Claims App.).
Claims 1-11, 13, and 15-23 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Sull et al. (US 2002/0069218 Al; pub. June 6,
2002) ("Sull"), Best et al. (US 2004/0205511 Al; pub. Oct. 14, 2004)
("Best"), and Koivisto et al. (US 2007/0150930 Al; pub. June 28, 2007)
("Koivisto"). Final Act. 2-17.
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Appeal2015-004430
Application 11/306,4 70
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). On this record, we are not persuaded the Examiner erred.
We adopt as our own the findings and reasons set forth in the rejections from
which this appeal is taken and in the Examiner's Answer, and highlight the
following for emphasis.
Appellant argues all independent claims ( 1, 7, and 21) as a group, and
does not argue any dependent claims separately. App. Br. 8-11. We choose
to decide the appeal on the basis of claim 7, which is representative of the
group. See 37 C.F.R. § 41.37(c)(l)(iv). Appellant contends the Examiner
erred in two respects, both related to the claim limitation "playback of the
content file and downloading of the content file occur at least partially
simultaneously." We address each argument in turn.
First, Appellant contends the Examiner erred because Koivisto utilizes
buffering which, according to Appellant, is precluded by the disputed
limitation. App. Br. 8-10; Reply Br. 3--4. We, however, find no error in the
Examiner's conclusion that the claim language and Appellant's
Specification do not preclude the use of buffering. Ans. 18. While we agree
with Appellant's construction of "simultaneous" as meaning "existing or
occurring at the same time," App. Br. 9 (citing Merriam Webster online
dictionary, no date provided), this construction does not advance Appellant's
argument. Claim 7 merely requires ''partially simultaneous" playback and
downloading. App. Br. 14. As described in Appellant's Specification,
"partially simultaneous" means that "play back begins before the entire
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Appeal2015-004430
Application 11/306,4 70
content file is downloaded." Spec. if 26. We find, as did the Examiner, the
prior art (including Koivisto's use of buffering) teaches the recited partially
simultaneous download and playback. Final Act 5 (citing Koivisto iii! 105-
110; Best iii! 24, 27, 29).2 Accordingly, we are not persuaded of error by
Appellant's argument.
Second, Appellant argues the Examiner erred in finding Koivisto
teaches the disputed limitation because there is no "downloading of the
content file" in Koivisto. App. Br. 11; Reply Br. 2. On the record before us,
this argument does not persuade us of error. The Examiner relies not on
Koivisto alone, but on the combination of Koivisto with Sull and Best. Final
Act. 3-5. As the Examiner finds, Best teaches bookmarking within a
multimedia content file, wherein opening the bookmark file at a second user
device causes downloading of the multimedia content and playback from the
location identified by the bookmark. Final Act. 4 (citing Best iii! 27, 29
("retrieve resource," "present resource")) (emphasis added). Sull also
teaches a multimedia bookmarking system that includes "download[ing]
[the] image files." Ans. 18 (citing Sull Fig. 25, if 459) (emphasis added).
Accordingly, as the Examiner finds, the modification of Koivisto's "storing
and playing back [of] digital broadcast content," with the "downloading"
features taught in Sull and Best, teaches the disputed limitation. Ans. 18-19
(citing Koivisto Abs., if 110) (emphasis added). Appellant's arguments
2 Moreover, we note the dictionary cited by Appellant defines buffering as
"temporary storage" or "accept[ing] information at one rate and deliver[ing]
it at another." Merriam Webster Dictionary, http://www.merriam-
webster.com/dictionary/buffering (last visited Oct. 17, 2016). This
definition is consistent with the Examiner's findings, not Appellant's
argument that buffering is incompatible with the disputed claim limitation.
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Appeal2015-004430
Application 11/306,4 70
regarding Koivisto alone are unpersuasive, because "one cannot show non-
obviousness by attacking references individually where ... the rejections are
based on combinations of references," In re Keller, 642 F.2d 413, 426
(CCPA 1981).
For the foregoing reasons, we sustain the Examiner's rejection of
claims 1-11, 13, and 15-23 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Sull, Best, and Koivisto.
DECISION
We affirm the Examiner's decision to reject claims 1-11, 13, and 15-
23
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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