Ex Parte Lee et al

Patent Trial and Appeal Board

Dec 18, 2014

11696769 (P.T.A.B. Dec. 18, 2014)

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.
11/696,769 04/05/2007 Matthew Lee 16813-113US 5099
20988 7590 12/19/2014
NORTON ROSE FULBRIGHT CANADA LLP
1, Place Ville Marie
SUITE 2500
MONTREAL, QC H3B 1R1
CANADA
EXAMINER
HAILU, TADESSE
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
12/19/2014 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 MATTHEW LEE, ANDREW JAMES TURCOTTE, SAMER
FAHMY, ANDREW DOUGLAS BOCKING, MICHAEL THOMAS
HARDY, and ALEN MUJKIC
____________

Appeal 2012-007370
Application 11/696,7691
Technology Center 2100
____________

Before DEMETRA J. MILLS, ERIC B. GRIMES, and KENNETH G.
SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving method and
apparatus claims directed to determining playback behavior in a media
application. The Examiner rejected the claims as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 According to Appellants, the real party in interest is Research In Motion
Limited. App. Br. 3.
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Application 11/696,769

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STATEMENT OF THE CASE
Background
The Specification “relates generally to portable devices[;] and more
particularly to a system and method for determining media playback
behavior in a media application for a portable media device.” Spec. ¶ 1.
The Claims
Claims 1–20 are on appeal. Claim 1 is representative and reads as
follows.
1. A method for determining playback behavior in a media
application for a wireless communications device having a
memory with two or more media files stored therein and a
processor, the processor configured for:
determining a current media file type associated with a
current media file, the current media file type being one of two
or more media file types associated with the two or more media
files;
determining that an event has occurred during playback
of the current media file, the event being one of a user triggered
event and an end to the playback of the current media file;
selecting a function to perform based on the current
media file type and the event; and
performing the selected function.
App. Br. 14 (emphasis added). Independent claims 10 and 19 are directed to
a wireless device and a computer program product, respectively, and
implement the method steps of claim 1. Id. at 16–17, 19.
The Rejection
The Examiner maintains that claims 1–20 are unpatentable under
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35 U.S.C. § 102(e) over Seymour.2
DISCUSSION
Appellants argue that the rejection should be reversed based on the
“selecting a function” limitation in claim 1 and assert that the same
arguments apply to independent claims 10 and 19. See App. Br. 10–12.
Accordingly, we find that the analysis below with respect to claim 1 applies
to all of the appealed claims.
The Examiner finds that Seymour discloses a method for determining
playback behavior in a media application including each of the steps
required by claim 1. See Ans. 4–5 (citing Seymour, Abstract; ¶¶ 9, 13, 17,
21, 28, 32, 33, 76, 83–85).
The dispositive issue with respect to this rejection is whether Seymour
discloses “selecting a function to perform based on the current media file
type and the event” as required by claim 1.
Principles of Law
The Examiner must establish a prima facie case of anticipation under
§ 102 by showing, as a matter of fact, that all elements in a claim are
disclosed within the four corners of a reference, either expressly or
inherently, in a manner enabling one skilled in the art to practice an
embodiment of the claimed invention without undue experimentation.
ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed.
Cir. 2012); Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed.
Cir. 2008).

2 Seymour, US 2007/0239687 A1, published on Oct. 11, 2007.
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During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The claim language must
be read in light of the specification, as it would be interpreted by one of
ordinary skill in the art. Id.
Analysis
Appellants argue that Seymour does not anticipate claim 1 because
Seymour does not disclose selecting a function to perform based on the
current media file type and the event. App. Br. 10. Appellants acknowledge
that Seymour discloses a method for “automatically selecting and
performing a current media file having at least one attribute in compliance
with the play criteria specification.” Id. at 11. However, Appellants argue
that “[t]here is no teaching or suggestion in Seymour of taking the type of
media file (such as audio, video, etc[.]) and/or an event into account when
selecting a function to perform.” Id. at 11–12.
The Examiner responds that Seymour takes the media file type and
event into account when selecting a function to perform. Ans. 9. The
Examiner argues that Seymour discloses that the media file attributes
identify or determine the current media file type and the user may apply or
select appropriate menu functions once the media file type is identified. Id.
For the reasons set forth below, we find that Seymour discloses
“selecting a function to perform based on the current media file type and the
event” as required by claim 1.
Seymour discloses the following:
A method for handling media files having attributes is
disclosed. A user-configurable play criteria specification is
provided, and the method involves automatically selecting and
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performing a current media file having at least one attribute in
compliance with the play criteria specification. Moreover, the
method involves receiving a user input indicative of a desired
play criterion, the desired play criterion being related to at least
one attribute of the current media file, and updating the play
criteria specification to include the desired play criterion.
Seymour, Abstract. Seymour also discloses a method for “adaptable random
play” of media files in which a user can select certain attributes of the
current media file to input into the play criteria specification such that once
the current file ends the next file played is selected based on the updated
play criteria specification. Id. at ¶¶ 75–84.
Based on these disclosures in Seymour, we agree with the Examiner
that Seymour discloses selecting a function to perform based on the current
media file type and the event; where the selected function is playing the next
file based on the play criteria specification, the current media file type is
defined by its attributes, and the event is the end of playback of the current
media file. Appellants appear to argue only that Seymour does not disclose
this limitation because Seymour does not take “the type of media file (such
as audio, video, etc[.])” into account in selecting a function to perform. See
App. Br. 11. However, as suggested by the Examiner, we find that the term
“media file type” may reasonably be interpreted to include defining the file
type based on its attributes and not solely based on whether it is an audio
file, video file, or some other broad category of files. The Specification
states the following with respect to media file types:
While three possible media file types (i.e., video files, music
files, and ring tones files) have been described resulting in three
different types of treatment by the media player application 308
in two different scenarios (i.e., the media file arriving at an end
or one of a number of user triggered events occurring), it will
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be understood that any number of types of media files may be
treated in any number of ways, depending on the design criteria
of a particular application and/or any configuration settings set
by the user in the media player application 308.
Spec. ¶ 74. We conclude that this interpretation of media file type is
consistent with how one of ordinary skill would interpret the claims,
particularly in light of this description of media file types in the
Specification, which encompasses “any number of types of media files.”
Finally, we note that Appellants provide no explanation or evidence showing
that this claim interpretation is inconsistent with the claim language,
Specification, or the understanding of a person of ordinary skill in the art.
Based on the foregoing, we find that the Examiner has established a
prima facie showing of anticipation, which Appellants have failed to rebut.
Accordingly, we affirm the rejection of claim 1. Claims 2–20 fall with claim
1. See 37 C.F.R. § 41.37(c)(1)(vii).

CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1–
20.
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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