Ex Parte Nakayama

Patent Trial and Appeal Board

Jun 22, 2016

12606314 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/606,314 10/27/2009
26304 7590 06/24/2016
KATTEN MUCHIN ROSENMAN LLP
575 MADISON A VENUE
NEW YORK, NY 10022-2585
FIRST NAMED INVENTOR
Ryuji NAKAYAMA
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.
SCEP
24.117(100809-00517)
CONFIRMATION NO.
2532
EXAMINER
HE,WEIMING
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
nycuspto@kattenlaw.com
samson.helf gott@kattenlaw.com
hassan. shakir@kattenlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYUJI NAKAYAMA
Appeal2015-000386
Application 12/606,314
Technology Center 2600
Before MAHSHID D. SAADAT, MIRIAM L. QUINN, and
ALEX S. YAP, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-8, 10, and 11, which constitute all the claims pending in this
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is Sony Computer
Entertainment Inc. (App. Br. 2).
2 Claim 9 has been canceled.
Appeal2015-000386
Application 12/606,314
STATEivIENT OF THE CASE
Appellant's invention relates to an image display method for
displaying an image related to the delivered music using a music delivery
service (Spec. ,-r 1 ).
Claim 1 is illustrative and reads as follows:
1. A computer program embedded in a non-transitory
computer-readable medium, the program comprising:
a module operative to receive, over a network, an audio
stream signal with one or more full audio compositions in
sequence contained therein, to capture and playback in real time
an audio composition upon receipt in the audio stream signal,
and to simultaneously receive in real time over said network
respective information regarding the audio composition,
including a static representative image related to the audio
composition;
a module operative to display the static representative
image related to the audio composition, and operative to
arrange the representative image in a three-dimensional virtual
space in respective order received from the audio stream signal;
a module operative to flicker an image representing a
water surface in order to create a visual effect that makes the
representative image appear floating on the water surface,
a module operative to store a sample of a full audio
composition in a stream data storage during real-time playback
of the full audio composition, wherein the sample is retained
after playback and associated with the respective information
regarding the full audio composition, and
a module operative to refer to a prior audio composition
of the audio stream signal sequenced prior to an audio
composition currently streamed, in response to user operation,
by using the respective information of the prior audio
composition, and operative to acquire an associated sample
retained for the prior audio composition and to play back the
associated sample of the prior audio composition.
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Appeal2015-000386
Application 12/606,314
The Examiner rejected claims 1--4, 7, 8, 10, and 11 under 35 U.S.C.
§ 103(a) as being unpatentable over Dowdy (US 7,581,186 B2; Aug. 25,
2009) and Finley (US 7,257,536 Bl; Aug. 14, 2007); and further added Lee
(US 2007/0219937 Al; Sept. 20, 2007) to reject claims 5 and 6. (See Final
Act. 5-15.)
ANALYSIS
The Examiner finds Dowdy discloses "a module operative to display
the static representative image ... " and "a module operative to flicker
an image representing a water surface ... " and further relies on Finley as
disclosing the remaining limitations of claim 1 including "a module
operative to receive, over a network, an audio stream signal ... " (Final
Act. 5-8). The Examiner finds that:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the program of Dowdy with
the teaching of Finley so as to receive an audio stream signal
over the network and save a sample of an audio content for
playback later or order the full audio content over the network.
(Final Act. 8).
Appellant contends that the media management program disclosed in
Dowdy, such as iTunes, "can be used to buy and download music to be
played locally," but does not provide for receiving an audio stream signal
(App. Br. 7). According to Appellant, "iTunes did not introduce the type of
music streaming indicated by the Examiner (iTunes Match Streaming) until
the release of iOS 6 which occurred in 2012, much later than the filing date
of the present application," as supported by the two identified articles or
statements related to the iOS 5 and iOS 6 capabilities (App. Br. 7-8).
Additionally, Appellant asserts the earlier versions of iTunes were only
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Appeal2015-000386
Application 12/606,314
capable of allowing a user to listen to a stream of pre-selected songs similar
to conventional radio (App. Br. 8). With respect to Finley, Appellant
contends that storing a broadcast stream does not allow the user to navigate
back to a particular song and replay it (id.).
In response, the Examiner asserts that,
It is obvious to [one of] the [ordinary] skill in the art that
remote[] access the online media store over the internet is
linked to "receiving an audio stream signal". Apple, as an
assignee of Dowdy's invention, introduced a streaming media
format in its QuickTime 4 application in June 1999. When
iTunes was first released, iTunes has online radio streams
available, which at least teaches a streaming feature within
iTunes as early as 2001.
(Ans. 2).
We agree with Appellant that Dowdy does not disclose the recited
features related to controlling the streamed content by a media management
program, such as iTunes, based on the capabilities present in the version of
iTunes available at the time of filing the present Application (see Reply Br.
2). At best, the Examiner's assertion that Dowdy "teaches a streaming
feature within iTunes as early as 2001" is based on probability and
speculation, and not based on any teaching of Dowdy or other evidence of
record identified by the Examiner. The Examiner may not, because of doubt
that the invention is patentable, resort to speculation, unfounded assumption
or hindsight reconstruction to supply deficiencies in the factual basis for the
rejection. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Therefore, Appellant's arguments have persuaded us of error in the
Examiner's position with respect to the rejection of independent claim 1,
independent claims 10 and 11, which recites similar limitations, as well as
claims 2-8 dependent therefrom.
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Appeal2015-000386
Application 12/606,314
DECISION
The Examiner's decision to reject claims 1-8, 10, and 11 is reversed.
REVERSED
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