Ex Parte Rollins et al

Board of Patent Appeals and Interferences

Sep 24, 2010

10160590 (B.P.A.I. Sep. 24, 2010)

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.
10/160,590 05/31/2002 Thomas James Rollins PT03357U 5574
7590 09/24/2010
Motorola Inc
600 North US Highway 45
AS437
Libertyville, IL 60196
EXAMINER
LIEU, JULIE BICHNGOC
ART UNIT PAPER NUMBER
2612
MAIL DATE DELIVERY MODE
09/24/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS JAMES ROLLINS and BRUCE MCKAY MORTON
____________________

Appeal 2009-004823
Application 10/160,5901
Technology Center 2600

____________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and THOMAS S.
HAHN, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Motorola, Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-004823
Application 10/160,590

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 5-7, 12, 13, 17, 18, and 24.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
Appellants’ invention concerns a system for communicating
multimedia messages to a wireless communication device 106. The recipient
device receives an audio segment and a vibration melody from a network,
and drives an electromechanical transducer with both the audio segment and
the vibration melody (Spec. 6, 17). A single transducer is driven by both the
audio segment and the vibration melody (Spec. 14-15).
Claim 1 is exemplary of the claims on appeal:
1. A method for operating a communication device in a
communication system, the method comprising the steps of:
receiving a vibration melody through a network;
receiving an audio segment;
driving an electromechanical transducer with the audio segment; and
driving the electromechanical transducer with the vibration melody.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Saarmaa US 6,198,206 B1 Mar. 6, 2001
Lin US 6,366,791 B1 Apr. 2, 2002
Sony Corp., “Sony DC Clock Radio Operating Instruction,” pp. 1-15 (1998).

3 Claims 15 and 16 have been indicated as allowable (Ans. 6). Claims 8-11
and 20-23 stand objected to, but have been indicated as allowable if
rewritten in independent form (Final Rejection, Office Action Summary,
mailed Mar. 8, 2006). Claims 2-4, 14, 19, and 25 have been canceled.
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Claims 1, 5-7, 12, 13, 17, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lin in view of Sony.
Claims 1, 5-7, 12, 13, 15, 17, 18, and 24 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Saarmaa in view of Lin.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed February 18, 2008) and the Examiner’s Answer (“Ans.,”
mailed May 1, 2008) for their respective details.

ISSUES
With respect to the rejection of independent claims 1, 17, and 24 over
Lin in view of Sony, Appellants argue that the Examiner’s rejection is
erroneous because neither Sony nor Lin is designed to receive or play a
vibration melody as recited in claims 1, 17, and 24 (App. Br. 7). Appellants
argue against the Examiner’s interpretation of low audio frequencies as
corresponding to the claimed vibration melody (App. Br. 7-8). Appellants
further argue that one of ordinary skill in the art would not interpret acoustic
reproduction to include tactile vibration (App. Br. 8).
With respect to the rejection of claim 6 over Lin in view of Sony,
Appellants argue that Sony does not teach receiving an instruction to play
the audio segment and the vibration melody, as Sony only outputs an audio
segment (App. Br. 8-9).
With respect to the rejection of claim 7 over Lin in view of Sony,
Appellants argue that the Examiner does not cite a reference teaching
receiving data at a time of lower network utilization (App. Br. 9).
With respect to the rejection of claim 12 over Lin in view of Sony,
Appellants argue that the Examiner’s Official Notice of a movie with a
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soundtrack does not specify whether the visual media is separate from the
audio segment and the vibration melody, and that known file formats such as
MPEG do not include a vibration melody (App. Br. 9).
With respect to the rejection of claim 13 over Lin in view of Sony,
Appellants argue that the Examiner’s Official Notice of a movie and sound
track does not provide enough detail to establish prima facie obviousness
(App. Br. 10).
With respect to the rejection of independent claims 1, 17, and 24 over
Saarmaa in view of Lin, Appellants argue that Saarmaa does not
contemplate receiving a vibration melody through a network, and that Lin
does not propose a vibration melody distinct from an audio segment (App.
Br. 11).
With respect to the rejection of claim 7 over Saarmaa in view of Lin,
Appellants argue that the Examiner does not cite a reference teaching
receiving data at a time of lower network utilization (App. Br. 12).
With respect to the rejection of claim 12 over Saarmaa in view of Lin,
Appellants argue that the Examiner’s Official Notice of a movie with a
soundtrack does not specify whether the visual media is separate from the
audio segment and the vibration melody, and that known file formats such as
MPEG do not include a vibration melody (App. Br. 12).
With respect to the rejection of claim 13 over Saarmaa in view of Lin,
Appellants argue that the Examiner’s Official Notice of a movie and sound
track does not provide enough detail to establish prima facie obviousness
(App. Br. 13).

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Appellants’ contentions present us with the following issues:
1. Does the Specification require the claimed “vibration melody” to be
a signal that is perceived by humans as tactile vibrations rather than sound?
2. Did the Examiner err in construing the low frequencies of the audio
output by Lin or by Saarmaa as corresponding to the claimed “vibration
melody”?
3. Did the Examiner meet the limitations of claim 7, either by citing a
reference containing pertinent teachings, or by properly taking Official
Notice?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. Piezoelectric mechanical transducer 212 is especially suited to
outputting both audio segments and vibration melodies because it has a
sufficiently strong response at a relatively low frequency that is suitable for
generating perceptible vibrations (e.g., at a frequency in the range of about 1
to 250 hertz) (Spec. 6).
Lin
2. Lin teaches a system and method allowing network operators to
download ringing tone pattern(s) associated with one or more musical scores
to mobile stations according to the music selection of mobile subscribers
(Abstract).

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PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.

ANALYSIS
REJECTION OF CLAIMS 1, 17, AND 24 OVER LIN IN VIEW OF SONY
We are not convinced by Appellants’ arguments, outlined supra, that
the combination of Lin and Sony fails to teach or fairly suggest the claimed
invention. Appellants argue that the claimed vibration melody refers to
vibrations that are not audio but rather detected through the sense of touch
(App. Br. 6). Pages 6 and 8 of the Specification relied upon by Appellants,
however, refer only to “perceptible vibrations” in the frequency range of 1 to
250 Hertz, and do not specify either that these vibrations cannot be audio or
that they can only be perceived through touch. Further contrary to
Appellants’ arguments, the word “tactile” does not appear on the cited
pages. The Examiner finds, and we agree, that it is well known that music
contains both an audio segment and a vibrational melody (Ans. 3). We find
that the disclosed vibrational frequencies of 1 to 250 Hertz (FF 1)
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substantially overlap with the known range of typical human hearing, which
begins at approximately 20 Hertz. We further find that all sound consists of
the vibration of air, and that low frequency sounds constitute vibrations that
are perceptible by ear and by touch. We therefore agree with the Examiner’s
finding that by outputting music, Lin teaches the recited “audio segment” as
well as the recited “vibration melody” (Ans. 3).
Because Appellants have not established error in the Examiner’s
§ 103 rejection of claims 1, 17, and 24 over Lin in view of Sony, we will
sustain the rejection.
REJECTION OF CLAIM 5 OVER LIN IN VIEW OF SONY
Appellants’ argument that the Examiner erred in rejecting claim 5
because Lin and Sony only contemplate an audio segment and do not
envisage a vibration melody is not well taken. As noted supra, we find that
Lin does teach the claimed vibration melody.
We therefore affirm the § 103 rejection of claim 5, for the reasons
expressed supra with respect to parent claim 1.
REJECTION OF CLAIM 6 OVER LIN IN VIEW OF SONY
Appellants’ argument that Sony’s “play button” does not output a
vibration melody is not well taken in view of our finding supra that Lin does
teach the claimed vibration melody. We therefore affirm the § 103 rejection
of claim 6, for the reasons expressed supra with respect to parent claim 1.
REJECTION OF CLAIM 7 OVER LIN IN VIEW OF SONY
Appellants’ argument that the Examiner did not cite a reference to
teach receiving data at a time of lower network utilization is persuasive to
show Examiner error. The Examiner’s Answer states only that it is “known”
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to receive data at a time of lower communication network utilization (Ans.
4). No reference is cited, and no attempt is made to invoke Official Notice.
Because the Examiner cites no evidence in support of his allegation of
known subject matter, we will not sustain the rejection of claim 7 as being
obvious over the combination of Lin and Sony.
REJECTION OF CLAIMS 12 AND 13 IN VIEW OF LIN AND SONY
With respect to claim 12, Appellants’ argument that the Examiner’s
Official Notice of a video music clip and a movie with a soundtrack “does
not specify whether the visual media is separate from the audio segment and
from the vibration melody” (App. Br. 9) is not commensurate in scope with
the claims, which merely specify receiving and outputting visual media.
Appellants’ further argument that known formats does not include a
vibration melody is also not persuasive, given our finding supra that low
audio frequencies correspond to the claimed vibration melody.
Appellants’ arguments with respect to claim 13 are similarly
unpersuasive. Known video file formats output visual media “at least
partially concurrently” with the audio segment and the low frequencies
thereof (the vibration melody). The Examiner’s Official Notice corresponds
in detail to the claim recitation of “visual media.”
Accordingly, we will sustain the § 103 rejection of claims 12 and 13
over Lin in view of Sony.
REJECTION OF CLAIMS 1, 17, AND 24 OVER SAARMAA IN VIEW OF LIN
We are not convinced by Appellants’ arguments, outlined supra, that
the combination of Saarmaa and Lin fails to teach or fairly suggest the
claimed invention. Appellants argue that the claimed vibration melody refers
to vibrations that are not audio but rather detected through the sense of touch
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(App. Br. 6). Pages 6 and 8 of the Specification relied upon by Appellants,
however, refer only to “perceptible vibrations” in the frequency range of 1 to
250 Hertz, and do not specify either that these vibrations cannot be audio or
that they can only be perceived through touch. Further contrary to
Appellants’ arguments, the word “tactile” does not appear on the cited
pages. The Examiner finds, and we agree, that Lin discloses a
communication system wherein music can be received over a network (Ans.
4, FF 2). We find that the disclosed vibrational frequencies of 1 to 250 Hertz
(FF 1) substantially overlap with the known range of typical human hearing,
which begins at approximately 20 Hertz. We further find that all sound
consists of the vibration of air, and that low frequency sounds constitute
vibrations that are perceptible by ear and by touch. The lower frequencies of
Lin’s music signal thus correspond to the claimed vibration melody, and the
combination of Saarmaa and Lin teaches all of the elements of the claims.
Because Appellants have not established error in the Examiner’s
§ 103 rejection of claims 1, 17, and 24 over Saarmaa in view of Lin, we will
sustain the rejection.
REJECTION OF CLAIMS 5, 6, AND 18 OVER SAARMAA IN VIEW OF LIN
In discussing these claims, Appellants rely on the arguments made
with respect to independent claims 1 and 17 (App. Br. 12, 13). We therefore
sustain the § 103 rejection of claims 5, 6, and 18 over Saarmaa in view of
Lin for the same reasons expressed supra with respect to independent claims
1 and 17.
REJECTION OF CLAIM 7 OVER SAARMAA IN VIEW OF LIN
Appellants’ argument that the Examiner did not cite a reference to
teach receiving data at a time of lower network utilization is persuasive to
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show Examiner error. The Examiner’s Answer states only that it is “known”
to receive data at a time of lower communication network utilization (Ans.
5). No reference is cited, and no attempt is made to invoke Official Notice.
Because the Examiner cites no evidence in support of his allegation of
known subject matter, we will not sustain the rejection of claim 7 as being
obvious over the combination of Saarmaa in view of Lin.
REJECTION OF CLAIMS 12 AND 13 OVER SAARMAA IN VIEW OF LIN
With respect to claim 12, Appellants’ argument that the Examiner’s
Official Notice of a video music clip and a movie with a soundtrack “does
not specify whether the visual media is separate from the audio segment and
from the vibration melody” (App. Br. 12) is not commensurate in scope with
the claims, which merely specify receiving and outputting visual media.
Appellants’ further argument that known formats do not include a vibration
melody (Id.) is also not persuasive, given our finding supra that low audio
frequencies correspond to the claimed vibration melody.
Appellants’ arguments with respect to claim 13 are similarly
unpersuasive. Known video file formats output visual media “at least
partially concurrently” with the audio segment and the low frequencies
thereof (the vibration melody). The Examiner’s Official Notice corresponds
in detail to the claim recitation of “visual media.”
Accordingly, we will sustain the § 103 rejection of claims 12 and 13
over Saarmaa in view of Lin.

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CONCLUSIONS
1. The Specification does not require the claimed “vibration melody”
to be a signal that is perceived by humans as tactile vibrations rather than
sound.
2. The Examiner did not err in construing the low frequencies of the
audio output by Lin or by Saarmaa as corresponding to the claimed
“vibration melody.”
3. The Examiner did not meet the limitations of claim 7, either by
citing a reference containing pertinent teachings, or by properly taking
Official Notice.

ORDER
The Examiner’s § 103 rejection of claims 1, 5, 6, 12, 13, 17, and 24
over Lin in view of Sony is affirmed. The Examiner’s § 103 rejection of
claims 1, 5, 6, 12, 13, 17, 18, and 24 over Saarmaa in view of Lin is
affirmed. The Examiner’s rejection of claim 7 over Lin in view of Sony, or
alternatively over Saarmaa in view of Lin, is reversed.
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)(v).

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AFFIRMED-IN-PART

ELD

MOTOROLA INC
600 NORTH US HIGHWAY 45
AS437
LIBERTYVILLE, IL 60196
12