Ex Parte Snyder et al

Patent Trial and Appeal Board

Jul 29, 2013

11261254 (P.T.A.B. Jul. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RANDALL ADAM SNYDER, SEAN EDWARD MOORE,
TOMISLAV PETROVIC, SCOTT RICHARD CROWDER, and
EDWARD GEORGE GROSS, JR.
____________

Appeal 2011-001917
Application 11/261,254
Technology Center 2100
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Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-3 and 5-29. We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.
STATEMENT OF THE CASE
The present invention is a publisher application for transferring a
media file from a content provider to remote electronic devices.
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Specification, Abstract. “[T]he media file may be processed so that it is
suitable for display on one or more specific platforms or on a particular
model of the electronic device (e.g., a cellular telephone model available
from a particular manufacturer).” Id. at ¶ 28.
Independent claim 1 is illustrative, with key disputed limitations
emphasized:
1. A method to publish content for at least one remote
electronic device, the method including:
providing a content provider with an interface to directly
provide the content for publishing by a content publishing
system;
automatically ingesting the content into the content publishing
system;
transcoding the content to a format appropriate for the at least
one remote electronic device; and
automatically making the content available to the at least one
remote electronic device;
wherein the interface is a graphical user interface and the
method includes:
providing a display window for receiving the content;
monitoring a user action in which the content is placed in
the display window; and
automatically uploading the content to the content
publishing system.
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The Examiner relies on the following references as evidence of
unpatentability:
Ishii US 2002/0154759 A1 Oct. 24, 2002
Sano US 2005/0010964 A1 Jan. 13, 2005
Parker US 5,729,734 Mar. 17, 1998
Seaman US 2003/0081145 A1 May 1, 2003
Wilson US 2002/0042741 A1 Apr. 11, 2002
Lee US 6,950,941 B1 Sep. 27, 2005
REJECTIONS
The Examiner rejected claims 1-3, 5-9, 12-14, 20-22, 24, and 26-29
under 35 U.S.C. § 103 as unpatentable over Ishii and Sano. Ans., pp. 4-10.1
The Examiner rejected claims 10 and 17 under § 103 as unpatentable
over Ishii, Sano, Parker, and Seaman. Id. at pp. 10-11.
The Examiner rejected claim 11 under § 103 as unpatentable over
Ishii, Sano, and Wilson. Id. at p. 12.
The Examiner rejected claims 15, 16, 18, and 19 under § 103 as
unpatentable over Ishii, Sano, and Parker. Id. at pp. 12-14.
The Examiner rejected claim 23 under § 103 as unpatentable over
Ishii, Sano, and Seaman. Id. at pp. 14-15.2

1 Throughout this opinion, we refer to the Appeal Brief filed June 10, 2010
(“App. Br.”), Examiner’s Answer mailed July 2, 2010 (“Ans.”), and Reply
Brief filed August 26, 2010 (“Reply Br.”).
2 The Answer’s heading for this rejection references claims 10 and 17, but
the body of this rejection makes clear that rather and only claim 23 is
rejected over Ishii, Sano, and Seaman.
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The Examiner rejected claim 25 under § 103 as unpatentable over
Ishii, Sano, and Lee. Id. at p. 15.
ANALYSIS
Appellants present all claims as standing or falling with claim 1 (App.
Br., pp. 19-20), which is rejected as obvious over Ishii and Sano. Appellants
argue that Ishii and Sano fail to teach the claimed transcoding and
monitoring steps, emphasized within claim 1 as reproduced above. App.
Br., pp. 16-19. For the reasons below, the arguments do not establish a
reversible error. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[T]he Board would not have erred in framing the issue as one of
‘reversible error.’”).
Claimed Transcoding Step
The Examiner finds that the claimed step of “transcoding the content
to a format appropriate for the … electronic device” is taught by Sano in
each of two respects. First, Sano’s server transfers music data in a specific
range, data offset, and byte number for the client. Ans., p. 16 (citing Sano, ¶
132). Second, Sano’s client decodes the received data to a form that can be
processed by its digital-to-analog (“D/A”) converter. Id. (citing Sano, ¶ 62).
Appellants argue that Sano’s server does not transcode the music data
to a format appropriate for the client, but rather instructs the client to skip
music files that are in a format the client cannot reproduce. Id. at p. 3 (citing
Sano, ¶ 113); see also App. Br., p. 17. Appellants do not address the
Examiner’s finding that Sano’s client transcodes data for processing by its
D/A converter.
Giving the claim terms “their broadest reasonable interpretation
consistent with the specification,” In re Sneed, 710 F.2d 1544, 1548 (Fed.
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Cir. 1983), we construe the claimed transcoding step as performing a digital-
to-digital conversion of data to a form required for processing by the
electronic device. In support, we note that neither the claim nor the
Specification restricts the recited “format appropriate for the … electronic
device.” And to the contrary, the Specification presents mere examples of
transcoding formats (Spec., ¶¶ 18-19 (cited by Reply Br., p. 2)) that are
“illustrative rather than … restrictive” (Spec., ¶ 44). We thus interpret
“format appropriate,” as claimed, to merely mean a form required for
processing.
Applying the above construction, we agree with Appellants that
Sano’s server cannot perform the claimed transcoding by way of merely
transferring the music data “in a specific range, data offset and byte number
for the client.” Ans., p. 16 (citing Sano, ¶ 132). That is, we agree the cited
transfer does not teach the server as performing a digital-to-digital
conversion of the data.
However, we also agree with the Examiner’s finding that Sano’s
client performs the claimed transcoding by way of “decoding” the received
digital AV file to “resulting [digital] data” for input to the D/A converter.
Sano, ¶ 62 (cited by Ans., p. 16). In short, a decoding of digital data to
resulting digital data for further processing clearly entails a digital-to-digital
conversion of the data to a form required for processing. Nothing more is
required by the claimed transcoding.
Accordingly, Appellants have not shown the Examiner erred in
finding the claimed transcoding is taught by Sano.
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Claimed Monitoring Step
The Examiner finds that the claimed step of “monitoring a user action
in which the content is placed in the display window” is taught by Ishii’s
website for downloading, stating:
Ishii teaches … a user at a mobile device accesses a website
(display window) of a server to download a piece of music …
(Ishii, [0063], [0158]) by selecting desired piece of music
displayed/placed in the website and clicking on the download
button (fig.8, [0159]).
Ans. p. 17.
Appellants do not dispute that Ishii’s above-described process
includes monitoring a user’s placement of media content within a window of
the website. Rather, Appellants argue that the process is used for
downloading content to a user, not uploading content from a content
provider. Particularly, Appellants contend:
The cited paragraph refers to actions a “user” performs
“[w]hen downloading music data for us as a ring tone.”
[footnote omitted]. However, the cited paragraph does not
relate to actions a content provider performs to provide the
music data for publishing to the user. … Ishii is silent as to
how the [content provider] designates the file.
App. Br., p. 18 (addressing Ishii, ¶ 159).
Contrary to Appellants’ argument and as explained by the Answer’s
“Response to Argument” section,3 neither the claim language “monitoring a
user action in which the content is placed in the display window” nor the

3 The Reply Brief does not address the claimed monitoring step, much less
the Examiner’s comments with respect thereto.
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claim as a whole requires the monitored user to be a content provider. See
Ans., p. 17. For example, there is no requirement for the claimed “wherein”
clause steps – providing, monitoring, and uploading – to be performed as
part of the claimed ingesting of content into the content publishing system.
And, there is no requirement for the claimed uploading to be performed in
response to the claimed monitoring. See id.
Accordingly, Appellants have not shown the Examiner erred in
finding the claimed monitoring is taught by Ishii.
Conclusion
Appellants have not shown a reversible error in the rejection of claim
1. As all claims fall with claim 1, we sustain the obviousness rejections of:
claims 1-3, 5-9, 12-14, 20-22, 24, and 26-29 over Ishii and Sano; claims 10
and 17 over Ishi, Sano, Parker, and Seaman; claim 11 over Ishi, Sano, and
Wilson; claims 15, 16, 18, and 19 over Ishi, Sano, and Parker; claim 23 over
Ishi, Sano, and Seaman; and claim 25 over Ishi, Sano, and Lee.

ORDER
The Examiner’s decision rejecting claims claims 1-3 and 5-29 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).

AFFIRMED

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