Ex Parte Wehrenberg et al

Patent Trial and Appeal Board

Sep 28, 2017

12755282 (P.T.A.B. Sep. 28, 2017)

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.
12/755,282 04/06/2010 Paul J. Wehrenberg P2451USD4 8320
62579 7590
APPLE INC.
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
EXAMINER
SASINOWSKI, ANDREW
ART UNIT PAPER NUMBER
2622
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
patentdocket @ bhfs. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL J. WEHRENBERG, AARON LEIBA,
RICHARD C. WILLIAMS, DAVID R. FALKENBURG,
LOUIS G. GERBARG, and RAY L. CHANG
Appeal 2017-006736
Application 12/755,2821
Technology Center 2600
Before LINZY T. McCARTNEY, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—21. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellants identify Apple Inc. as the real party in interest. Appeal Br. 3.
Appeal 2017-006736
Application 12/755,282
ILLUSTRATIVE CLAIM
Claims 1, 8, and 15 are independent claims. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method, comprising:
determining whether a portable device is moving using an
accelerometer;
determining a moving pattern of the portable device based
on movement data provided by the accelerometer;
selecting a media content based on the moving pattern of
the portable device; and
playing the selected media content via the portable device.
THE REJECTION
Claims 1—21 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over McHugh (US 6,230,047 Bl; May 8, 2001) and Howard
(US 6,747,632 B2; June 8, 2004). Final Act. 3-8.
ANALYSIS
In rejecting claim 1, the Examiner finds McHugh teaches “selecting a
media content based on the moving pattern” with McHugh’s disclosure of an
apparatus that receives a signal of a user’s heartbeat and triggers a
programmed rhythm that is played in a music playback device at a tempo
corresponding to the user’s heartbeat. Final Act. 3 (citing McHugh, Fig. 3,
col. 2,11. 54—64). Appellants contend, among other things, the Examiner
errs in finding McHugh discloses or suggests this limitation. Appeal Br. 10—
11; Reply Br. 2. Instead, Appellants assert “McHugh teaches a desired
rhythm is selected by a user [from pre-programmed rhythm pattern data] and
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the user-selected rhythm is then played at the tempo of the user’s heartbeat.
Appeal Br. 10-11 (citing McHugh, col. 5,11. 8—10).
In response, the Examiner maintains that McHugh teaches the
disputed “selecting” limitation because “a single rhythm, played at two
different tempos, is considered to be two different pieces of ‘media content’
based [on] a reasonable interpretation of the phrase ‘media content.’”
Ans. 3. In reply, Appellants submit that “playing a single rhythm at two
different tempos is irrelevant.” Reply Br. 2. Rather, Appellants assert
McHugh’s disclosure of “playing” a single rhythm at two different tempos
does not disclose or suggest “selecting” a media content based on a moving
pattern of the portable device. Reply Br. 2.
Having considered the Examiner’s rejection in light of each of
Appellants’ arguments and the evidence of record, we find the Examiner
errs. McHugh’s disclosures of playing a rhythm at different tempos based
on a user’s heartbeat do not support the Examiner’s finding that McHugh
teaches or suggests “selecting a media content based on the moving pattern,”
as claimed. To the contrary, only after selecting a rhythm does McHugh’s
apparatus adjust or set the rhythm’s tempo based on the user’s heartbeat.
See McHugh, col. 1,11. 44-46 (“The audio comprises a rhythm that is played
at a selected tempo corresponding to an individual’s heart rate.”), col. 2,
11. 54—col. 3,11. 13 (describing a pre-programmed rhythm that is played at a
certain tempo in relation to the user’s heartbeat), col. 5,11. 40-44 (“[A]
triggered, programmed rhythm ... is played at the tempo of the user’s heart
rate. As the user’s pulse rate increases, the tempo of the rhythm
correspondingly increases; as the user’s pulse rate decreases, the tempo of
the rhythm correspondingly decreases.”). The Examiner has not provided
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Application 12/755,282
sufficient persuasive evidence that McHugh selects a rhythm to be played
based on or in accordance with a moving pattern of the user’s heartbeat.
Further, the Examiner’s findings are inconsistent with the
Specification and the claimed invention, which distinguish between
(1) selecting a rhythm that has a tempo corresponding to a moving pattern;
and (2) while playing a rhythm, adjusting the rhythm’s tempo to match the
moving pattern. Compare Spec. 1121 (disclosing that “application software
may . . . select... a multimedia content that is best suitable for the
determined user’s activities (e.g., joggling [sic] rate)” and “when the
accelerometer . . . detects that a user is performing certain types of activities,
an associated type of multimedia contents may be selected”), 1122 (“digital
multimedia content having a rhythm relatively matched with the determined
repetitive rate [of the movements of the portable device] is optionally
selected and played”), and claim 4 (“selecting . . . media content that has a
tempo relatively matched with the repetitive rate of the movement”), with
Spec. 1120 (“the tempo of a music currently played by an MP3 player may
be adjusted to relatively match the joggling rate of the user holding the MP3
player”) and claim 3 (“adjusting a rhythm of the media content to relatively
match the repetitive rate of the movement”).
In light of the evidence of record, the cited disclosures of McHugh do
not support the Examiner’s finding that McHugh teaches or suggests
“selecting a media content based on the moving pattern,” as recited in claim
1. Further, the Examiner does not find or explain that Howard teaches or
suggests the “selecting” limitation. See Final Act. 3^4; Ans. 2—3. Rather,
the Examiner finds Howard teaches an “accelerometer for detecting user
input” and “performing a user input based upon movement of a portable
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Application 12/755,282
device” and explains that Howard was “cited ... to show that it is known in
the art to use an accelerometer to monitor the movement of an entire
device.” Final Act. 3^4 (citing Howard, col. 3,11. 22—25); Ans. 2 (citing
Howard, col. 3,11. 15—25), see also Ans. 3. Additionally, the Examiner has
not provided an adequate rationale to fill the gaps in the cited prior art. See
Final Act. 3^4; Ans. 2—3.
Therefore, having considered the Examiner’s rejection of independent
claims 1, 8, and 15 in light of Appellants’ arguments and the evidence of
record, we do not sustain the Examiner’s rejection of claims 1, 8, or 15, nor
do we sustain the Examiner’s rejection of dependent claims 2—7, 9—14, and
16-21.
DECISION
We reverse the Examiner’s decision rejecting claims 1—21 under
35 U.S.C. § 103(a).
REVERSED
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