Ex Parte Zigler et al

Patent Trial and Appeal Board

Jun 14, 2018

12239473 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/239,473 09/26/2008 Jeffrey D. Zigler
86548 7590 06/18/2018
Garlick & Markison (IH)
106 E. 6th Street, Suite 900
Austin, TX 78701
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. CONFIRMATION NO.
159-DDG-09-2008 3499
EXAMINER
WILLIS, AMANDA LYNN
ART UNIT PAPER NUMBER
2158
NOTIFICATION DATE DELIVERY MODE
06/18/2018 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):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY D. ZIGLER, RICHARD D. WOODEN,
JACQUELINE J. LOCKHART, KEVIN R. LOCKHART,
THEODORE A. MYERS, and EV AN A. HILL
Appeal2017-002868
Application 12/239,473 1
Technology Center 2100
Before JASON V. MORGAN, HUNG H. BUI, and MICHAEL J. ENGLE,
Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify iHeartMedia Management Services, Inc., as the real
party in interest. App. Br. 2.
Appeal2017-002868
Application 12/239,473
Invention
Appellants disclose methods of creating and updating a dynamic
audio file where "the dynamic audio file may comprise a tag and initial
audio content." Abstract.
Representative Claim (formatting added; key limitations emphasized)
1. A method of creating a dynamic audio file, the method comprising:
configuring a dynamic audio file to include an audible preamble and
primary audio content, wherein:
the audible preamble includes an audible statement to be
played to a user, wherein the audible statement is configured to
instruct a user regarding functionality of updater software
associated with the dynamic audio file, and
the audible preamble is presented to a user if a client computer
receiving the dynamic audio file does not have the updater
software running thereon for updating current audio content of
the dynamic audio file with newly downloaded audio content;
specifying a plurality of attributes in a tag to be associated with audio
content of the dynamic audio file, the plurality of attributes including
at least one update parameter usable by the updater software for at
least one of replacing the current audio content with newly
downloaded audio content including primary audio content different
than the primary audio content of the current audio content and
inhibiting playback of the audible preamble of the current audio
content after an initial instance of playback of the current audio
content; and
associating the tag with the dynamic audio file.
Rejections & References
(1) The Examiner rejects claims 1-3 and 6-10 under
35 U.S.C. § I03(a) as being unpatentable over Berkson et al. (US 2004/
0148424 Al; published July 29, 2004) ("Berkson") and Le Vasseur et al. (US
2007/0005717 Al; published Jan. 4, 2007) ("Le Vasseur"). Final Act. 2-7.
2
Appeal2017-002868
Application 12/239,473
(2) The Examiner rejects claims 4, 5, 11, and 16 under
35 U.S.C. § I03(a) as being unpatentable over Berkson, Le Vasseur, and
Fedorovsky et al. (US 2002/0099798 Al; published July 25, 2002)
("Fedorovsky"). Final Act. 8-13.
(3) The Examiner rejects claims 12-15 and 17-20 under 35 U.S.C.
§ I03(a) as being unpatentable over Berkson and Fedorovsky. Final Act.
13-22.
EXAMINER FINDINGS
In support of the obviousness rejection of claim 1, the Examiner finds
that Berkson-by disclosing a media file that includes primary
advertisement content 3 that can be experienced prior to experiencing
primary media content 2-teaches or suggests configuring a dynamic audio
file to include an audible preamble and primary audio content, where the
audible preamble includes an audible statement to be played to a user.
Final Act. 22 ( citing Berkson ,r,r 39-40); see also Final Act. 2-3 ( citing
Berkson ,r,r 34, 42, Figs. 1, 5); Ans. 2--4. The Examiner does not rely on
Berkson to teach or suggest the claimed condition for presenting the audible
preamble to the user, but instead relies on LeVasseur's teaching of a
message that provides an introductory message if a client plug-in is not
installed to render obvious modifying Berkson to present the audible
preamble if a client computer receiving the dynamic audio file does not have
the updater software running thereon for updating current audio content of
the dynamic audio file with newly downloaded audio content. Final Act. 4
(citing Le Vasseur ,r 92); see also Final Act. 24; Ans. 3.
With respect to claim 12, the Examiner finds that Berkson's transfer
of files in a peer-to-peer manner, where advertisement content can be
3
Appeal2017-002868
Application 12/239,473
replaced or updated, teaches or suggests sending a dynamic audio file to a
client computer over a network. Final Act. 13 (citing Berkson ,r 60); Ans.
6-8. The Examiner further finds that Fedorovsky's use of a URL (uniform
resource locator) to serve as a reference to a virtual file that a client can
download renders obvious (A) modifying Berkson's dynamic audio file to
include a tag that includes a URI (uniform resource indicator)fzle path of a
source of the default audio content and (B) further modifying Berkson to
include use of the URI file path to connect with the source of the default
audio content over the network. Final Act. 15 (citing Fedorovsky ,r,r 44, 59,
62, and 70); Ans. 8-9.
APPELLANTS' CONTENTIONS AND ANALYSIS
Claims 1-11 and 16
Appellants contend the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because "the auxiliary advertisement content 5 of
Berkson is located not at the header information 1, but instead at the end of
the media file 10." App. Br. 15. Although Berkson specifically discloses
that "[p ]rimary advertisement content 3 could be experienced prior to
experiencing primary media content 2" (i-f 40; italicized emphasis added),
Appellants argue the user chooses whether to experience "advertising
content ... prior to, after, or intermittently with [the] media content" (Reply
Br. 9). Thus, Appellants argue the advertisement content of Berkson is not
"an introductory part" representing "a preamble at the beginning of the
audio content in the dynamic audio file." Id. at 8 ( citing Spec. ,r 29;
Webster's Third New International Dictionary at 1783 (1986)).
Appellants fail to distinguish persuasively the claimed audible
preamble from Berkson's advertisement content, where primary
4
Appeal2017-002868
Application 12/239,473
advertisement content 3 can be experienced prior to experiencing (i.e.,
serves as an introductory part to) primary media content. Berkson' s
alternatives for playing advertisement content (i.e., after or intermittently
throughout playback of primary media content) do not detract from
Berkson's express teaching that advertisement content can be experienced
prior to the primary media content. Berkson ,r 40. Furthermore, Appellants'
argument that Berkson allows the user to choose when to play advertisement
content (Reply Br. 9 (citing Berkson ,r 42)) does not accord with the cited
disclosure. Rather, Berkson discloses an embodiment in which "optional"
Auxiliary Advertisement Content 5 is not "optional if the user wishes to
experience the given piece of Auxiliary Media Content 4." Berkson ,r 42.
An obvious way to ensure that experiencing advertisement content served as
a prerequisite to experiencing primary media content would have been to
have the advertisement content be experienced prior to (i.e., serve as an
audible preamble to) the primary media content.
Appellants further contend the Examiner erred because "Berkson's
auxiliary advertisement content is simply an advertisement and does not
teach ... an audible preamble to be played to a user regarding instructions to
the functionality of a dynamic audio file." App. Br. 15. Appellants argue
Berkson "fails to disclose ... 'updater software' as it relates to 'newly
downloaded audio content' as recited." Id. at 16; see also Reply Br. 12-13.
Appellants unpersuasively attack Berkson alone rather than showing
error in the Examiner's reliance on the combined teachings and suggestions
of Berkson and Le Vasseur. Le Vasseur, in particular, teaches the use of an
introductory message that may be communicated to a user if certain software
is not installed on the recipient's device. See Le Vasseur ,r,r 91-92.
5
Appeal2017-002868
Application 12/239,473
Although Berkson's content is audible whereas LeVasseur's content is text,
we agree with the Examiner that it would have been obvious to an artisan of
ordinary skill to modify Berkson to play audio instructions (instead of or in
addition to an advertisement) before playing primary media content to
address the predictable scenario where an audio file has been downloaded
onto a system that does not have preferred proprietary software installed for
playing or updating the audio file. See Final Act. 4--5 ( citing, e.g., Berkson
,r,r 34, 41, 50, 53; Le Vasseur ,r,r 91-92). Such a modification would have
addressed a similar problem (the unavailability of software) with a similar
approach ( conveying a message regarding the missing software) using the
means of communicating most relevant to Berkson (i.e., audible).
Appellants further argue that "Berkson requires a proprietary software
for even the audible data of its file [to] be played." App. Br. 16 (citing
Berkson ,r 54 ). That is, Appellants argue Berkson could not be modified
using the teachings of Le Vasseur to play audio instructions if the proprietary
software was not installed because such playback would fail when the
proprietary software has not been installed. However, Berkson specifically
teaches incorporating its technology into "existing media players" and
incorporating its "media content files ... into ... existing media formats."
Berkson ,r 53 (cited in Final Act. 4). Le Vasseur similarly teaches providing
an introductory message "using the sender's e-mail network and
infrastructure (e.g. SMTP server 103)" and having "the introductory
message ... appear in the recipient's inbox as a regular text e-mail
message." Le Vasseur ,r,r 91-92 (cited in Final Act. 4--5). Thus, Le Vasseur
renders obvious modifying Berkson to make an audible preamble (e.g., an
audible introductory message) playable using an existing media player (i.e.,
6
Appeal2017-002868
Application 12/239,473
the audio file counterpart to Le Vasseur' s regular text e-mail client)
regardless whether proprietary software would be needed to enable
additional playback or update features. Moreover, Appellants' cursory
allegations of hindsight (App. Br. 30-31) fail to show the Examiner erred in
relying on the combined teachings and suggestions of Berkson and
Le Vasseur.
For these reasons, we agree with the Examiner that the combination of
Berkson and Le Vasseur renders obvious the recitations of claim 1.
Accordingly, we sustain the Examiner's obviousness rejection of claim 1,
and claims 2, 3, and 6-10, which Appellants do not argue separately. We
also sustain the Examiner's obviousness rejection of claims 4, 5, 11, and 16
under 35 U.S.C. § 103(a), which Appellants do not argue separately with
persuasive specificity. App. Br. 18-21.
Claims 12-15 and 17-20
Appellants contend the Examiner erred in rejecting claim 12 under 35
U.S.C. § 103(a) because "Berkson does not teach ... a dynamic audio file.
Instead, Berkson discloses that the files are static." App. Br. 24. Appellants,
however, fail to distinguish the claimed dynamic audio file from Berkson's
audio file, which includes advertising content 3, 5 that can "be replaced or
updated." Berkson ,r 60 (cited in Final Act. 13; Ans. 6). Replacing or
updating advertising content would change Berkson's audio file. Thus,
rather than being unchanging or static as Appellants argue, Berkson's audio
files are modifiable or dynamic. Therefore, Berkson teaches or suggests a
dynamic audio file.
Appellants further argue Berkson "delivers a file based upon a
download request, not steered by a client having a location pathway." App.
7
Appeal2017-002868
Application 12/239,473
Br. 24. However, the Examiner properly relies on Fedorovsky's use of a
uniform resource locator (URL) to define access to a file in order to render
obvious modifying Berkson to make use of a uniform resource indicator file
path in the manner claimed. Final Act. 15 (citing Fedorovsky ,r 70).
Moreover, Appellants' argument that "Fedorovsky does not lend itself to
downloading an update utility" (App. Br. 25 (emphasis added)) is
unpersuasive because, rather than relying on Fedorovosky, the Examiner
properly relies on Berkson's machine readable program code for, among
other things, updating a content library to teach or suggest the claimed
computer-readable program code for receiving and storing updated audio
content (Final Act. 13-15 (citing, e.g., Berkson claim 32, ,r 60)).
Appellants also argue "F edorovsky does not teach or disclose ...
sending a dynamic audio file including a tag and default audio content. ...
Instead, F edorovsky provides a URL that [the] user may use to download a
static file." Reply Br. 15. However, as noted above, the Examiner's
findings show that Berkson teaches or suggests a dynamic audio file. We
agree with the Examiner that using URLs in Berkson's dynamic audio file to
identify where audio content can be retrieved would have yielded "the
predictable result[] of providing a means of locating the source of the
dynamic file that the user is attempting to download." Final Act. 15.
Appellants' cursory allegations of hindsight (App. Br. 30-31) fail to show
error in the Examiner's reliance on the combined teachings and suggestions
of Berkson and Fedorovsky.
For these reasons, we agree with the Examiner that the combination of
Berkson and Fedorovosky renders obvious the recitations of claim 12.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of
8
Appeal2017-002868
Application 12/239,473
claim 12, and claims 13-15 and 17-20, which Appellants do not argue
separately with persuasive specificity. App. Br. 27-30.
DECISION
We affirm the Examiner's decision rejecting 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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
9