Ex Parte Allen et al

Patent Trial and Appeal Board

Sep 20, 2012

10401502 (P.T.A.B. Sep. 20, 2012)

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.
10/401,502 03/26/2003 Paul G. Allen VULC-013/00US
229010-2058
8620
23419 7590 09/20/2012
COOLEY LLP
ATTN: Patent Group
Suite 1100
777 - 6th Street, NW
Washington, DC 20001
EXAMINER
LU, CHARLES EDWARD
ART UNIT PAPER NUMBER
2161
MAIL DATE DELIVERY MODE
09/20/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PAUL G. ALLEN and TIMOTHY R. PERKIS
____________________

Appeal 2010-006018
Application 10/401,502
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, ERIC S. FRAHM, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL

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The Appellants,1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-6, 20 and 24-31.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

I. STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ claims are generally directed to a system for processing
music files to facilitate search and retrieval of desired audio content. See
generally Abstract and Summary.
Application FIG. 1 and FIG. 3, as reproduced below, are helpful in
understanding the invention.

1 The Appellants state that the real party in interest is Submersible Music
Inc. Appeal Brief filed on September 30, 2009 (“App. Br.”).
2 App. Br. 5; Final Office Action mailed on April 27, 2009; Examiner’s
Answer mailed on December 31, 2009 (“Ans.”) at 2.
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FIG. 1 depicts a system for processing music files
As shown in in FIG. 1, an import module 116 is used to determine
whether a candidate music file corresponds to any of various music files that
are incorporated in a database 124 (by way of a set of attributes, shown in
FIG. 3), and to incorporate the candidate music file in the database 124 when
the candidate music file does not correspond to any of various music files
already incorporated in the database 124. This way, multiple music files
having the same audio content can be prevented from being incorporated in
the database 124 in order to save memory space. Spec. ¶ [0023].
The set of attributes used for a music file may indicate, for example, a
music performer, a music collection, a music record name, a music
performance name, a musical instrument sound type, a music style, a music
rhythm, a music meter, a music duration, a music tempo, or even a format, a
size, a name, or a digital signature of the music file.
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FIG. 3 depicts a user interface screen with attributes 302-318
As shown in FIG. 3, various attributes 302-318 are provided to allow
a user to intuitively facilitate search and retrieval of a set of percussion
music files. For example, these attributes include: (1) "Comment" 302 to
specify a variety of user annotations to characterize the set of percussion
music files 320; (2) "Drummer" 304 to specify a particular percussion music
performer; (3) "Collection" 306 to specify a particular percussion music
collection from which the set of percussion music files 320 is derived; (4)
"Hit" 308 to specify a particular percussion instrument sound type, for
example, bell, crash, flam, snare, and rimshot; (5) "Style" 310 to specify a
particular percussion music style, for example, rock, hip-hop, soft rock,
funk, country-western, rhythm & blues, Jazz, and world music; (6) "Feel"
312 to specify a particular percussion music rhythm; (7) "Meter" 314 to
specify a particular percussion music meter; (8) "BPM" 314 to specify a
particular percussion music tempo, which can be expressed as a number of
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beats per minute (BPM); and (9) "Number of Bars" 318 to specify a
particular percussion music duration (Spec. ¶ [0037]).

Claims on Appeal
Claims 1-2, 4-6, 20 and 24-28 are on appeal.3 Claim 1 is independent
and claims 2, 4-6, 20 and 24-28 depend upon independent claim 1.
Independent claim 1 is illustrative of the claimed subject matter, and is
reproduced below with disputed limitations emphasized:

1. A computer-readable storage medium, comprising:
an import module configured to:

provide a user-interface indicating:
(1) a plurality of music attributes of a candidate music
file, said candidate music file having a filename, said candidate
music file corresponding to at least one of a drum loop and a
drum fill, said plurality of music attributes corresponding to:
(a) a percussion music performer,
(b) a percussion instrument sound,
(c) a percussion music rhythm,
(d) a percussion music meter,
(e) a percussion music tempo,
(f) a percussion music duration, and
(2) an import option to incorporate said candidate music
file in a database,

automatically derive a first music attribute value from
said filename of said candidate music file, said first music
attribute value corresponding to a first one of said plurality of
music attributes, wherein said first one of said plurality of
music attributes corresponds to said percussion music tempo,

3 Claims 3 and 29-31 have been canceled in an amendment filed after the
Final Rejection (see App. Br. 1).
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and said first music attribute value is indicative of a number
of beats per minute,

automatically derive a second music attribute value
from an audio content of said candidate music file, said second
music attribute value corresponding to a second one of said
plurality of music attributes,

receive user-specification of a third music attribute value
corresponding to a third one of said plurality of music
attributes,

responsive to selection of said import option, determine
whether said candidate music file corresponds to any of a
plurality of music files that are incorporated in said database by
comparing a digital signature of said candidate music file with
digital signatures of said plurality of music files, and

incorporate said first music attribute value, said second
music attribute value, and said third music attribute value of
said candidate music file in said database based on determining
that said candidate music file does not correspond to any of said
plurality of music files.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fisher U.S. 5,969,705 Oct. 19, 1999
Sung U.S. 6,423,893 B1 Jul. 23, 2002
Appelman U.S. 2002/0184333 A1 Jan. 23, 2003
Looney U.S. 6,953,886 B1 Oct. 11, 2005

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Examiner’s Rejections
(1) Claims 1-2, 4-6 and 24-28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Looney (US 6,953,886 B1) in
view of Appelman (US 2002/0184333 A1), Zeo-G (“Using ProSamples
Future Beats 1”) and Sung (US 6,423,893 B1).
(2) Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Looney, Appelman, Zeo-G, and Sung and further in view
of Fisher (US 5,969,705).

Grouping of Claims

Appellants argue the patentability of claims 1-2, 4-6, 20 and 24-28
based on the same contentions presented for claim 1 (App. Br. 3-6). We
select independent claim 1 as the representative claim. We will, therefore,
treat claims 2, 4-6, 20 and 24-28 as standing or falling with representative
claim 1. See 37 C.F.R. § 41.37(c)(l)(vii).

Examiner’s Findings and Conclusions
1. The Examiner finds that Looney discloses a computer readable
storage medium comprising an import module (see FIGS. 38, 39 & 44;
import option) configured to:
(a) provide a user-interface indicating a plurality of music
attributes of a candidate music file, said candidate music file having a
filename (see e.g., FIGS. 43-45), said music attributes corresponding
to a music artist (e.g., see artists), rhythm (e.g., FIG. 57, music style-
mellow/upbeat, dance type, etc), music tempo (e.g., BPM, FIGS. 47-
48 & 57) and duration (e.g., FIGS. 61 & 40) with an import option to
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incorporate said candidate music file in a database (see FIGS. 38 &
44);
(b) automatically derive a first music attribute value (e.g., see
above, i.e., FIGS. 38, 57 & 61);
(c) automatically derive a second music attribute value from an
audio content of said candidate music file, said music attribute value
corresponding to a second one of said plurality of music attributes
(see e.g., FIGS. 47-48, BPM); and
(d) receive user specification of a third music attribute value
corresponding to a third one of said plurality of music attributes (see
e.g. song editor FIG. 57) (Ans. 3-4).

2. The Examiner finds that Appelman teaches determining
whether a candidate music file (see FIG. 2, #240) corresponds to any of a
plurality of music files that are incorporated in a database by comparing a
digital signature of the candidate music file with digital signatures of the
plurality of music files (#250) and incorporating in the database based on
determining that the candidate file does not correspond to any of the
plurality of files (#260). The Examiner further finds that Appelman
discloses producing a digital signature of a file by applying a hash function
to the file (see ¶0031 of Appelman; Ans. 5-6).
3. The Examiner finds that Zero-G discloses a naming convention
for a file name of music files, that is, “a file name convention with music
attribute values in the file name” (see p. 2 of Zero-G; Ans. 5-6).
4. The Examiner also finds that Sung discloses the use of a meter
attribute (see FIG. 7A of Sung; Ans. 7).
5. The Examiner finds that incorporating the music attributes in
the file name (e.g., using a filename convention) of the music file as
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disclosed by Zero-G into a user interface of Looney would “increase the
applicability of Looney to manage and categorize different types of music”
and “enable a user to . . . search for different types of sounds more easily”
(Ans. 6).

Appellants’ Contentions
Appellants do not dispute the Examiner’s findings regarding the
teachings of Appelman and Sung; rather, Appellants contend that:
(1) there is no reason to combine or modify the teachings of
Looney and Zero-G to arrive at the subject matter recited in claim 1 because,
according to Appellants’ characterization, Looney already provides a
mechanism to determine beats per minute (BPM) from an audio content
(corresponding to “a second music attribute value from an audio content”)
and, as such, one skilled in the art would not be prompted to add another,
presumably redundant mechanism to determine beats per minutes (BPM)
from a filename (corresponding to “a first music attribute value from a
filename”). (App. Br. 4-5).
(2) Even if the teachings of Looney and Zero-G were combined,
the combination could not arrive at Appellants’ claim 1 because the
combination would result in the determination of the same music attribute
value, namely beats per minutes (BPM), from both a filename and an audio
content. (App. Br. 5-6).

II. ISSUES
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The dispositive issue before us is whether the Examiner has erred in
rejecting claim 1 because the combination of Looney and Zero-G fails to
teach or suggest the argued features. In particular, the issue turns on
whether:
(a) the proffered combination of Looney and Zero-G teaches or
suggests “a first music attribute value from [a] filename of said candidate
music file . . . indicative of a number of beats per minute” and “a second
music attribute value from an audio content of said candidate music file”
as recited in claim 1 (emphasis added); and
(b) the Examiner provides an articulated reasoning with some
rationale underpinning to combine Looney and Zero-G in order to arrive at
claim 1.

II. APPLICABLE LEGAL PRINCIPLES
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 406 (2007). Any need or
problem known in the field of endeavor at the time of invention can provide
a reason for combining elements in the manner claimed. Id. at 420. In
particular, the 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.

III. ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections and the Examiner’s responses to Appellants’
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arguments. We are not persuaded by Appellants’ arguments and
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the final Office Action, and (2) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellants’ Appeal
Brief. We concur with the conclusions reached by the Examiner.
With regard to Appellants’ first contention, we agree with the
Examiner’s finding that Looney teaches more than just determining a music
tempo or beats per minute (BPM), including, for example, determining a
“music style” that is “upbeat” (see FIG. 47, #1812 of Looney) (Ans. 3-4,
10). We also agree with the Examiner’s “broadest reasonable interpretation”
that a “music style” is a different music attribute from that of “beats per
minute” (BPM) and this interpretation is consistent with Appellants’
specification. In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000) (Ans. 10).
We further concur with the Examiner’s findings that “Zero G’s
determination of the beats per minute value from the file name is a first
attribute indicative of [a] beats per minute” (see Ans. 5-6 (citing p. 2 of
Zero-G)) and “Looney’s calculation of a music rhythm (e.g., the
mellow/upbeatness”) from the audio content corresponds to a second
attribute (e.g., the music rhythm). We further find that the Examiner has
presented a reasonable rationale for combining Looney and Zero-G,
concluding that “the combination of references read on distinct music
attributes (not the same music attribute)” (Ans. 10-11).
In addition, we further agree with the Examiner’s findings (Ans. 3-4)
that Looney also discloses different attributes of a music file, including, for
example: (1) artist, (2) title, (3) category, (4) music style, (5) dance type, and
(6) music speed, as shown in FIG. 38.
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FIG. 38 depicts an import module to incorporate music files into database

Similarly, as pointed out by the Examiner (id.), FIG. 61 of Looney
shows different filenames and different attributes of each filename
including, for example: (1) file size, (2) file type and (3) duration, as
reproduced below:

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FIG. 61 depicts a file name and different attributes of the file name

Next, we are not persuaded by Appellants’ contention that Zero-G is
not combinable with Looney (App. Br. 6). As properly found by the
Examiner, Zero-G simply discloses a naming convention for a file name of
music files, that is, “a file name convention with music attribute values in
the file name” (see p. 2 of Zero-G; Ans. 5-6), and such a file name
convention as suggested by Zero-G need not be bodily incorporated into a
user interface of Looney; rather, consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art (see In re Keller, 642 F.2d 413, 425 (CCPA
1981)).
In that regard, the Supreme Court has indicated that:
[It is error to] assum[e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem.... Common
senses teaches . . . that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of puzzle.

KSR at 420 (2007) (citation omitted).
Furthermore, a skilled artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment (see Lear Seigler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984)). As such, we see no reason why the file name
convention as suggested by Zero-G cannot be incorporated into a user
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interface of Looney in order to enhance the use of attributes of a file name.
Such an enhancement merely predictably uses prior art elements according
to their established functions – an obvious improvement. KSR at 417.

IV. CONCLUSION
On the record before us,4 we conclude that the Examiner did not err in
rejecting (1) claims 1-2, 4-6 and 24-28 under 35 U.S.C. § 103(a) as being
unpatentable over Looney in view of Appelman, Zeo-G and Sung, and (2)
claim 20 under 35 U.S.C. § 103(a) as being unpatentable over Looney,
Appelman, Zeo-G, and Sung and further in view of Fisher.

V. DECISION
We affirm the Examiner’s decisions to reject claims 1-2, 4-6, 20 and
24-28 under 35 U.S.C. § 103(a).
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)(iv) (2009).

4 In the event of further prosecution, independent claim 1 should be
considered for compliance with proper Beauregard claim format and 35
U.S.C. §112. In addition, nonfunctional descriptive limitations on a storage
medium should be analyzed as these limitations cannot render nonobvious
an invention that would have otherwise been obvious. In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability).
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AFFIRMED

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