Ex Parte Anttila et al

Patent Trial and Appeal BoardSep 27, 2012

10017654 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte AKSELI ANTTILA and YOUNGHEE JUNG ____________________ Appeal 2010-006328 Application 10/017,654 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal from the Examiner’s rejection of claims 1-19, 23- 25, 30-33, 36, and 39-47. Claims 20-22, 26-29, 34, 35, 37, and 38 have been canceled. (App. Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2010-006328 Application 10/017,654 2 Representative Claim 1. A method comprising: receiving a first media playback invite request initiated by a host wireless terminal, the first media playback invite request including information sufficient to identify at least one guest wireless terminal, an identification of a preexisting playable media file, and a playback option enabling the guest wireless terminal to request different types of playback actions in connection with playback of the identified media file; transmitting a second media playback invite request to the guest wireless terminal subsequent to receipt of the first media playback invite request, wherein the second media playback invite request includes the playback option; relaying a media playback accept response from the guest wireless terminal to the host wireless terminal; distributing a start playback request from the host wireless terminal to the guest wireless terminal, wherein the start playback request directs the guest wireless terminal to begin a playback session of the identified media file in synchronization with a beginning of the playback session at the host wireless terminal; receiving an action request from the guest wireless terminal requesting a playback action enabled by the playback option; and sending the action request received from the guest wireless terminal to the host wireless terminal. Appeal 2010-006328 Application 10/017,654 3 Rejections on Appeal 1 1. The Examiner rejects claims 1, 2, 4-6, 8-19, 23-25, 30-33, and 42-45 under 35 U.S.C. § 103 as being unpatentable over PCT WO 99/46702, published September 16, 1999 (“Liou”) in view of U.S. Patent No. 6,976,094 B1, issued Dec. 13, 2005 (“Dalrymple”), M. Handley and V. Jacobson, SDP: Session Description Protocol, Network Working Group Request for Comments 2327, The Internet Society (April 1998), available at http://www.ietf.org/rfc/rfc2327.txt?number=2327 (last visited July 8,2008) (“Handley”), and of U.S. Patent No. 7,193,987 B2, issued Mar. 20,2007 (“Vilander”). 2. The Examiner rejects claims 36, 39, 46, and 47 under 35 U.S.C. § 103 as being unpatentable over Liou, Dalrymple, U.S. Patent No. 6,006,253, issued Dec. 21, 1999 (“Kumar”), and Vilander. 3. The Examiner rejects claim 40 under 35 U.S.C. § 103 as being unpatentable over Liou, Dalrymple, Handley, Vilander, and Kumar. 4. The Examiner rejects claim 7 under 35 U.S.C. § 103 as being unpatentable over Liou, Dalrymple, Handley, Vilander, and U.S. Patent App. Pub. No. 2002/0107040 A1, published Aug. 8, 2002 (“Crandall”). 5. The Examiner rejects claims 3 and 41 under 35 U.S.C. § 103 as being unpatentable over Liou, Dalrymple, Handley, Vilander, and U.S. Patent App. Pub. No. 2002/0091848 A1, published July 11, 2002 (“Agresta”). 1 The Examiner withdrew the rejection of claims 1-19, 23-25, 30-33, 36, and 39-47 under 35 U.S.C. § 112, first paragraph, as failing to meet the written description requirement. (Ans. 19.) Appeal 2010-006328 Application 10/017,654 4 ISSUE Does the Examiner err in combining Liou, Dalrymple, Handley, and Vilander, and in concluding that the references collectively would have taught or suggested: receiving a first media playback invite request initiated by a host wireless terminal, the first media playback invite request including information sufficient to identify at least one guest wireless terminal, an identification of a preexisting playable media file, and a playback option enabling the guest wireless terminal to request different types of playback actions in connection with playback of the identified media file; [and] . . . . distributing a start playback request from the host wireless terminal to the guest wireless terminal, wherein the start playback request directs the guest wireless terminal to begin a playback session of the identified media file in synchronization with a beginning of the playback session at the host wireless terminal as recited in Appellants’ claim 1 and the commensurate limitations of claims 11, 14, 23, 36, 42, and 45? ANALYSIS We agree with Appellants that the Examiner’s piecemeal analysis “amount[s] to a classic case of impermissible hindsight as bits and pieces of a multitude of references have been cut and pasted in order to reconstruct the instant claimed subject matter without any suggestion by the applied references for doing so.” (App. Br. 26; see id. 24-25.) As pointed out by Appellants, the Examiner has not provided an adequate rationale for Appeal 2010-006328 Application 10/017,654 5 combining the disparate references – Liou, Dalrymple, Handley, and Vilander. (App. Br. 25-26.) For example, the Examiner explains that: it would have been obvious to a person of ordinary skilled in the art at the time the invention was made to modify Liou in view of Dalrymple in order to invite the participants or users to join a session or to engage in a session. One of ordinary skilled in the art would have been motivated because this would have established a communication session between two computers through invitations that invites the users to join or engage in a session (Dalrymple: col. 3 L50 to col. 4 L18). (Ans. 5 (emphasis added).) In other words, the Examiner’s rationale for combining Liou and Dalrymple is simply to allow users to engage in a communication session. Liou, directed to a method for dynamic video presentation and annotation among multiple users (i.e., collaborative video conferencing) (Abstract), and Dalrymple, directed to synchronization of web browsers (Abstract) engaged in a communication session (col. 2, ll. 46-47), however, both already allow users to engage in a communication session. Thus, as pointed out by Appellants, there is nothing to suggest to one of skill in the art that combining a media playback request as described by Dalrymple with Liou’s collaborative video conferencing (Ans. 4-5) would be in any way desirable. (App. Br. 25.) Consequently, we are constrained by the record before us to conclude that the Examiner fails to provide an adequate rationale for the combination of Liou, Dalrymple, Handley, and Vilander. Thus, the rejection of claim 1 fails to establish a prima facie case of obviousness. Appellants’ independent claims 11, 14, 23, 36, 42, and 45 are rejected over this same combination. Appeal 2010-006328 Application 10/017,654 6 Dependent claims 2, 4-6, 8-10, 12, 13, 15-19, 24, 25, 30-33, 43, and 44 depend on and stand with their respective base claims. Accordingly, we reverse the Examiner’s obviousness rejection of claims 1, 2, 4-6, 8-19, 23- 25, 30-33, and 42-45. Appellants’ claims 3, 7, 40, and 41 depend on and fall with claims 1 and 11, respectively, for the reasons discussed with respect to claim 1. The Examiner uses this same rationale (supra) in rejecting Appellants’ claims 36, 39, 46, and 47 (rejected under 35 U.S.C. § 103 as being unpatentable over Liou, Dalrymple, Kumar, and Vilander). (Ans. 12- 15.) We conclude that the Examiner fails to provide an adequate rationale for the combination of Liou, Dalrymple, Kumar, and Vilander for the same reasons discussed supra. Accordingly, we also reverse the Examiner’s obviousness rejection of claims 36, 39, 46, and 47. CONCLUSION OF LAW Appellants have shown that the Examiner erred in rejecting claims 1- 19, 23-25, 30-33, 36, and 39-47 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner’s rejections of claims 1-19, 23-25, 30-33, 36, and 39-47. REVERSED llw