Ex Parte Bodin et al

Patent Trial and Appeal BoardMar 13, 2014

11619216 (P.T.A.B. Mar. 13, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WILLIAM K. BODIN, DAVID JARAMILLO, JESSE W. REDMAN, and DERRAL C. THORSON ____________ Appeal 2011-013180 Application 11/619,216 Technology Center 2600 ____________ Before JOSEPH F. RUGGIERO, ELENI MANTIS MERCADER, and JOHNNY A. KUMAR, Administrative Patent Judges. KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-013180 Application 11/619,216 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-18. Claims 19 and 20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (“App. Br.”) filed December 17, 2010, and the Answer (“Ans.”) mailed March 18, 2011, for the respective details. We have considered in this decision only those arguments Appellants actually raised in the Brief. Any other arguments which Appellants could have made but chose not to make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). INVENTION Appellants’ invention relates to a method for supplementing audio recorded in a media file (Spec. 4, l. 28 to 5, l. 3, and Figure 1, element 104) including receiving a media file (id. at 16, ll. 16-23, and Figure 7, element 702); identifying, from an audio portion of the media file, the subject matter of audio portion of the media file (id. at 17, ll. 4-5, 19; 18, ll. 2-13, and Figure 7, element 704); identifying, automatically without user intervention, supplemental content for supplementing the subject matter recorded in the audio portion of the media file (id. at 18, ll. 4-16, and Figure 7, element 707); and inserting in the media file markup for rendering the supplemental content (id. at 18, ll. 18-22, and Figure 7, element 710). Appeal 2011-013180 Application 11/619,216 3 Claim 1 is representative of the invention and reproduced below: 1. A method for supplementing audio recorded in a media file, the method comprising: receiving a media file; identifying, from an audio portion of the media file, the subject matter of audio portion of the media file; identifying, automatically without user intervention, supplemental content for supplementing the subject matter recorded in the audio portion of the media file; and inserting in the media file markup for rendering the supplemental content. Examiner’s Rejection The Examiner rejected claims 1-3, 6-9, 12-15, and 18 under 35 U.S.C. § 102(b) as being anticipated by Shimizu (US 2003/0188255 A1, Oct. 2, 2003). Ans. 3-8. The Examiner rejected claims 4, 10, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Shimizu and Kim (US 2003/0229847 A1, Dec. 11, 2003. Ans. 4-9. The Examiner rejected claims 5, 11, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Shimizu and Roman (US 2006/0114987 A1, Jun. 1, 2006). Ans. 10-11. ANALYSIS Section 102 rejection of claims 1-3, 6-9, 12-15, and 18 We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. Appeal 2011-013180 Application 11/619,216 4 Further, we have reviewed the Examiner’s response to Appellants’ arguments. The Examiner has provided a comprehensive response to each argument presented by the Appellants on pages 11 through 15 of the Answer. We have reviewed this response and concur with the Examiner’s findings and conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. Ans. 4, 5, and 11-15. Appellants contend that the Examiner erred in rejecting claims 1-3, 6- 9, 12-15, and 18 because Shimizu does not “identify supplemental content automatically,” “because Shimizu’s document information and audio information are analyzed at the same time.” App. Br. 8; see id. at 6-8. We find that the Examiner, giving the claim its broadest reasonable interpretation consistent with the Specification, has properly found that the claimed “automatically” limitation only modifies the step of “identifying supplemental content for supplementing.” Ans. 13 (emphasis omitted). In other words, “Shimizu’s manual input of document information is not excluded from the claims.” Id. at 14. Appellants also contend that “Shimizu’s audio information is not analyzed such that the results enable identification of or generation of Shimizu’s document information.” App. Br. 8. Appellants’ arguments are not commensurate in scope with the broad claim language. For example, the claim language does not recite, “generation.” See Ans. 15. We agree with the decisions reached by the Examiner in the Examiner’s Answer. We sustain the rejection of claims 1-3, 6-9, 12-15, and 18 under 35 U.S.C. § 102. Appeal 2011-013180 Application 11/619,216 5 Section 103 rejection of claims 4, 5, 10, 11, 16, and 17 Appellants argue Kim and Roman do not cure the noted deficiencies of Shimizu. App. Br. 9-10. As discussed above, we find no such deficiencies in Shimizu to remedy. We sustain the rejections of claims 4, 5, 10, 11, 16, and 17 under 35 U.S.C. § 103. DECISION1 The Examiner did not err in rejecting claims 1-3, 6-9, 12-15, and 18 under 35 U.S.C. § 102(b) as being anticipated by Shimizu. The Examiner did not err in rejecting claims 4, 10, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Shimizu and Kim. The Examiner did not err in rejecting claims 5, 11, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Shimizu and Roman. 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(f). AFFIRMED msc 1 We note claim 13 recites a computer readable recordable medium. However, Appellants’ Specification does not define computer readable recordable medium to exclude transitory media. Consequently, the claimed readable recordable medium encompasses transitory media, which is not patent eligible. See Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential). In the event of further prosecution, the Examiner should consider rejecting claim 13 under 35 U.S.C. § 101 as being directed to non- statutory subject matter.