Ex Parte Cichy et alDownload PDFPatent Trial and Appeal BoardOct 13, 201613530873 (P.T.A.B. Oct. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/530,873 06/22/2012 80748 7590 10/17/2016 Cantor Colburn LLP-General Motors 20 Church Street, 22nd Floor Hartford, CT 06103 FIRST NAMED INVENTOR Stephen M. Cichy 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. P020013-GMVE-CD 5581 EXAMINER CHAKRABORTY,RAJARSHI ART UNIT PAPER NUMBER 2648 NOTIFICATION DATE DELIVERY MODE 10/17/2016 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): usptopatentmail @cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN M. CICHY, ERIK C. NORDSTROM, CHARLES J. SWAN, and RYAN A. CHURCH Appeal2015-006329 Application 13/530,873 Technology Center 2600 Before ERIC S. FRAHM, SCOTT B. HOWARD, and SCOTT E. BAIN, Administrative Patent Judges. HOW ARD, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-5, 7-13, and 15-20, which constitute all of the claims pending in this application. Claims 6 and 14 have been cancelled. App. Br. 4, 5. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify GM Global Technology Operations LLC as the real party in interest. App. Br. 2. Appeal2015-006329 Application 13/530,873 THE INVENTION The disclosed and claimed invention is directed to a system and method for the delivery of future radio content information. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for delivery of radio content comprising: a database configured to receive a radio content data comprising a radio content, a broadcast time for the radio content and a broadcast channel of the radio content; and a signal for communicating the radio content data from the database to a remote radio unit, wherein the remote radio unit communicates the radio content data to a user for providing advance notice to the user of future radio content over a predetermined future radio content time period, wherein the advance notice to the user comprises current and future radio content on a broadcast channel currently being listened to by the user and current and future radio content on alternative broadcast channels. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Ellis et al. Wellen et al. US 2004/0116088 Al US 2012/0124630 Al REJECTION June 17, 2004 May 17, 2012 Claims 1-5, 7-13, and 15-20 stand rejected under pre-AIA35 U.S.C. § 103(a) as being unpatentable over Ellis and Wellen. Final Act. 2---6. 2 Appeal2015-006329 Application 13/530,873 ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellants. We disagree with Appellants' arguments with respect to claims 1-5, 7-13, and 15-20, and we incorporate herein and adopt as our own: (1) the findings, conclusions, and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 2---6), and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments (Ans. 2-7). We incorporate such findings, conclusions, reasons, and rebuttals herein by reference unless otherwise noted. We highlight and address specific findings, conclusions, and arguments for emphasis as follows. 2 Appellants argue Ellis "merely discloses a system that allows a user to record radio broadcast content on a channel currently being listened to and alternate channels. Essentially, Ellis discloses a DVR system that is employed with television broadcasting." App. Br. 10. Appellants further argue although Ellis "monitors current radio content," Ellis "does not dynamically provide immediately upcoming broadcast radio content to a user [or] real-time updating of a user with future broadcast content on multiple channels." Id. at 10-11. 2 Rather than reiterate the entirety of the arguments of Appellants and the positions of the Examiner, we refer to the Appeal Brief (filed Jan. 7, 2015); the Reply Brief (filed June 15, 2015); the Final Office Action (mailed Aug. 11, 2014); the Advisory Action (mailed Oct. 16, 2014); and the Examiner's Answer (mailed Apr. 28, 2014) for the respective details. 3 Appeal2015-006329 Application 13/530,873 During examination of a patent application, a claim is given its broadest reasonable construction "in light of the specification, as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations omitted). There is a presumption that a claim term carries its ordinary and customary meaning. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An applicant may rebut this presumption, however, by acting as his own lexicographer, providing a definition of the term in the specification with "reasonable clarity, deliberateness, and precision." See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition, limitations are not to be read from the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). "[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments .... [C]laims may embrace 'different subject matter than is illustrated in the specific embodiments in the specification."' Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) (citations omitted). Applying the broadest reasonable construction of the claims, we agree with the Examiner (Ans. 2) that claim 1 does not require that the updates occur dynamically, immediately or in real-time. Nothing in the language of claim 1 requires those limitation and we decline to read the disclosure from the Specification into the claim. Because Appellants' arguments are not commensurate with the scope of the claims, they are unpersuasive. See In re Self, 671F.2d1344, 1348 (CCPA 1982). 4 Appeal2015-006329 Application 13/530,873 Additionally, nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Because the Examiner relies on Wellen for teachings relating to future content (Final Act. 3--4; Adv. Act. 2-3; Ans. 3), Appellants' argument directed to Ellis is not persuasive of Examiner error. Appellants also argue the Examiner erred in finding Wellen does not suggest a "predetermined future radio content time period," as recited in claim 1. App. Br. 11. Specifically, Appellants argue that the information provided by Wellen "covers sporadic time periods. . . . . In essence, Wellen teaches providing a user with suggestions that may be days or weeks away and that are not related to radio content." Id. We are not persuaded by Appellants' argument. First, we agree with the Examiner that the broadest reasonable construction of "predetermined future radio content time period," as recited in claim 1, can be any time period (Ans. 3) and is not limited to content that will immediately follow the current content. Even if we agreed with Appellants that Wellen teaches what will be played days or weeks in the future, that is still a predetermined future time period. Because Appellants' arguments are not commensurate with the scope of the claims, they are unpersuasive. See Self, 671 F.2d at 1348. 5 Appeal2015-006329 Application 13/530,873 Second, by focusing on whether or not Wellen teaches radio content (App. Br. 11 ), Appellants are arguing the references individually. Because the Examiner relies on Ellis for teachings relating to radio content (Final Act. 2--4; Adv. Act. 2-3; Ans. 2-3), Appellants' argument focused on Wellen individually is not persuasive of Examiner error. Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425. Appellants also argue Wellen does not teach the claimed invention because it selects future content "solely based on what content the user is currently engaged with." App. Br. 11. We are not persuaded by Appellants' argument that the Examiner erred. Instead, we agree with the Examiner that claim 1 does not preclude using such a matching algorithm. See Ans. 3. Because Appellants' argument is not commensurate with the scope of the claims, it is unpersuasive. See Self, 671 F.2d at 1348. Accordingly, we sustain the Examiner's rejection of claim 1, along with the Examiner's rejection of claims 10 and 16, which are argued on substantially the same grounds (compare App. Br. 10-12), with App. Br. 12-16), and claims 2-5, 7-9, 11-13, 15, and 17-20, which are not argued separately. 3 3 In the event of further prosecution, including any review for allowance, we invite the Examiner's attention to the question of whether claims 1-5, 7-13, and 15 are patent-eligible under 35 U.S.C. § 101. Claims 1-5, 7-13, and 15 include limitations that appear to be directed to a signal per se (see App. Br. 18 ("a signal for communicating"), 19 (same)), which is not patentable subject-matter. In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter). If the broadest reasonable interpretation of a claim covers non-patentable subject matter such as a transitory signal, the claim is unpatentable under 35 U.S.C. § 101. Id. Although the Board is authorized to enter a new ground of 6 Appeal2015-006329 Application 13/530,873 DECISION For the above reasons, we affirm the Examiner's decisions rejecting claims 1-5, 7-13, and 15-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED rejection to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP 1213.02. 7 Copy with citationCopy as parenthetical citation