Ex Parte Cichy et al

Patent Trial and Appeal Board

Oct 13, 2016

13530873 (P.T.A.B. Oct. 13, 2016)

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.
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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.
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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).
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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.
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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
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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.
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