Ex Parte Flinchem

Patent Trial and Appeal BoardMay 9, 2013

11613817 (P.T.A.B. May. 9, 2013)

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. 11/613,817 12/20/2006 Edward P. Flinchem 088245-5204 8369 23524 7590 05/09/2013 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER AFOLABI, MARK O ART UNIT PAPER NUMBER 2454 MAIL DATE DELIVERY MODE 05/09/2013 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 EDWARD P. FLINCHEM ____________ Appeal 2011-000433 Application 11/613,817 Technology Center 2400 ____________ Before JOHN A. JEFFERY, DANIEL N. FISHMAN, and GREGG I. ANDERSON, Administrative Patent Judges. ANDERSON, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 15-42. Claims 1-14 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellant’s invention includes components for concatenating audio samples into one “sample file.” Audible breaks are inserted between the samples (e.g. a tone, a piece of music, or white noise). The user chooses the Appeal 2011-000433 Application 11/613,817 2 sample file, which is downloaded, either as a whole or as a progressive download. The sample file is played. When the user hears content they like, they activate a “select” button. Activation of the “select” button identifies the presently playing sample, connects it back to its original content and begins the download of the original content to the device. See generally Spec. ¶ [0014]. Claim 15 is illustrative: 15. A method comprising: receiving an index at a mobile communication device, wherein the index associates a plurality of content segments with a corresponding plurality of full content files; receiving a first content segment of the plurality of content segments, wherein the first content segment corresponds to a first full content file; presenting the first content segment; receiving a selection of the first content segment; and transmitting a request for the first full content file, wherein the request is generated based at least in part on the selection of the first content segment and at least in part on the index. THE REJECTION The Examiner rejected claims 15-42 under 35 U.S.C. § 103(a) as unpatentable over Dunning (US 2002/0082901 A1; June 27, 2002) and Marcus (US 2002/0092019 A1; July 11, 2002). Ans. 4-12. ISSUE Under 35 U.S.C. § 103, has the Examiner erred in rejecting claim 15 by finding that Dunning and Marcus collectively would have taught or suggested “receiving an index at a mobile communication device, wherein the index associates a plurality of content segments with a corresponding plurality of full content files”? Appeal 2011-000433 Application 11/613,817 3 ANALYSIS Claims 15, 24, 30, and 34 We focus our review on construing the key disputed limitation of claim 15 which recites, in pertinent part, “receiving an index at a mobile communication device, wherein the index associates a plurality of content segments with a corresponding plurality of full content files.” Our analysis will be primarily directed to the word “index” as used in the disputed limitation.1 The Examiner relies on Marcus to show the index limitation. Ans. 5- 6. The Examiner finds that receiving an index at a mobile communication device is met by Marcus and its teaching of browsers provided on personal computers that access the World Wide Web. Ans. 6. Software and/or hardware are taught by Marcus for display of information for use on cell phones or other appliances, mapping to the “mobile communication device” feature of the disputed limitation. Id. (citing Marcus ¶ [0144]). We also note the Examiner found the browser of Marcus mapped to another recitation of index in connection with claim 15, a “request . . . based at least in part on the selection of the first content segment and at least in part on the index.” Id. The Examiner’s rationale for finding the browser is an index as recited in claim 15 starts with giving “index” its broadest reasonable interpretation. Ans. 13. The Examiner’s Response notes “index” is not defined in the Specification. Id. What is stated in the Specification is that 1 Given our decision on the disputed limitation, the remainder of Appellant’s arguments on claim 15 and the other claims on appeal will not be considered. Appeal 2011-000433 Application 11/613,817 4 “the index of segments includes information that associates a preselected segment of a full media file with the full media file.” Id. (quoting Spec. ¶ [0005]) (emphasis omitted); see also ¶ [0023]. The Examiner notes that Marcus references indexed pages of HTML document in the context of media. Ans. 14 (citing Marcus ¶ [0351]). The Examiner concludes one of ordinary skill in the art would know that the word “index” is just “an association with link.” Ans. 13. The Examiner finds Marcus teaches links and shows the index limitation of claim 15. Ans. 13-14 (citing Marcus ¶ [0352]). Appellant submits that the Marcus browser is not the same as the disputed limitation. App. Br. 9. Further, Appellant contends the Examiner has not identified any portion of Marcus or Dunning which discloses receiving such an index. Id. Appellant relies on the disclosure of Marcus to support the position that no index is taught or suggested in Marcus. App. Br. 10-11. Marcus discloses that programming is streamed from one or more sources, and that the programming is customized based on user requirements or desires. Id. (citing Marcus ¶ [0145]). Marcus also discloses that a browser of the user may be programmed to gather the programming from a variety of sources. Id. Marcus teaches “[an] intermediary database service that caches sub-pages of queried websites is, in one embodiment, maintained and consulted to streamline such a process. . . . Pages are indexed and stored as HTML documents . . . .” Id. (quoting Marcus ¶ [0351]). Marcus discloses streaming programming and storing HTML documents in a database and does not teach, suggest, nor describe the disputed limitation. Id. Appeal 2011-000433 Application 11/613,817 5 As the Examiner finds, we understand the streamed programming of Marcus, which can be customized in varying temporal segments, arguably relates a content segment to full content as recited in claim 15. Ans. 6 (citing Marcus ¶ [0145]). Further, it could be the case that indexing, in its broadest sense, may occur during streaming. However, the Examiner has not made such a finding nor cited any art for that teaching. What the Examiner has cited lacks the teaching of an index and we therefore agree with Appellant and do not sustain the Examiner’s finding on the disputed limitation. Our reasons follow. Our decision turns on the construction of the term “index.” We agree with Appellant that words of a claim must be given their “plain meaning” unless such meaning is inconsistent with the specification. Reply Br. 13-14 (citing MPEP § 2111.01.1). Following this structure, claim 15 on its face states that an “index associates a plurality of content segments with a corresponding plurality of full content files.” The Specification, as cited by the Examiner, is consistent with the plain meaning of the claim (Spec. ¶¶ [0005], [0023]), which is additionally consistent with the dictionary definition of index.2 In the context of claim 15, we construe “index” as “an association, as by a pointer or other structure, between a content segment and a full segment of which the segment is a part.” Applying this meaning of “index,” the Examiner has not established a prima facie case that Marcus would have taught or suggested receiving the recitedindex. The fact that Marcus teaches indexing in the context of HTML 2 Index n. 1. A listing of keywords and associated data that point to the location of more comprehensive information, such as files and records on a disk or record keys in a database. MICROSOFT COMPUTER DICTIONARY 341 (5th ed. 2002). Appeal 2011-000433 Application 11/613,817 6 pages does not teach indexing from segments of content to full content. The fact that streaming content may involve indexing is not articulated by the Examiner. Constrained by the record before us, we do not sustain the Examiner’s rejection of independent claim 15 since the Examiner’s position regarding the disputed index reception limitation is problematic. Since independent claims 24, 30, and 34 all have similar disputed language as that indicated above regarding claim 15, , we do not sustain the rejection of these claims for the reasons noted above. Claims 16-23, 25-29, 31-33, and 35-42 Claims 16-23, 25-29, 31-33, and 35-42 all depend on claims where we do not sustain the rejection, we likewise do not sustain the rejection of the dependent claims for similar reasons. CONCLUSION The Examiner erred in rejecting claims 15-42 under 35 U.S.C. § 103. ORDER The Examiner’s decision rejecting claims 15-42 is reversed. REVERSED babc