Ex Parte Harris

Patent Trial and Appeal Board

Mar 2, 2016

11608367 (P.T.A.B. Mar. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/608,367 12/08/2006
23844 7590 03/04/2016
SCOTT C HARRIS
Law Office of Scott C Harris, Inc
PO BOX 1389
Rancho Santa Fe, CA 92067-1389
FIRST NAMED INVENTOR
Scott C. Harris
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.
IpodDigitalTransfer/SCH 9239
EXAMINER
SAUNDERS JR, JOSEPH
ART UNIT PAPER NUMBER
2655
NOTIFICATION DATE DELIVERY MODE
03/04/2016 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):
scott@harrises.com
schuspto@ gm ail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT C. HARRIS
Appeal2014-004618
Application 11/608,367 1
Technology Center 2600
Before KRISTEN L. DROESCH, TERRENCE W. McMILLIN, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision2 on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-21, 23, and 24, which are all the pending claims. Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Harris Technology,
LLC. Br. 3.
2 Our Decision refers to the Final Office Action mailed April 11, 2013
("Final Act."); Appellant's Appeal Brief filed September 10, 2013 ("Br.");
the Examiner's Answer mailed December 31, 2013 ("Ans."); and the
Specification filed December 8, 2006 ("Spec.").
Appeal2014-004618
Application 11/608,367
REJECTIONS ON APPEAL
Claims 1---6, 9, 10, 12, 13, 15, and 17-21 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Ong et al. (WO 2006/065228
Al, pub. June 22, 2006) ("Ong"), Gupta (US 2006/0015197 Al, pub. Jan.
19, 2006) ("Gupta"), Rofougaran (US 2007 /0297356 Al, pub. Dec. 27,
2007) ("Rofougaran"), and Lee (KR 2005/107933, pub. Nov. 16, 2005)
("Lee"). Final Act. 2-7.
Claims 7, 11, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ong, Gupta, Rofougaran, Lee, and Penning et al. (US
2006/0095801, pub. May 4, 2006) ("Penning"). Final Act. 8-10.
Claims 8 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ong, Gupta, Rofougaran, Lee, and Mellone et al. (US
2004/0042629 Al, pub. Mar. 4, 2004) ("Mellone"). Final Act. 10.
Claims 14 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ong, Gupta, Rofougaran, Lee, and Van Gassel et al. (US
2006/0143420 Al, pub. June 29, 2006) ("Van Gassel"). Final Act. 10-12.
THE CLAIMED INVENTION
According to Appellant, "[t]he present application defines a power
saving device for allowing a personal music player to be used with an
external device." Spec. i-f 6. Independent claims 1 and 10 are directed to
personal multimedia players and independent claims 13 and 18 are directed
to methods. Claim 1 recites:
1. A personal multimedia player, comprising:
a digital storage part, which stores digital files indicative
of multimedia to be played;
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Application 11/608,367
an analog portion, which plays said digital files from said
digital storage part; and
a user interface, which allows selection of at least one of
said digital files and includes a controller which controls
operation of sending said at least one of said digital files to a
receiver outside the player, and controls removing of power from
said analog portion during said sending.
Br. 27 (disputed limitation italicized).
ANALYSIS
We have reviewed the rejections of claims 1-21, 23, and 24 in light of
Appellant's arguments presented in the Appeal Brief. We are not persuaded
that Appellant identifies reversible error. We agree with and adopt the
Examiner's findings, reasoning, and conclusions as set forth in the Final
Office Action (Final Act. 2-18) and the Examiner's Answer (Ans. 2-8). We
highlight the following for emphasis.
Claim 1
Appellant argues the cited art fails to teach or suggest, "a controller
which ... controls removing of power from said analog portion [which plays
said digital files from said digital storage part] during said sending [of at
least one of said digital files to a receiver outside the player]," as recited in
claim 1. Br. 13-18. Specifically, Appellant argues, "[t]he patent office has
not shown any prior art that removes power from an analog portion while a
digital file is being sent." Br. 13. In the Examiner's Answer, the Examiner
responds:
[T]he sending of a digital file was disclosed by Ong, and Lee
teaches turning off amplifiers corresponding to the claimed
analog portion during sending. Thus, the result of the proposed
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Application 11/608,367
combination by the Examiner that the power management of Lee
remove[ s] power from said analog portion during said sending in
the invention of Ong fulfills the requirements of the claim and
therefore the Office does show removing power from an analog
portion while a digital file is being sent.
Ans. 4. The findings of the Examiner are well-supported by the cited art and
Appellant fails to argue to the contrary. Indeed, these findings are supported
by the Appellant's descriptions of the cited references. In the Appeal Brief,
Appellant describes Ong as follows:
Ong describes a player 10 which has a non-volatile
memory 58 operatively connected to a digital-to analog converter
60 that provides an analog output 62 over a headphone socket.
When using the headphone socket, digital audio from the
memory is converted to analog. Unconverted digital audio can
be directly output and passed by wireless induction to cradle 3 0.
Br. 18 (emphasis added). Appellant describes Lee as follows: "Lee
discusses about turning off the amplifiers when sending information to the
wireless speakers." Br. 19. In addition, the Final Office Action states with
regard to Lee: "the 'amplifiers for wired speakers' corresponds to the
claimed 'analog portion."' Final Act. 14.
The arguments presented by Appellant attack the references
individually, whereas the rejection is based on a combination of references.
One cannot show nonobviousness by attacking references individually when
the rejection is based on a combination of references. In re Keller, 642 F.2d
413, 425 (CCPA 1981). Each reference cited by the Examiner must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole. See, In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Appellant's arguments are not persuasive.
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Application 11/608,367
Appellant argues that Lee "teach[es] away." Br. 16. With respect to
teach away arguments, "[a] reference does not teach away ... if it merely
expresses a general preference for an alternative invention but does not
'criticize, discredit, or otherwise discourage' investigation into the invention
claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Appellant's argument is unsupported by any citation to
any portion in Lee (or any of the other cited references) which criticizes,
discredits, or otherwise discourages the invention of claim 1. Appellant has
not shown that Lee teaches away from what is recited in claim 1.
Appellant has not persuaded us that the Examiner's rejection of claim
1 as unpatentable under 35 U.S.C. § 103(a) was in error.
Claim 10
Appellant fails to present any argument relating to independent claim
10. See, Br. 13-26. Therefore, we sustain the rejection of claim 10.
Claim 13
Appellant presents the same argument in support of independent claim
13, which was presented with regard to claim 1. Br. 22-23. Appellant
argues, "[a]gain, only the present specification describes preventing the
analog circuit from consuming power while sending the digital files - this is
not shown by any of the prior art." Br. 22. We disagree with Appellant and
sustain the rejection of claim 13 for the reasons given above with regard to
claim 1.
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Ciaim 18
Appellant's entire argument with regard to independent claim 18 is:
Claim 18 defines playing digital files in a second mode by
sending digital file to a receiver in an automobile. This is not
shown by the cited prior art which never shows a receiver in an
automobile, certainly not one receiving digital files in this way.
Br. 23. This same conclusory statement was made by Appellant using the
exact same words in an Amendment filed prior to the Final Office Action.
Amendment (After Non-Final Rejection) dated December 18, 2012, at 19.
In the Final Office Action, the Examiner provided detailed findings based on
Ong in response to this argument. Final Act. 16-17. The Examiner's
response in the Final Office Action included this sentence from Ong: "The
computer system 20 is not limited and may be an amplified, powered
speaker system, automobile sound system, headphones, or other form of
media reproduction." Final Act. 16 (quoting Ong 3) (emphasis added). See
also Ans. 6. Appellant fails to provide any argument against the findings of
the Examiner relating to claim 18. We are not persuaded of error in the
rejection of claim 18.
Claim 20
With regard to claim 20, Appellant's entire argument is: "[c]laim 20
which depends from claim 18 defines preventing the analog circuitry for
producing a consuming power, which as described above, would contradict
the express teaching[ s] of Lee and hence is further allowable." Br. 23
(emphasis added). Claim 20 recites: "[a] method as in claim 18, further
comprising, during said second mode, preventing at least one circuit that is
associated with playing said audio files in said first mode from consuming
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substantial power." Br. 32 (emphasis added). Appellant's statement is not
commensurate with the scope of claim 20. In addition, this conclusory
statement is not supported or explained as required by 37 C.F.R.
§ 41.37(c)(iv). We are not persuaded of error in the rejection of claim 20.
For these reasons, we are not persuaded the Examiner erred in
rejecting claims 1, 10, 13, 18, and 20. The additional pending claims are not
separately argued. Therefore, we affirm the rejections of all the pending
claims as unpatentable under 35 U.S.C. § 103(a).
DECISION
The rejections of claims 1-21, 23, and 24 are affirmed.
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
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