Ex Parte Kesling et al

Patent Trial and Appeal Board

Aug 4, 2017

12167295 (P.T.A.B. Aug. 4, 2017)

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.
12/167,295 07/03/2008 Patricia Kesling 062369-30667 5233
31013 7590 08/08/2017
KRAMER LEVIN NAFTALIS & FRANKEL LLP
INTELLECTUAL PROPERTY DEPARTMENT
1177 AVENUE OF THE AMERICAS
NEW YORK, NY 10036
EXAMINER
DEAN, RAYMOND S
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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):
klpatent @ kr amerlevin .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICIA KESLING, RICHARD MICHALSKI,
PAUL MARKO, CRAIG WADIN, and STELIOS PATSIOKAS
Appeal 2016-000518
Application 12/167,295
Technology Center 2600
Before THU A. DANG, KRISTEN L. DROESCH, and J. JOHN LEE,
Administrative Patent Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—13, 16—22, 24—30, and 32—35. Claims 14, 15,
23, and 31 were canceled previously. We have jurisdiction under 35 U.S.C.
§ 6(b). Oral arguments were heard on July 6, 2017.
We reverse.
1 Appellants identify Sirius XM Radio, Inc. as the real party in interest.
App. Br. 2.
Appeal 2016-000518
Application 12/167,295
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants’ invention relates to “systems and methods for mobile
commerce.” Spec. 13. Claims 1,16, and 25 are independent. Claim 1 is
illustrative of the subject matter on appeal:
1. A method, comprising:
receiving a broadcast at a radio receiver having an
RF tuner module and a separate high power wireless
transceiver, the broadcast comprising programs and
unique identifiers relating thereto;
automatically storing in the radio receiver a
plurality of the unique identifiers that uniquely identify
respective programs as they are received with the
broadcast and before a user has selected one or more of
the programs to be of interest;
receiving user input indicating an interest in a
given one of the programs after automated storage of its
corresponding program identifier;
in response to said user input, transmitting, from
said high power wireless transceiver to at least one
location, a message comprising the stored program
identifier corresponding to the given one of the
programs; and
receiving, in response to said message, information
related to said given one of the programs via at least one
of said radio receiver and said high power wireless
transceiver.
Rejections on Appeal
Claims 1, 2, 5-7, 10-12, 16, 17, 19-22, 25-27, 30, and 33-35 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Noreen (US
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Appeal 2016-000518
Application 12/167,295
5,303,393; issued Apr. 12, 1994), Kawamoto (US 2006/0223507 Al;
published Oct. 5, 2006), and Barsumian (US 4,926,486; issued May 15,
1990).
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Noreen, Kawamoto, Barsumian, andNoreen 2 (US 2002/0183059 Al;
published Dec. 5, 2002).
Claims 4, 18, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Noreen, Kawamoto, Barsumian, and Tiedemann (US
6,381,454 Bl; issued Apr. 30, 2002).
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Noreen, Kawamoto, Barsumian, and Lotvin (US
6,178,407 Bl; issued Jan. 23, 2001).
Claims 13 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Noreen, Kawamoto, Barsumian, and Martin (US
5,835,607; issued Nov. 10, 1998).
Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Noreen, Kawamoto, Barsumian, and Brown (US 5,793,866; issued
Aug. 11, 1998).
Claim 32 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Noreen, Kawamoto, Barsumian, and Merriman (US 7,039,599 B2;
issued May 2, 2006).
ANALYSIS
Appellants argue inter alia that a person of ordinary skill would not
have been motivated to combine Barsumian with the other references in the
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Application 12/167,295
asserted combination to arrive at the claimed invention. See App. Br. 9;
Reply Br. 10—11, 14—15. According to Appellants, Barsumian relates to
merely producing and recording sound and “has nothing whatsoever to do
with reception of a broadcast.” See App. Br. 9. We find Appellants’
arguments persuasive for the reasons explained below.
As part of the obviousness analysis, particularly when combining
teachings from multiple references, we must consider “whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
“articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”)); In re Nuvasive, Inc., 842 F.3d 1376, 1382
(Fed. Cir. 2016).
Each of the rejections on appeal rely on the combined teachings of
Noreen, Kawamoto, and Barsumian, with some rejections also combining
these references with other prior art. The Examiner relied on Barsumian as
teaching, “automatically storing a program before a user has selected one or
more of the programs to be of interest,” as recited in claim 1. Final Act. 5;
Ans. 19. The remaining independent claims recite similar limitations, and
the Examiner’s findings with respect to those claims are the same as for
claim 1. See Final Act. 7, 10. The cited disclosures of Barsumian describe a
device with a “recorder/player” that may be actuated to begin recording by a
proximity sensor or by monitoring incoming sound to detect when a
particular magnitude of sound is reached. See Barsumian, col. 5,11. 25—32.
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With respect to motivation to combine, the Examiner found that
“Barsumian’s known technique . . . would have been recognized by one
skilled in the art as applicable to the base process of Noreen in view of
Kawamoto and the results would have been predictable and resulted in the
capability of a user to record desired content without the user having to be
present, which is an improved process.” Final Act. 5 (claim 1), 7 (claim 16),
10 (claim 25); Ans. 19. The Examiner’s finding, however, is insufficient to
articulate sufficient reasoning with rational underpinning that indicates a
person of ordinary skill would have combined Barsumian with the other
references in the manner claimed. See KSR, 550 U.S. at 418.
First, claim 1 recites, “automatically storing in the radio receiver a
plurality of the unique identifiers that uniquely identify respective programs
as they are received with the broadcast” (emphasis added). As Appellants
point out (App. Br. 9; Reply 14—15), the Examiner does not explain
adequately why a person of ordinary skill would have combined
Barsumian’s teaching of automatically storing sound (i.e., a program) with
the other references to instead automatically store identifiers. Whether a
user can “record desired content without the user having to be present”
(Ans. 19) does not address this issue.
Second, claim 1 also recites that the “automatically storing” occurs
“before a user has selected one or more of the programs to be of interest.”
The Examiner does not explain adequately why a person of ordinary skill
would have applied Barsumian’s teaching, together with the other
references, to automatically record identifiers before a user selects a
program of interest. See Reply 14—15. The Examiner does not identify any
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teaching in Barsumian relating to user selection—indeed, the Examiner
found that a skilled artisan would have included Barsumian in the
combination to record without the user’s presence. Ans. 19. Although the
Examiner finds that Kawamoto separately teaches user selection, insufficient
explanation is provided to demonstrate that a person of ordinary skill would
have been motivated to combine Barsumian’s teachings regarding automatic
storage of sound with Kawamoto’s teaching of user selection to yield the
claimed method wherein a plurality of identifiers are stored automatically
before the user selects a program of interest.
For the reasons set forth above, we do not sustain the rejection of
claim 1. As noted above, the Examiner’s findings and reasoning for the
remaining independent claims are the same as those for claim 1. Thus, we
also do not sustain the rejection of claims 16 and 25. Asa result, we also do
not sustain the rejection of the remaining claims, all of which depend from
claims 1, 16, or 25.
DECISION
The decision of the Examiner to reject claims 1—13, 16—22, 24—30,
and 32—35 is reversed.
REVERSED
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