Ex Parte Mueller et al

Patent Trial and Appeal BoardOct 22, 2012

09816526 (P.T.A.B. Oct. 22, 2012)

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. 09/816,526 03/23/2001 Thomas Mueller 10191/1773 8027 26646 7590 10/22/2012 KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 EXAMINER MEI, XU ART UNIT PAPER NUMBER 2654 MAIL DATE DELIVERY MODE 10/22/2012 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 THOMAS MUELLER, MATTHIAS WANSCHURA, TORSTEN MLASKO, and VOLKER LAUKE _____________ Appeal 2010-012012 Application 09/816,526 Technology Center 2600 ______________ Before KARL D. EASTHOM, KEVIN F. TURNER, and BRYAN F. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-012012 Application 09/816,526 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 2-17 which constitute all the claims pending in this application. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejection of these claims. INVENTION The invention is directed to a device for playing back multimedia data files from a storage device in an automotive sound system. See Spec., col. 1, ll. 2-3. Claim 2 is representative of the invention and is reproduced below: 2. A device for playing back multimedia data files stored in an automotive sound system, comprising: a display; a loudspeaker for performing a playback of the multimedia data files; an input apparatus; a storage device; and a processor for decoding the multimedia data files, wherein: the processor includes an element for displaying directories located in the storage device and in which the multimedia data files are contained, as different virtual data carriers, and the multimedia data files as different titles on the display, and the different virtual data carriers and the different titles are selectable in accordance with an operation of the input apparatus; and wherein: the processor, together with the operation of the input apparatus, is capable of linking the multimedia data Appeal 2010-012012 Application 09/816,526 3 files, located on the storage device, to at least one new directory, and the processor provides an option to store the multimedia data files once again. REFERENCES Lee US 6,292,440 B1 Sep. 18, 2001 Lau US 6,990,208 B1 Jan. 24, 2006 REJECTIONS AT ISSUE Claim 2-17 stands rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Lee and Lau. Ans. 3-9. ISSUE Did the Examiner err in finding that the combination of Lee and Lau renders obvious the following limitations recited in claim 2: 1. a “processor [that] includes an element for displaying directories located in the storage device and in which the multimedia data files are contained, as different virtual data carriers,” and 2. “the processor, together with the operation of the input apparatus, is capable of linking the multimedia data files, located on the storage device, to at least one new directory”? ANALYSIS Appellants argue the above limitations of claim 2. Claims 3-17 are not argued separately and therefore stand or fall with claim 2. Appeal 2010-012012 Application 09/816,526 4 As to limitation 1 from the issues above, Appellants argue that “Lee merely refers to the features of a basic MP3 audio system, and Lau merely refers to directories with more than one playlist, but their playlist is not in any way disclosed as a virtual data carrier.” App. Br. 12. (Emphasis omitted). Specifically, Appellants argue that the “Lau displays the ‘real’ directory structure of playlists that actually exist as such on the storage medium.” Id at 13. (Emphasis omitted). We are not persuaded by this argument. The Examiner notes that “this broadly claimed limitation of ‘different virtual data carriers’ . . . clearly can be interpreted as merely a different way of naming ‘an element for displaying directories’, as the way it was written in independent claims 17, 2, 5 and 9.” Ans. 10. Appellants argue that the “presently claimed subject matter provides for the display of virtual data carriers which do not exist as such, but which are provided as part of the display so that a user can more easily search MP3 files in a format he or she may be more familiar with since the user may have previous operating CD changers.” App. Br. 18. (Emphasis in original). This argument is not commensurate with the claimed invention. Appellants imply that the claim requires providing a structure different than the directory structure of the physical file directory. However, the claim only recites displaying directories as virtual data carriers. The claim is silent as to how the virtual data carrier displays the directory. We conclude that there is ample support for the Examiner’s finding that the broadest reasonable interpretation of “virtual data carriers” in the context of the invention is “an element for displaying directories.” See Ans. 10. Therefore, we are not persuaded by this argument. Appeal 2010-012012 Application 09/816,526 5 Independent Claim 2 also requires that the “the processor, together with the operation of the input apparatus, is capable of linking the multimedia data files, located on the storage device, to at least one new directory.” Appellants argue that “Lee and Lau, whether taken alone or combined, do not disclose or even suggest a processor that, together with an operation of an input apparatus, is capable of linking multimedia data files, located on a storage device, to at least one new directory, and that provides an option to store the multimedia data files once again, as provided for in the context of claim 2, as presented.” App. Br. 14. Lau teaches that “software allows the user to create play lists, add or remove tracks from a play list, add or remove tracks from disk cartridge.” Lau, col. 13, ll. 33-35; see also Ans. 7. Lau further teaches that “tracks are added to the track list by moving tracks into a directory or dragging tracks into window 1206.” Lau at col. 13, ll. 42-44; see also Ans. 7. (Emphasis omitted). Based on these textual portions in Lau, we conclude that there is ample support for the Examiner’s finding that Lau does, in fact, disclose linking music files to a new directory. Ans. 7. Therefore, we agree with the Examiner that Lau teaches that “the processor, together with the operation of the input apparatus, is capable of linking the multimedia data files, located on the storage device, to at least one new directory.” Id. Appellants further argue that “the references relied on, whether taken alone or combined, do not suggest in any way modifying or combining the references so as to provide the presently claimed subject matter for addressing the problems and/or providing the benefits of the ‘virtual data carrier’ feature of the claimed subject matter as explained herein and in the specification.” The Examiner must provide an articulated reasoning with a Appeal 2010-012012 Application 09/816,526 6 rational underpinning to substantiate the obviousness rejection. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Upon reviewing the record before us, we find that the Examiner’s stated suggestions for modifying Lee and Lau suffice as articulated reasons with some rational underpinning to justify the legal conclusion of obviousness. Lee and Lau both disclose automotive MP3 music players with a display. Lee, col. 3, ll. 10-43; Lau, ABSTRACT. We find that an ordinarily skilled artisan in the art, at the time of the claimed invention, would have combined Lee and Lau because the proffered combination would “enhance[] the visual management and selection of the multimedia files for the automotive/car sound system.” Ans. 11. Moreover, we note that the Examiner’s proposed combination of these known elements and features is well within the level of an ordinarily skilled artisan. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). We agree with the Examiner that combining Lee and Lau “would have been considered in the knowledge generally available to one of ordinary skill in the art.” Id. For the reasons stated above, we find no error in the Examiner’s decision to reject claims 2-17 as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Lee and Lau. SUMMARY The Examiner’s decision to reject claims 2-17 is 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)(1). See 37 C.F.R. § 1.136(a)(1)(iv) (2011). Appeal 2010-012012 Application 09/816,526 7 AFFIRMED ke