Ex Parte Novak et al

Patent Trial and Appeal Board

Nov 6, 2012

09817801 (P.T.A.B. Nov. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL J. NOVAK, GEOFFREY HARRIS,
and KIPLEY J. OLSON
____________________

Appeal 2010-005157
Application 09/817,801
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, BRYAN F. MOORE, and
TREVOR JEFFERSON, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL

Appeal 2010-005157
Application 09/817,801

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-16, 18-22, 24-39, and 41-65. Claims 17, 23, 40, and 66-68 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A method of providing a user experience when playing
media on a media player comprising:
downloading a file that contains at least one media-specific file
configured to provide a user interface, and media content with which
the user interface is associated;
playing the media content with a media player; and
automatically displaying the user interface when the media
content is played with the media player.

Rejections
The Examiner rejected claims 1-4, 8-10, 12, 15, 16, 18, 19, 21, 22,
24-26, 28-33, 35-39, 42, 44-47, and 49-65 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dwek (US 6,248,946 B1), Chasen (US
6,760,721 B1), and Bodin (US 6,223,224 B1).
The Examiner rejected claims 5, 6, 14, 20, 27, 34, 43 and 48 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Dwek,
Chasen, Bodin, and Van Zoest (US 6,496,802 B1).
The Examiner rejected claims 7, 11, 13 and 41 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Dwek,
Chasen, Bodin, and England (US 6,330,670 B1).
Appeal 2010-005157
Application 09/817,801

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Appellants’ Contentions
Appellants contend that the Examiner erred in rejecting the claims
under 35 U.S.C. § 103(a) for numerous reasons including but not limited to:
(1) because the references alone or in combination fail to disclose certain
claim limitations, (2) use of impermissible hindsight, (3) teaching away, (4)
the combination of the references would impermissibly change the principle
of operation of the prior art, and (5) insufficient articulated reason to modify
or combine. (App. Br. 14-64).

Issue on Appeal
Whether the Examiner has erred in rejecting claims 1-16, 18-22,
24-39, and 41-65 as being obvious?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. We
concur with the conclusions reached by the Examiner.

CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-16, 18-22,
24-39, and 41-65 as being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-16, 18-22, 24-39, and 41-65 are not patentable.
Appeal 2010-005157
Application 09/817,801

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DECISION
The Examiner’s rejections of claims 1-16, 18-22, 24-39, and 41-65 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)(1)(iv).

AFFIRMED

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