Ex Parte Santori et al

Patent Trial and Appeal Board

Oct 13, 2016

12480816 (P.T.A.B. Oct. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/480,816 0610912009
28395 7590 10/17/2016
BROOKS KUSHMAN P,CJFG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
N ello Joseph Santori
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.
81193314 4029
EXAMINER
LIAO, HSINCHUN
ART UNIT PAPER NUMBER
2649
NOTIFICATION DATE DELIVERY MODE
10/17/2016 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteNELLO JOSEPH SANTOR!, DAVID P. BOLL,
JOSEPH N. ROSS, BRIAN WOOGEUN JOH, and MICAH J. KAISER1
Appeal2015-006084
Application 12/480,816
Technology Center 2600
Before JOSEPH L. DIXON, THU A. DANG, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 21--40. Claims 1-20 have been canceled. Br. App'x. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Ford Global Technologies, LLC as the real party in
interest. Br. 2.
Appeal2015-006084
Application 12/480,816
STATEMENT OF THE CASE
Introduction
Appellants' claimed invention is directed to the operation of an
internet radio application on a wireless device by a vehicle computing
system. Spec. 1, 9. In a disclosed embodiment a wireless device (i.e.,
nomadic wireless communication device) pairs with a vehicle computing
system to establish a wireless communication link. Spec. 3. The wireless
device may have an internet radio application for streaming content and
playing the received content. Spec. 4.
Claims 21 and 27 are exemplary of the subject matter on appeal and
are reproduced below with the disputed limitations emphasized in italics:
21. A computer implemented method comprising:
receiving a first instruction from a wireless device executing an
Internet radio application, the application configured to stream music
from the Internet, the instruction instructing a prompt of a user to
control the Internet radio application;
prompting the user to control the Internet radio application in
accordance with the first instruction;
receiving control input from the user;
sending a response to the wireless device, in response to the
received control input, the response including at least a request to
stream a song from the Internet;
receiving a second instruction, responsive to the sent response,
instructing playback of the song;
receiving streaming song data; and
playing back the received streaming song data in accordance
with the second instruction.
27. A vehicle computing system comprising:
a processor;
a plurality of outputs, controllable by the processor; and
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Application 12/480,816
a transceiver capable of communication with a wireless device,
and controllable by the processor for at least passing data to and from
the processor;
wherein the processor is configured to instruct launching of an
internet radio application on the wireless device, receive a list of
internet radio stations from the wireless device, present the list of
internet radio stations over at least one output, receive and relay an
internet radio station selection to the wireless device, receive streamed
song data, from the Internet, passing through the wireless device,
corresponding to a song provided by the selected internet radio station,
and playback received song data over at least one output.
The Examiner's Rejections2
1. Claims 21-25, 27-30, and 34--37 stand rejected under 35
U.S.C. § 102(e) as being anticipated by Cox et al. (US 2009/0075624 Al;
Mar. 19, 2009) ("Cox"). Final Act. 5-8.
2. Claims 26, 31-33, and 38--40 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cox. Final Act. 9-10.
Issues on Appeal
1. Did the Examiner err in finding Cox discloses "receiving a first
instruction from a wireless device executing an Internet radio application,
the application configured to stream music from the Internet, the instruction
instructing a prompt of a user to control the Internet radio application," as
recited in claim 21?
2. Did the Examiner err in finding Cox discloses "present[ing] the
list of internet radio stations over at least one output," as recited in claim 27?
2 The Examiner has withdrawn the rejections of claims 26, 31-33, and
38--40 under 35 U.S.C. § 112(b) as being indefinite. Ans. 2.
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Application 12/480,816
3. Did the Examiner err in finding Cox teaches or reasonably
suggests sending feedback about a song to the wireless device "wherein the
feedback includes a rating of the song," as recited in claim 26?
ANALYSIS3
Claims 21-25
Appellants contend the Examiner incorrectly finds Cox inherently
discloses streaming music. Br. 7. Appellants argue Cox's disclosure of a
PC (personal computer) connected to the Internet does not inherently
disclose streaming audio merely because a PC connected to the Internet may
be able to stream audio. Br. 7. Rather, Appellants contend, it does not
necessarily follow that a PC connected to the Internet streams audio. Br. 7.
Further, Appellants argue Cox discloses playing back previously recorded
content, which is "literally the opposite of streaming content from the
Internet." Br. 8.
We are not persuaded by Appellants' arguments the Examiner erred.
The Examiner does not rely on Cox as inherently disclosing streaming
content from the Internet. See Final Act. 5; see also Br. 7 ("The Examiner
appears to have removed the word 'inherently,' but essentially maintains the
inherency rejection in the absence of the word 'inherently."') (Emphasis
added). Instead, the Examiner finds Cox expressly discloses content may be
"streamed media from WiMAX, WiFi, or other high speed wireless
communication link." Ans. 3 (quoting Cox i-f 65). Additionally, the
3 Throughout this Decision, we have considered the Appeal Brief, filed
December 3, 2014 ("Br."); the Examiner's Answer, mailed on March 25,
2015 ("Ans."); the Final Office Action ("Final Act."), mailed on
September 5, 2014, from which this Appeal is taken.
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Application 12/480,816
Examiner notes, "[t]he claims in no way preclude the streamed content from
being previously recorded." Ans. 3. We agree. In addition to the disputed
limitation, claim 21 recites "receiving streaming song data; and playing back
the received streaming song data." There is no requirement in the claim that
the playback cannot be of previously recorded streamed content.
Limitations from the Specification are not read into the claims. In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claim 21, as well
as the rejection of claims 22-25, which depend therefrom and for which
Appellants do not provide separate arguments of patentability. See Br. 9.
Claims 27--40
Appellants contend the Examiner erred in finding Cox discloses
"present[ing] the list of internet radio stations over at least one output," as
recited in claim 27, and similarly recited in claim 34. Br. 9. Specifically,
Appellants assert neither paragraph 6 nor 27 of Cox, as identified and relied
upon by the Examiner, discloses the disputed limitation. Br. 9. Instead,
Appellants argue, Cox discloses a variety of radio services and sending a
menu of services from a wireless device to an infotainment system but does
not disclose a presentation of internet radio stations as claimed. Br. 9.
In response, the Examiner explains Cox discloses, inter alia, "playing
music and providing [a] PC/Internet connection" as well as building a menu
of available device services. Ans. 4. Additionally, the Examiner finds Cox
discloses building a list of available RVIAI (remote vehicle apparatus and
interface) services. Ans. 4 (citing Cox i-f 27). The Examiner further finds
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Cox discloses radio related applications and providing an internet
connection. The Examiner determines that such disclosures sufficiently
describe the disputed limitation. Ans. 4.
We do not agree. "A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference." Verdegaal Bros., Inc. v. Union
Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).
Here, the Examiner has not identified, with sufficient evidence, a
disclosure by Cox of presenting a list of internet radio stations. Cox
discloses the R VIAI services relate to the services "built in to the
Infotainment System." Cox i-f 24. The Examiner does not apprise us,
however, of a disclosure by Cox (either expressly or inherently) that the
RVIAI services include presenting a list of internet radio stations to the
user. 4
Accordingly, for the reasons discussed supra, we do not sustain the
Examiner's rejection of independent claim 27 or independent claim 34,
which recites similar limitations. Additionally, we do not sustain the
Examiner's rejections of claims 28-33 and 35--40, which depend therefrom.
4 The Examiner appears to be finding that Cox suggests the presentation of
radio stations (internet or terrestrial) would be part of built-in services on an
Infotainment System. However, a rejection of claim 27 under 35 U.S.C.
§ 103(a) is not before us. While the Board is authorized to reject claims
under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board
elects not to do so. See Manual of Patent Examining Procedure (MPEP)
§ 1213.02.
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Claim 26
Claim 26 depends indirectly from claim 21 and adds a limitation that
feedback about a song sent to a wireless device "includes a rating of the
song." In rejecting claim 26, the Examiner acknowledges "Cox does not
specifically teach the feedback includes a rating of the song. However, Cox
discloses 'convey SD ARS [ (satellite digital audio radio service)] related data
between the vehicle and internet." Final Act. 9 (citing Cox i-f 4 7). The
Examiner concludes "[i]t would have been obvious to a person of ordinary
skill in the art at the time of invention to use Cox's related data for
improving the content of a radio station." Final Act. 9.
Appellants contend there is no teaching or suggestion that the SDARS
related data in Cox would include rating a song and that the Examiner has
applied an overly broad interpretation of Cox's SDARS related data. Br. 10.
We agree with Appellants. The Examiner has not provided sufficient
evidence or reasoning to support a finding that Cox's SDARS-related data
includes song rating information. Further, the Examiner finds Cox discloses
the exchange of SDARS-related data between the vehicle and Internet, but
there is no specific finding that such data is sent to a wireless device, as
required by the claim.
Accordingly, we do not sustain the Examiner's rejection of claim 26.
DECISION
We affirm the Examiner's decision to reject claims 21-25.
We reverse the Examiner's decision to reject claims 26-40.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED-IN-PART
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