Appeal 2007-0588
Application 10/202,349
1 Further findings of fact as necessary appear in the new rejection
2 below.
3
4 PRINCIPLES OF LAW
5 On appeal, Appellants bear the burden of showing that the Examiner
6 has not established a legally sufficient basis for anticipation based on the Ho
7 Yuen Lok reference. Appellants may sustain this burden by showing that
8 the prior art reference relied upon by the Examiner fails to disclose an
9 element of the claim. It is axiomatic that anticipation of a claim under § 102
10 can be found only if the prior art reference discloses every element of the
11 claim. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir.
12 1986) and Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick
13 Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
14
15 ANALYSIS
16 The Examiner does not show where all the claimed elements appear in
17 the Ho Yuen Lok prior art reference.
18 With respect to claims 1 and 19, as argued by Appellants and contrary
19 to the Examiner’s contention, a group of actual tracks is not equivalent to a
20 playlist. Rather, the art accepted definition, Appellants’ Specification, and
21 the Ho Yuen Lok reference all use the term playlist to mean a list of the
22 tracks distinct from the actual tracks themselves.
23 With respect to claims 2-6 and 20-21, even if we adopt as correct the
24 Examiner’s position that a group of favorite tracks are equivalent to a
25 playlist, the Examiner’s analysis (e.g. Answer 14) rests on taking the Ho
26 Yuen Lok teachings with respect to the structure of “playlists” as defining by
5
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Last modified: September 9, 2013