Ex Parte Black

Patent Trial and Appeal BoardAug 21, 2014

11695327 (P.T.A.B. Aug. 21, 2014)

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. 11/695,327 04/02/2007 Gary Black CT-REC-010/US (P039) 2466 71739 7590 08/22/2014 Concert Technology Corporation 5400 Trinity Road, Suite 303 Raleigh, NC 27607 EXAMINER SHECHTMAN, CHERYL MARIA ART UNIT PAPER NUMBER 2157 MAIL DATE DELIVERY MODE 08/22/2014 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 GARY BLACK ____________________ Appeal 2012-003464 Application 11/695,327 Technology Center 2100 ____________________ Before: MAHSHID D. SAADAT, HUNG H. BUI, and JON M. JURGOVAN, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–33. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.2 1 The Real Party in Interest is identified as Napo Enterprises, LLC, a subsidiary of Concert Technology Corporation. 2 Our Decision refers to the original Specification filed Apr. 2, 2007 (“Spec.”); the Appeal Brief filed July 5, 2011 (“Appeal Br.”); the Examiner’s Answer mailed Oct. 14, 2011 (“Ans.”); and the Reply Brief filed Dec. 8, 2011 (“Reply Br.”). Appeal 2012-003464 Application 11/695,327 2 STATEMENT OF CASE Appellant’s Invention Appellant’s invention is directed to a media item recommendation rating system and method. Spec. ¶ 30. Claims on Appeal Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of rating media item recommendations that are sent from a sending user to a recipient user, at a server, comprising the steps of: receiving a report of a media item being recommended from a sending user to a recipient user; and altering, in memory, a recommendation rating associated with the media item in response to receiving the report. Independent claim 26 is a computer-readable medium claim mirroring claim 1. Independent claim 32 is directed to a computer-readable medium storing software for instructing a controller to provide a user interface including media item titles and recommendation ratings for associated media items. Claims 1, 26, and 32 are the only independent claims pending in the application. Evidence Considered The prior art relied upon by the Examiner in rejecting the claims on appeal is: Molander US 7,614,006 B2 Nov. 3, 2009 Hoch Bodlaender US 2003/0191753 A1 US 2005/0278758 A1 Oct. 9, 2003 Dec. 15, 2005 Appeal 2012-003464 Application 11/695,327 3 Examiner’s Rejections The Examiner made the following rejections: A. Claims 1, 3-5, 10, 11, 13, 18-21, and 24-26 are rejected under 35 U.S.C. § 102(b) as being anticipated by Bodlaender. Ans. 4-9. B. Claims 2, 6-9, 12, 14-17, 22, 23, and 27-31 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bodlaender and Hoch. Ans. 9-14. C. Claims 32 and 33 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bodlaender and Molander. Ans. 14-17. Appellant seeks our review of these rejections. ANALYSIS A. Rejection of claims 1, 3-5, 10, 11, 13, 18-21, and 24-26 under 35 U.S.C. § 102(b) based on Bodlaender Independent Claims 1 and 26 Appellant argues that none of the steps of Claim 1 is disclosed in Bodlaender. Appeal Br. 12-14; Reply Br. 2-4. With respect to the first step “receiving a report of a media item being recommended from a sending user to a recipient user,” the Examiner found that Bodlaender discloses community preference information which relates to media clips (Bodlaender ¶ 10) can be exchanged (Id. at ¶ 14) by ad-hoc connections (Id. at ¶ 22) between terminals in a peer-to-peer network (Id. at ¶15) in which each terminal can act as a server for the others. Community preference information can include user ratings (Id. at ¶ 17). User ratings can be used to generate recommendations (Id. at ¶ 17) at terminals. Appellant argues that user ratings of Bodlaender are not the recommendations claimed. Appeal Br. 12. Bodlaender specifically Appeal 2012-003464 Application 11/695,327 4 discloses that community preferences information can include user ratings, and that user ratings can be used to generate recommendations. Id. at ¶ 17. Community preference information can also be exchanged between peer terminals. Id. at ¶ 17. Therefore, Bodlaender’s user ratings may be regarded as recommendations exchanged between users, as correctly found by the Examiner. Ans. 5, 17-18. Appellant also argues that Bodlaender does not disclose “a media item being recommended from a sending user to a recipient user” because user preference information is generalized for all users and is not specific to a recipient user. Appeal Br. 12. As noted by the Examiner, transmitting a user rating or recommendation from a sending user to all other recipient users necessarily would include transmitting the same from a sending user to a recipient user as claimed. Ans. 17-18. The claim uses the open-ended “comprising” transition, so the claim’s scope is not restricted to a recommendation transmitted from a sending user to only a recipient user. Id. 18. Next, Appellant argues that transmission of ratings from one user to another in Bodlaender does not imply that the rating is reporting that the media clip is being recommended from the transmitting user to the receiving user. Appeal Br. 12-13. As noted by the Examiner, Bodlaender discloses that the database 115 is updated to include new preference information including user ratings of media clips transmitted from another user. Ans. 5. The update of the database 115 with new preference information can constitute a “report of a media item being recommended from a sending user to a recipient user” as claimed. The term “report” is used broadly in the claim and is not restricted to any particular content beside that it must be of a media item being recommended from a sending user to a recipient user. Appeal 2012-003464 Application 11/695,327 5 Furthermore, the term “report” is not defined in the claim as originating from any particular transmission point or arriving at any particular reception point. Because the claim terms are given their broadest reasonable interpretation consistent with the Specification3 and limitations from the Specification cannot be imported into the claim in doing so,4 we are not persuaded of error in the Examiner’s finding that the first step of claim 1 is fully met by Bodlaender. Appellant argues that the second step of claim 1, namely, “altering a recommendation rating associated with the media item in memory in response to receiving the report,” is also not disclosed in Bodlaender. Appeal Br. 13-14. Specifically, Appellant argues that creating or deriving an average user rating in Bodlaender is not the same as altering a recommendation rating as claimed because average user ratings are never changed. Id. However, as correctly noted by the Examiner, the term “altering” applies to the act of creating or deriving a user rating necessitating changes to be made, i.e., where there was no previous user rating, now there is one through its creation. Ans. 4-5, 18-19. In addition, Bodlander teaches that the database 115 records or generates a rating to a media clip (e.g., media clip #1, see Bodlaender Fig. 2, Table 200, col. 1). Bodlaender also 3 Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)): MPEP §2111. 4 SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)(“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”); In re Van Geuns, 988 F.2d 1181, 1184-1185 (Fed. Cir. 1993) (Although the claims are interpreted in light of the specification, limitations from the specification may not be read into the claims). Appeal 2012-003464 Application 11/695,327 6 teaches updating the database of community preference information including user ratings in response to the received community preference information, and dynamically updating the community preference information to provide for automatically adapting recommendations based on the community preference information (Bodlaender ¶ 8-10; ¶ 43-47). We are not persuaded of error in the Examiner’s finding that Bodlaender teaches the second “altering” step of claim 1. Independent claim 265 is argued together with claim 1. Appeal Br. 17. Therefore, our findings with respect to claim 1 apply to claim 26.6 Dependent Claims 3-5 Appellant contends that Bodlaender does not disclose the step of “determining if the media item has an established recommendation rating in memory before the step of altering” as recited in claim 3. Appeal Br. 19. In particular, Appellant argues that Bodlaender discloses updating community preference information on a user basis, and not on a media clip basis. Id. at 14-15. However, as noted by the Examiner, Bodlaender teaches that the database 115 is dynamically expanded to include a new column when preference information (including user ratings) for a new media clip is encountered. Ans. 6, 19–20; Bodlaender ¶¶ 39, 40, 47–49, Fig. 2. We therefore discern no error in the Examiner’s finding that Bodlaender teaches the limitations of claim 3. 5 Independent claim 26 is not restricted to a computer-readable medium in which the software is non-transistory in nature. Transitory propagating signals are unpatentable under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007); Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited machine-readable storage medium ineligible under § 101 since it encompasses transitory media).. 6 See 37 C.F.R. § 41.37(c)(1)(iv) (2013). Appeal 2012-003464 Application 11/695,327 7 Appellant argues claims 4 and 5 using the same argument presented for claim 3. Accordingly, our findings with respect to claim 3 apply to claims 4 and 5 as well.7 Dependent Claim 21 Claim 21 recites: altering, in memory, the recommendation rating associated with the media item in response to receiving the report, is a step comprised from the group of steps consisting of: increasing the recommendation rating associated with the media item in memory in response to receiving the report, and decreasing the recommendation rating associated with the media item in memory in response to receiving the report. Appellant argues that Bodlaender does not disclose increasing or decreasing a recommendation rating associated with a media item in response to receiving a report, but rather discloses determining whether received community preference information is newer than that stored in Bodlaender’s database and therefore needs to be replaced. Appeal Br. 16-17. We fail to see the distinction Appellant argues, for the community preference information in Bodlaender includes user ratings (recommendations) which may be increased or decreased as a result of an update. Bodlaender ¶¶ 8-9, 46-48. As noted by the Examiner, Bodlaender discloses the use of an average time a media clip is played to measure the preference of the media clip. See Ans. 20-21; Bodlaender ¶ 35. Relative to the average play time, Bodlaender discloses assigning a higher preference for media clips that are frequently fully played, and assigning reduced preference for clips that are 7 Id. Appeal 2012-003464 Application 11/695,327 8 frequently terminated. Id. We agree with the Examiner that Bodlaender discloses the limitations of claim 21. Claims 10, 11, 13, 18-20, and 24-25 Claims 10, 11, 13, 18-20, and 24-25 are argued together with independent claim 1 from which they depend. Thus, our findings with respect to claim 1 apply to these dependent claims.8 B. Rejection of Claims 2, 6-9, 12, 14-17, 22, 23, and 27-31 under 35 U.S.C. § 103(a) based on Bodlaender and Hoch Dependent Claims 2 and 27 Appellant argues that Bodlaender and Hoch fail to disclose the limitation of claim 2, namely, “not altering, in memory, the recommendation rating associated with the media item in response to a play or usage of the media item by a play user, if the media item was not previously recommended to the play user.” Appeal Br. 18. As noted by the Examiner, in Hoch, a play user can simply view the ratings assigned to songs by other peer users without storing or altering those recommendations. Ans. 9-10, 21-22; Bodlaender ¶¶ 75-76; Hoch ¶¶ 63, 87, 89, Fig. 3D - element 316. We agree with the Examiner that the limitations of claims 2 and 27 are taught in the combination of Bodlaender and Hoch. Claim 27 is argued together with claim 2 so our findings regarding claim 2 apply as well to claim 27. 9 8 When the patentability of dependent claims is not argued separately, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed. Cir. 1983). 9 See 37 C.F.R. § 41.37(c)(1)(iv) (2013). Appeal 2012-003464 Application 11/695,327 9 Dependent Claims 6-8, 14, 28, and 29 Appellant contends that Bodlaender and Hoch fail to disclose the limitation of claim 6, namely, “determining if a recommendation path, comprised of a sending user and a recipient user, has been previously established in a recommendation path table associated with a media item being recommended”. Appeal Br. 18-20. In particular, Appellant argues that even if the buddy list of Hoch is regarded as a recommendation table, it is not associated with a media item being recommended from a sending user to a recipient user as claimed. Id. 19. However, the combination of Bodlaender and Hoch teaches applying a level-of-detail algorithm to a browseable hierarchy of users to build on music searches. Ans. 10-11, 23; Hoch ¶ 27. Specifically, Hoch teaches a buddy playlist which includes a recommendation path because preferred buddies on a user’s buddy list will show preferred recommendations for songs. Hoch ¶ 87. The buddy list and songs listed for each buddy may be regarded as having a tabular format, as would the data defining these tables. See Hoch Fig. 3D, Fig. 9. Accordingly, we agree with the Examiner that all limitations of claim 6 are disclosed in Bodlaender and Hoch. Claims 7 and 8 were argued together with claim 6. Appeal Br. 19-20. Accordingly, our findings with respect to claim 6 also apply to claims 7 and 8.10 Claim 14 was argued along with claim 6. Appeal Br. 20. Therefore, our conclusion with respect to claim 6 also applies to claim 14.11 Claim 28 is similar to claim 6. Appeal Br. 26. Therefore, our conclusion with respect to claim 6 applies to claim 28.12 10 Id. 11 Id. Appeal 2012-003464 Application 11/695,327 10 Claim 29 corresponds to claim 14. Therefore, our conclusion with respect to claim 14 applies as well to claim 29.13 Dependent Claim 9 Appellant argues that the limitation of claim 9 is not disclosed in the combination of Boldaender and Hoch. Appeal Br. 20. Claim 9 recites “only performing the step of altering the recommendation rating associated with the media item if the recommendation path was not previously established.” As noted by the Examiner, in Hoch, a user can only rate another peer’s songs after clicking on the peer’s name in the display to see what their recommendations are, thereby establishing a recommendation path. Ans. 12, 24-25. Hoch ¶ 63, Fig. 3D. Accordingly, Appellant’s arguments have not persuaded us of error in the Examiner’s finding that the limitation of claim 9 is disclosed in the combination of Bodlaender and Hoch. Dependent Claim 12 Appellant argues that the limitation of claim 12 is not disclosed in the combination of Bodlaender and Hoch. Appeal Br. 21. Claim 12 recites “wherein the recommendation path table comprises a recommendation id, a recipient id identifying the recipient user, and a recommender id identifying the sending user.” As correctly noted by the Examiner, peers may have alias names to communicate with other peers without revealing their true identity. Ans. 12, 25-26; Hoch ¶ 63, Fig. 3D; ¶ 93-94, Fig. 10A. These are the user names appearing on the buddy list through which users can access each 12 Id. 13 Id. Appeal 2012-003464 Application 11/695,327 11 other’s songs. Id. Hoch also discloses that, after selecting a particular peer, the songs that peer is recommending are identified in a sub-display area 316 in Fig. 3D of Hoch. Id. Therefore, we agree with the Examiner that the limitation of claim 12 is disclosed in the combination of Bodlaender and Hoch. Dependent Claims 15 and 30 Appellant argues that the limitation of claim 15 is not disclosed in Bodlaender and Hoch. Appeal Br. 21-22. Claim 15 recites “determining if the media item associated with the play or usage action was previously recommended to the play user by determining if the play user is the recipient user in the recommendation path table for the media item associated with the play or usage action.” As noted by the Examiner, Hoch discloses that a peer user playing a song can view a buddy list to find songs shared in common with the user. Ans. 13, 26-27; Hoch ¶¶ 72, 89-92, Figs. 9, 10A. We agree with the Examiner that a person of ordinary skill in the art, using ordinary creativity and considering the prior art as a whole, would regard it obvious to determine if the played song was previously recommended to the play user by determining if the peer user and buddy share that song on their lists.14 We are not persuaded of error in the Examiner’s finding. 14 See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. at 421(“The person of ordinary skill in the art is a person of ordinary creativity.”); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 3 (1966)(“This is the test of obviousness, i.e., whether ‘the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”)(emphasis added); 35 U.S.C. § 103(a). Appeal 2012-003464 Application 11/695,327 12 Claim 30 is similar to claim 15. Therefore, our conclusion with respect to claim 15 applies as well to claim 30.15 Dependent Claims 16 and 31 Appellant argues that the limitation of claim 16 is not disclosed in Bodlaender and Hoch. Appeal Br. 13, 22-23. Claim 16 recites “altering a recommendation rating for the media item associated with the play or usage action if the media item associated with the play or usage action was previously recommended to the play user.” Hoch discloses that users can play and participate in the rating of songs of other peers. Hoch ¶ 63, Fig. 3 - element 316. Appellant argues that the play user is someone other than the sender and recipient of the recommendation. Appeal Br. 22-23. However, Appellant’s argument is not commensurate with the scope of claim 16 as the limitation argued is not present in the claim. Thus, we agree with the Examiner that the limitation of claim 16 is disclosed in Bodlaender and Hoch. Ans. 13, 28-29. Claim 31 is similar to claim 16. Our findings with respect to claim 16 therefore apply to claim 31.16 Dependent Claim 17 Appellant argues that the limitation of claim 17 is not disclosed in Bodlaender and Hoch. Appeal Br. 23-24. Claim 17 recites “the recommendation path table is comprised of two tables consisting of a received recommendations table and a sent recommendations table.” As correctly noted by the Examiner, Bodlaender discloses that the database 15 Id. 16 Id. Appeal 2012-003464 Application 11/695,327 13 structure 115 is a table that contains ratings of the community of all users of the peer-to-peer system, including sending and receiving users. Ans. 13, 28- 29; Bodlaender ¶ 39, database 115. We agree with the Examiner’s findings that the limitation of claim 17 is disclosed in the combination of Bodlaender and Hoch. Dependent Claim 22 Appellant argues that the limitation of claim 22 is not disclosed in Bodlaender and Hoch. Appeal Br. 24. Claim 22 recites: “wherein the altering of the recommendation rating for the media item associated with the play or usage action if the media item associated with the play or usage action was previously recommended to the play user, and the altering, in memory, the recommendation rating associated with the media item in response to receiving the report, are performed according to different alteration scales. Reviewing the prior art cited in the rejection, we do not agree with the Examiner that Bodlaender and Hoch teach altering the recommendation rating for plays of a media item previously recommended, as opposed to receiving the report of the recommendation, are performed according to different rating scales. In Bodlaender, the user rating of a media clip is on a scale from one to ten. Bodlaender ¶ 39. In Hoch, the rating mechanism is a “thumbs up” rating. Hoch ¶ 27. However, Bodlaender and Hoch do not teach altering of the recommendation rating on different alteration scales based on whether it is a play or usage following a recommendation, or a report of the recommendation. Accordingly, we are persuaded that Appeal 2012-003464 Application 11/695,327 14 Appellant is correct that claim 22 is not taught by the combination of Bodlaender and Hoch. Dependent Claim 23 Appellant argues that the limitation of claim 23 is not disclosed in Bodlaender and Hoch. Appeal Br. 24-25. Claim 23 recites: wherein the altering of the recommendation rating for the media item associated with the play or usage action if the media item associated with the play or usage action was previously recommended to the play user comprises: increasing the recommendation rating for the media item if the play or usage action occurs within a prescribed period of time; and decreasing the recommendation rating for the media item if the play or usage action does not occur within a prescribed period of time. As noted by the Examiner, Bodlaender discloses the use of average play time as a measure to reduce preference of a media clip if frequently terminated and to increase preference for one that is frequently fully played. Ans. 14, 29-30; Bodlaender ¶35. Thus, we agree with the Examiner that this limitation is disclosed in the combination of Bodlaender and Hoch, as correctly noted by the Examiner. C. Rejection of Claims 32 and 33 under 35 U.S.C. § 103(a) based on Bodlaender and Molander Independent Claim 32 Appellant states that independent claim 3217 has similar features to claim 1, and argues that the combination of Bodlaender and Molander does 17 Claim 32 is not restricted to a computer-readable medium storing non- transitory software. See footnote 5. Appeal 2012-003464 Application 11/695,327 15 not disclose “wherein the recommendation rating of each media item of the one or more media items comprises a rating altered in response to the media item having been recommended by a sending user.” Appeal Br. 26-27. As correctly found by the Examiner, Bodlaender discloses an average user rating for a media clip that is derived in response to receiving ratings from multiple users, including sending and receiving users. Ans. 14-16; Bodlaender ¶ 35. The database 115 records or generates (i.e. alters) ratings given to a plurality of media clips by a plurality of users. Bodlaender ¶¶ 8-9, 39, 42, 46; Fig. 2, Table 200, media clips 1-4. The database 115 is updated to include new preference information with respect to media clips recommended by users. Bodlaender ¶¶ 8-9, 46-48. In view of these disclosures, we agree with the the Examiner that this limitation of claim 32 is disclosed in the combination of Bodlaender and Molander. Ans. 14-17, 32. Dependent Claim 33 Claim 33 is argued together with claim 32. Accordingly, our conclusion regarding claim 32 applies to claim 33 as well.18 DECISION For the above reasons, the Examiner’s decision with respect to the rejection of claims 1-21 and 23-33 is affirmed, but is reversed with respect to claim 22. 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) (2009). 18 See 37 C.F.R. § 41.37(c)(1)(iv) (2013). Appeal 2012-003464 Application 11/695,327 16 AFFIRMED-IN-PART tkl