Ex Parte Espelien

Patent Trial and Appeal Board

Nov 24, 2014

11581526 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________
 
BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte JOEL ESPELIEN
________________

Appeal 2012-005502
Application 11/581,5261
Technology Center 2100
________________

Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–6, 8–11, 14, 16–18, 24, 26, 27, 33, 48–61.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
INVENTION
The invention is directed to managing metadata of multimedia. Spec.
4:8. Claims 1, 9, 17, 53, and 58 are illustrative of the invention and are
reproduced below:

1 According to Appellant, the real party in interest is PacketVideo
Corporation. App. Br. 1.
2 Claims 7, 12, 13, 15, 19–23, 25, 28–32, and 34–37 were previously
cancelled.
Appeal 2012-005502
Application 11/581,526

2
1. A system for managing multimedia, the system
comprising:
a first database connected to a first communication
network wherein a first digital media file is stored within the
first database wherein the first digital media file has first
metadata indicative of the first digital media file wherein the
first metadata is encoded in a first format;
a provider connected to the first communication network;
a second database located remotely with respect to the
first database;
a first terminal electrically connected to the first database
and the provider via the first communication network wherein
the first terminal identifies that the first digital media file is
accessible over the first communication network from the first
database via the first metadata and further wherein a first user
consumes the first digital media file on the first terminal using
transmission of the first digital media file from the first
database wherein the first terminal changes the first metadata to
create updated first metadata that indicates that the first digital
media file was consumed;
a second terminal electrically connected to the first
communication network wherein the second terminal is located
remotely with respect to the first terminal and the provider and
further wherein the second terminal accesses the updated first
metadata to indicate to a second user that is a different user than
the first user that the first digital media file was consumed on
the first terminal; and
a data guide transmitted by the provider to the second
terminal wherein the second terminal identifies the first digital
media file by comparing the updated first metadata to the data
guide and further wherein the second terminal accesses the first
digital media file from the second database based on the
updated first metadata that indicates that the first digital media
file was consumed on the first terminal wherein the second user
consumes the first digital media file on the second terminal
based on the updated first metadata that indicates that the first
digital media file was consumed on the first terminal.

Appeal 2012-005502
Application 11/581,526

3
9. A method for controlling metadata, the method
comprising the steps of:
providing a server electrically connected to a first
communication network wherein the server has a first database
which stores a first digital media file and a second media file
that is a different digital media file than the first digital media
file wherein the first digital media file has first metadata
indicative of the first digital media file and the second digital
media file has second metadata indicative of the second digital
media file and further wherein the first database of the server is
accessible via the first communication network wherein the first
metadata is encoded in a first format wherein the first digital
media file and the second media file are a first type of media
content;
providing a first terminal having a second database
wherein the first terminal is electrically connected to the first
communication network;
transferring the first metadata and the second metadata to
the first terminal wherein the first terminal receives the first
metadata and the second metadata separately from the first
digital media file and the second digital media file;
storing the first metadata within the second database of
the first terminal wherein the first terminal accesses the first
metadata and identifies the first digital media file from the first
metadata;
storing the second metadata within the second database
of the first terminal wherein the first terminal accesses the
second metadata and identifies the second digital media file
from the first metadata;
consuming the first digital media file wherein a user
consumes the first digital media file on the first terminal;
consuming the second digital media file wherein the user
consumes the second digital media file;
determining an amount of consumption of the first type
of media content by the user wherein the server determines the
amount of consumption of the first type of media content by the
user based on the first metadata and the second metadata; and
transmitting a report having the amount of consumption
of the first type of media content by the user wherein the report
Appeal 2012-005502
Application 11/581,526

4
is transmitted to a second terminal that is a different terminal
than the first terminal.

17. A method for managing multimedia, the method
comprising the steps of:
providing a first terminal electrically connected to a first
communication network wherein the first terminal has a first
database which stores first metadata and second metadata
wherein the first metadata is indicative of a first digital media
file and the second metadata is indicative of a second digital
media file and further wherein the first database stores a content
list that displays the first metadata and the second metadata
wherein the first metadata and the second metadata are encoded
in a first format wherein the first digital media file is a first type
of media content wherein the second digital media file is a
second type of media content wherein the first type of media
content is a different type of media content than the second type
of media content;
connecting a second database to the first communication
network wherein the first digital media file is stored within the
second database and further wherein the second database is a
different database than the first database wherein the first
terminal is in communication with the second database via the
first communication network;
accessing the first metadata from the first database
wherein the first terminal identifies the first digital media file
using the first metadata and procures the first digital media file
from the second database in response to selection of the first
metadata from the content list;
consuming the first digital media file on the first terminal
wherein the first digital media file is consumed at a first time by
a first user and further wherein the first digital media file
consumed at the first time is procured from the second database
in response to selection of the first metadata from the content
list using the first terminal;
updating the first metadata to indicate a first
recommendation associated with the first digital media file
wherein the recommendation is generated by the first user that
consumed the first digital media file at the first time;
Appeal 2012-005502
Application 11/581,526

5
transmitting the content list to a second terminal that is a
different terminal than the first terminal;
consuming the first digital media file at a second time
wherein the second time is subsequent to the first time wherein
the first digital media file is consumed on the second terminal at
the second time by a second user in response to selection of the
first metadata from the content list using the second terminal
wherein the first digital file consumed at the second time is
procured from a third database in response to selection of the
first metadata from the content list wherein the third database is
different than the first database and the second database; and
updating the first metadata to indicate a second
recommendation associated with the first digital media file
wherein the recommendation is generated by the second user
that consumed the first digital media file at the second time.

53. A system for managing multimedia, the system
comprising:
a first database connected to a first communication
network wherein a first digital media file is stored within the
first database wherein the first digital media file has first
metadata indicative of the first digital media file wherein the
first metadata is encoded in a first format;
a provider connected to the first communication network;
a second database located remotely with respect to the
first database;
a first terminal electrically connected to the first database
and the second database by the first communication network
wherein the first terminal identifies that the first digital media
file is accessible over the first communication network from the
first database via the first metadata and further wherein a first
user consumes the first digital media file on the first terminal
using transmission of the first digital media file from the first
database wherein the first terminal changes the first metadata to
create updated first metadata that indicates that the first digital
media file was consumed; and
a second terminal electrically connected to the first
communication network wherein the second terminal is located
remotely with respect to the first terminal and the provider and
Appeal 2012-005502
Application 11/581,526

6
further wherein the second terminal uses the updated first
metadata to identify that the first digital media le was consumed
on the first terminal wherein the second terminal accesses the
updated first metadata to indicate to a second user who is a
different user than the first user that first digital media file was
consumed on the first terminal wherein the second terminal
accesses the first digital media file from the second database
based on the updated first metadata that indicates that the first
digital media file was consumed on the first terminal wherein
the second user consumes the first digital media file on the
second terminal based on the updated first metadata that
indicates that the first digital media file was consumed on the
first terminal.

58. A method for controlling metadata, the method
comprising the steps of:
providing a server electrically connected to a first
communication network wherein the server has a first database
which stores a first digital media file and a second media file
that is a different digital media file than the first digital media
file wherein the first digital media file has first metadata
indicative of the first digital media file and the second digital
media file has second metadata indicative of the second digital
media file and further wherein the first database of the server is
accessible via the first communication network wherein the first
metadata is encoded in a first format wherein the first digital
media file and the second media file are a first genre of media
content;
providing a first terminal having a second database
wherein the first terminal is electrically connected to the first
communication network;
transferring the first metadata and the second metadata to
the first terminal wherein the first terminal receives the first
metadata and the second metadata separately from the first
digital media file and the second digital media file;
storing the first metadata within the second database of
the first terminal wherein the first terminal accesses the first
metadata and identifies the first digital media file from the first
metadata;
Appeal 2012-005502
Application 11/581,526

7
storing the second metadata within the second database
of the first terminal wherein the first terminal accesses the
second metadata and identifies the second digital media file
from the first metadata;
consuming the first digital media file wherein a user
consumes the first digital media file on the first terminal;
consuming the second digital media file wherein the user
consumes the second digital media file;
determining an amount of consumption of the first genre
of media content by the user wherein the server determines the
amount of consumption of the first genre of media content by
the user based on the first metadata and the second metadata;
and
transmitting a report having the amount of consumption
of the first genre of media content by the user wherein the
report is transmitted to a second terminal that is a different
terminal than the first terminal.

REFERENCES
Lichner US 2002/0129359 A1 Sept. 12, 2002
Hamilton US 2003/0115150 A1 June 19, 2003
Plastina US 2003/0182315 A1 Sept. 25, 2003
Schrock US 2006/0036554 A1 Feb. 16, 2006
Rogers US 2006/0195514 A1 Aug. 31, 2006
Ramaswamy US 2006/0242325 A1 Oct. 26, 2006
Soelberg US 2006/0288112 A1 Dec. 21, 2006
Davis US 2007/0033225 A1 Feb. 8, 2007
Appeal 2012-005502
Application 11/581,526

8
REJECTIONS AT ISSUE
Claims 3 and 17 stand rejected under 35 U.S.C. § 112, first paragraph
as failing to comply with the written description requirement. Ans. 4–5.
Claims 1, 3, and 53 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Plastina and Schrock. Ans. 6–11.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Plastina, Schrock, and Davis. Ans.
11–12.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Plastina, Schrock, and Soelberg. Ans.
12–13.
Claims 2, 4, 5, 48, and 54–57 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Plastina, Schrock, and
Lichner. Ans. 13–16.
Claims 9, 11, 14, 16, 33, 49, 50, and 58–61 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Plastina
and Hamilton. Ans. 16–23.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Plastina, Hamilton, and Ramaswamy.
Ans. 23.
Claims 17, 18, 24, 26, 27, 51, and 52 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Plastina, Schrock,
and Rogers. Ans. 23–29.

Appeal 2012-005502
Application 11/581,526

9
ANALYSIS
Rejection of Claim 3 under 35 U.S.C. § 112, first paragraph3
The Examiner finds the features recited in claim 3 fails to comply
with the written description requirement. Ans. 4–5. Appellant fails to
contest this rejection.
Accordingly, we summarily sustain the rejection of claim 3 under
35 U.S.C. § 112, first paragraph. See MPEP § 1205.02 (8th ed., Oct. 2005)
(“If a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, that ground of rejection will be summarily sustained by the
Board.”).

Rejection of Claim 17 under 35 U.S.C. § 112, first paragraph
The Examiner finds the features recited in claim 17 fails to comply
with the written description requirement for the claimed limitation “updating
the first metadata to indicate a second recommendation associated with the
first digital media file wherein the recommendation is generated by the
second user that consumed the first digital media file at the second time.”
Ans. 5.

3 We have decided the Appeal before us, however, in the event of further
prosecution, the Examiner should evaluate claims 9–11, 14, 16, 33, 49, 50,
and 58–61 in light of 35 U.S.C. § 112, first paragraph as failing to comply
with the written description requirement. We note that portion of the
Specification relied upon by the Appellant (Spec. 13:18–14:25; App. Br. 7
and 19) is silent as to: “the first digital media file and the second media file
are a first type of media content” as recited in claim 9 (emphasis added); and
“the first digital media file and the second media file are a first genre of
media content” as recited in claim 58 (emphasis added).
Appeal 2012-005502
Application 11/581,526

10
Appellant contends pages 25–29 of the Specification provide support
for these feature recited in claim 17. We agree with Appellant.
Pages 25–29 of the Specification recite periodic updates of metadata
and the periodic updates may have recommendations. Further, pages 25–29
of the Specification recite a first user 26a and second user 26b may request
recommendations based on past consumption. Accordingly, Appellant has
persuasively argued claim 17 complies with the written description
requirement.
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claims 17 under 35 U.S.C. § 112, first paragraph.

Rejection of Claims 1–6, 8, and 48 under 35 U.S.C. § 103(a)
The Examiner finds Plastina teaches: a content database, which the
Examiner maps to the claimed “provider” (Ans. 6); a playlist, which the
Examiner maps to the claimed “data guide” (Ans. 30–31); and a device that
updates and maintains playlists on an associated device, which the Examiner
maps to a first terminal and a second terminal respectively (Ans. 7 and 31–
33) (citing Plastina, ¶¶ 108, 136–137).
Appellant contends Plastina merely teaches a first terminal transmits a
playlist to a second terminal in a peer-to-peer communication, which fails to
teach a data guide transmitted by a remotely located provider to the second
terminal. App. Br. 30–31. Further, Appellant contends Plastina’s playlist
that is locally stored on a first terminal device fails to teach a data guide that
is transmitted by a remote provider to the second terminal. Reply Br. 3–5.
We agree with Appellant.
Appeal 2012-005502
Application 11/581,526

11
As stated supra, the Examiner maps Plastina’s content database to the
claimed provider. In addition, as explained supra, the Examiner maps
Plastina’s device that updates and maintains playlists on an associated
device to a first terminal and a second terminal respectively. The cited
portion of Plastina relied upon by the Examiner teaches the user builds the
playlist on their home computer (first terminal) and transmits the playlist to
their handheld device (second terminal) (emphasis added). See Plastina
¶ 108; Ans. 7, 31–33. Plastina’s playlist is generated at a user’s home
computer (first terminal) and transmitted to an associated handheld device
(second terminal), rather than generating the playlist at the content database
(provider) and transmitting the playlist to the handheld device (second
terminal). See Plastina ¶ 108. Thus, the Examiner has not persuasively
explained how paragraph 108 describes “a data guide transmitted by the
provider to the second terminal” (emphasis added).
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claim 1 and the corresponding dependent claims 2–
6, 8, and 48 under 35 U.S.C. § 103(a).

Rejection of Claims 9–11, 16, 33, 58, 60, and 61 under 35 U.S.C. § 103(a)
The Examiner finds Plastina teaches a user play-count total for first
and second music files (Ans. 37) and Hamilton teaches a report of the
amount of usage of rented assets is transmitted to a server (Ans. 18). In
addition, the Examiner finds it would have been obvious to one of ordinary
skill in the art at the time of the invention to modify Plastina’s usage
tracking of music files with Hamilton’s transmission of a report to provide a
way for licensors to track the royalties of their media content. Ans. 18–19.
Appeal 2012-005502
Application 11/581,526

12
Appellant contends Plastina merely teaches a user play-count for a
particular piece of content rather than determining consumption of a “first
type of media content.” App. Br. 64–66; Reply Br. 12–13. Appellant
contends Hamilton fails to teach transmitting a consumption report because
Hamilton teaches computation of usage count per asset rather than
aggregation of the assets by type of media content (App. Br. 66–67).
Appellant contends one of ordinary skill in the art would not have
motivation to combine the references because the references are a piece-
meal combination and the combination is an impermissible hindsight
reconstruction of Appellant’s invention. App. Br. 67–68. We disagree with
Appellant.
The cited portions of Plastina relied upon by the Examiner teach a
play-count total of a particular piece of content (see Plastina ¶ 94) and the
content is music content (see Plastina ¶ 58). Plastina’s play-count total (see
Plastina ¶ 94) meets the claimed limitation “determining an amount of
consumption of . . . media content by the user.” Plastina’s database of music
content (see Plastina ¶¶ 57–58) meets the claimed limitation “the first type
of media content” because “music” is a type of media content.
As for Appellant’s second contention, because Plastina teaches a type
of media content for the reasons explained supra, and Hamilton teaches an
amount of usage of rented assets report is transmitted to a server (Ans. 18),
we find Appellant’s arguments regarding Hamilton failing to teach
transmitting a report unpersuasive.
Regarding Appellant’s argument that one of ordinary skill in the art
would not combine Plastina and Hamilton, the Examiner identified a
teaching to combine or modify components, which is to provide a way for
Appeal 2012-005502
Application 11/581,526

13
licensors to track the royalties of their media content. Ans. 18–19. Thus,
the Examiner provided articulated reasoning with rational underpinnings to
support the motivation to combine the teachings of Plastina and Hamilton
(see In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Independent claim 58 recites similar features except claim 58 recites a
“first genre of media content” rather than a “first type of media content.”
The Examiner finds, and we agree, that Plastina teaches a user organizing
content by genre (see Plastina, ¶ 154; Ans. 39), which meets the claimed
limitation “first genre of media content.”
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of claims 9 and 58 under 35 U.S.C. § 103(a).
Because Appellant has not provided separate arguments against the
rejections of claims 10, 11, 16, 33, 60, and 61, these claims fall with claims
9 and 58 for same reasons as set forth above. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Rejection of Claims 14 and 59 under 35 U.S.C. § 103(a)
The Examiner finds Plastina teaches generating playlists of “songs I
have not heard recently,” which the Examiner maps to recommending a
media file. Ans. 21 (citing Plastina, ¶ 158). As discussed supra with respect
to claim 9, the Examiner finds Plastina’s database of music teaches “the first
type of media content” because “music” is a type of media content.
Appellant contends Plastina fails to teach a second type of content that
is a different type of content than the first type of media content because
Plastina merely teaches a playlist that excludes selected artists. App. Br. 68–
69. We agree with Appellant.
Appeal 2012-005502
Application 11/581,526

14
As explained supra, the cited portions of Plastina relied upon by the
Examiner teach “the first type of media content” because music is a type of
media content. Further, the cited portions of Plastina relied upon by the
Examiner teach filtering and recommending “songs I have not heard
recently” (see Plastina, ¶¶ 158, 178). However, the Examiner has not
persuasively explained how Plastina’s music content in the illustrated
example (see Plastina, ¶ 58) and paragraphs 158 and 178 of Plastina teach or
suggest “a second type of media content that is a different type of content
than the first type of media content” (emphasis added).
Claim 59 recites similar features except claim 59 recites “genre”
rather than “type.” The portions of Plastina relied upon by the Examiner
teach a user organizing content by genre (see Plastina, ¶ 154; Ans. 39),
which meets the claimed limitation on a “first genre of media content.”
However, the Examiner has not persuasively explained how paragraphs 58,
154, 158, and 178 of Plastina teach or suggest “a second genre of media
content that is a different genre of content than the first genre of media
content” (emphasis added).
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claims 14 and 59 under 35 U.S.C. § 103(a).

Rejection of Claims 49 and 50 under 35 U.S.C. § 103(a)
The Examiner finds Plastina teaches a user organizing media content
by genre. Ans. 22 (citing Plastina, ¶ 154). Appellant argues claim 49
depends from claim 9 and Plastina fails to teach a server determines an
amount of consumption of a genre of media content as recited in the claims
9 and 49. App. Br. 69–70. We disagree with Appellant.
Appeal 2012-005502
Application 11/581,526

15
As explained supra with respect to claim 9, Plastina’s user content
monitoring including a play-count for a particular piece of content teaches
the claimed limitation determine an amount of consumption of media
content. Moreover, we note Plastina teaches an experience-monitoring
module can be located on a server (emphasis added), which teaches or
suggests the claimed limitation “the server determines the amount of
consumption of . . . media content,” as recited in claim 9. See Plastina, ¶ 56.
In addition, as explained supra with respect to claim 58, Plastina’s teaching
of a user organizing media content by genre teaches genre.
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of claim 49 under 35 U.S.C. § 103(a).
Because Appellant has not provided separate arguments against the
rejection of claim 50, this claim falls with claim 49 for same reasons as set
forth above. See 37 C.F.R. § 41.37(c)(1)(iv).

Rejection of Claims 17 and 26 under 35 U.S.C. § 103(a)
The Examiner finds Plastina teaches a user creates a smart playlist of
songs they have not heard recently and the playlist engine will populate a
playlist with content as recommendations to the user. Ans. 39–40. The
Examiner finds Plastina teaches a user using a first device can share their
content and metadata with other users located at other devices. Ans. 40. In
addition, the Examiner finds it would have been obvious to one of ordinary
skill in the art at the time of the invention to combine Plastina, Schrock, and
Rogers to provide media content from an alternate database if another source
is unavailable. Ans. 26–27.
Appeal 2012-005502
Application 11/581,526

16
Appellant contends the combination of Plastina fails to teach or
suggest a recommendation indicated in updated metadata and the
recommendation is generated by a user that consumed the digital media file
because Plastina merely teaches metadata is collected as users experience
content. App. Br. 84–86; Reply Br. 16–18. Moreover, Appellant asserts
Plastina and Schrock fail to teach or suggest multiple users accessing
metadata concerning another user because Schrock merely teaches that
multiple users may use the same device rather than multiple users each using
separate devices. App. Br. 86–89. Appellant further contends one of
ordinary skill in the art would never combine Plastina, Schrock, and Rogers
because the Examiner did not provide a rational underpinning. App Br. 89–
90. We disagree with Appellant.
The cited portions of Plastina relied upon by the Examiner teach a
user can update their metadata after consuming media content (see Plastina,
¶ 83), which causes dynamic and automatic updates of the smart playlist (see
Plastina, ¶¶ 33, 158, 178; Ans. 24–25). Thus, Plastina implies the metadata
indicates a recommendation of media content via the smart playlist.
Accordingly, Plastina meets the claimed limitation “the first metadata to
indicate a first recommendation associated with the first digital media file
wherein the recommendation is generated by the first user that consumed the
first digital media file at the first time” as recited in claim 17.
As for Appellant’s second contention, the cited portions of Plastina
relied upon by the Examiner teach a user using a first device can share their
consumed content and corresponding metadata with other users each using
different devices (see Plastina, ¶¶ 33, 136; Ans. 24–25 and 40). Thus,
Plastina teaches when the other user receives the metadata and consumed
Appeal 2012-005502
Application 11/581,526

17
media content from the sending user, the other user can consume the media
content on their terminal. Id. Accordingly, Plastina meets the claimed
limitation “consuming the first digital media file at a second time wherein
the second time is subsequent to the first time wherein the first digital media
file is consumed on the second terminal at the second time by a second user
in response to selection of the first metadata from the content list using the
second terminal” as recited in claim 17.
Regarding Appellant’s argument that one of ordinary skill in the art
would not combine Plastina, Schrock, and Rogers, the Examiner identified a
teaching for combining or modifying components, which is to provide media
content from an alternate database if another source is unavailable. Ans. 26–
27. Thus, the Examiner provided articulated reasoning with rational
underpinnings to support the motivation to combine the teachings of
Plastina, Schrock, and Rogers (see In re Kahn, 441 F.3d at 988).
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of claim 17 under 35 U.S.C. § 103(a).
Because Appellant has not provided separate arguments against the
rejections of claim 26, this claim falls with claim 17 for same reasons as set
forth above. See 37 C.F.R. § 41.37(c)(1)(iv).

Rejection of Claim 18 under 35 U.S.C. § 103(a)
The Examiner finds Plastina teaches a note (comment from a user)
and a user rating media content. Ans. 27 and 40–41. Appellant contends a
note is a record that the user consumed the media content rather than a
comment. App Br. 91–92. Moreover, Appellant contends Plastina fails to
Appeal 2012-005502
Application 11/581,526

18
teach a comment is displayed on a second terminal because Plastina is silent
as to displaying a comment. App. Br. 92–93. We agree with Appellant.
The cited portions of Plastina relied upon by the Examiner teach a
user's work system makes note the user has listened to, for example, a CD
and can update a user's metadata accordingly (see Plastina, ¶ 115). Plastina
also teaches the user can rate tracks on the CD using a star-rating system
(user can rate media content) (see Plastina, ¶ 115). Thus, the Examiner has
not persuasively explained how paragraph 115 describes “a comment” and
“the comment is displayed on a second terminal.”
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claim 18 under 35 U.S.C. § 103(a).

Rejection of Claim 24 under 35 U.S.C. § 103(a)
The Examiner finds Plastina teaches receiving a transmission without
metadata. Ans. 42–43. Appellant contends Plastina fails to teach media
content is received without identifying metadata because Plastina merely
teaches a user’s metadata may be reconciled between two devices. App. Br.
96–97. We agree with Appellant.
The cited portions of Plastina relied upon by the Examiner teach a
user can reconcile metadata between their devices and filtering content to
generate a playlist (see Plastina, ¶¶ 108, 206). Thus, the Examiner has not
persuasively explained how paragraphs 108 and 206 describe “the
transmission does not identify the second metadata.”
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claim 24 under 35 U.S.C. § 103(a).

Appeal 2012-005502
Application 11/581,526

19
Rejection of Claim 27 under 35 U.S.C. § 103(a)
The Examiner finds Plastina teaches a LAN and a WAN. Ans. 29.
Appellant contends Plastina merely teaches a computer may be connected to
a LAN and a WAN rather than a terminal accessing the metadata with one of
the networks exclusively and a second terminal accesses the metadata with
another network exclusively. App. Br. 99–100. We agree with Appellant.
The cited portions of Plastina relied upon by the Examiner teach a
computer may be connected to a LAN and a WAN (see Plastina, ¶ 51) and is
silent as to a terminal accessing metadata with one network exclusively and
a second terminal accessing the metadata with another network exclusively.
Thus, the Examiner has not persuasively explained how paragraph 51
describes a first terminal accesses first metadata via a first communication
network without using a second communication network and a second
terminal accesses first metadata via the second communication network
without using the first communication network, as claimed.
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claim 27 under 35 U.S.C. § 103(a).

Rejection of Claim 51 under 35 U.S.C. § 103(a)
The Examiner finds paragraph 158 of Plastina teaches displaying the
recommendation on a second terminal. Ans. 29. Appellant contends
Plastina merely teaches a database storing metadata may be maintained by a
third party rather than displaying a recommendation on another terminal.
App. Br. 102–103. We disagree with Appellant.
As discussed supra in the explanation of claim 17, Plastina teaches a
user can update their metadata and a smart playlist dynamically and
Appeal 2012-005502
Application 11/581,526

20
automatically recommends content based on the user’s preferences indicated
in their metadata and the user can share their content and metadata with
other users. After the user views the recommended content, Plastina teaches
the user shares their content and metadata with other users each using
different devices, which meets the claimed limitation “displaying the first
recommendation on the second terminal.”
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of claim 51 under 35 U.S.C. § 103(a).

Rejection of Claim 52 under 35 U.S.C. § 103(a)
The Examiner finds paragraph 108 of Plastina teaches the claimed
transmitting metadata that is updated to indicate a first recommendation and
a second recommendation wherein the metadata that is updated is
transmitted to a media source. Ans. 29. Appellant contends Plastina merely
teaches a user reconciling metadata between their devices rather than
transmitting updated metadata to a media source. App. Br. 105–106. We
agree with Appellant.
The cited portion of Plastina relied upon by the Examiner teach a user
reconciling metadata between devices (see Plastina, ¶ 108) but is silent as to
transmitting updated metadata to a source. Thus, the Examiner has not
persuasively explained how paragraph 108 describes “metadata which is
updated is transmitted to a media source.”
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claim 52 under 35 U.S.C. § 103(a).

Appeal 2012-005502
Application 11/581,526

21
Rejection of Claim 53 and 54 under 35 U.S.C. § 103(a)
The Examiner finds Plastina teaches a user updates their metadata and
a smart playlist of songs dynamically and automatically provides content
recommendations to the user. Ans. 9–10. The Examiner finds Plastina
teaches a user using a first device can share their content and metadata with
other users using located at other devices. Ans. 33. In addition, the
Examiner finds it would have been obvious to one of ordinary skill in the art
at the time of the invention to combine Plastina and Schrock to provide
media content to multiple users to access and consume media. Ans. 10–11.
Appellant contends Plastina merely teaches as a user’s metatdata is
updated it can be reconciled across devices rather than a terminal accessing a
media file based on updated metadata indicating the media file was
consumed on another terminal. App. Br. 37–39. Moreover, Appellant
contends Plastina and Schrock fail to teach or suggest multiple users
accessing metadata concerning another user because Schrock merely teaches
that multiple users may use the same device rather than multiple users each
having different devices consuming multimedia files on their respective
different devices. App. Br. 39–42. Appellant further contends one of
ordinary skill in the art would never combine Plastina, Schrock, and Rogers
because the Examiner did not provide a rationale underpinning for the
combination. App. Br. 42–43. We disagree with Appellant.
The cited portions of Plastina relied upon by the Examiner teach a
user can update their metadata based on content they consumed, a smart
playlist dynamically and automatically recommends content based on the
user’s preferences indicated in their metadata, and the user can share their
content and metadata with other users (see Plastina, ¶¶ 33, 83), thus teaching
Appeal 2012-005502
Application 11/581,526

22
updated metadata indicating a media file was consumed. The cited portions
of Plastina relied upon by the Examiner further teach the user using a first
device can share their content and metadata with other users using different
devices (see Plastina, ¶ 136), thus teaching a terminal accessing a media file
that was previously consumed on another terminal. Thus, Plastina teaches a
terminal accessing a media file based on updated metadata indicating the
media file was consumed on another terminal.
Regarding Appellant’s second contention, as explained supra in the
discussion of claim 17, Plastina teaches multiple users each having separate
devices accessing metadata concerning another user.
Regarding Appellant’s argument that one of ordinary skill in the art
would not combine Plastina and Schrock, the Examiner identified a teaching
for combining or modifying components for providing media content to
multiple users for accessing and consuming digital media. Ans. 10–11.
Thus, the Examiner provided articulated reasoning with rational
underpinnings to support the motivation to combine the teachings of
Plastina, Schrock, and Rogers (see In re Kahn, 441 F.3d at 988).
Accordingly, for the reasons stated supra, we sustain the Examiner’s
rejection of claim 53 under 35 U.S.C. § 103(a).
Because Appellant relies on the same arguments against the rejections
of claim 54, this claim falls with claim 53 for same reasons as set forth
above. See 37 C.F.R. § 41.37(c)(1)(iv).

Rejection of Claim 55 under 35 U.S.C. § 103(a)
The Examiner finds Lichner teaches a proposal necessarily includes
specified time duration because a licensing expiration would not pop-up
Appeal 2012-005502
Application 11/581,526

23
unexpectedly. Ans. 35–36. Appellant contends Lichner merely teaches a
user may purchase media content and the user may receive a notice of
license expiration rather than a terminal generating an electronic request for
proposal to identify the specified time duration, as claimed. App. Br. 52–54.
We agree with Appellant.
The cited portions of Lichner relied upon by the Examiner teach a
user may purchase media content and the user may receive a notice of
license expiration (see Lichner, ¶ 22). Although Lichner’s licensing
agreement sent from the provider to the user include specific time duration,
the user terminal that generates a proposal does not necessarily include
specific time duration. Thus, the Examiner has not persuasively explained
how paragraph 22 of Lichner describes a “terminal generates the electronic
request for proposal to identify the specified time duration.”
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claim 55 under 35 U.S.C. § 103(a).

Rejection of Claim 56 under 35 U.S.C. § 103(a)
The Examiner finds Lichner teaches a customer may commence a
financial transaction to rent a multimedia file. Ans. 16. Appellant contends
Lichner merely teaches a user may purchase media content and the user may
receive a notice of license expiration rather than one proposed cost from a
provider and another proposed cost from a source. App. Br. 54–58. We
agree with Appellant.
The cited portions of Lichner relied upon by the Examiner teach a
user may purchase media content and the user may receive a notice of
Appeal 2012-005502
Application 11/581,526

24
license expiration (see Lichner, ¶ 22) but is silent as to two proposed costs:
one from a provider and another from a source.
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claim 56 under 35 U.S.C. § 103(a).

Rejection of Claim 57 under 35 U.S.C. § 103(a)
The Examiner finds Lichner teaches a customer may commence a
financial transaction to rent a multimedia file. Ans. 36–37. Appellant
contends Lichner merely teaches a specific media file rather than a plurality
of digital media files. App. Br. 58–61. We agree with Appellant.
The cited portions of Lichner relied upon by the Examiner teach a
specific media file (see Lichner, ¶ 22) rather than a plurality of digital media
files (emphasis added).
Accordingly, for the reasons stated supra, we do not sustain the
Examiner’s rejection of claim 57 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claim 3 under 35 U.S.C. § 112 first
paragraph is summarily affirmed.
The Examiner’s decision rejecting claim 17 under 35 U.S.C. § 112
first paragraph is reversed.
The Examiner’s decision rejecting claims 9–11, 16, 17, 26, 33, 49–51,
53, 54, 58, 60, and 61 under 35 U.S.C. § 103(a) is affirmed.
The Examiner’s decision rejecting claims 1–6, 8, 14, 18, 24, 27, 48,
52, 55–57, and 59 under 35 U.S.C. § 103(a) is reversed.
Appeal 2012-005502
Application 11/581,526

25
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-IN-PART

msc