Ex Parte Gross

Patent Trial and Appeal Board

Aug 27, 2013

11456503 (P.T.A.B. Aug. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/456,503 07/10/2006 John Nicholas Gross JNG2004-6C 5666
52447 7590 08/28/2013
PATENTBEST
1195 Park Avenue
Suite 202A
EMERYVILLE, CA 94608
EXAMINER
AGWUMEZIE, CHARLES C
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
08/28/2013 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 JOHN NICHOLAS GROSS
____________

Appeal 2011-011448
Application 11/456,503
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John Nicholas Gross (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-24. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

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Application 11/456,503

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SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claim 12, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of allocating capacity delivery of playable media items
over between a first user of a media distribution service and a second
user of the media distribution service, the method comprising:
(a) providing a first delivery queue for the first user with a
computing system accessible over an electronic network, said first
delivery queue having a first capacity for delivering playable media
items to said first user;
wherein said first capacity defines a first maximum number of
said playable media items which can be in a delivered state to the first
user at any time;
(b) providing a second delivery queue for the second user with
said computing system, said second delivery queue having a second
capacity for delivering second playable media items to said second
user;
wherein said second capacity defines a second maximum
number of said playable media items which can be in a delivered state
to the second user at any time;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Feb. 14, 2011) and Reply Brief (“Reply Br.,” filed May 31, 2011),
and the Examiner’s Answer (“Ans.,” mailed Mar. 30, 2011).
2 Although the Examiner (Ans. 4) had no comment on the copy of the claims
contained in the Appendix to the Brief, claim 1 of the Appendix lists the
steps as (d), (e), and (f). We presume this was inadvertent and the list should
follow the lettering of the original claim, i.e., (a), (b), and (c).
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(c) exchanging capacity between said first subscriber queue and
said second delivery queue for delivery of playable media items with
said computing system in response to a request received from one or
both of said first user and second user over said electronic network;
wherein said first capacity and said second capacity are altered
such that a respective first maximum number and second maximum
number of playable media items which the first user and second user
are able to have in their respective possession at any time is also
altered.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sherr
Deguchi
Hastings
Roever

US 2002/0154157 A1
US 2004/0002938 A1
US 7,024,381 B1
US 2010/0162408 A1
Oct. 24, 2002
Jan. 1, 2004
Apr. 4, 2006
Jun. 24, 2010
The following rejections are before us for review:
1. Claims 3 and 11 are rejected under 35 U.S.C. §112, second paragraph,
as being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
2. Claims 1-21 and 24 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hastings, Deguchi, and Sherr.3

3 Only claims 1-20 are mentioned in the statement of the rejection (Ans. 5).
However, claims 21 and 24 are also treated in the analysis of the rejection.
We presume, as the Appellant (App. Br. 6) has, that the rejection applies to
claims 1-21 and 24.
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Application 11/456,503

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3. Claims 22 and 23 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hastings, Deguchi, Sherr, and Roever.

ISSUE
Have prima facie cases of obviousness been made out for the claimed
subject matter over the cited prior art combinations?
FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Specification states:
The Internet is now being used for a number of
commercial purposes, including purchase and rental of movie
films in different media formats. One such popular website is
maintained by Netflix®, where subscribers can search, review
and select movie titles (in DVD media format). If a particular
title is available, the subscriber’s choice is then placed into a
rental selection “queue.” During an interactive online session, a
subscriber can select a number of titles, and then prioritize them
in a desired order for shipment within the selection queue.
Spec. 1:21-27.
2. Hastings describes that conventional rental models require a customer to
go to a video rental store to rent movies and that new release movies are
generally due back the next day. (Col. 1, ll. 30-35.)
3. In the Hastings method, “[i]n general, the decision of what items to rent
is separated from the decision of when to rent the items.” (Col. 2, ll. 42-
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43.)
4. The decision of what items to rent is a matter of “item selection criteria.”
A customer provides one or more item selection criteria to the provider
indicative of the particular items the customer desires to rent from the
provider.
Item selection criteria may specify any type of item attributes
and the invention is not limited to particular item attributes.
Examples of item attributes include, without limitation,
identifier attributes, type attributes and cost attributes. Item
selection criteria may be changed at any time to reflect changes
in items that customers desire to rent from a provider.
Col. 3, ll. 28-35. The items selected are placed into a customer’s order queue
by the provider.
5. According to Hastings:
As used [in Hastings], the term "items” refers to any
commercial goods that can be rented to customers. Examples of
items include movies, music and games stored on a non-volatile
memory such as a tape, other magnetic medium, optical
medium, read-only memory or the like, and the invention is not
limited to any particular type of item.
Col. 2, ll. 36-42.
6. Via the Hastings method, customers enter into a rental agreement with
the provider to rent items from the provider. (Col. 6, ll. 57-58). Once
customers and the provider have entered into a rental agreement and
customers have made item selection criteria, then items are rented to
customers over delivery channels “in accordance with the terms of the
rental agreement.” (Col. 7, ll. 33-42).
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7. The Internet can be the delivery channel. (Col. 8, l. 16.)
8. In one embodiment, customers enter into a rental agreement with the
provider to rent items from provider according to “MAX OUT” and/or
“MAX TURNS” approaches.
9. The “MAX OUT” approach allows a customer to simultaneously rent out
a specified number of items. (Col. 3, ll. 1-5.)
10. The MAX OUT limit can be increased to allow additional items to be
immediately mailed to the customer. (Col. 4, ll. 59-60.)
11. The “MAX TURNS” approach allows a customer to exchange up to a
specified number of item exchanges during a specified time period. (Col.
3, ll. 5-8.)
12. The MAX TURNS limit can be overridden to allow more exchanges
during the current cycle. (Col. 9, ll. 17-21.)
13. The “MAX TURNS” approach and the “MAX OUT” approach can be
used together. (Col. 3, ll. 8-10.)
14. This combination of approaches is illustrated in Figure 6 of Hastings,
reproduced below.

App
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19. For example, if the rental agreement sets the MAX TURNS and MAX
OUT limits to four, “a determination is made whether four or more
movies have been mailed in the current month. If not, then ... additional
movies … are mailed to customer ... to the ‘Max Out’ limit of four.” Col.
9, ll. 12-15.
20. There is no evidence on record of secondary considerations of
nonobviousness for our consideration.
21. Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 3 and 11 under 35 U.S.C. §112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicant regards as the invention.
The Examiner finds that there is insufficient antecedent basis for “said
first subscriber delivery queue” in step (c) of claim 1. Ans. 4. The claim
phrase at issue is in fact “said first subscriber queue.” Although this is not
preceded by the words -- a first subscriber queue – to give it expressly-stated
antecedent basis, the claim does recite “a first delivery queue for the first
user” whereby implicit antecedent basis is provided. Antecedent basis can be
present by implication. See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 810
F.2d 1113, 1116 (Fed. Cir. 1987).
The Examiner also finds the phrase “wherein a combined capacity of
said first user delivery queue and said second user delivery queue remains
constant after step (c)” in claims 3 and 11 unclear. Ans. 4-5. The Examiner
asks: “How does the addition of movie or music to another person's delivery
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queue remain constant after the addition and the subtraction?” Ans. 5. But a
determination of indefiniteness “requires a construction of the claims
according to the familiar canons of claim construction. Only after a thorough
attempt to understand the meaning of a claim has failed to resolve material
ambiguities can one conclude that the claim is invalid for indefiniteness.” All
Dental Prodx, LLC v. Advantage Dental Prods. Inc., 309 F.3d 774, 779
(Fed. Cir. 2002). That has not been done. Rather, the Examiner poses a
question that seeks a better understanding of how the claimed process works
– without analyzing the claim in light of the Specification. Because that has
not been done, a prima facie case of indefiniteness has not been made out in
the first instance.
For the foregoing reasons, the rejection is reversed.

The rejection of claims 1-21 and 24 under 35 U.S.C. §103(a) as being
unpatentable over Hastings, Deguchi, and Sherr.
The issue is whether it would have been obvious to one of ordinary
skill in the art to modify the Hastings method (which discloses subscriber
queues) so as to include a step whereby the capacity defined for one
subscriber queue can be exchanged for the capacity defined for a second
subscriber queue in response to a request received from one or both of said
first and second subscribers
wherein said first capacity and said second capacity are altered such
that a respective first maximum number and second maximum
number of playable media items which the first user and second user
are able to have in their respective possession at any time is also
altered.
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Claim 1. There is no dispute that this additional claim step is not disclosed in
Hastings. The Examiner relies on Deguchi and, alternatively, on Sherr as
evidence that this step was known in the art at the time of the invention.
According to the Examiner, given either Deguchi or Sherr, “it would have
been obvious to one of ordinary skill in the art at time of applicant's
invention to modify the method of Hastings and incorporate the method
comprising [step] (c) [of claim 1].” Ans. 8.
The Appellant disagrees that Deguchi’s disclosure of exchange of
bookmark information is relevant to the claimed invention (“[a]s the two
concepts are entirely different, a skilled artisan would at most be led to
modify Hastings to include notions of sharing information about the
respective user selection queues, which represent a list of items the user
wants to see.” App. Br. 15.) or that Sherr’s disclosure at [0054] of file-
swapping would lead one to exchange queue capacities (“[w]ith respect to
newly cited Sherr, the Examiner again confounds the difference between
users sharing content, and users sharing capacity for that content as claimed
here.” App. Br. 15.).
We have carefully reviewed the references. We agree with the
Appellant that Deguchi and Sherr go to exchanging information, not
capacities. The fact that it was known to exchange information does not
necessarily lead one of ordinary skill in the art with Hastings in hand to
exchange capacities of the subscriber queues. The Examiner “[n]ote[s] that
once swapping occurs the first maximum number and second maximum
number of playable media items will be altered.” Ans. 8. But that is not
necessarily true. The maximum number of playable media items that may be
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allocated to a subscriber queue, as Hastings describes, would not be
impacted by a swap of titles between two queues. The question is whether
one of ordinary skill in the art would be led to exchange queue capacity as
claimed given the disclosures of the cited prior art. We do not find that one
would be. There is insufficient evidence or reasoning that it was known to
those with skill in the art at the time of invention to exchange capacities. The
preponderance of the evidence on the record, which lacks such a
showing/reasoning, does not establish a prima facie case of obviousness for
the claimed subject matter.
For the foregoing reasons, the rejection of claim 1, and claims 2-9, 21,
and 24 dependent thereon, is reversed. We also reverse the rejection of
independent claims 10 and 18 and claims 11-17 and claims 19 and 20
dependent thereon, respectively, for the same reasons. These claims, too,
include limitation to exchange queue capacities.

The rejection of claims 22 and 23 under 35 U.S.C. §103(a) as being
unpatentable over Hastings, Deguchi, Sherr, and Roever.
Claims 22 and 23 depend from claim 1, whose rejection we have
reversed for the reasons above. For the same reasons, we will not sustain the
rejections of claims 22 and 23 over the cited prior art. Cf. In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.").

CONCLUSIONS
The rejection of claims 3 and 11 under 35 U.S.C. §112, second
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paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention,
is reversed.
The rejections of claims 1-21 and 24 under 35 U.S.C. §103(a) as
being unpatentable over Hastings, Deguchi, and Sherr and claims 22 and 23
under 35 U.S.C. §103(a) as being unpatentable over Hastings, Deguchi,
Sherr, and Roever, are reversed.

DECISION
The decision of the Examiner to reject claims 1-24 is reversed.

REVERSED

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