Ex Parte GrossDownload PDFPatent Trial and Appeal BoardAug 16, 201310770664 (P.T.A.B. Aug. 16, 2013) Copy Citation 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. 10/770,664 02/02/2004 John N. Gross JNG 2004-7 2664 52447 7590 08/19/2013 PATENTBEST 1195 Park Avenue Suite 202A EMERYVILLE, CA 94608 EXAMINER LONG, FONYA M ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 08/19/2013 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 N. GROSS ____________ Appeal 2011-012677 Application 10/770,664 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 N. Gross (Appellant) seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-21 and 23. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2011-012677 Application 10/770,664 2 SUMMARY OF DECISION We REVERSE.1 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of exchanging playable media items over an electronic network between a first subscriber of a media distribution service and a second subscriber of the media distribution service, the method comprising the steps of: (a) monitoring a first subscriber selection queue for the first subscriber with a computing system, said first subscriber selection queue consisting of a first list of one or more first playable media items delivered and/or to be delivered to said first subscriber; (b) monitoring a second subscriber selection queue for the second subscriber with the computing system, said second subscriber selection queue consisting of a second list of one or more second playable media items to be delivered to said second subscriber; (c) detecting when the first subscriber and the second subscriber have a common playable media item title in their respective first and second subscriber selection queues with the computing system; wherein the first subscriber has a first right of access to said common playable media item title determined by the computing system which is earlier than a second right of 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed Mar. 8, 2011) and Reply Brief (“Reply Br.,” filed Jul. 25, 2011), and the Examiner’s Answer (“Ans.,” mailed May 26, 2011). Appeal 2011-012677 Application 10/770,664 3 access to said common playable media item title held by said second subscriber; (d) automatically switching said first right of access to said second subscriber for said common playable media item title with the computing system based on a value of a subscriber satisfaction criterion for said second subscriber generated by an exchange program operating under control of the media distribution service; (e) automatically causing said common playable media item to be considered for and sent to said second subscriber ahead of the first subscriber based on switching said first right of access. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Sherr Walker Pauliks Hastings VanOrman US 2002/0154157 A1 US 6,658,390 B1 US 6,981,003 B2 US 7,024,381 B1 US 7,085,727 B2 Oct. 24, 2002 Dec. 2, 2003 Dec. 27, 2005 Apr. 4, 2006 Aug. 1, 2006 The following rejections are before us for review: 1. Claims 1-17 and 23 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1-6, 8, 9, and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hastings, VanOrman, and Walker. 3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hastings, VanOrman, Walker, and Pauliks. Appeal 2011-012677 Application 10/770,664 4 4. Claims 10-21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hastings, VanOrman, Walker, and Sherr. ISSUES The first issue is whether the Specification “convey[s] with reasonable clarity to those skilled in the art that, as of the filing date sought, [that the inventor] was in possession of the invention [as claimed].” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). In that regard, has the Appellant shown the Examiner to be in error in concluding that the Specification fails to provide adequate written descriptive support for the subject matter of claims 1-17 and 23 in compliance with 35 U.S.C. § 112, first paragraph? The second issue is whether the Examiner has made out a prima facie case of obviousness in the first instance for the subject matter of claims 1-21 and 23 over the cited prior art combination. 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 Appeal 2011-012677 Application 10/770,664 5 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- 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 Appeal 2011-012677 Application 10/770,664 6 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). 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 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. 6, ll. 25-30.) 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 App Figu 15. I se cu 16. T O 17. A a 18. T eal 2011-0 lication 10 re 6 illustr n accordan ts selectio stomer’s he custom UT limit. s the cust re sent to t he custom 12677 /770,664 ates a met ce with th n criteria order queu er then re omer retur he custom er may ex hod of illu “MAX TU e process specifying e. (Col. 3, nts out the ns movies er up to th change up 7 strating us RNS” app illustrated the items ll. 20-35. items from , additiona e MAX OU to a speci ing both t roach. in Figure a provider ) the orde l movies f T limit. ( fied numb he “MAX 6, the cust provides r queue to rom the o Col. 4, ll. er of item OUT” and omer first to a a MAX rder queue 1-4.) during a Appeal 2011-012677 Application 10/770,664 8 specified time period up to a MAX TURNS limit. 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. ANALYSIS The rejection of claims 1-17 and 23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. The Examiner is taking the position that the Specification fails to reasonably convey that, at the time of the invention, the applicant had possession of the process claimed. In particular, the Examiner found that the Specification did not adequately disclose, at the time of filing, step “(d) automatically switching said first right of access to said second subscriber for said common playable media item title with the computing system based on a value of a subscriber satisfaction criterion for said second subscriber generated by an exchange program operating under control of the media distribution service.” Ans. 5-6 (emphasis original). “Examiner asserts that the written description fails to recite or provide adequate support for the limitation stating "a value of a subscriber criterion." Ans. 6. The principal difficulty with the Examiner’s position in that the claim limitation at issue “a value of a subscriber satisfaction criterion” was Appeal 2011-012677 Application 10/770,664 9 included in original claim 1. Accordingly, the limitation was in fact disclosed in the Specification at the time of filing. Thus, the Examiner is necessarily taking the position that, notwithstanding that that very subject matter at issue was originally claimed, the Specification did not provide adequate disclosure to reasonably convey that the applicant had possession of the invention at the time of filing. However, ““[t]he invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.”” PowerOasis, Inc. v. T- Mobile USA, Inc., 522 F.3d 1299, 1311 (Fed. Cir. 2008) (internal quotation mark omitted). “[T]he specification must contain an equivalent description of the claimed subject matter.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “What is claimed by the patent application must be the same as what is disclosed in the specification; otherwise the patent should not issue.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002). “The requirement is rigorous, but not exhaustive: ‘[I]t is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention.’ LizardTech, 424 F.3d at 1345.” In re Alonso, 545 F.3d 1015, 1019 n.3 (Fed. Cir. 2008). Compliance with the written description requirement is a question of fact. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985). In that regard, we are not persuaded that the Examiner has spelled out a sufficient factual basis for questioning the adequacy of the Specification in providing written descriptive support for the claimed invention. Appeal 2011-012677 Application 10/770,664 10 The Examiner (Ans. 6-7) asks:2 “Is the value a rating, or a result from a formula or mathematical algorithm?” “What type of calculation is being made?” “What standards or factors are being used?” “What formula or algorithm is being used to determine a ‘value’ of a subscriber satisfaction criterion?” But we do not see why answers to these questions are necessary when, for purposes of the “written description” inquiry, the Specification need only provide adequate disclosure to reasonably convey that the applicant had possession of the invention at the time of filing and the “invention” is whatever is now claimed. We agree with the Appellant (Reply Br. 2, n.1) that these questions seem to be directed more to a question of enablement than written description. But that is not the question before us. On the question of compliance with the written description requirement of § 112, we are not persuaded that the facts support a prima face case that the claims lack written descriptive support in the Specification as filed. Accordingly the rejection is not sustained. The rejection of claims 1-6, 8, 9, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Hastings, VanOrman, and Walker. 2 The Examiner may be opining as to the adequacy of the description of the scope of allowable values for the subscriber satisfaction criterion. The representative claim does not recite what criteria such values must meet, but only that whatever the value, it is generated and used as a basis for switching a right of access. Appeal 2011-012677 Application 10/770,664 11 The independent claims are method claim 1 and system claim 23. Claim 23 parallels claim 1. Claim 1 is directed to a method for sending a common playable media title from a first subscriber’s selection queue having a first right of access to a second subscriber. The claimed method comprises the steps of monitoring the first and second subscriber selection queues; detecting a common playable media item title in the two queues; automatically switching the first subscriber’s right of access for the common playable media item title to the second subscriber; and, automatically causing said common playable media item to be considered for and sent to said second subscriber ahead of the first subscriber based on switching said first right of access. According to claim 1, the automatic switching is “based on a value of a subscriber satisfaction criterion for said second subscriber generated by an exchange program operating under control of the media distribution service.” Claim 1. The Specification does not expressly define “a subscriber satisfaction criterion” or what “value” it covers. Rather, the Specification gives the “criterion”/”value” a scope that broadly covers any characteristic a second subscriber may find satisfying. Cf. Spec. 33:13-17: In some instances the subscriber may in fact no longer care about the tide, because they have changed their mind, already seen the selection, or prefer to receive service credits instead. By giving them an opportunity to barter in essence with the automatic exchange system, overall user satisfaction can be increased because more subscribers are getting what they want. Appeal 2011-012677 Application 10/770,664 12 Accordingly, claim 1 reasonably broadly covers a method for sending a common playable media title from a first subscriber’s selection queue having a first right of access to a second subscriber comprising monitoring the first and second subscriber selection queues and then, upon detecting the common playable media item title in the two queues, automatically switching the first subscriber’s right of access to that common playable media item title from the first to the second subscriber based on meeting the second subscriber’s satisfaction, and once that switch is made, sending the common playable media title to the second subscriber. Turning now to the rejection, the Examiner takes the position that Hastings discloses all the claim limitations but for “[(a)] detecting when the first subscriber and the second subscriber have a common playable media item and [(b)] automatically switching said first right of access to said second subscriber for said common playable media item” (Ans. 8), for which VanOrman and Walker, respectively, are relied upon. Ans. 8-10. Examiner asserts that Van Orman discloses detecting when the first subscriber and the second scriber have a common playable media item title in their respective first and second subscriber selection queues via (Col. 4, Line 1-Col. 5, Line 33) the customers reserving a movie via creating a reserve list (i.e. a subscriber queue), wherein each customer has a list of reserved movies (i.e. first and second subscriber queue); and the system detects if a movie title is on the reserve list and if so, detecting the customers who have requested the movie title (i.e. detecting when the first subscriber and the second subscriber have a common playable media item title)). Van Orman also discloses wherein the first subscriber has a first right of access to said common playable media item title determined by the computing system which is earlier than a second right of access to said common playable media item title held by said second Appeal 2011-012677 Application 10/770,664 13 subscriber via (Col. 4, Line 1-Col. 5, Line 33), the first submitter of a request for a movie title has first right to the movie title which is earlier than the second rights given to a second submitter of a request for the same movie title). Examiner asserts that the first subscriber being the first submitter of the request and the second subscriber being the second submitter. Ans. 25. We have carefully reviewed the disclosure at column 4, line 1 to column 5, line 33 of VanOrman. However, we agree with the Appellant (App. Br. 9) that “detecting when the first subscriber and the second subscriber have a common playable media item” (Ans. 8) is not disclosed there. What is disclosed there is a process for determining whether there is a hold on a title to be rented. As the Appellant correctly states: it merely indicates that it makes a list of subscribers who have asked for a title. As a new copy of the title becomes available, the system goes down a list of subscribers, in order, and checks to see if that particular person still wants the title. They call him/her and record the response; if it is positive, they hold on to the title for that person. If it is negative they ignore that person and move on to the next name. App. Br. 9.3 3 Put another way, the Examiner correctly found that VanOrman describes detecting the customers who have requested the movie title, but then incorrectly found this equivalent to the recited detecting when the first subscriber and the second subscriber have a common playable media item. Ans. 8-9. VanOrman detects customers serially by comparing their queued items to an item to be enqueued, rather than detecting two customer queues having a common item. Appeal 2011-012677 Application 10/770,664 14 Accordingly, because the evidence cited in support of the fact that the prior art discloses the claim limitation of detecting a common playable media item title in the two queues does not in fact disclose it and because no other evidence has been put forward to show said claim limitation was known in the art or would have been obvious to those of skill in the art at the time of the invention, a preponderance of the evidence does not support the conclusion of obviousness. We are constrained by the evidence to find that a prima facie case of obviousness has not been made out in the first instance. For this reason, the rejection is not sustained. The rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Hastings, VanOrman, Walker, and Pauliks. This rejection will also not be sustained. Claim 7 depends on claim 1 whose rejection under § 103(a) over Hastings, VanOrman, and Walker was not sustained. 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."). The rejection of claims 10-21 under 35 U.S.C. § 103(a) as being unpatentable over Hastings, VanOrman, Walker, and Sherr. As to claims 10-15 and 16, their rejection will not be sustained for the same reasons given above in not sustaining the rejection of independent claim 1 under § 103(a) over Hastings, VanOrman, and Walker on which they depend. Ibid. Appeal 2011-012677 Application 10/770,664 15 For the same reasons, the rejection of independent claim 18, and claims 19-21 which depend therefrom, will also not be sustained. The Examiner’s position regarding the claim limitation “detecting when the first subscriber and the second subscriber have a common playable media item title in their respective first and second subscriber selection queues with the computing system” (claim 18) is the same; that is, that VanOrman discloses this limitation at column 4, line 1 to column 5, line 33 (Ans. 20). As we have discussed, we do not see it there. CONCLUSIONS The rejection of claims 1-17 and 23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is reversed. The rejection of claims 1-6, 8, 9, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Hastings, VanOrman, and Walker is reversed. The rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Hastings, VanOrman, Walker, and Pauliks is reversed. The rejection of claims 10-21 under 35 U.S.C. § 103(a) as being unpatentable over Hastings, VanOrman, Walker, and Sherr is reversed. DECISION The decision of the Examiner to reject claims 1-21 and 23 is reversed. REVERSED Appeal 2011-012677 Application 10/770,664 16 hh Copy with citationCopy as parenthetical citation