Ex Parte Gross

Patent Trial and Appeal Board

Aug 16, 2013

10770664 (P.T.A.B. Aug. 16, 2013)

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).
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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).
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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.
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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
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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
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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
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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
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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.
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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.
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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.

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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
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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.
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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.

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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

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