Ex Parte Gross

Patent Trial and Appeal BoardNov 28, 2012

10856909 (P.T.A.B. Nov. 28, 2012)

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. 10/856,909 05/28/2004 John N. Gross JNG 2004-13 2116 52447 7590 11/29/2012 PATENTBEST 1195 Park Avenue Suite 202A EMERYVILLE, CA 94608 EXAMINER LEVINE, ADAM L ART UNIT PAPER NUMBER 3625 MAIL DATE DELIVERY MODE 11/29/2012 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. GROSS1 ____________________ Appeal 2011-005198 Application 10/856,909 Technology Center 3600 ____________________ Before, ANTON W. FETTING, JOSEPH A. FISCHETTI, and KEVIN F. TURNER, Administrative Patent Judges. TURNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE2 Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 5, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Media Queue, LLC is the real party in interest. 2 Our decision will make reference to the Appellant’s Appeal Brief (hereinafter “App. Br.,” filed July 19, 2010) and Reply Brief (hereinafter “Reply Br.,” filed December 13, 2010), and the Examiner’s Answer (hereinafter “Ans.,” mailed October 15, 2010). Appeal 2011-005198 Application No. 10/856,909 2 THE INVENTION Appellant’s Specification disclosure relates to a method for distributing playable media items (e.g., DVD movies) to subscribers using an intelligent queue monitoring system that allows the subscribers to define policies and rules for distribution. (P. 1, ll. 11-15 and p. 4, ll. 4-6.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of distributing playable media items, the playable media items corresponding to machine readable media readable by a subscriber machine player, the method comprising the steps of: (a) setting up a first subscriber selection queue for a first subscriber with a computing system, said first subscriber selection queue consisting of a list of one or more playable media items to be delivered to the first subscriber; wherein said first subscriber selection queue is set up at least in part in response to playable media item selection directions provided by the first subscriber including a subscriber selected order for playable media items on said list; (b) setting up delivery rules for the first subscriber selection queue with the computing system, which delivery rules include an automated randomized delivery option selectable and controllable by the first subscriber; (c) shipping said playable media items in tangible media form to the first subscriber in a random sequence in response to said randomized delivery option being selected. (App. Br. 14, Claims Appendix A.) Appeal 2011-005198 Application No. 10/856,909 3 PRIOR ART REJECTIONS The prior art references relied upon by the Examiner in rejecting the claims are: Nihal 2002/0138839 Al Sep. 26, 2002 Wren 2003/0036980 Al Feb. 20, 2003 The Examiner rejected claims 1-5, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over Nihal and Wren. ISSUE3 Does the combination of Nihal and Wren teach or suggest “an automated randomized delivery option selectable and controllable by the first subscriber,” as recited by claim 1, such that it renders obvious the subject matter of claims 1-5, 21, and 22 under 35 U.S.C. § 103(a)? FINDINGS OF FACT 1. Nihal is directed to a portable device and method for playing media segments (i.e., music, video) wherein the portable device downloads media segments, and plays them either in a random or assigned pattern, as programmed or desired by a user or the provider. (Abs.; ¶¶ [0001]; [0009]; ¶ [0092].) 2. Nihal describes that during the selection process a user can pick media segments such as songs. (¶ [0078].) 3 We have considered in this decision only those arguments that Appellant actually raised in the Briefs. Arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-005198 Application No. 10/856,909 4 3. Wren is directed to a system for shopping for goods and services using a central server connected to a plurality of remote computers which are receive data, video, and audio regarding the goods and services. (¶ [0028].) ANALYSIS Claims 1-5, 21, and 22 rejected under 35 U.S.C. § 103(a) as unpatentable over Nihal and Wren. Appellant argues inter alia that the combination of Nihal and Wren fails to teach or suggest “an automated randomized delivery option selectable and controllable by the first subscriber,” as recited by claim 1. (App. Br. 9; Reply Br. 3-4.) To address this limitation, the Examiner relies on the method of playing media segments (i.e., music, video) taught by Nihal. (Ans. 10-11.) Specifically, the Examiner finds that Nihal’s ability to play media segments in either a random or assigned pattern, as programmed or desired by a user, addresses this limitation. (Ans. 10-11.) In response, Appellant asserts that Nihal describes a system which randomly plays media segments, but fails to teach or suggest that the media segments were delivered in a random sequence, as presently claimed. (Reply Br. 4.) We agree with Appellant. While we agree with the Examiner that Nihal teaches that a user can select or control whether to play media segments in either of a random or assigned pattern (FF 1), we cannot agree with the Examiner that this disclosure alone teaches or suggests “an automated randomized delivery option” which results in the delivery of a tangible media item to a first Appeal 2011-005198 Application No. 10/856,909 5 subscriber in a random sequence, as presently claimed. Instead, we agree with the Appellant that Nihal teaches a system which allows users to randomly play media segments which have already been delivered (i.e., downloaded) to a portable device. (FF 1, 2.) The addition of Wren fails to cure this deficiency. Put another way, when looking at the invention as a whole, it is unclear why it would have been predictable to apply Nihal’s random play to the delivery of physical media. The whole idea of random play is to alter the initial sequencing. The idea of applying that randomization to the initial delivery itself, in the absence of evidence that one of ordinary skill would have thought to do so, seems quite clever and unexpected, based on the record. Accordingly, in the absence of any rational reasoning by the Examiner as to why it would be obvious to deliver in a random sequence, as opposed to play Nihal’s media segments in a random sequence via “an automated randomized delivery option,” we cannot sustain the Examiner’s obviousness rejection of independent claim 1 and its dependent claims 2-5, 21, and 22. See In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992) (to support the conclusion that the claimed combination is directed to obvious subject matter, either the references must expressly or impliedly suggest the claimed combination or the examiner must present a convincing line of reasoning as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references); KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[t]o facilitate review, this analysis should be made explicit”). Appeal 2011-005198 Application No. 10/856,909 6 CONCLUSION We conclude that the combination of Nihal and Wren fails to teach or suggest “an automated randomized delivery option selectable and controllable by the first subscriber,” as recited by claim 1, and as such, fails to render obvious the subject matter of claims 1-5, 21, and 22 under 35 U.S.C. § 103(a). DECISION We reverse the rejection of claims 1-5, 21, and 22. REVERSED rvb