Ex Parte GrossDownload PDFPatent Trials and Appeals BoardAug 20, 201310771094 - (D) (P.T.A.B. Aug. 20, 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. 10/771,094 02/02/2004 John N. Gross JNG 2004-4 2038 52447 7590 08/20/2013 PATENTBEST 1195 Park Avenue Suite 202A EMERYVILLE, CA 94608 EXAMINER RUHL, DENNIS WILLIAM ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 08/20/2013 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 2011-009380 Application 10/771,094 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 of the final rejection of claims 1-9 and 11-26. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2011-009380 Application 10/771,094 SUMMARY OF DECISION We AFFIRM-IN-PART and enter a New Ground of Rejection pursuant to 37 C.F.R. 41.50(b).1 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of replenishing items in a queue maintained by a content provider for a content site user, comprising the steps of: (a) setting up a first user selection queue for the first user on a computing system, said first user selection queue consisting of a list of one or more playable media items selected by the first user; (b) setting up queue replenishment control rules for the first user selection queue on said computing system; and wherein said queue replenishment control rules are specified at least in part by said first user; (c) determining with said computing system based on said queue replenishment control rules if a first playable media item should be added to said first user selection queue, and/or if a second playable media item should be removed from said first user selection queue; and (d) automatically modifying said first user selection queue with said computing system based on the results of step (c) and generating a new ordered list of one or more playable media items for said first user selection queue; 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed Sep. 24, 2010) and Reply Brief (“Reply Br.,” filed Feb. 23, 2011), and the Examiner’s Answer (“Ans.,” mailed Dec. 23, 2010). Appeal 2011-009380 Application 10/771,094 3 (e) automatically moving a playable media item out of said first user selection queue and into a separate first titles out list for said first user with said computing system when such item is delivered to the first user; wherein said first titles out list has a first capacity used by said computing system to constrain the first user to a limit of N titles which can be deployed to such user at one time; (f) in response to a request of said first user, reducing said first capacity of said first titles out list with said computing system so as to increase a second capacity of a second separate user's second titles out list; wherein said first user can selectively allocate his/her capacity for receiving playable media items to a second user. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Hastings Pennell US 6,584,450 B1 US 6,874,023 B1 Jun. 24, 2003 Mar. 29, 2005 “Acid Rain Program,” Clean Air Markets, US Environmental Protection Agency (EPA), http://www.epa.gov/airmarkets/progsregs/arp/basic.html (last updated Apr. 19, 2009), accessed Sep. 22, 2010, pp. 1-7. (“Acid Rain”) The following rejections are before us for review: 1. Claims 11, 14-20, and 24-26 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter. 2. Claims 1-4, 6-9, 11-16, and 18-26 are rejected under 35 U.S.C. §103(a) as being unpatentable over Hastings and Acid Rain. Appeal 2011-009380 Application 10/771,094 4 3. Claims 5 and 17 are rejected under 35 U.S.C. §103(a) as being unpatentable over Hastings and Pennell. ISSUES Regarding the §101 rejection, has the Examiner made out a prima facie case of nonstatutory subject matter with respected to claims 11, 14-20, and 24-26? Regarding the §103 rejections, are the prima facie cases of obviousness in error? 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.” Specification 1:21-27. Appeal 2011-009380 Application 10/771,094 5 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. 12-19.) 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. 4, ll. 7- 8.) 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. 4, ll. 60-64. The items selected are placed into a customer’s order queue by the provider. 5. “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. 4, ll. 1- 7.) 6. Via the Hastings method, customers enter into a rental agreement with the provider to rent items from the provider. (Col. 8, ll. 23-24). Once customers and the provider have entered into a rental agreement and customers have made item selection criteria, then items are rented to Appeal 2011-009380 Application 10/771,094 6 customers over delivery channels “in accordance with the terms of the rental agreement.” (Col. 8, l. 66 – col. 9, l. 3). 7. The Internet can be the delivery channel. (Col. 3, ll. 37-39.) 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. 4, ll. 35-37.) 10. The MAX OUT limit can be increased to allow additional items to be immediately mailed to the customer. (Col. 11, ll. 5-9.) 11. The “MAX TURNS” approach allows a customer to exchange up to a specified number of items during a specified time period. (Col. 4, ll. 37- 40.) 12. The MAX TURNS limit can be overridden to allow more exchanges during the current cycle. (Col. 10, ll. 55-57.) 13. The “MAX TURNS” approach and the “MAX OUT” approach can be used together. (Col. 4, ll. 40-42.) 14. This combination of approaches is illustrated in Figure 6 of Hastings, reproduced below. App App 15. I se cu 16. T O 17. A a 18. T sp eal 2011-0 lication 10 Figure 6 “MAX O n accordan ts selectio stomer’s he custom UT limit. s the cust re sent to t he custom ecified tim 09380 /771,094 illustrates UT” and ce with th n criteria order queu er then re omer retur he custom er may ex e period a method “MAX TU e process specifying e. (Col. 4 nts out the ns movies er up to th change up up to a MA 7 of illustra RNS” app illustrated the items , ll. 64-66 items from , additiona e MAX OU to a speci X TURN ting using roach. in Fig. 6, a provider .) the orde l movies f T limit. fied numb S limit. both the the custom provides r queue to rom the o (Col. 10, l er of item er first to a a MAX rder queue l. 30-33.) during a Appeal 2011-009380 Application 10/771,094 8 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. 10, ll. 47-51. 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 11, 14-20, and 24-26 under 35 U.S.C. §101 as being directed to non-statutory subject matter. The rejection of claims 11, 14-20, and 24-26 is reversed pro forma, in light of their rejection under the second paragraph of §112. The rejection of claims 1-4, 6-9, 11-16, and 18-26 under 35 U.S.C. §103(a) as being unpatentable over Hastings and Acid Rain. Claims 1-4 and 6-9. Claim 1 We begin by giving independent claim 1 a reasonably broad construction. Claim 1 is directed to a computer-enabled method that uses a first user selection queue consisting of a first list of items; a separate first titles out list for the first user that has a first capacity used by the computing system to constrain the first user to a limit of N titles which can be deployed to such user at one time; and, Appeal 2011-009380 Application 10/771,094 9 a second separate second titles out list for a second user with a second capacity. When the claim is read in light of the Specification, it is clear that the selection queue list and “separate” first/second out lists are separate lists. See Specification 6:25-31 (“Title Out Queue” and “Subscriber Selection Queue”). The claimed method manages a first user selection list and then regulates the capacities of the first/second out lists. The claimed method comprises: setting up a first user selection queue consisting of a first list of items; setting up queue replenishment control rules for the first user selection queue that first user specifies in part; based on the queue replenishment control rules, o determining if a first playable media item should be added or if a second playable media item should be removed from the first user selection queue, based on the determination, o automatically modifying the first user selection queue; and, o generating a new ordered list for the first user selection queue; automatically moving a playable media item out of said first user selection queue and into a separate first titles out list for the first user when such item is delivered to the first user (wherein the first titles out list has a first capacity used by the computing system to constrain the first user to a limit of N titles which can be deployed to such user at one time); and, Appeal 2011-009380 Application 10/771,094 10 in response to a request from first user, including selectively allocating his/her capacity for receiving playable media items to a second user, o reducing the first capacity of the first titles out list so as to increase a second capacity of a second separate user's second titles out list. Turning now to the rejection. The Examiner takes the position that Hastings discloses all the claim limitations but for “in response to a request from a user, the capacity of the user selection queue is reduced so as to increase a second capacity of a second user selection queue (another user)” (Ans. 7) for which Acid Rain is relied upon. This appears to be an accurate characterization of the difference between Hastings and the invention as claimed. Hastings discloses an order queue consisting of a customer’s selection of ordered items. FF 5. Implicitly, this is a disclosure of a first user selection queue consisting of a first list of items. In evaluating references, it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). As the Examiner (Ans. 5) correctly points out, Hastings discloses a Max Out/Max Turns approach. But this approach does not necessarily control the replenishment of items in a first user selection queue (i.e., the order queue). It appears to be directed to those items which have been indicated for renting out and delivery. The Max Out/Max Turns approach controls the replenishment of items to be rented out and delivered; that is, as Appeal 2011-009380 Application 10/771,094 11 an item is rented out and delivered, another selected item, from the selection queue, replaces it, up to the Max Out level. Nevertheless, setting up queue replenishment control rules for the first user selection queue that a first user specifies in part, as claimed, was known at the time of the invention. In fact, a subscriber practicing the Hastings method would necessarily consider which items to put in the selection queue for subsequent rental/delivery. This is an act a subscriber would conduct in the normal course of practicing the Hastings method. Such an act would include determining if a first playable media item should be added or if a second playable media item should be removed from the first user selection queue and, based on the determination, modifying the first user selection queue and generating a new ordered list for the first user selection queue. We appreciate that the claim requires, for instance, that a computer be used to “automatically” modify the first user selection queue but it is generally obvious to automate a known manual procedure. See Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157 (Fed. Cir. 2007). We agree, however, with the Examiner (Ans. 6) that Hastings’s Max Out embodiment meets the claim limitation whereby a playable media item is moved out of the first user selection queue and into a separate first titles out list for the first user when such item is delivered to the first user, wherein the first titles out list has a first capacity used by the computing system to constrain the first user to a limit of N titles which can be deployed to such user at one time. As the Examiner points out, “[i]n Hastings, the system keeps track of how many movies are out at one time (for the Max Out embodiment) and this constitutes a list of "checked out" movies.” Ans. 6. Appeal 2011-009380 Application 10/771,094 12 We now turn to the claim limitation whereby, in response to a request from a first user, including selectively allocating his/her capacity for receiving playable media items to a second user, the capacity of the first titles out list is reduced so as to increase the capacity of a second separate user's second titles out list. Hastings method would render obvious a request from a first user, including selectively allocating his/her capacity for receiving playable media items to a second user, so as to reduce the capacity of the first titles out list and thereby increase the capacity of a second separate user's second titles out list. Hastings discloses a Max Out/Max Turns approach. This approach applies to all users. Thus, users can independently modify the Max Out and Max Turns limits. See e.g., FF 10. It follows that, in practicing the Hastings method, one Max Out/Max Turns limit is allocated to a first user and a second Max Out/Max Turns limit is allocated with a second user. Allocation-sharing is well known in the art. Acid Rain is but one example of an application of allocation-sharing. In sharing allocations, one normally reduces one’s allocation and as a consequence another’s allocation is increased. Applying allocation-sharing to the Hastings process, where users can independently modify the Max Out and Max Turns limits, would lead a user, as expected, to selectively allocate his/her capacity for receiving playable media items to a second user, so as to reduce the capacity of the first titles out list and thereby increase the capacity of a second separate user's second titles out list. In our view, it would have been obvious to combine the Hastings method and allocation-sharing to yield, as expected, the process as claimed including Appeal 2011-009380 Application 10/771,094 13 (f) in response to a request of said first user, reducing said first capacity of said first titles out list with said computing system so as to increase a second capacity of a second separate user's second titles out list; wherein said first user can selectively allocate his/her capacity for receiving playable media items to a second user. Claim 1. “[W]hen a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The rationale we have used in reaching the conclusion obviousness differs from that of the Examiner. Accordingly, we denominate the rejection as a new ground of rejection. Claims 2-4 and 7-8 The Appellant does not specifically address the rejection of claims 2-4 and 7-8, all of which depend from claim 1 We will sustain the rejection of these claims for the reasons used above in rejecting of claim and those put forward by the Examiner. Ans. 10. Claim 6 The Examiner has taken the position that it “is inherent that the modification will occur after a predetermined time delay, which is the delay involved with the use of networks and hardware.” Ans. 10. The Appellant argues that Hastings does not refer to a delay and does not provide for a “first user selection queue [that] is automatically modified in accordance with said queue replenishment control rules after a predefined time delay.” Claim 6. We agree with the Appellant. The fact that a delay may exist with Appeal 2011-009380 Application 10/771,094 14 the use of networks and hardware does not necessarily create a “predefined” delay when automatically modifying a first user selection queue in accordance with queue replenishment control rules. The rejection of claim 6 is reversed. Claim 9 We will not sustain the rejection of claim 9. We do not see where the Examiner has articulated an apparent reasoning in reaching the legal conclusion of obviousness for the subject matter of claim 9. Claims 11-16 and 18-26. The rejection of claims 11-16 and 18-26 is reversed pro forma, in light of their rejection under the second paragraph of §112 (below). See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). The rejection of claims 5 and 17 under 35 U.S.C. §103(a) as being unpatentable over Hastings and Pennell. As to claim 5, the Appellant addresses it at pp. 22-23 of the Appeal Brief. But we do not understand what the Appellant is arguing. The Appellant argues “monetization” but claim 5 is directed to “sending a notification to the first user after step (c) when said queue replenishment control rules determine that said first user selection queue should be modified.” The rejection is sustained. The rejection of claim 17 is reversed pro forma, in light of its rejection under the second paragraph of §112 (below). See In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Appeal 2011-009380 Application 10/771,094 15 NEW GROUNDS OF REJECTION Claims 11-20 and 24-26 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. “[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) (precedential). Independent claim 11 is directed to a “system.” Claim 11 is amenable to being reasonably broadly construed as both a process and an apparatus. For example, at (a), claim 11 recites “a first user preference routine embodied in a computer readable medium and executing on a computing system. A plain reading of this limitation would lead one of ordinary skill to interpret the claim as reasonably broadly covering both a medium embodying a routine and a routine performing an executing action. The ambiguity arising from a plain reading of the claim is not overcome when read in light of the Specification. The claim term “system” is not expressly defined. Rather, like the claim it is used to refer to both a process and an apparatus. E.g., Specification 2:21: “the recommender system employed in the Netflix® system”. And the ambiguity is not overcome by giving the claim term “system” its ordinary and customary meaning. An ordinary and customary meaning of “system” is “a set or arrangement of things so related or connected to form a unity or organic whole.” It is also “a method or plan of classification or arrangement” or “an established way of doing something; method; Appeal 2011-009380 Application 10/771,094 16 procedure.” See Webster’s New World Dictionary, 3rd Ed. 1988, entries 1, 3, 4a), respectively, for “system.” We have also considered the comments the Appellant made in rebutting the §101 rejection (see App. Br. 23-24). A sufficiently persuasive argument for a construction of claim 1 that directs it to either an apparatus or a process, and not both, is not given. “It is the applicant[’s] burden to precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). CONCLUSIONS The rejection of claims 11, 14-20, and 24-26 under 35 U.S.C. §101 as being directed to non-statutory subject matter is reversed. The rejection of claims 1-4, 7, and 8 under 35 U.S.C. §103(a) as being unpatentable over Hastings and Acid Rain is affirmed but denominated as a new ground of rejection. The rejection of claims 6 and 9 under 35 U.S.C. §103(a) as being unpatentable over Hastings and Acid Rain is reversed. The rejection of claims 11-16 and 18-26 under 35 U.S.C. §103(a) as being unpatentable over Hastings and Acid Rain is reversed pro forma. The rejection of claim 5 under 35 U.S.C. §103(a) as being unpatentable over Hastings and Pennell is affirmed but denominated as a new ground. The rejection of claim 17 under 35 U.S.C. §103(a) as being unpatentable over Hastings and Pennell is reversed pro forma. Claims 11-20 and 24-26 are newly rejected under 35 U.S.C. §112, second paragraph. Appeal 2011-009380 Application 10/771,094 17 DECISION The decision of the Examiner to reject claims 1-9 and 11-26 is affirmed-in-part. Claims 11-20 and 24-26 are newly rejected. NEW GROUNDS This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation