Ex Parte Gross

Patent Trials and Appeals Board

Aug 20, 2013

10771094 - (D) (P.T.A.B. Aug. 20, 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.
10/771,094 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