Ex Parte Hannum et al

Patent Trial and Appeal Board

May 25, 2016

12683232 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/683,232 01/06/2010
71867 7590 05/27/2016
BANNER & WITCO FF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
Sandi Hannum
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
007412.01119 2649
EXAMINER
NGUYEN, KIM T
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
05/27/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDI HANNUM, PETER SHEEDY,
MATT WONG, BRUCE R. BRADLEY,
JAMES R. ALBRECHT, and TERRIL. SWARTZ
Appeal2014-005928
Application 12/683,232 1
Technology Center 2100
Before CARLL. SILVERMAN, NORMAN H. BEAMER, and
SCOTT B. HOWARD, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 4--7, 9-11, 13-16, and 18-24. Final Act. 2,
15. Claims 3, 8-15, and 17 are cancelled. App. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Comcast IP Holdings
I, LLC. App. Br. 2.
Appeal2014-005928
Application 12/683,232
STATEMENT OF THE CASE
The invention relates to media content playlist generation and access.
Abstract.
Claim 1 is exemplary of the subject matter on appeal:
1. A computer-implemented method comprising:
accessing a play list, the play list comprising a plurality of media
content pointers, wherein each of the plurality of media content
pointers is associated with a corresponding media content offering;
receiving a user input, said input comprising an instruction to
add or delete one or more of said media content pointers from said
playlist; wherein the instruction comprises information that is
indicative that a user responded positively to a first media content
offering; and
responsive to the user input indicating a positive response to the
first media content offering, generating and transmitting an e-mail
including a second media content offering of the plurality of media
content offerings;
wherein content of the second media content offering and
content of the first media content offering have characteristics that
match beyond a similarity threshold; and
wherein the second media content offering is not the same as
the first media content offering.
App. Br. 11 (Claims Appendix).
THE REJECTION
Claims 1, 2, 4--11, 13-16, and 18-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Agresta (US 2006/0031551 Al;
February 9, 2006) in view of Alcalde (US 2010/0250471 Al; September 30,
2010) and Kopra (US 2005/0216855 Al; September 29, 2005). Final Act 5-
15.
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Application 12/683,232
ANALYSIS
Claims 1, 2, 4-7, 16, 18-20, 23, and 24
Appellants and the Examiner dispute whether the combination of
Agresta, Alcalde, and Kopra teaches the claim 1 limitation:
responsive to the user input indicating a positive response to the
first media content offering, generating and transmitting an e-mail
including a second media content offering of the plurality of media
content offerings;
wherein content of the second media content offering and
content of the first media content offering have characteristics that
match beyond a similarity threshold; and
wherein the second media content offering is not the same as
the first media content offering.
Final Act. 6-7; App. Br. 6-8; Ans. 3-5.
Appellants argue the Examiner errs by piecemeal rejection without
proper weight to "actions performed 'responsive to' one another"' or "the
actors performing those actions." App. Br. 6-8. According to Appellants:
For example, the email of Kopra is sent from a first person to a
second person to recommend a song, and is not performed
"responsive to" any action taken by the second person (the
person receiving the email). Even if the email functionality of
Kopra was added to the Alcalde web site, there is absolutely no
teaching or suggestion that the email would be sent responsive to
the Alcalde user choosing the "More Like This" option (see
Kopra at [0034]), nor responsive to any action performed by the
Alcalde user because, according to Kopra and as described
above, one user is sending an email to a second user that did not
perform any particular action. To remedy this logical deficiency
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in the references, the Final Otlice Action pieces together Alcalde
and Kopra in an irrational and unnatural way rendering each
reference unfit for its intended purpose.
App. Br. 6.
Appellants further argue modifying the web-based music
recommendation of Alcalde, which does not use email, with the email
functionality of Kopra is unpredictable and renders Alcalde's web-based
system unfit for its intended purpose. App. Br. 7. Appellants also argue one
of ordinary skill in the art would not combine Agresta, Alcalde, and Kopra
as suggested by the Examiner. App. Br. 6-8.
The Examiner finds the combination of Agresta, Alcalde, and Kopra
teaches the limitations of claim 1. Final Act. 6-7. The Examiner finds one
of ordinary skill in the art would provide Agresta' s method with Alcalde' s
intelligence song system to recommend music based on preferences. Id. at
6. The Examiner relies on the combination of Alcalde and Kopra for the
disputed limitation. Id. at 6 (citing Alcalde i-fi-148, 59; Kopra i134). The
Examiner relies on Kopra for the limitation "generating and transmitting an
e-mail including a second media content offering of the plurality of media
content offerings" and concludes "it would have been obvious to one of
ordinary skill in the art at the time of the invention was made to provide the
method of Agresta and Alcalde with the teaching of Kopra by using the
recommendation technique the user can purchase/own or play a large variety
of different songs/music[]." Ans. 7. See also Ans. 3-5.
We are not persuaded by Appellants' arguments and, instead, agree
with the Examiner's findings and conclusion. We agree the Examiner
presents sufficient articulated reasoning with rational underpinning to
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support the obviousness conclusion. Appellants argue an unreasonably
narrow teaching of the individual references Agresta, Alcalde, and Kopra as
would be understood by one of ordinary skill in the art. In addition,
Appellants improperly argue the individual references, rather than the
combination of the references cited by the Examiner. In re Keller, 642 F.2d
413, 426 (CCPA 1981)( "[O]ne cannot shownonobviousness by attacking
references individually where, as here, the rejections are based on
combinations of references" (citations omitted)); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art. See Keller, 642 F.2d at 425.
As stated by the Supreme Court, the Examiner's obviousness rejection
must be based on "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness" ....
[H]owever, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). The Examiner's
findings are reasonable because the skilled artisan would "be able to fit the
teachings of multiple patents together like pieces of a puzzle" since the
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skilled artisan is "a person of ordinary creativity, not an automaton." KSR,
550 U.S. at 420-21.
On this record, Appellants do not present sufficient evidence that the
combination of Agresta, Alcalde, and Kopra was "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19). Nor
have Appellants provided objective evidence of secondary considerations,
which our reviewing court guides "operates as a beneficial check on
hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725
F.3d 1341, 1352 (Fed. Cir. 2013).
In view of the above, we sustain the rejection of claim 1, and
independent claim 16 which recites similar limitations and is not argued
separately. App. Br. 8. We also sustain the rejection of dependent claims 2,
4--7, 18-20, 23, and 24.
Claims 21 and 22
Appellants argue Alcalde fails to teach the limitation:
responsive to the user input indicating a non-positive
response to the first media content offering, storing information
to prevent an e-mail, including a second media content offering
for content having characteristics that match content of the first
media content offering beyond a similarity threshold, from
being sent to the user, as recited in claim 21 and claim 22.
App. Br. 9.
According to Appellants:
The act of selecting one song over another is not the same as
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"preventing" an e-mail (or any other communication for that
matter) from being sent. In fact, Alcalde does not even disclose
that the unselected song would not later be suggested by
Alcalde' s music recommendation system. At best, Alcalde
describes storing information indicating which song was
selected. However, Alcalde surely fails to disclose, responsive
to the user input indicating a non-positive response to the first
media content offering, storing information to prevent an e-
mail, including a second media content offering,/rom being sent
to the user, as recited in claim 21.
App. Br. 9.
The Examiner finds Alcalde teaches that a user listens to the songs
and selects the preferred one while the songs not being selected by the user
are prevented (an email) from being sent to the user. Final Act. 13 (citing
Alcalde Figs. 5, 6; i-fi-148, 59); Ans. 6. The Examiner then finds it would
have been obvious to one of ordinary skill in the art at the time of the
invention was made to provide the method of Agresta with the teaching of
i\:\.lcalde by using the intelligence song/music system to recommend pieces of
music depend upon their music preferences. Final Act. 13.
We are not persuaded by Appellants' arguments and, instead, agree
with the Examiner's findings. As discussed above regarding claim 1,
Appellants argue an unreasonably narrow teaching of the individual
references Agresta, Alcalde, and Kopra as would be understood by one of
ordinary skill in the art and argue the references individually while the
rejection is based on the combination. In addition, we note the claim term
"prevent" is not defined in the Specification and Appellants do not present
persuasive evidence that the Examiner's interpretation is unreasonable or
overbroad. Claim terms in a patent application are given the broadest
reasonable interpretation consistent with the specification, as understood by
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one of ordinary skill in the art. Jn re Crish, 393 F.3d 1253, 1256 (Fed. Cir.
2004 ). However, great care should be taken to avoid reading limitations of
the specification into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
In view of the above, we sustain the rejection of claims 21 and 22.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4--7, 16, and
18-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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