Ex Parte Ho et al

Patent Trial and Appeal BoardMar 24, 2016

11810936 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111810,936 0610612007 23373 7590 03/28/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Edwin Ho 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. Q218647 5330 EXAMINER ORTIZ DITREN, BELIX M ART UNIT PAPER NUMBER 2164 NOTIFICATION DATE DELIVERY MODE 03/28/2016 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWIN HO, KING SUN WAI, and JIE LIN Appeal2014-003922 Application 11/810,936 Technology Center 2100 Before JEAN R. HOMERE, JOHN A. EV ANS, and DANIEL J. GALLIGAN, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL 1 Appellants2 seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's final rejection of claims 1-30. App. Br. 1, 8. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Our Decision refers to Appellants' Appeal Brief, filed June 24, 2013 ("App. Br."); Appellants' Reply Brief, filed December 23, 2013 ("Reply Br."); the Examiner's Answer, mailed October 24, 2013 ("Ans."); the Final Office Action, mailed January 3, 2013 ("Final Act."); and the original Specification, filed June 6, 2007 ("Spec."). 2 Appellants identify MSPOT, INC. as the real party in interest. App. Br. 3. Appeal2014-003922 Application 11/810,936 STATEMENT OF THE CASE Claims on Appeal Claims 1, 7, 15, and 23 are independent claims. Claim 1 is reproduced below: 1. A method for compiling user preferences and providing access to digital content, comprising the steps of: transmitting, from a mobile handset to a computer remote from the mobile handset, information about access to a piece of digital content, wherein the information about the access to the piece of digital content comprises two or more of a date and time of the access for a piece of digital content, a frequency of the access for a piece of digital content, a duration of the access for a piece of digital content and a characteristic of the piece of digital content; creating, on the computer remote from the mobile handset, a database record of access by the mobile handset to one or more pieces of digital content over a network, each database record having the information about access to a piece of digital content; applying, on the computer remote from the mobile handset, a weighting of the information about access to one or more pieces of content contained in said database records to create a list of preferred digital content; and generating a user interface on said mobile handset to enable access to digital content on said list of preferred digital content. Barnes, Jr. ("Barnes") Anglin, Jr. ("Anglin") Chi et al. ("Chi") Melton et al. ("Melton") Heck References US 2003/0065805 Al US 2007 /0011704 Al US 2007/0276961 Al US 2008/0046840 Al US 2008/0056574 Al 2 Apr. 3, 2003 Jan. 11, 2007 Nov. 29, 2007 Feb.21,2008 Mar. 6, 2008 Appeal2014-003922 Application 11/810,936 Examiner's Rejections Claims 1--4, 6-10, 14--18, 22-26, and 30 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Melton, Anglin, and Heck. Ans. 2---6; Final Act. 2---6. Claims 5, 13, 21, and 29 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Melton, Anglin, Heck, and Chi. Ans. 6; Final Act. 6. Claims 11, 12, 19, 20, 27, and 28 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Melton, Anglin, Heck, and Barnes. Ans. 7; Final Act. 7. ANALYSIS Appellants contend none of Melton, Anglin, and Heck teaches or suggests "creating, on the computer remote from the mobile handset, a database record of access by the mobile handset to one or more pieces of digital content over a network, each database record having the information about access to a piece of digital content," as recited in claim 1. App. Br. 12, 14--15. In particular, Appellants assert Melton teaches an electronic device that is used to access data items for viewing and that organizes a history of previously accessed data items. App. Br. 12 (citing Melton i-fi-176- 88, Figs. 3, 4). Additionally, Appellants contend the portions of Melton relied upon by the Examiner teach examples of data items a user may access with the electronic device, organizing information about previously accessed data items, and accessing data items distributed across other systems via a network. App. Br. 12-13 (citing Melton i-fi-16, 208, 260). Appellants point 3 Appeal2014-003922 Application 11/810,936 out Melton teaches accessing data items stored on a remote server, but not creating a database record on the remote server of data items accessed by another computer. Reply Br. 11-12 (citing Melton i-fi-1240, 241, 260, 265). Appellants argue Melton does not teach maintaining information related to data items that the electronic device has accessed on a computer that is remote from the electronic device. App. Br. 12, 13. We are not persuaded of Examiner error. First, the Examiner finds Melton teaches a historical list of previously accessed files, including files accessed through a network. Ans. 9-10 (citing Melton i-fi-13, 6, 96, Fig. 42). Additionally, the Examiner finds that Melton teaches logging information about each access. Ans. 10 (citing Melton i1 241 ). The Examiner also finds, and we agree, Anglin teaches the access of a file between devices including information about the access of the file. Ans. 8 (citing Anglin i-fi-1 4, 9). Anglin teaches: The present invention pertains to methods and apparatus for providing a central exchange for content files which may be accessed by users via wired or wireless connections. . . . The user is able to select the time for the download of the content, and is also able to select a device to which the content is downloaded. Anglin i1 4. Anglin enumerates types of information about access of the file, such as the selection of the time of download and the selection of the device to which the file is downloaded. Id. This information is relayed by the user via wired or wireless connections and organized on a remote computer, the central exchange, for accessing the content files. Id. The Examiner then relies upon the combination of Melton and Anglin to teach "creating, on the computer remote from the mobile handset, a database record of access," as 4 Appeal2014-003922 Application 11/810,936 recited in claim 1. Ans. 1 O; Final Act. 3 (citing Anglin iii! 4, 9). We note that "[ n ]on-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references." In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants argue Anglin does not teach "transmitting, from a mobile handset to a computer remote from the mobile handset, information about access to a piece of digital content," as recited in claim 1. App. Br. 15. Appellants argue Anglin teaches that the user may select a time for downloading the content and the device to which content is downloaded. App. Br. 16 (citing Anglin iii! 4, 9); Reply Br. 13. Appellants contend "the user in Anglin has not yet accessed the content when the user selects a time for downloading the content and the device to which the content is downloaded." App. Br. 16 (emphasis removed). Appellants additionally assert the Specification describes information relating to a piece of digital content that the mobile handset has already accessed. App. Br. 16-17 (citing Spec. p. 5, 11. 22-28; p. 6, 11. 1-16); Reply Br. 11. Appellants' arguments are not persuasive because they are not commensurate with the scope of the claim. Claim 1 does not limit the "access to a piece of digital content" to access that has already occurred. The Specification similarly does not limit the "user's actions concerning digital content X" or "each access of digital content X" to activity that has already occurred. See Spec. p. 5, 11. 22-28; p. 6, 11. 1-16. Appellants contend the portions of Anglin the Examiner relies upon do not teach transmitting the information about access to a piece of digital content. Reply Br. 13. However, the Examiner finds, and we agree, Anglin 5 Appeal2014-003922 Application 11/810,936 teaches that the user communicates via wired or wireless connections to the central exchange the selection of the time for the download of content and the selection of the device to which the content is downloaded for retrieval of digital files containing the content. Final Act. 3 (citing Anglin i-fi-1 4, 9) see Anglin i1 4 ("The user is able to select the time for the download of the content, and is also able to select a device to which the content is downloaded."). Because we are not persuaded of error in the Examiner's rejection of claim 1, we sustain the rejection of claim 1. With respect to claims 2-30, Appellants rely on arguments similar to those advanced for claim 1 and do not present additional persuasive arguments for patentability of these claims. See App. Br. 19-54. Therefore, we also sustain the rejections of these claims. DECISION We affirm the Examiner's rejections of claims 1-30. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6