Ex Parte Jellison

Patent Trial and Appeal Board

Mar 27, 2017

12917596 (P.T.A.B. Mar. 27, 2017)

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.
12/917,596 11/02/2010 David C. Jellison JR. 221-RCS-03-2010 1822
86548 7590
Garlick & Markison (IH)
106 E. 6th Street, Suite 900
Austin, TX 78701
03/29/2017 EXAMINER
KIM, PAUL
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
MMurdock@ TEX ASPATENTS .COM
ghmptocor@texaspatents.com
bpierotti @ texaspatents .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID C. JELLISON, JR.
Appeal 2016-002295
Application 12/917,596
Technology Center 2100
Before MICHAEL J. STRAUSS, AMBER L. HAGY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002295
Application 12/917,596
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to rules-based playlist generation. Spec.,
Title. Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method for use in a server, the method comprising:
obtaining a first media list of media items, the media items
ranked relative to other media items included in the first
media list based on a performance level, by executing a
program instruction in a computer system;
adding to an intermediate list a predetermined number of top
ranked media items from the first media list, by executing a
program instruction in the computer system;
selectively adding lower-ranked media items from the first media
list to the intermediate list until a combined number of top-
ranked and lower-ranked media items added to the
intermediate list reaches a target number, each of the
lower-ranked media items having a relative performance level
inferior to the relative performance level of all of the top-
ranked media items, by executing a program instruction in the
computer system;
in response to the combined number of top-ranked and lower-
ranked media items reaching the target number:
adding identifiers associated with the top-ranked and lower-
ranked media items, by executing a program instruction in
the computer system; and
generating a first playlist based on the intermediate list, by
executing a program instruction in the computer system.
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Application 12/917,596
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Volk US 2004/0019497 A1 Jan. 29,2004
Miller US 7,730,420 B1 June 1,2010
Boulter US 2010/0205166 A1 Aug. 12,2010
REJECTIONS
The Examiner made the following rejections:
Claims 1, 4—6, 8, and 11—13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Volk and Boulter. Final Act. 2—7.
Claims 2, 3, 9, and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Volk, Boulter, and Official Notice. Final Act. 7—8.
Claims 7 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Volk, Boulter, and Miller. Final Act. 8—10.
APPELLANT’S CONTENTIONS
1. Neither Volk’s genre-based playlist nor Boulter’s user preference-
based playlist teaches or suggests “creating a playlist using media
items from a ranked list of media items (ranked on relative
performance level).” App. Br. 13.
2. “Boulter’s ratings are directed to whether listeners consider lyric
language ‘explicit’ (e.g., bad language) [but is] not a ranked song
performance-based metric, relative to the other ranked songs (media
items) [as required by claim 1].” App. Br. 14.
3. There is nothing in Boulter that suggests that unrated songs
thereof are unranked and there is no basis for the assertion
that unrated songs of Boulter would be inferior to “the relative
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Application 12/917,596
performance level of all of the top-ranked media items” [or]
that an “explicit” song has a superior ranking to unrated songs
in the context of the claimed invention [of claim 1],
App. Br. 16.
4. Volk’s aggregation of user requests and compilation of a
corresponding playlist does not include a determination of whether a
ranking of a lower-ranked media has changed as required by claim 5.
App. Br. 19.
5. Volk uses intentional ‘“cause and effect’ negative ratings without the
requisite claimed ‘pseudo-randomly excluding’ element [of claim 5].”
App. Br. 19.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 2—12)
and (2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 2—10) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.
Independent Claims 1 and 8
In connection with contention 1, Appellant argues the playlists of both
Volk and Boulter omit ranking of media items based on relative performance
level as required by claims 1 and 8. App. Br. 13, 18. The Examiner
responds by concluding “the claimed ‘performance level’ of Appellant’s
invention is broadly directed to popularity and historical playback metrics
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related to a media item.” Ans. 3. The Examiner finds Volk’s disclosure of
compiling a playlist based at least in part on the number of user requests for
particular songs teaches or suggests ranking media items (i.e., songs) and the
addition of songs with the highest scores teaches the disputed limitation of
“adding to an intermediate list a predetermined number of top ranked media
items from the first media list, by executing a program instruction in the
computer system.” Ans. 3^4. The Examiner further finds categorization of
Boulter’s top 1000 most popular songs as explicit, implicit, or unrated and
ordering of the corresponding lists teaches or suggests generating a playlist
by selecting a plurality of songs wherein the songs are ordered according to
the scores of each song (e.g., the popularity of each song). Ans. 4.
Appellant’s contention 1 is unpersuasive of Examiner error. As found
by the Examiner (Ans. 3—4), both Volk and Boulter order their playlists
based on criteria that, under a broad but reasonable construction, include
adding both top-ranked and lower-ranked media items (i.e., songs) to a list
(i.e., playlist) wherein each of the lower-ranked media items have a relative
performance level inferior (i.e., a lower rankings based on criteria such as
number of listener requests, offensiveness of lyrics, recency of being played,
etc.) to the relative performance level of all of the top-ranked media items
(i.e., those media items earlier added based on factors such as more listener
requests, less offensive lyrics, etc.). We note in passing that, although claim
1 requires adding lower-ranked media items to the intermediate list, there is
no requirement for only lower-ranked items to be added. Thus, adding
media items including both lower-ranked and high-ranked media items
teaches or suggests the disputed step of “selectively adding lower-ranked
media items . . . .”
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Application 12/917,596
In connection with contention 2, Appellant argues Boulter’s ratings
are indicators of offensive language, not a ranking and indicator of inferior
performance of songs as those terms are used by the claims. App. Br. 13—14.
The Examiner responds by providing a detailed explanation of the teachings
derived from Boulter’s disclosure. Ans. 5—6. For example, the Examiner
finds Boulter’s categorization of songs into respective sorted lists (i.e.,
explicit, implicit, and unranked songs) and then randomly adding some from
each list into a playlist teaches or suggests selectively adding media items
from a first list to an intermediate list. Ans. 5. The Examiner further finds
Volk teaches songs are arranged according to scores assigned by selection
engine 1040 (i.e., the songs are ranked) and that “the songs with the highest
scores may be added to or become part of the playlist.” Id. citing Volk | 83.
The Examiner concludes “[accordingly, it would have been obvious to one
of ordinary skill in the art to improve the prior art of Volk with that of
Boulter for the predictable result of adding songs according to their rank
within each list.” Id. at 5.
Appellant’s attack on Boulter individually is unpersuasive of
Examiner error. It is the combination of Boulter and Volk, not Boulter alone,
that teaches or suggests the disputed limitation of “selectively adding lower-
ranked media items from the first media list to the intermediate list.” “Non­
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)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Volk’s disclosure of
compiling a playlist according to the songs with the highest scores, the
“playlist [including] enough songs to fill up the predetermined amount of
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Application 12/917,596
time between transmission of playlists by the station server 212 (e.g., one
hour worth of songs)” (Ans. 5, Final Act. 3; Boulter | 84), in combination
with Boulter’s ranking and playlist creation, teaches or suggests the entirety
of the disputed limitation including adding lower-ranked media items until a
combined number of top-ranked and lower-ranked media items added to the
intermediate list reaches a target number (e.g., one hour of programming).
In connection with contention 3, Appellant argues Boulter’s rating
system of offensive lyrics fails to teach or suggest superior versus inferior
rankings of songs. App. Br. 16. In response the Examiner finds “Boulter
discloses that ‘the explicit, implicit, and unrated lists built in the last step are
taken and ordered in descending order by score, or rating, using a quicksort
or other algorithm.’” Ans. 7 (citing Boulter 179). The Examiner further
finds “Volk discloses that ‘ [t]he songs in the song database 222 are thus
sorted and arranged according to the scores assigned by the selection engine
1040’ and ‘the songs with the highest scores may be added to or become part
of the playlist.’” Id citing Volk | 83.
Appellant’s arguments in support of contention 3 are unpersuasive of
Examiner error. Again, Appellant focuses on Boulter’s rating system while
ignoring Boulter’s and Volk’s teachings of scoring and ranking songs.
Furthermore, Appellant fails to provide sufficient evidence or argument that,
under a broad but reasonable interpretation of inferior and superior levels of
performance, criteria for determining performance levels would not be based
on offensiveness of lyrics.
For the reasons discussed supra, Appellant’s contentions of error in
the rejection of independent claims 1 and 8 are unpersuasive. Accordingly,
we sustain the rejection of independent claims 1 and 8 under 35 U.S.C.
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§ 103(a) over Volk and Boulter together with the rejections of dependent
claims 2-4, 6, 7, 9-11, 13, and 14, which are not argued separately with
particularity.
Dependent Claims 5 and 12
In connection with contention 4, Appellant argues Volk’s aggregation
of users’ playlists fails to teach or suggest “determining whether a current
ranking of the at least one lower-ranked media item is different from a
previous ranking of the at least one lower-ranked media item [as required by
claims 5 and 12].” App. Br. 19. The Examiner responds by finding Volk’s
exclusion of songs too frequently or recently played lowers the ranking of
the song teaches or suggests the disputed limitation. Ans. 8—9. We agree
with the Examiner. Volk’s lowering of the ranking of a song is made based
on a determination that a current rank of a song is lower than presently
indicated because it has been over-played, thus teaching or suggesting the
current ranking (i.e., Volk’s lowered ranking determined to be appropriate to
reflect the song has been too frequently or recently played) is different from
a previous ranking (Volk’s ranking prior to updating). See Volk | 81.
In connection with contention 5, Appellant argues Volk intentionally
skips ineligible songs, i.e., songs that are not available. App. Br. 19. The
Examiner responds by finding, under a broadest reasonable interpretation of
the disputed limitation, Volk’s permissive exclusion of recently played songs
(a song may be excluded) teaches or suggests pseudo-randomly excluding a
lower-ranked media item. Ans. 9. According to the Examiner “one may
assert that human behavior may be considered ‘pseudorandom’.” Id.
We are unpersuaded of Examiner error. Appellant provides
insufficient evidence that pseudo-random exclusion of a lower-ranked media
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item excludes any “cause and effect” negative trigger. See App. Br. 19. For
example, Appellant fails to identify persuasive evidence of any requirement
imposed by the “pseudo-randomly excluding” limitation not at least
suggested by Volk’s disclosure that songs too-often played may be provided
with a negative rating. In the absence of sufficient rebuttal evidence1,
Appellant’s contention 5 is unpersuasive of Examiner error.
For the reasons discussed supra, Appellant’s contentions of error in
the rejection of dependent claims 5 and 12 are unpersuasive and,
accordingly, we sustain the rejection of those claims under 35 U.S.C.
§ 103(a) over Volk and Boulter.
DECISION
We affirm the Examiner’s decision to reject claims 1—14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
1 See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (noting mere
attorney argument is “not the kind of factual evidence that is required to
rebut a prima facie case of obviousness”); In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984) (explaining arguments of counsel cannot take the place
of factually supported objective evidence).
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