Ex Parte Morotomi

Patent Trial and Appeal Board

May 31, 2017

14156755 (P.T.A.B. May. 31, 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.
1946-0607B 9707
EXAMINER
PARCHER, DANIEL W
ART UNIT PAPER NUMBER
2175
MAIL DATE DELIVERY MODE
14/156,755 01/16/2014
60803 7590 06/01/2017
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
Shiro MOROTOMI
06/01/2017 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 SHIRO MOROTOMI
Appeal 2017-003586
Application 14/156,7551
Technology Center 2100
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOVAN,
Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1—25, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.2
appellant identifies Sony Corporation as the real party in interest.
(App. Br. 3.)
2 Our Decision refers to the Specification filed Jan. 16, 2014 (“Spec.”), the
Final Office Action mailed Apr. 6, 2016 (“Final Act.”), the Appeal Brief
filed Sept. 30, 2016 (“App. Br.”), the Examiner’s Answer mailed Nov. 2,
2016 (“Ans.”), and the Reply Brief filed Jan. 3, 2017 (“Reply Br.”).
Appeal 2017-003586
Application 14/156,755
CLAIMED INVENTION
The claims are directed to a method, system, and recording medium
for exchanging information between user communication terminals. Spec.
110:14—19; Title; Abstract. The information may include a user’s
disclosable playlists that can be broadcasted to other users. Spec. Ill: 1—3.
Claims 1, 5, 9, 18, and 25 are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An information storage system comprising:
circuitry configured to
store user identification information of a plurality of
users;
receive, from at least one user of the plurality of
users, a plurality of playlists each indicating a plurality of
content data;
identify the plurality of playlists of a selected user
selected from among the plurality of users and generate
data for display of a list of the plurality of playlists of the
selected user at a first display location together with a
name of the selected user at a second display location
spatially related to the first display location; and
obtain information of the plurality of the content
data in a selected playlist and generate data for display of
a list of information of the plurality of the content data in
the selected playlist, when one playlist of the plurality of
playlists is selected from the list of the plurality of playlists
as the selected playlist.
(App. Br. 23.)
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Appeal 2017-003586
Application 14/156,755
REJECTIONS3 & REFERENCES
(1) Claims 1—9, 13—18, and 22—25 stand rejected under
35 U.S.C. § 103(a) based on Khedouri (US 2006/0008256 Al, Jan. 12,
2006) and Torres (US 2006/0095976 Al, May 4, 2006). (Final Act. 3-16.)
(2) Claims 10—12 and 19-21 stand rejected under
35 U.S.C. § 103(a) based on Khedouri, Torres, and Dwek (US
2001/0018858 Al, Sept. 6, 2001). (Final Act. 16-19.)
ANALYSIS
Appellant acknowledges independent claim 1 recites a list of a
selected user’s playlists displayed at a first display location together with the
user’s name displayed at a second display location spatially related to the
first display location. (App. Br. 15—16.) Specifically, claim 1 recites
circuitry configured to “generate data for display of a list of the plurality of
playlists of the selected user at a first display location together with a name
of the selected user at a second display location spatially related to the first
display location.”
The Examiner finds Khedouri displays a list of a user’s playlists at a
first display location, and Torres displays a user’s playlist and the user’s
name together, at spatially related first and second locations on a display.
(Final Act. 4 (citing Khedouri || 14, 60, 71, 85, 113; Torres 45, 48, Figs.
1-2B); Ans. 3-4.)
Appellant contends
3 Claims 1, 5, 9, 18, and 25 were rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. (Final Act. 2—3.) However, this rejection
was withdrawn in the Examiner’s Advisory Action (mailed June 15, 2016),
and is no longer pending on appeal. (Advisory Act. 1.)
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Application 14/156,755
[tjhere is absolutely no indication in Torres that the singular list
of songs taught in Figure 1 (as part of a general summary
module) would teach or suggest to generate data for display of a
list of a plurality of playlists of a selected user at a first display
location together with a name of the selected user at a second
display location spatially related to the first display location, as
recited by at least independent claim 1.
(App. Br. 18 (emphasis added).) In this regard, we note Appellant
improperly attacks Torres individually where the rejection is based on a
combination of references, in which the Examiner relied on Khedouri, not
Torres, for display of a list of a plurality ofplaylists of a selected user at a
first display location. (Ans. 3 (citing Khedouri || 60, 71, 85); Final Act. 4.)
“[0]ne cannot show non-obviousness by attacking references individually
where . . . the rejections are based on combinations of references.” In re
Keller, 642 F.2d413, 426 (CCPA 1981).
Additionally, we agree with the Examiner that paragraph 85 of
Khedouri teaches generating data for display of a list of a plurality of
playlists of a selected user (Jack) at a first display location (on Jill’s player).
(See Khedouri | 85 (“Device 709 [Jill’s player] enables the user to select one
or more other user devices (701-708) and browse files and playlists available
on those devices, e.g., 706 [Jack’s player] would show 50 available
selections and 2 playlists,” and “[d]evice 709 [Jill’s player] also compiles a
list of all media files and playlists available on all other available devices in
one list and enables the user to search and browse the list” (emphasis
added)).)
Appellant also argues although Torres discloses “that the user name is
displayed together with the singular list of songs,” “merely ‘being on the
same display’ cannot satisfy the recited claim elements to both display
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Application 14/156,755
playlists ‘together with a name ’ and in ‘spatially related’ locations,’ '’ as
claimed. (App. Br. 19-20 (emphasis added).) Appellant contends the
Specification, drawings, and claim 1 indicate the claimed “recitation of
being ‘spatially related’ connotes more than merely being displayed on the
same screen.” (Reply Br. 5—6.) We remain unpersuaded because
Appellant’s argument is not commensurate with the scope of claim 1, which
only requires displaying the list and the user’s name “together” at “spatially
related” locations.
Claims are given their broadest reasonable interpretation consistent
with the specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004). At the same time, care must be exercised not to
import limitations into the claims or to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citing In reZletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). We find
Appellant’s Specification does not provide an explicit and exclusive
definition of the claimed term “spatially related.” Rather, the Specification
merely provides a non-limiting example of a playlists’ list and user’s name
displayed “together” at “spatially related” locations shown in Figure 31,
where the user’s name (“User B”) and Playlists’ Names are displayed in
demarcated separated regions on the same display screen 701. (Ans. 6
(citing Spec. Fig. 31); see also Spec. 15:23—24, 111:6—24 (describing Fig.
31); App. Br. 7 (referring to Fig. 31 in support of claim 1).)
Based on Appellant’s Specification, the Examiner has broadly
interpreted displaying items “together” at “spatially related” locations as
encompassing Torres’ displaying user’s name (Leslie) at a top display
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Application 14/156,755
location, and displaying song playlist 151 at a lower display location in a
demarcated separated region below the user’s name. (Ans. 4—6 (citing
Torres Fig. 1).) We find the Examiner’s interpretation reasonable and
consistent with Appellant’s Specification.
Appellant next argues the display name “Leslie” in Torres’ Fig. 1 is
“merely an identifier o/[Torres’] general summary module,” not a user’s
name with “an actual spatial relationship” with Torres’ singular list of songs.
(Reply Br. 5 (emphasis added).) Appellant’s argument does not address the
Examiner’s specific findings that Torres teaches “Leslie” is the user’s
nickname and identifies the owner of the displayed song information. (Ans.
5 (citing Torres 148, Figs. 1, 2A—2B).) Additionally, Khedouri discloses
“device 709 [Jill’s player] identifies the name given to each device, (e.g.,
‘ Jack’s player’ 706). . . [and] displays a list of available devices to the user
by listing the names of each player” also suggesting a user’s name and
playlists are displayed together. (See Khedouri | 85 (emphasis added).)
Appellant further argues “there is no teaching or suggestion in
Khedouri or Torres, taken alone or in combination, to display a list o f a
plurality of playlists as particularly recited at a first display location and a
name at a second display location spatially related to the first display
location.” (App. Br. 17.) As discussed supra, we agree with the Examiner
that (1) Khedouri displays a playlists’ list at a first display location (|| 60,
71, 85), and (2) Torres displays a playlist at a first display location together
with a name at a second display location spatially related to the first display
location (|| 45, 48). Additionally, the Examiner has articulated sufficient
reasoning with “rational underpinnings”—which Appellant does not
address—for displaying Khedouri’s playlists’ list with the user’s name as
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Application 14/156,755
taught by Torres “to enable users to more easily associate content with
trusted users.” (Ans. 3 (citing Torres 113); Final Act. 5.)
For these reasons, we sustain the Examiner’s rejection of independent
claim 1 and the Examiner’s rejection of independent claims 5, 9, 18, and 25
on the same basis as claim 1 (see App. Br. 20; Reply Br. 6), for the reasons
stated above.
No separate arguments are presented for dependent claims 2-4, 6—8,
13—17, and 22—24. (Id.) Accordingly, for the reasons stated with respect to
independent claims 1, 5, 9, and 18, we sustain the rejection of these
dependent claims. See 37 C.F.R. § 41.37(c)(l)(iv).
With respect to dependent claims 10—12 and 19—21, Appellant
provides substantially the same arguments as for claims 1, 9, and 18, and
additionally argues that Dwek does not cure the alleged deficiencies of
Khedouri and Torres. (App. Br. 20-21; Reply Br. 7.) Because we find
Khedouri and Torres are not deficient, Dwek is not needed to cover any
deficiency, and therefore we sustain the rejection of dependent claims 10-12
and 19—21 for the reasons stated with respect to the independent claims.
DECISION
We affirm the Examiner’s decision rejecting claims 1—25 under
35 U.S.C. § 103(a).
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
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