Ex Parte PeltonDownload PDFPatent Trial and Appeal BoardAug 19, 201411860115 (P.T.A.B. Aug. 19, 2014) Copy Citation 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. 11/860,115 09/24/2007 Gregory Dean PELTON 10-088 6029 23164 7590 08/19/2014 Cisco c/o Leon R Turkevich Manelli Selter PLLC 2000 M STREET, NW SUITE 700 WASHINGTON, DC 20036-3307 EXAMINER KHOSHNOODI, FARIBORZ ART UNIT PAPER NUMBER 2161 MAIL DATE DELIVERY MODE 08/19/2014 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte GREGORY DEAN PELTON ____________ Appeal 2012-003757 Application 11/860,115 Technology Center 2100 ____________ Before ST. JOHN COURTENAY III, THU A DANG, and LARRY HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-21, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-003757 Application 11/860,115 2 Invention The invention on appeal “relates to storage and retrieval of ‘bookmarks’ that identify locations of data structures (e.g., data files) or resources (e.g., web servers or web services), and generation of media playlists.” (Spec. 1, ll. 3–5). Illustrative Claim 1. A method comprising: identifying, by a multimedia generator circuit, media content elements from at least one available media source based on the multimedia generator circuit determining that each of the media content elements have a relevance to a prescribed multimedia presentation theme, each media content element identified as accessible from the at least one available media source via a corresponding media identifier, the prescribed multimedia presentation theme having been obtained by the multimedia generator circuit for a multimedia user; and automatically generating, by the multimedia generator circuit, a playlist of multimedia content according to the prescribed multimedia presentation theme based on the multimedia generator circuit assembling the media identifiers according to a prescribed presentation preference. (Contested limitations emphasized). Appeal 2012-003757 Application 11/860,115 3 Rejections A. Claims 1–5, 8 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Kaplan (US Patent App. Pub. No. 2002/0180803 A1) in view of Kim US Patent App. Pub. No. 2005/0183121 A1. B. Claims 6–7, 10–18, and 20 stand rejected under 35 U.S.C. §103(a) as being unpatentable over the combined teachings and suggestions of Kaplan, Kim, and Skyrm, US Patent App. Pub. No. 2008/0168154 A1. C. Claim 9 stands rejected under 35 U.S.C. §103(a) as being unpatentable over the combined teachings and suggestions of Kaplan, Kim, and Heinerscheid et al., US Patent Pub. App. No. 2003/0181159 A1. D. Claim 19 stands rejected under 35 U.S.C. §103(a) as being unpatentable over the combined teachings and suggestions of Kaplan, Kim, Skyrm, and Heinerscheid. Grouping of Claims Based on Appellant’s arguments, we decide the appeal of on the basis of representative claims 1, 2, 11, and 12. See 37 C.F.R. § 41.37(c) (1)(vii)(2004).1 1 Appellant filed a Notice of Appeal on February 15, 2011. The date of filing the Notice of Appeal determines which set of rules applies to an Ex Parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies Appeal 2012-003757 Application 11/860,115 4 ANALYSIS Rejection A of Representative Claims 1 and 21 Issue: Under § 103, did the Examiner err by finding the cited prior art would have collectively taught or suggested the contested limitation of: “identifying, by a multimedia generator circuit, media content elements from at least one available media source based on the multimedia generator circuit determining that each of the media content elements have a relevance to a prescribed multimedia presentation theme,” within the meaning of representative claim 1? Appellant contends “the claimed playlist of multimedia content is distinct from a multimedia presentation because the multimedia presentation is created based on execution of the playlist.” (App. Br. 8). Appellant urges: the broadest reasonable interpretation of the claims in view of the specification requires that: (1) the claimed multimedia generator circuit (means for identifying) determines each of the media content elements have a relevance to a prescribed multimedia presentation theme (see page 3, lines 14-24; page 7, line 24 to page 9, line 12; page 9, line 25 to page 11, line 4); (2) the claimed multimedia generator circuit (means for identifying) automatically generates a playlist of multimedia content, where (2a) the claimed media identifiers are assembled by the multimedia generator circuit according to a prescribed presentation preference, and (2b) the playlist (18 of Fig. 3, see spec. at page 11, lines 19-27) is distinct from a multimedia presentation because the multimedia presentation is created based on execution of the playlist (see Fig. 3 and spec. at page 5, lines 11-15 and 23-27; page 11, line 28 to page 12, line 12). to the appeal. See also Manual of Patent Examining Procedure (MPEP) 8th ed., Rev. 8, July 2010. Appeal 2012-003757 Application 11/860,115 5 (App. Br. 8). In the “Response to Argument” portion of the Answer (21), the Examiner disagrees with Appellant’s contentions: Kaplan et al. as modified teach a multimedia management system which the multimedia content are organized in hierarchical structure that simplifies identifying and navigating through the content in the playlist. The playlist or folder (as explained above) can contain file or sub-album which by selecting the top level menu in the user interface would provide sub-menu which identifies all the sub-level content in the playlist and provide the user with the selection of content based on appropriate identifier which is displayed in the interface. By user selection of top level menu the multimedia management system perform command execution in the background to bring second level of the menu for next level menu for user selection. The execution process in the multimedia is performing in the system level based on the user selection from menu driven system (See Kaplan et al. Par. 45- 46 and 51). (Ans. 21). As an initial matter of claim construction, we note Appellant does not argue specific definitions for the contested data components, but instead points to exemplary embodiments in the Specification. (See App. Br. 8). We decline Appellant’s invitation to read limitations from the Specification into the claim. Our reviewing court guides that we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim.”). Appeal 2012-003757 Application 11/860,115 6 This reasoning is applicable here. Moreover, the scope of the “prescribed presentation preference” the “multimedia generator circuit” uses to automatically generate “a playlist of multimedia content” is not defined in claim 1 and thus, appears to depend solely on the unrestrained, subjective opinion (“preference”) of a particular individual purportedly practicing the invention (i.e., who or what unclaimed entity prescribes the “presentation preference.” 2 (Claim 1). For these reasons, a question arises as to how much patentable weight, if any, should be given to the contested “prescribed presentation preference” of claim 1. Further, we conclude the generated “playlist of multimedia content” is directed to non-functional descriptive material. Specifically, the informational content of the recited “playlist of multimedia content” is not positively recited as actually being used to change or affect any machine or 2 In the event of further prosecution, we leave it to the Examiner to consider whether all claims which recite “prescribed presentation preference,” either directly or by virtue of their dependency, meet the requirements of § 112, second paragraph. Specifically, the scope of the claimed “prescribed presentation preference” is not defined and thus, appears to depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“The scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention. See Application of Musgrave, 57 C.C.P.A. 1352, 431 F.2d 882, 893 (1970) (noting ‘[a] step requiring the exercise of subjective judgment without restriction might be objectionable as rendering a claim indefinite’). Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention.” (emphasis added)). Appeal 2012-003757 Application 11/860,115 7 computer function.3 (Claim 1). Thus, claim 1 is directed to a method of generating non-functional descriptive material, i.e., the “playlist of multimedia content” according to an undefined “prescribed presentation preference.” Accordingly, we conclude the claim as a whole is directed to conveying a message (“playlist of multimedia content”) or meaning to a human viewer or reader independent of any machine or computer system.4 Although Appellant refers to the Specification and urges “the multimedia presentation is created based on execution of the playlist (see Fig. 3 and spec. at page 5, lines 11-15 and 23-27; page 11, line 28 to page 12, line 12),” we observe claim 1 is silent regarding the contested execution of the playlist. (App. Br. 8, emphasis added). We again decline to read limitations from the Specification into the claim. Thus, the “playlist of multimedia content” of claim 1 is not claimed as executable code or otherwise being executed, nor is it a data structure that is positively recited as imparting functionality to a machine or computer within the broad scope of claim 1.5 Accordingly, we conclude method claim 1 3 See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential). 4 See MPEP § 2111.05 8th ed., Rev. 9, Aug. 2012 (“[W]here the claim as a whole is directed conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists.”). 5 Functional descriptive material consists of data structures and computer programs which impart functionality when employed as a computer component. See Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat. Office 142 (Nov. 22, 2005), especially pages 151-152. (The Manual of Appeal 2012-003757 Application 11/860,115 8 merely generates data (“a playlist of multimedia content”) intended for human perception that is not actually used to perform any function, within the scope of claim 1. Further, the doctrine of claim differentiation informs us “the presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004). Because “executing the playlist of multimedia content” is positively recited in dependent claim 2 (and not in base claim 1, from which claim 2 depends), the presumption is compelling here.6 Therefore, on this record, we are not persuaded the Examiner’s claim interpretation is overly broad, unreasonable, or inconsistent with Appellant’s Specification. Moreover, to the extent Appellant attempts to distinguish the claimed step of “automatically generating” the playlist over manual creation of a playlist (App. Br. 7, ¶ 2), it is well settled that where, as here, merely Patent Examining Procedure includes substantively the same guidance. See MPEP, 8th ed. (revised Aug. 2006), § 2106.01.) 6 “When different words or phrases are used in separate claims, a difference in meaning is presumed.” Nystrom v. TREX Co., Inc., 424 F.3d 1136, 1143 (Fed. Cir. 2005). Under the doctrine of claim differentiation, “the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” Phillips v. AWH Corp, 415 F.3d 1303, 1315 (Fed. Cir. 2005). This presumption is “especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim.” SunRace Roots Enterprise Co., Ltd. v. SRAM Corp., 336 F.3d 1298, 1303 (Fed. Cir. 2003). Appeal 2012-003757 Application 11/860,115 9 providing a mechanical or automatic means to replace manual activity to accomplish the same result is an obvious improvement. See In re Venner, 262 F.2d 91, 95 (CCPA 1958). Further, Appellant has not persuaded us that automatically generating a playlist in lieu of manual interaction would have been uniquely challenging or otherwise beyond the level of ordinarily skilled artisans. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Therefore, we find Appellant’s attempt to distinguish the claimed invention from Venner in the Reply Brief unavailing. (Reply Br. 4-5). In light of the guidance of Venner, we also find Appellant’s “teaching away” argument unpersuasive: i.e., that Kaplan “teaches away” from the claimed invention because a user must manually use an authoring tool to select and organize the multimedia content into a hierarchical scheme and manually generate the multimedia presentation. (App. Br. 9). 7 For these reasons, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. (Ans. 5–6; 21). Accordingly, we sustain the §103 rejection A of independent claim 1, and the §103 rejection A of grouped claim 21, which falls therewith. Appellant advances no separate arguments regarding rejection A for associated claims 4, 5, and 8 that depend from claim 1. Arguments not made 7 A reference does not teach away if it merely expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appeal 2012-003757 Application 11/860,115 10 are considered waived. See 37 C.F.R. § 41.37(c) (1)(vii)(2004). Therefore, we sustain rejection A of claims 1, 4, 5, 8, and 21. Rejection A of Dependent Claim 2 Dependent claim 2 recites: The method of claim 1, further comprising generating for the multimedia user, by the multimedia generator circuit, at least one of a multimedia presentation based on executing the playlist of multimedia content, or a playlist identifier that references for the multimedia user the playlist of multimedia content. (emphasis added). Appellant restates the arguments previously applied against the rejection of claim 1 that we have addressed supra. (App. Br. 12). Regarding claim 2, Appellant further contends: Further, the hypothetical combination fails to provide any disclosure or suggestion of the claimed playlist identifier. The playlist identifier (30 of Fig. 3), also referred to in the specification as an "experience bookmark", enables the playlist of multimedia content (18 of Fig. 3) to be globally available for distributed presentation of the multimedia presentation in a scalable manner, based on distribution of the "experience bookmark" 30 (see, e.g., page 12, line 28 to page 13, line 29). (App. Br. 13). Although we observe claim 2 does positively recite generating a “multimedia presentation based on executing the playlist of multimedia content,” we also note the alternative language recited in claim 2 (“at least one of . . . or . . . .”). Thus, the Examiner need only show a teaching or suggestion of one of the claimed alternatives, e.g., “or a playlist identifier Appeal 2012-003757 Application 11/860,115 11 that references for the multimedia user the playlist of multimedia content.” – claim 2). Regarding the contested “playlist identifier,” we again observe Appellant argues this limitation in terms of a preferred embodiment described in the Specification. (App. Br. 13). We again decline to read limitations from the Specification into the claim. Turning to Kaplan (¶ 45), we find an assigned attribute of a playlist expressly described: Each Album in the selected hierarchy of content is analyzed and assigned the Attribute of a "Play List" or a "Folder". A Play List is an Album that contains multimedia files, but does not contain any Folders. A Folder is an Album that has a Sub-Album. If an Album contains both multimedia files and a Sub-Album. In such a case, the algorithm may be configured to assign the original Album the Attribute of Folder, and to create a new virtual Album of the remaining content, which is assigned the Attribute of a Play List. Once the list of Albums is assigned Attributes in this manner, the list of Albums is organized to create Menu buttons and associated multimedia content to create a multimedia presentation on removable media. (Kaplan, ¶ 45, emphasis added). Given this evidence, and the alternative language of the claim, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness regarding claim 2. Accordingly, we sustain §103 rejection A of claim 2, and of claim 3, which depends thereon (not separately argued). Appeal 2012-003757 Application 11/860,115 12 Rejection B of Representative Independent Claim 11 Appellant restates essentially the same arguments previously advanced against the rejection of claims 1 and 2 that we have addressed supra. (App. Br. 14). Thus, we find Appellant’s contention unavailing (id.) regarding the contested limitation of “the multimedia generator circuit further configured for automatically generating a playlist of multimedia content” (claim 11), given our previous discussion of Venner, 262 F.2d at 95 (CCPA 1958). For the same reasons discussed above regarding claims 1 and 2, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness regarding claim 11. (Ans. 10-13). Accordingly, we sustain §103 rejection B of representative claim 11, and §103 rejection B of grouped 14–18 and 20 (not separately argued) which fall therewith. Rejection B of Representative Dependent Claim 12 Appellant essentially restates the same arguments previously advanced against the rejection of claims 1 and 2 that we have addressed supra. (App. Br. 15). Appellant contends “the claimed playlist of multimedia content is distinct from a multimedia presentation because the multimedia presentation is created based on execution of the playlist.” (Id.). We observe claim 12 recites alternative “at least one of . . . or . . .” language similar to our discussion of claim 2 above. For the same reasons discussed above regarding claim 1 and the claimed playlist identifier of claim 2, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness regarding Appeal 2012-003757 Application 11/860,115 13 claim 12. (Ans. 13-14). Accordingly, we sustain §103 rejection B of representative claim 12, and the §103 rejection B of associated dependent claim 13 (not separately argued), which falls therewith. Remaining Dependent claims 6, 7, 9, 10, and 19 Appellant advances no separate arguments regarding rejection B of dependent claims 6, 7, and 10, rejection C of dependent claim 9, and rejection D of dependent claim 19. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c) (1)(vii)(2004). Therefore, we sustain the Examiner’s § 103 rejections of dependent claims 6, 7, 9, 10, and 19. DECISION We affirm the Examiner’s decision rejecting claims 1-21 under § 103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). See 37 C.F.R. § 41.50(f). AFFIRMED lp Copy with citationCopy as parenthetical citation