Ex Parte Pelton

Patent Trial and Appeal Board

Aug 19, 2014

11860115 (P.T.A.B. Aug. 19, 2014)

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.
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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).

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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
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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.
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(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.”).
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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)).
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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
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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).

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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).
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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
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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).

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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
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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

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