Ex Parte Robert

Patent Trial and Appeal Board

Oct 23, 2017

13725804 (P.T.A.B. Oct. 23, 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.
13/725,804 12/21/2012 Arnaud Robert 0260222C1 7889
63649 7590 10/25/2017
DISNEY ENTERPRISES, INC.
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA AVENUE, SUITE 360
MISSION VIEJO, CA 92691
EXAMINER
YANG, NIEN
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
docketing @ farj ami. com
farj amidocketing @ yahoo, com
ITarj ami @ farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARNAUD ROBERT
Appeal 2017-005370
Application 13/725,804
Technology Center 2400
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 31—37, 41—47, and 51—52. Claims 1—30, 38-40,
and 48—50 were cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Disney Enterprises,
Inc., a wholly owned subsidiary of The Walt Disney Company (App. Br. 2).
Appeal 2017-005370
Application 13/725,804
STATEMENT OF THE CASE
Appellants’ invention relates to a system and method for providing a
personalized media consumption experience (Spec. 7:2—3). Exemplary
claim 31 under appeal reads as follows:
31. A method for use by a playback device for enabling an
association of media information relating to a playback history
of a media content file with a medium containing the media
content file, the method comprising:
playing, by the playback device, the media content file of
the medium inserted into the playback device;
receiving, by the playback device, a request to stop the
playing of the media content file;
obtaining, by the playback device and in response to the
request to stop, a playback stop position of the media content file;
transmitting, by the playback device and in response to the
request to stop, to a media server over a network, the unique
identifier of the medium inserted into the playback device, and
the media information including the playback stop position for
association by the server with the unique identifier of the medium
inserted into the playback device;
receiving, by the playback device, a request to play the
media content file;
obtaining, by the playback device and in response to the
request to play, the unique identifier present on the medium;
transmitting, by the playback device and in response to the
request to play, the unique identifier to the media server over the
network;
obtaining, by the playback device from the media server
over the network and in response to the transmitting of the unique
identifier, the media information associated by the media server
with the unique identifier, wherein the media information
includes the playback stop position; and
modifying an operating state of the playback device using
the media information including the playback stop position,
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Application 13/725,804
wherein the operating state of the playback device includes a
playback start position for playing the media content file.
REFERENCES and REJECTIONS
Claims 31 and 41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Arisaka et al. (US 2002/0165987 Al; published Nov. 7,
2002) (“Arisaka”) and F. Evans et al. (US 2006/0039680 Al; published Feb.
23, 2006) (“Evans”) (see Ans. 3-7).
Claims 32, 42, and 51—52 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Arisaka, Evans and Ray et al. (US 2008/0040354 Al;
published Feb. 14, 2008) (“Ray”) (see Ans. 7—10).
Claims 33—34 and 43 44 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Arisaka, Evans and Georgis et al. (US 2008/0134043 Al;
published June 5, 2008) (“Georgis”) (see Ans. 10-11).
Claims 35 and 45 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Arisaka, Evans and Intel Corporation et al., Advanced
Access Content System (AACS), CBHD Pre-recorded Book, Revision 0.90,
Interim Specification, October 7, 2008 (“AACS”) (see Ans. 12).
Claims 36—37 and 46-47 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Arisaka, Evans and Kelley et al. (US 2009/0104960 Al;
published Apr. 23, 2009) (“Kelley”) (see Ans. 12-14).
PRINCIPLES OF LAW
The Supreme Court has rejected the rigid requirement of
demonstrating a teaching, suggestion, or motivation in the references to
show obviousness. SeeKSR Int’l Co., v. Teleflex Co., 550 U.S. 398, 415—16
(2007); see also In re Ethicon, Inc., 844 F.3d 1344, 1350 (Fed. Cir. 2017)
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Application 13/725,804
(“KSR directs that an explicit teaching, suggestion, or motivation in the
references is not necessary to support a conclusion of obviousness.”).
Instead, a rejection based on obviousness only needs to be supported by
“some articulated reasoning with some rational underpinning” to combine
known elements in the manner required by the claim. Id. at 418. Further,
one cannot show non-obviousness by attacking references individually when
the rejection is based on a combination of references. See In re Merck &
Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642
F.2d 413, 425 (CCPA 1981).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments in the Briefs that the Examiner has erred. We are unpersuaded by
Appellant’s contentions and concur with the findings and conclusions
reached by the Examiner as explained below.
Independent Claims 31 and 41
Appellant contends the combination of Arisaka and Evans fails to
teach or suggest “transmitting, by the playback device and in response to the
request to stop, to a media server over a network, the unique identifier of the
medium inserted into the playback device, and the media information
including the playback stop position for association by the server with the
unique identifier of the medium inserted into the playback device,” as
recited in claim 31 and, similarly, in claim 41 (see App. Br. 7, 10; see also
Reply Br. 2, 5). More specifically, Appellant argues Evans merely discloses
a web-based database that associates additional information with a unique
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identifier of a disc, where the additional information merely includes the
disc’s title and contents, and, thus, Evans fails to teach or suggest that the
web-based database associates a playback state of the disc with the unique
identifier (see App. Br. 7—8; see also Reply Br. 2—5). Appellant further
argues Evans discloses a digital video disc (“DVD”) application that
generates its own unique identifier rather than utilizing the unique identifier
that is present on the disc, and thus, fails to teach or suggest that the
playback state of the disc is associated with a unique identifier of a medium
which is “present on the medium” (see App. Br. 8—9).
We are not persuaded by Appellant’s contention. Regarding
Appellant’s contention that Evans fails to teach or suggest a web-based
database associating a playback state of the disc with the unique identifier,
we agree with the Examiner that Evans does disclose the web-based
database that associates additional information with a unique identifier
present on a disc (see Ans. 6 (citing Evans 1207)). Although Evans
discloses examples of the additional information include a title and contents
of the disc, Evans does not limit the additional information to these two
types of information (see Evans 1207). Further, Arisaka discloses a digital
content playback system including a playback terminal device and a
playback data management device, where the playback terminal device
transmits a content identifier and playback continuation information to the
playback data management device, and where the playback data
management device updates playback action history by associating the
content identifier with the playback continuation information (see Arisaka
1128, 35, 52—57). Thus, the combination of Arisaka and Evans teaches or
suggests the recited step of transmitting, by a playback device and in
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response to a request to stop, to a media server over a network, a unique
content identifier, and a playback stop position for association by the server
with the unique content identifier.
Regarding Appellant’s contention that Evans fails to teach or suggest a
unique identifier of a medium inserted into a playback device, we disagree.
Rather, we agree with the Examiner that Evans discloses a unique disc
identifier algorithm, implemented by a DVD application, which generates a
unique identifier that uniquely identifies a DVD disc (see Ans. 6 (citing
Evans Tflf 206, 207); see also Ans. 17 (citing Evans 25); see also Evans
205, 210). We further agree with the Examiner that Evans’ generated
unique identifier teaches the claimed “unique identifier of [a] medium
inserted into [a] playback device” (see Ans. 6; see also Ans. 17).
Thus, we agree with the Examiner that the combination of Arisaka
and Evans teaches or suggests “transmitting, by the playback device and in
response to the request to stop, to a media server over a network, the unique
identifier of the medium inserted into the playback device, and the media
information including the playback stop position for association by the
server with the unique identifier of the medium inserted into the playback
device,” as recited in claim 31 and, similarly, in claim 41. Therefore, we
sustain the rejection of claims 31 and 41 under 35 U.S.C. § 103(a).
Remaining Claims
Appellant’s arguments regarding claims 32—37, 42-47, and 51—52
merely refer to Appellant’s arguments regarding claims 31 and 41, and
further argue that Ray, Georgis, AACS, and Kelley do not cure the alleged
deficiencies of the other cited references (see App. Br. 10—12). We therefore
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sustain their rejections for the reasons stated with respect to independent
claims 31 and 41.
DECISION
We affirm the Examiner’s rejection of claims 31—37, 41—47, and 51—
52 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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