Ex Parte RobertDownload PDFPatent Trial and Appeal BoardOct 23, 201713725804 (P.T.A.B. Oct. 23, 2017) 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. 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, 2 Appeal 2017-005370 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) 3 Appeal 2017-005370 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 4 Appeal 2017-005370 Application 13/725,804 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 5 Appeal 2017-005370 Application 13/725,804 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 6 Appeal 2017-005370 Application 13/725,804 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 7 Copy with citationCopy as parenthetical citation