Ex Parte Rose

Patent Trial and Appeal Board

Apr 21, 2016

13764247 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/764,247 02/11/2013 Robert Brett Rose
16621 7590 04/25/2016
Morris & Kamlay LLP I 030120
1150 18th St NW
Suite 575
Washington, DC 20036
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
030120-047210US 4628
EXAMINER
HUANG, MIRANDA M
ART UNIT PAPER NUMBER
2157
NOTIFICATION DATE DELIVERY MODE
04/25/2016 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):
pto@morriskamlay.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT BRETT ROSE
Appeal2014-007203 1
Application 13/764,247
Technology Center 2100
Before JEAN R. HOMERE, CAROLYN D. THOMAS, and KARA L.
SZPONDOWSKI, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-25, which constitute all of the
claims pending in this appeal. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm-in-part.
1 Appellant identifies the real party in interest as Google Incorporated. Br.
1.
Appeal2014-007203
Application 13/764,247
Appellant's Invention
Appellant's invention is directed to a method and system for allowing
the user of an electronic device (110) to obtain a digital media queue (DMQ)
including a playlist of digital media items (DMI) (e.g., song, video, album)
in response to a search request for an event (e.g., birthday, anniversary)
including the current date and the requested data submitted to a
programming server (120). In particular, upon receiving the search request,
the server retrieves the DMQ from data repositories (130, 140) based on the
current date and physical location of the electronic device. Subsequently,
the server sends the DMQ to the user along with recommendation data
including a reason justifying the inclusion of each DMI in the DMQ. Spec.
iTiT 12, 29, 30, 33, Fig. 1.
Representative Claim
Independent claim l is representative, and reads as follows:
1. A method, comprising:
receiving, from an electronic device, a request for a digital
media queue, wherein the request comprises request data;
performing, in response to the request, a search of one or
more events, wherein the search of the one or more events is
based on a current date and the request data;
determining, based on the search, one or more digital
media items, wherein each digital media item is a type selected
from the group consisting of: a song, a video, or an album;
determining a recommended digital media queue that
comprises a playlist of the one or more recommended digital
media items; and sending, to the electronic device,
recommendation data, wherein the recommendation data
comprises the recommended digital queue and one or more
2
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Application 13/764,247
reasons explaining why the recommended digital media queue
comprises the one or more recommended digital media items. 2
Baird-Smith
Lin
Rosenshen
Sandholm
Prior Art Relied Upon
US 2008/0294453 Al
US 2010/0082448 Al
US 2012/0224459 Al
US 2013/0073686 Al
Rejections on Appeal
Nov. 27, 2008
Apr. 1, 2010
Sept. 6, 2012
Mar. 21, 2013
Appellant requests review of the following Examiner's rejections:
Claims 1-3, 5-13, and 15-25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Rosenshen, Baird-Smith, and
Sandholm.
Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Rosenshen, Baird-Smith, Sandholm,
and Lin.
ANALYSIS
We consider Appellant's arguments seriatim, as they are presented in
the Appeal Brief, pages 4--19. 3
2 Claim 1 contained in the Appeal Brief does not mirror the last amended
version of this claim (see amdt. after non-final act. dated Aug. 21, 2013).
3 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed February 7, 2014) ("Br."), and the
Examiner's Answer (mailed April 10, 2014) ("Ans.") for their respective
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Application 13/764,247
First, Appellant argues Baird-Smith is nonanalogous prior art, and is
therefore not properly combinable with Rosenshen to render claim 1
unpatentable. Br. 4---6. In particular, Appellant argues Baird-Smith's
disclosure of a digital rights management system is not reasonably pertinent
to providing Y ahrzeit entries to users as disclosed to Rosenshen' s system.
Id. at 4---6 (citing Rosenshen i-fi-1 5, 27, and Baird-Smith i-fi-1 44, 55, 58).
According to Appellant, because Baird-Smith allows users to access content
only if they have access rights thereto, it would restrict users' access to
Y ahrzeit' s content in Rosenshen' s system, and thereby render the latter
system unfit for its intended purpose. Id. at 6 (citing Baird-Smith i1 57).
This argument is not persuasive. "Whether a reference in the prior art is
'analogous' is a fact question." In re Clay, 966 F.2d 656, 658 (Fed. Cir.
1992) (citing Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 n.9,
(Fed. Cir. 1987), cert. denied, 481 U.S. 1052 (1987)).
Two criteria have evolved for answering the question: "(1) whether
the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved." Clay, 966 F.2d at 658-59
(citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599
details. We have considered in this Decision only those arguments
Appellant actually raised in the Brief. Any other arguments Appellant could
have made but chose not to make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2013).
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Application 13/764,247
F.2d 1032, 1036 (CCPA 1979)). "A reference is reasonably pertinent if ...
it is one which, because of the matter with which it deals, logically would
have commended itself to an inventor's attention in considering his
problem." Id. at 659. "If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same problem, and that fact
supports use of that reference in an obviousness rejection." Id.
We echo the Examiner's finding that the disclosure of Baird-Smith
pertains to the same field of endeavor as Appellant's claimed invention.
Ans. 3--4. As correctly noted by the Examiner, Baird-Smith's disclosure of
providing authorized users with access to digital media items in a secure
network environment is within the same field of endeavor as Appellant's
method for allowing users to obtain media items from a network. Id. at 3
(citing Baird-Smith Abstract). Likewise, Rosenshen pertains to the field of
searching digital media items on a network. Id. Further, we do not agree
with Appellant's argument that Baird-Smith's disclosure of authenticating
users somehow restricts the field of Baird-Smith's invention to a digital right
management system without regard to Baird-Smith's express teaching of
also providing users access to digital media items on a network. 4 In our
view, because Baird-Smith's teaching of grouping media items on a network
as part of a play list would have logically commended itself to an inventor's
attention in considering the problem of retrieving digital media items from a
4 We note in passing that Appellant's own invention also discloses an
embodiment for authenticating users before they are allowed to access
digital media items on the network. Spec. i-f 32.
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network, Baird-Smith is reasonably pertinent to the problem with which
Appellant's invention is concerned, and is therefore analogous prior art.
Baird-Smith if 100.
Second, Appellant argues the combination of Rosenshen, Baird-
Smith, and Sandholm does not teach or suggest "a reason explaining why the
recommended digital media queue includes the digital media items," as
recited in claim 1.5 Br. 6 (emphasis omitted). In particular, Appellant
argues that Sandholm' s disclosure of providing a ranked list including an
aggregated score and associated URL for each result entry retrieved in
response to a search does not teach the disputed limitations. Id. at 7.
According to Appellant, the aggregated score merely provides an indication
of total credits assigned by one or more users to at least a URL associated
therewith. Appellant submits, however, the cited disclosure of Sandholm
does not indicate how the score was determined or why each of a plurality of
URLs is included in the list without the user taking the additional step of
following the URLs to see the comments included in webpage linked
thereto. Id. at 8. This argument is unavailing. As correctly noted by the
Examiner, because Sandholm discloses the URLs including the comments as
a basis for ranking the list of result entries retrieved in response to a user-
initiated search query, one of ordinary skill in the art would have readily
concluded that the content of the comment associated with each entry on the
ranked list justifies its inclusion and order on the list. Ans. 4 (citing
5 See supra note 2.
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Application 13/764,247
Sandholm i-f 59). Accordingly, we agree with the Examiner that the
comments included with URLs associated with the retrieved data items on
the result list teaches or suggests the recommendation and reason for
including each of the entries on the list. Therefore, we are satisfied that the
cited disclosure of Sandholm would have complemented the Rosenshen-
Baird-Smith combination to thereby customize each retrieved Yahrzeit, in
response to a user's search request, as a digital media queue including a
ranked list of digital media items along with a recommendation reason for
each entry. It follows that Appellant has not shown that the Examiner erred
in concluding that the combination of Rosenshen, Bair-Smith, and Sandholm
renders independent claim 1 unpatentable. Accordingly, we will sustain the
rejection of claim 1.
Regarding the rejection of claims 4 and 14, Appellant argues the
combination of Lin with Rosenshen is not workable because Lin's gifting
system is not compatible with Rosenshen's Yahrzeit's system, and thereby
would not result in the claimed purchase instructions. Br. 9-10 (citing
Rosenshen i-f 49, and Lin i-fi-191, 94). This argument is not persuasive. We
agree with the Examiner's finding that Lin's disclosure of a media gifting
service device for facilitating a user's purchase of digital media items in a
network is within the same field of endeavor as Appellant's method for
accessing media items in a network. Ans. 4--5. Consequently, we agree
with the Examiner that Lin's disclosure of purchasing individual media
items would have complemented the Rosenshen, Baird-Smith, Sandholm
combination to predictably result in a system that provides user's
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instructions for purchasing recommended media items included as part of a
media item queue. Accordingly, we will sustain the rejection of claims 4
and 14.
Regarding the rejection of claim 22, Appellant argues that the
combination of Rosenshen, Baird-Smith, and Sandholm does not teach or
suggest determining the most common physical location of an electronic
device based on a history or statistical approximation. Br. 10-11. This
argument is persuasive. We agree with Appellant that Sandholm's
disclosure of determining the actual physical location of an electronic device
by using GPS sensors to locate the GPS coordinates of the device does not
teach or suggest determining the most common physical location of the
device via statistical approximation or a history thereof. Br. 11 (citing
Sandholm i-f 34). Accordingly, we will not sustain the Examiner's rejection
of claim 22.
Regarding the rejection of claims 2, 3, 5-13, 15-21, and 23-25,
because Appellant has either not presented separate patentability arguments
or has reiterated substantially the same arguments as those previously
discussed for the patentability of claims 1, 4, and 14 above, claims 2, 3, 5-
13, 15-21, and 23-25 fall therewith. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
DECISION
We affirm the Examiner's rejections under 35 U.S.C. § 103(a) of
claims 1-21 and 23-25. However, we reverse the rejection of claim 22.
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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-IN-PART
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