Ex Parte 7389243 et al

Patent Trial and Appeal Board

May 23, 2014

95000469 (P.T.A.B. May. 23, 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.
95/000,469 09/03/2009 7389243 535412800100 6472
23694 7590 05/23/2014
Law Office of J. Nicholas Gross, Prof. Corp.
PO BOX 9489
BERKELEY, CA 94709
EXAMINER
CAMPBELL, JOSHUA D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/23/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

NETFLIX, INC.
Requester

v.

MEDIA QUEUE, LLC
Patent Owner
____________

Appeal 2014-003307
Reexamination Control 95/000,469
Patent 7,389,243 B2
Technology Center 3900
____________

Before HUBERT C. LORIN, STEPHEN C. SIU, and IRVIN E. BRANCH,
Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2014-003307
Reexamination Control 95/000,469
Patent 7,389,243 B2

2
Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
rejections of claims 1, 3, 5, 6, 8-10, 12, 13, 15, 17, 19-23, 25, 26, 36, 38-41,
50-53, 62-65, 74-77, 85-88, 95-99, 100-102, 103-107, 110-124, 127, and
128.
1
We have jurisdiction under 35 U.S.C. §§ 134 and 315.

STATEMENT OF THE CASE
This proceeding arose from a February 16, 2012 request by Netflix,
Inc. (“Requester”) for an inter partes reexamination of claims of U.S. Patent
7,389,243 B2, titled “Notification System and Method for Media Queue”
and issued to John N. Gross, on June 17, 2008 (the “’243 patent”).
The ’243 patent describes a method and system for monitoring
purchase orders and providing selections and notifications of new items (col.
1, ll. 13-19).
Claim 1 reads as follows:

1. A method of electronically notifying a subscriber to a
content provider of activity in a subscriber rental queue associated
with the subscriber, including the steps of:
a. defining a set of notification rules for the subscriber rental
queue, which notification rules are authorized by the subscriber;
b. monitoring the subscriber rental queue with a computer in
accordance with said set of notification rules and a separate set of
queue replenishment control rules authorized by the subscriber so
that said computer can determine if a composition should be
altered through additions of playable media titles and/or ordering
of playable media titles in the subscriber rental queue should be
altered;

1
We cite to the Patent Owner’s Appeal Brief dated April 12, 2013 (“PO
App. Br.”).
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c. sending an electronic notification to the subscriber with
said computer in response to an affirmative determination under
step (b) that such notification is necessary based on said set of
notification rules;
wherein said set of notification rules and/or set of queue
replenishment control rules include a user configurable option with
a first choice to automatically trigger a modification of the
subscriber rental queue, and a second choice which does not
trigger a modification of the subscriber rental queue;
further comprising said subscriber selecting one of said first
choice or second choice to automatically trigger or not trigger a
modification to said subscriber rental queue.

The cited references are as follows:

Siefert US 5,699,526 Dec. 16, 1997
Elston US 6,055,505 Apr. 25, 2000
Linden US 6,266,649 Jul. 24, 2001
Jacobi US 6,317,722 Nov. 13, 2001
Bhatt US 6,405,191 Jun. 11, 2002
Bieganski US 6,412,012 Jun. 25, 2002
Sherr US 2002/0154157 Oct. 24, 2002
Czuchry US 2002/0184105 Dec. 5, 2002
Wan US 6,539,281 Mar. 25, 2003
Steele US 6,564,047 May 13, 2003
Hastings US 6,584,450 Jun. 24, 2003
Walsh US 6,965,770 Nov. 15, 2005
VanOrman US 7,085,727 Aug. 1, 2006
Szabo US 7,130,814 Oct. 31, 2006
Hastings
2
US 7,403,910 Jul. 22, 2008

Shelly K. Schwartz, “CD clubs: a sound deal?” CNNMoney,
December 1, 1999 (“Schwartz”).

2
Herein referred to as “Hastings II.”
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Patent 7,389,243 B2

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Steven Bellman, et al., “To Opt-In or Opt-Out? It Depends on the
Question,” Communications of the ACM, Vol. 44, No. 2, Feb. 2001
(“Bellman”).

Peter Konshak, “Coding a Custom Alert Service,” Feb. 2001
(“Konshak”).

Jean D. Anderson, “The New York State Library for the Blind and
Visually Handicapped, Automated Circulation System,” 1978 (“Anderson”).

Patent Owner appeals the Examiner’s rejections as follows:
Claims 1, 3, 5, 6, 8-10, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Hastings, Elston and Wan (RAN 8, “Issue 3”; PO App.
Br. 8-14);
Claims 13, 15, 17, 19-22, 95-97, and 100 under 35 U.S.C. § 103(a) as
unpatentable over Hastings, Bhatt, Jacobi, Anderson, Hastings II, Czuchry,
Konshak, and Elston (RAN 8, 15, “Issue 5” and “Issue 21”; PO App. Br. 15-
19);
3

Claims 23, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Elston, Schwartz, Konshak, and any of Czuchry, Szabo, and Sherr
(RAN 9-12, “Issue 9,” “Issue 10,” “Issue 13”; PO App. Br. 19-24);

3
The Examiner rejects claims 13, 15, 17, and 19-22 as unpatentable over
Hastings, Bhatt, Jacobi and “utilizing” Anderson, Hastings II, Czuchry,
Konshak, and Elston (RAN 8, “Issue 5”). Claims 95-97 and 100 depend
from claim 13. The Examiner rejects claims 95-97 and 100 as unpatentable
over the references of “issue 5” and “further in view of Elston” (RAN 15,
“Issue 21”). Because the references cited in “issue 5” are Hastings, Bhatt,
Jacobi and “utilizing” Anderson, Hastings II, Czuchry, Konshak, and Elston,
we assume that the Examiner also rejects claims 95-97 and 100 as
unpatentable over Hastings, Bhatt, Jacobi and “utilizing” Anderson,
Hastings II, Czuchry, Konshak, and Elston.
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Claims 36, 38-40, 50-52, 62-64, 74-76, 85-87, 102, 104-106, 119, and
121-123 under 35 U.S.C. § 112, first paragraph as failing the written
description requirement (RAN 11, “Issue 15”; PO App. Br. 24-26);
Claims 41, 53, 65, 77, 88, 107, and 124 under 35 U.S.C. § 112, second
paragraph, as being indefinite (RAN 12, “Issue 16”; PO App. Br. 26-27);
Claim 102 under 35 U.S.C. § 103(a) as unpatentable over Hastings,
Bhatt, Jacobi, and Szabo (RAN 17, “Issue 23”; PO App. Br. 27);
Claim 119 under 35 U.S.C. § 103(a) as unpatentable over Hastings,
Elston, Szabo, and one of Czuchry or Sherr (RAN 17, “Issue 23”; PO App.
Br. 27);
Claims 99, 103, and 105 under 35 U.S.C. § 103(a) as unpatentable
over Hastings, Bhatt, Jacobi, and Wan (RAN 18, “Issue 24”; PO App. Br.
27-28);
Claims 116, 120, and 122 under 35 U.S.C. § 103(a) as unpatentable
over Hastings, Elston, Czuchry, and Wan (RAN 18, “Issue 24”; PO App. Br.
27-28);
Claim 106 under 35 U.S.C. § 103(a) as unpatentable over Hastings,
Bhatt, Jacobi, and Czuchry (RAN 19, “Issue 25”; PO App. Br. 28);
Claim 123 under 35 U.S.C. § 103(a) as unpatentable over Hastings,
Elston, Czuchry and one of Szabo, Sherr, or Wan (RAN 19-20, “Issue 25,”
“Issue 27”; PO App. Br. 28);
Claims 110 and 111 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Bhatt, Jacobi, and Steele (RAN 22, “Issue 29”; PO App. Br. 28-
30);
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Claims 127 and 128 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Elston, Steele, and one of Czuchry, Szabo, or Sherr (RAN 22,
“Issue 29”; PO App. Br. 28-30);
Claim 98 under 35 U.S.C. § 103(a) as unpatentable over Hastings,
Bhatt, and Jacobi (RAN 12, “Issue 18”; PO App. Br. 27);
Claims 115 and 117 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Elston, and one of Szabo, Sherr, or Czuchry (RAN 13, “Issue 18”;
PO App. Br. 27);
Claim 119 under 35 U.S.C. § 103(a) as unpatentable over Hastings,
Elston, and Szabo (RAN 13, “Issue 18”; PO App. Br. 27);
Claim 112 under 35 U.S.C. § 103(a) as unpatentable over Hastings,
Elston, Bhatt, and one of Czuchry, Szabo, or Sherr (RAN 13-14, “Issue 19”;
PO App. Br. 27);
Claims 96 and 97 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Bhatt, and Jacobi (RAN 14, “Issue 20”; PO App. Br. 27);
Claims 113 and 114 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Elston, Linden, and one of Czuchry, Szabo, or Sherr (RAN 14-15,
“Issue 20”; PO App. Br. 27);
Claim 101 under 35 U.S.C. § 103(a) as unpatentable over Hastings,
Bhatt, Jacobi, and Bellman (RAN 16, “Issue 22”; PO App. Br. 27);
Claim 118 under 35 U.S.C. § 103(a) as unpatentable over Hastings,
Elston, Bellman, and one of Czuchry, Szabo, or Sherr (RAN 16, “Issue 22”;
PO App. Br. 27).

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ISSUE

Did the Examiner err in rejecting claims 1, 3, 5, 6, 8-10, 12, 13, 15,
17, 19-23, 25, 26, 36, 38-41, 50-53, 62-65, 74-77, 85-88, 95-99, 100-102,
103-107, 110-124, 127, and 128?

PRINCIPLES OF LAW

The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS

Claims 1, 3, 5, 6, 8-10, and 12

The Examiner rejects claims 1, 3, 5, 6, 8-10, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Hastings, Elston, and Wan (RAN 8). Patent
Owner argues that the Examiner’s alleged position that the combination of
references “effectively” teach monitoring as recited in claim 1 is “vague and
conclusory” (PO App. Br. 10, citing RAN 32), that Elston discloses “an
‘overdraft’ event” while Hastings does not disclose “overdraw” of “a movie
queue” (PO App. Br. 11), and that the Examiner provides “no credible
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rationale . . . to combine the references, beyond a superficial comment
‘. . . the claim could be rendered obvious by the combination of these three
references [Hastings, Elston, and Wan]’” (PO App. Br. 12). In other words,
Patent Owner argues that it would not have been obvious to one of ordinary
skill in the art to have combined the teachings of Hastings, Elston, and Wan.
We disagree with Patent Owner for at least the reasons set forth by the
Examiner (Ans. 11-15, citing Office Action mailed February 3, 2010 at 21-
22).
For example, the Examiner explains that Hastings discloses “rental
queue accounts” (RAN 10), Elston discloses an “extremely simple and
notoriously well-known concept of providing a notification of a detected
event in an account” (RAN 9), and Wan discloses “quantity-based
monitoring [and] notification” (RAN 12, citing Office Action dated 2/3/10 at
21-22(emphasis omitted).). We agree with the Examiner that the
combination of the known system of Hastings in which, according to the
Examiner, a “rental queue account” is provided for a subscriber, the
“notoriously well-known” system of Elston in which a subscriber is notified
of events that occur pertaining to a corresponding subscriber account, and
the system of Wan in which a user is notified of a user status that is
monitored by a system would have resulted in the predictable result of
notifying a user of activity in the user’s account. Such a predictable result of
the combination of known systems, each performing a known function,
would have been obvious to one of ordinary skill in the art. “[W]hen a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
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expect from such an arrangement, the combination is obvious.” KSR Int’l
Co., 550 U.S. at 416 (citing Sakraida v. AG Pro, Inc., 425 U.S. 273, 282
(1976)). Nor does Patent Owner assert or demonstrate persuasively that
such a predictable combination would have been “uniquely challenging or
difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418).
Patent Owner argues that the Elston and Wan references do not “meet
the threshold of constituting analogous art” (PO App. Br. 12). A reference is
analogous art to the claimed invention if: (1) the reference is from the same
field of endeavor as the claimed invention (even if it addresses a different
problem); or (2) the reference is reasonably pertinent to the problem faced
by the inventor (even if it is not in the same field of endeavor as the claimed
invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
In order for a reference to be “reasonably pertinent” to the problem, it
must “logically would have commended itself to an inventor’s attention in
considering his problem.” In re Icon Health and Fitness, Inc., 496 F.3d
1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656, 658 (Fed.
Cir. 1992).
The Specification discloses that a prior art system “fails to notify the
subscriber when the rental queue is empty, near-empty, or perhaps contains
less desirable selections than those that the user would otherwise select”
(col. 2, ll. 3-5) and that “if the rental queue runs empty, the user is not made
aware of the fact that no additional [titles] are forthcoming” (col. 2, ll. 6-8).
Hence, the problem facing the inventor is determining if a customer’s
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inventory is “empty” or “near-empty” and notifying the customer of the
status of the account or inventory.
We agree with the Examiner that the Wan and Elston references are
reasonably pertinent to the problem and each would have logically
commended itself to an inventor’s attention in considering the problem of
determining when a customer’s inventory is “empty” or “near-empty” and
notifying the customer of the status of the account or inventory. Elston
discloses notifying customers of a specified event (col. 1, ll. 5-10). Because
Elston explicitly discloses a solution to the problem facing the inventor of
notifying the customer of the status of the customer’s account, we agree with
the Examiner that Elston is “reasonably pertinent” to the problem.
Similarly, Wan discloses detecting when the number of items falls below a
predetermined number (col. 98, ll. 45-49) which directly addresses the
problem facing the inventor – i.e., determining when a customer’s inventory
is “empty” or “near-empty.”
Patent Owner argues that “the Examiner has used an incorrect
standard in evaluating [secondary considerations]” because, according to
Patent Owner, “the Examiner does not . . . contest that the [nexus has been
shown] under a claim construction . . . for purposes of the prior art analysis”
(PO App. Br. 14). We recognize that evidence of secondary considerations
must always be considered en route to the determination of obviousness, but
its existence alone does not control the conclusion of obviousness.
Richardson-Vicks v. Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. (Del.)
1997). The weight given to evidence of secondary considerations is
dependent upon whether there is a nexus between the merits of the claimed
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invention and the evidence offered. Stratoflex, Inc. v. Aeroquip Corp., 713
F.2d 1530, 1539 (Fed. Cir. 1983).
We agree with the Examiner that Patent Owner has not provided a
sufficient showing of a nexus between any specific feature of the claimed
invention and the evidence alleging secondary considerations (see, e.g., Ans.
16). While Patent Owner argues that the Examiner should consider “the
scope of the claims as interpreted by the PTO during these proceedings” (PO
App. Br. 14), Patent Owner does not assert or demonstrate persuasively a
nexus between any specific claim feature and the offered evidence alleging
secondary considerations. Indeed, Patent Owner does not appear to cite any
specific claim feature with respect to secondary considerations at all or
indicate with specificity evidence that such specific claim feature is in any
way related to any alleged secondary consideration (see, e.g., PO App. Br.
14).
Claim 1 recites rules that “include a user configurable option with a
first choice to automatically trigger a modification . . . and a second choice
which does not trigger a modification.” Patent Owner argues that Wan fails
to disclose or suggest a “trigger action” that causes “a later automatic
modification” (PO App. Br. 10) and also disputes the Examiner’s position
that claim 1 “does not actually require performing the modification” (PO
App. Br. 8).
Patent Owner argues that the detection in Wan is not “a type that
would somehow cause the contents of these specific bottles to be somehow
automatically refilled” (PO App. Br. 10). In other words, Patent Owner
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argues that Wan fails to disclose or suggest triggering an automatic
modification.
The Examiner provides a broad but reasonable construction of the
term “trigger” as would have been understood by one of ordinary skill in the
art in light of the Specification to mean “to initiate or precipitate” (Ans. 8),
which Patent Owner does not dispute. We agree with the Examiner that
claim 1, for example, does not recite or require triggering (i.e., initiating or
precipitating) an automatic modification. Rather, claim 1 merely recites an
option “to automatically trigger a modification.” Hence, claim 1 merely
requires that a “trigger” is performed automatically.
Wan discloses, for example, that “when the number of units falls
below a predetermined number, a request is automatically sent to a
medication supplier for a refill of this particular medication” (col. 2, ll. 52-
54). In other words, as the Examiner points out, Wan discloses when a
certain condition occurs (i.e., the number of units falling below a
predetermined number), the condition automatically triggers (i.e., the system
automatically sends a request to a supplier) a modification (i.e., refilling of a
corresponding prescription).
Patent Owner does not demonstrate persuasively a difference between
automatically initiating or precipitating the sending of a request (i.e.,
automatically “triggering”) to perform a modification (i.e., refilling a
prescription) of Wan and the claim feature of automatically triggering (i.e.,
automatically initiating or precipitating) a modification.
Claim 1 recites monitoring a subscriber queue. Patent Owner argues
that the combination of Hastings, Elston, and Wan fails to disclose or
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suggest “the ‘queue’ limitation in the claims” because, according to Patent
Owner, Elston discloses monitoring “a financial account” but “is not looking
at anything remotely like a ‘rental queue’” (PO App. Br. 11). As the
Examiner points out, however, the Examiner rejects claim 1 as unpatentable
over the combination of Hastings, Elston, and Wan rather than over the
Elston reference in isolation. Hence, even if Elston fails to disclose a
subscriber queue (as Patent Owner asserts), Patent Owner does not
demonstrate persuasively that the combination of Hastings, Elston, and Wan
also fails to disclose or suggest a queue. For example, the Examiner finds
that “[t]he Hastings reference . . . very clearly teaches a rental queue,” which
Patent Owner does not refute (RAN 33).
Patent Owner does not provide additional arguments in support of
claims 1, 3, 5, 6, 8-10, and 12. The Examiner did not err in rejecting claims
1, 3, 5, 6, 8-10, and 12 as unpatentable over Hastings, Elston, and Wan.

Claims 13, 15, 17, 19-22, 95-97, and 100

The Examiner rejects claims 13, 15, 17, 19-22, 95-97, and 100 under
35 U.S.C. 103(a) as unpatentable over Hastings, Bhatt, Jacobi, and
Anderson, Hastings II, Czuchry, Konshak, and Elston (RAN 8, 15). Claim
13 recites that a computer “can determine if a composition [of a rental
queue] should be altered through additions . . . and/or ordering of playable
media titles.” Patent Owner argues that Bhatt fails to disclose or suggest
“logic to determine if the inventory . . . needs to be replenished or altered”
(PO App. Br. 16). We disagree with Patent Owner for at least the reasons
set forth by the Examiner (Ans. 17-18).
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As the Examiner explains, Bhatt discloses that “[i]f the low inventory
condition falls below the reorder quantity a determination is made that more
items should be ordered” (Ans. 17, citing Bhatt at col. 11, ll. 40-54). For
example, Bhatt discloses a “trigger action is the computer code to be
executed” when the number of items (i.e., “number_of_widgets_on_ hand”)
is less than a predetermined amount (i.e., “reorder_quantity”), the trigger
action being “to publish the message about low inventory condition” (col.
11, ll. 42-43, 44-45, 47-48). While Patent Owner argues that Bhatt fails to
disclose or suggest determining if an inventory “needs to be replenished or
altered” (PO App. Br. 16), Patent Owner does not demonstrate a meaningful
difference between executing a “trigger action” when the inventory of an
item is less than a predetermined amount (or needs to be replenished) as
disclosed by Bhatt and determining if a composition should be altered
through additions, as recited in claim 13, for example. In both cases, a
determination is made that additions should be made to a composition (i.e.,
items should be added).
In addition, the Examiner’s rejection is based on the combination of
Bhatt and Hastings (and other references). Hastings discloses a customer
providing “movie selection criteria [to] specify particular [desired] movie
titles” (col. 9, ll. 66-67) and the provider “automatically select[ing]
particular titles that satisfy the movie selection criteria” (col. 10, ll. 7-9). In
other words, Hastings discloses a provider making a determination (based on
“movie selection criteria” provided by a customer) if a composition of a
queue (of movie titles) should be altered by addition of movie titles (by
automatically selecting particular titles that satisfy the customer’s movie
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selection criteria). Patent Owner has not demonstrated persuasively a
difference between the disclosure of Hastings and determining if a
composition of a rental queue should be altered through additions of items,
as recited in claim 13, for example.
Hence, even if Patent Owner’s assertion that Bhatt supposedly fails to
disclose or suggest “logic to determine if the inventory . . . needs to be
replenished or altered” (PO App. Br. 16), Patent Owner has not shown that
the combination of Hastings and Bhatt (and other references) also fails to
disclose or suggest this feature. As the Examiner points out and as further
discussed above, the combination of Hastings, Bhatt, and other cited
references of record discloses or suggests this feature.
Claim 13 recites a trigger event that is based on a quantity of playable
media items remaining in the subscriber rental queue. Patent Owner argues
that the combination of Hastings and Bhatt fails to disclose or suggest “a
trigger event for the replenishment control rules based on a quantity of
playable media items remaining in a subscriber rental queue” (PO App.
Br. 16) because, according to Patent Owner, the combination of Hastings
and Bhatt fails to disclose or suggest a trigger event based on a quantity of
media items in “a subscriber rental queue,” as recited in claim 13 (PO App.
Br. 16). Patent Owner also argues that “[t]here is nothing in either reference
[Hastings or Bhatt] which would provide a rationale to extend Bhatt” (PO
App Br. 16). We disagree with Patent Owner for at least the reasons set
forth by the Examiner (Ans. 18-19).
As the Examiner explains and as discussed above, Hastings discloses
modifying a quantity of media items in a rental queue and Bhatt discloses a
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trigger action that is executed when the number of items is less than a
predetermined amount. As the Examiner further explains, the combination
of the known feature of modifying contents of a rental queue of media
(Hastings) and another known feature of modifying a quantity of items when
the quantity of items satisfies a predetermined condition (Bhatt or Hastings)
would merely result in the known and predictable result of modifying a
quantity of items (e.g., in a rental queue of Hastings) based on a
predetermined criteria (e.g., based on selection criteria of Hastings or a
number of items being less than a predetermined amount as in Bhatt). Such
a predictable result would have been obvious to one of ordinary skill in the
art. “The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Patent Owner also argues that “the prior art should not change the
principle of operation of the prior art invention being modified” (PO App.
Br. 17). Patent Owner does not explain sufficiently how the “principle of
operation” of either Hastings or Bhatt would be inappropriately modified
based on the combination of teachings of the references (id.). As previously
discussed, Hastings discloses modifying the contents of a customer’s rental
queue by adding content and Bhatt also discloses modifying a list of items
by adding items when the number of items falls below a predetermined
amount. The combination of teachings of Hastings and Bhatt would result in
supporting, rather than inappropriately changing, the principle of operation
of modifying the contents of a group of items based on predetermined
criteria.
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Patent Owner argues that it would not have been obvious to one of
ordinary skill in the art to have combined the teachings of Hastings with that
of Jacobi (PO App. Br. 17-18) because, according to Patent Owner, the
system of Jacobi is “not a rental subscription based system” (PO App. Br.
18). We disagree with Patent Owner for at least the reasons set forth by the
Examiner (Ans. 20). For example, as the Examiner indicates, Hastings
discloses a known system that “selects particular [media] titles that satisfy” a
subscriber’s selection criteria (col. 10, ll. 7-9). Hence, Hastings discloses
providing “recommended” media titles to a subscriber. Likewise, Jacobi
also discloses a system that generates “personalized recommendations of
items” (col. 2, l. 35) to a subscriber, including various media items (e.g.,
“books, compact discs (‘CDs’), videos” – col. 2, ll. 47-48). The
combination of the known system of recommending media items (such as
movies) to a subscriber based on selection criteria (Hastings) with the known
system of providing recommendations to a user of various media items
(including videos), as disclosed by Jacobi or Hastings, would have resulted
in the predictable result of providing recommended media items to a user.
Such a combination of teachings would have been obvious to one of
ordinary skill in the art. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416
(2007).
Claim 15 recites receiving feedback concerning a performance of the
content provider concerning selection of an additional playable media item.
Patent Owner argues that the combination of Hastings, Bhatt, and Jacobi
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fails to disclose or suggest a “rating concerning a performance of the content
provider in terms of how well it selected an additional playable media item”
(PO App. Br. 18). The Examiner relies on Hastings II for this feature (Ans.
21). In particular, the Examiner finds that Hastings II discloses “apply[ing]
a rating of an . . . item which is then used to train the recommendation
engine for future predictions (additional media items)” (Ans. 21), which
Patent Owner does not dispute. Patent Owner does not demonstrate a
meaningful difference between feedback concerning a performance of a
provider concerning selection of an additional media item, as recited in
claim 15, and feedback (i.e., a rating of a previously suggested media item)
concerning a provider concerning selection of an additional media item (i.e.,
the “feedback” is used to determine selection of an additional media item).
In both cases, feedback from a user “concerns” a provider’s selection of an
additional media item because in both cases, the provider’s selection of
additional media item is based on the feedback received from the user that
“concerns” the provider’s previous selection of media items.
Claim 17 recites a trigger event that is “based on and controlled by a
numerical value . . . for said quantity . . . of playable media remaining in the
subscriber rental queue.” Patent Owner argues that the combination of
Hastings, Bhatt, and Jacobi (and Czuchry) only rely “entirely on an
estimate” and fails to disclose or suggest systems that “know the actual
‘quantity’ at the user’s home” (PO App. Br. 18). We disagree with Patent
Owner for at least the reasons set forth by the Examiner (Ans. 21). Also,
even if Czuchry discloses “an estimate” of a quantity as opposed to an
“actual quantity,” as asserted by Patent Owner, Patent Owner does not
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demonstrate persuasively a difference between an “estimate” of a quantity as
allegedly disclosed by Czuchry and a “numerical value” (of a quantity) as
recited in claim 17. In both cases, a quantity is provided.
Claim 19 recites that the electronic notification provides
recommendations on newly released playable media items for the subscriber.
Patent Owner argues that the combination of Hastings, Bhatt, and Jacobi
(and Konshak) fails to disclose or suggest a system that provides
recommendations on newly released playable media items (PO App. Br. 18-
19) because, according to Patent Owner, Konshak only discloses a system
that “is entirely human driven” (PO App. Br. 19). We disagree with Patent
Owner for at least the reasons set forth by the Examiner (Ans. 21-22).
We also note that while Patent Owner argues that Konshak discloses a
system that is “entirely human driven,” Patent Owner does not demonstrate
sufficiently that claim 19 requires that the system is entirely not human
driven. Even if claim 19 recited that the system is entirely not human
driven, we note that Konshak discloses a system that runs “under Windows
NT” (Konshak at 1, col. 2), which implies a computer system since one of
ordinary skill in the art would have understood a computer system to run
under Windows NT while a human being would not run under Windows NT.
Hence, the system of Konshak, contrary to Patent Owner’s contention, is not
“entirely human driven.”
Claim 21 recites that additional electronic notifications are sent until
the subscriber replenishes the queue. Patent Owner argues that the
combination of Bhatt and Hastings fails to disclose or suggest “sending
notifications until the subscriber takes a particular action” (PO App. Br. 19).
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We disagree with Patent Owner for at least the reasons set forth by the
Examiner (Ans. 22-23). For example, the Examiner finds that Elston
discloses “that additional notifications will continue to be sent as long as the
trigger condition exists” (Ans. 23, citing Elston at col. 3, ll. 9-17). Patent
Owner does not show a meaningful difference between the system of Elston
that sends notifications to a customer repeatedly until the customer is
“available to respond” (see, e.g., col. 3, ll. 9-17) and the disputed claim
feature of sending “additional . . . notifications . . . until the subscriber” takes
action.
Claim 22 recites an item which, when selected, causes a media item to
be moved to a queue. Patent Owner argues that the combination of
Hastings, Bhatt, and Jacobi fails to disclose or suggest an “item to be moved
to a rental queue or similar structure” (PO App. Br. 19). The Examiner finds
that Jacobi discloses or suggests this feature (Ans. 23). We agree with the
Examiner for at least the reasons set forth by the Examiner (Ans. 23-24).
For example, as explained by the Examiner, Jacobi discloses a user “clicking
on a hyperlink” and choosing to “add the media item to the user’s shopping
cart” (id.; see also Jacobi at col. 8, ll. 7-11; col. 16, ll. 7-15). Patent Owner
asserts that the combination of Hastings, Bhatt and Jacobi fails to disclose or
suggest moving an “item to be moved to a rental queue or similar structure”
but does not show sufficiently how an item of Jacobi that is to be moved to a
shopping cart in combination with the rental queue of Hastings differs from
a media item to be moved to a rental queue, as recited in claim 22.
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Patent Owner does not provide additional arguments in support of
claims 20, 95-97, and 100 (PO App. Br. 19). The Examiner did not err in
rejecting claims 13, 15, 17, 19-22, 95-97, and 100.

Claims 23, 25, and 26

The Examiner rejects claims 23, 25, and 26 under 35 U.S.C. 103(a) as
unpatentable over Hastings, Elston, Schwartz, Konshak, and one of Czuchry,
Szabo, or Sherr (RAN 9-11).
Claim 23 recites monitoring a rental queue in accordance to
notification rules and queue replenishment control rules. Patent Owner
argues that Czuchry “does not actually ‘monitor’ anything like a queue, let
alone ‘monitor’ for ‘low inventory’” and that “Szabo . . . like, Czuchry does
not ‘monitor’ anything, let alone ‘low inventory’” (PO App. Br. 20). We
disagree with Patent Owner for at least the reasons set forth by the Examiner
(Ans. 25-26). For example, the Examiner finds that Elston discloses this
feature (Ans. 25). Even if Patent Owner’s contention that Czuchry and
Szabo both fail to disclose or suggest the disputed feature is correct, Patent
Owner does not assert or demonstrate sufficiently that Elston also fails to
disclose or suggest this feature.
Claim 23 recites a rental queue. Patent Owner argues that
“Czuchry/Szabo do not define or provide any ability for the customer to
prioritize the list, or differentiate individual unique titles’ importance as with
a ‘queue’” (PO App. Br. 22) and that “Sherr does not show a ‘proposed
alteration’ of anything related to the user (let alone a rental queue) that is to
be accepted or modified by the user” (PO App. Br. 22). Hence, Patent
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Owner argues that the combination of Hastings, Elston, Schwartz, Konshak,
and one of Czuchry, Szabo, or Sherr fails to disclose a queue. We disagree
with Patent Owner for at least the reasons set forth by the Examiner (Ans.
26-27). For example, as the Examiner points out, Hastings discloses
“transactions related to a media rental queue” (Ans. 27), which Patent
Owner does not appear to dispute. Patent Owner does not demonstrate a
meaningful difference between the media rental queue of Hastings with the
“rental queue,” as recited in claim 23.
Patent Owner argues that Czuchry, Szabo, and Sherr are “not
‘analogous art’” (PO App. Br. 22). As Patent Owner points out and as
described above, a reference is analogous art to the claimed invention if: (1)
the reference is from the same field of endeavor as the claimed invention
(even if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor (even if it is not in the same
field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). In order for a reference to be “reasonably pertinent”
to the problem, it must “logically would have commended itself to an
inventor’s attention in considering his problem.” In re Icon Health and
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay,
966 F.2d 656, 658 (Fed. Cir. 1992).
In the present case, the “problem” facing the inventor includes
maintaining a customer’s account. While Patent Owner argues generally
that none of Czuchry, Szabo, or Sherr is “reasonably pertinent” to the
problem facing the inventor, Patent Owner does not demonstrate
persuasively that the disputed references would not have logically
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commended itself to an inventor’s attention in considering his problem of
maintaining a customer’s account.
For example, a reference disclosing methods for maintaining a
customer’s account
4
would have logically commended itself to an inventor’s
attention in considering the problem of maintaining a customer’s account at
least because such a reference (e.g., any one of Sherr, Szabo, or Czuchry)
explicitly discloses methods of solving the specific problem of maintaining
a customer’s account. Patent Owner argues that it would not have been
obvious to one of ordinary skill in the art to have combined the teachings of
Hastings and Elston with that of Czuchry, Szabo, or Sherr (PO App. Br. 23).
We disagree with Patent Owner for at least the reasons set forth by the
Examiner (Ans. 27-31). For example, the Examiner articulates reasoning
with some rational underpinning to justify the Examiner’s obviousness
conclusion with respect to the combination of Hastings and Czuchry (see,
e.g., Ans. 28-29), Hastings and Szabo (see, e.g., Ans. 29), and Hastings and
Sherr (see, e.g., Ans. 29-30). We disagree with Patent Owner’s contention
that the reasoning and rational underpinning supporting the conclusion of
obviousness as detailed by the Examiner are “specious” or are mere “bare

4
e.g., Sherr discloses maintaining a user’s account in which a user “may
select a digital video signal and purchase a license to view the selected
digital video signal based on an access level selected by the user” (Abstract);
Szabo discloses maintaining a user’s account in which a system “stor[es] one
or more shopping lists, each for a plurality of consumers at the e-commerce
site” and “the purchase history of the items purchased by one or more
consumers” (col. 2, ll. 30-33); and Czuchry discloses maintaining a user’s
account in which a system “includes a database of at least one consumer
profile identifying a consumer and at least one commodity good for usage
tracking and replenishment” (¶ [0005]).
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contentions with no articulated factual rationale” at least because Patent
Owner merely broadly contends that the Examiner’s findings and conclusion
is “specious” or “with no articulated factual rationale,” without pointing out
with specificity the supposed flaws in the Examiner’s reasoning (PO App.
Br. 23).
Claim 25 recites a second electronic notification which confirms any
subscriber action taken in response to a (first) notification. Patent Owner
argues that Elston discloses “a single notification [that] is sent to the
subscriber, not that some action of the subscriber is identified after such
notification and then acted upon further with a second notification” (PO
App. Br. 23-24). We disagree with Patent Owner for at least the reasons set
forth by the Examiner (Ans. 31). For example, as the Examiner points out,
Elston discloses a process that notifies a customer (Fig. 2, block 38), waits
for a trigger event (Fig. 2, block 34), retrieves options and information (Fig.
2, block 36), and notifies a customer again (Fig. 2, block 38, 2
nd
iteration).
Patent Owner does not explain adequately a difference between a second
iteration of notifying a customer as disclosed by Elston and the second
notification as recited in claim 25.
Patent Owner does not provide additional arguments in support of
claims 23, 25, and 26. The Examiner did not err in rejecting claims 23, 25,
and 26 as unpatentable over Hastings, Elston, Schwartz, Konshak, and one
of Czuchry, Szabo, or Sherr.

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Claims 96-98, 101, 112-115, 117-119

The Examiner rejects claim 98 as unpatentable over Hastings, Bhatt,
Jacobi; claims 115 and 117 as unpatentable over Hastings, Elston, and one
of Szabo, Sherr, or Czuchry; claim 119 as unpatentable over Hastings,
Elston, and Szabo; claim 112 a unpatentable over Hastings, Elston, Bhatt,
and one of Czuchry, Szabo, or Sherr; claims 96 and 97 as unpatentable over
Hastings, Bhatt, and Jacobi; claims 113 and 114 as unpatentable over
Hastings, Elston, Linden, and one of Czuchry, Szabo, or Sherr; claim 101 as
unpatentable over Hastings, Bhatt, Jacobi, and Bellman; and claim 118 as
unpatentable over Hastings, Elston, Bellman, and one of Czuchry, Szabo, or
Sherr.
Patent Owner does not provide arguments with respect to these claims
(PO App. Br. 27) and does not show persuasively that the Examiner erred in
rejecting the disputed claims.

Claims 102 and 119

The Examiner rejects claim 102 under 35 U.S.C. § 103(a) as being
unpatentable over Hastings, Bhatt, Jacobi, and Szabo and claim 119 under
35 U.S.C. § 103(a) as being unpatentable over Hastings, Elston, Szabo, and
one of Czuchry or Sherr. Claim 102, which depends from claim 13, recites
sending a notification to the subscriber. Claim 119, which depends from
claim 23, recites a similar feature. Patent Owner argues that Szabo fails to
disclose or suggest a system “for generating subscriber notification; rather, it
is used internally for creating new replenishment lists” (PO App. Br. 27).
The Examiner states that the “teaching of automatically implementing
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notifications [of Szabo] when combined with the teachings of Bhatt or
Elston . . . would render the limitations . . . obvious” (Ans. 35). Hence, the
Examiner rejects claims 102 and 119 over the combination of Szabo and at
least one of Elston or Bhatt (among other references), rather than over Szabo
alone. Even if Patent Owner’s contention is correct that Szabo allegedly
fails to disclose or suggest sending a notification to the subscriber, Patent
Owner does not assert or demonstrate sufficiently that both Elston and Bhatt
also fail to disclose or suggest this feature.
Patent Owner does not provide additional arguments in support of
claims 102 or 119. The Examiner did not err in rejecting claim 102 and
claim 119 as obvious over the combination of Hastings, Bhatt, Jacobi, and
Szabo and the combination of Hastings, Elston, Szabo, and one of Czuchry
or Sherr, respectively.

Claims 99, 103, 105, 116, 120, and 122

The Examiner rejects claims 99, 103, and 105 under 35 U.S.C.
§ 103(a) as being unpatentable over Hastings, Bhatt, Jacobi, and Wan and
claims 116, 120, and 122 under 35 U.S.C. § 103(a) as being unpatentable
over Hastings, Elston, Wan, and one of Czuchry, Szabo, or Sherr. Claims 99
and 116 recite an option that causes the computer to automatically add titles
to the queue. Claims 103 and 120 recite that a rental queue is maintained
automatically for a subscriber. Patent Owner argues that Wan fails to
disclose or suggest “‘automatically’ ‘adding’ anything to the medicine
bottles” (PO App. Br. 27).
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We disagree with Patent Owner for at least the reasons set forth by the
Examiner (Ans. 36). For example, the Examiner finds that the “teaching of
Wan combined with the teachings of Hastings . . . reads on the limitations in
question (id.).” Hence, the Examiner relies on the combination of Wan and
Hastings (among other references) rather than relying on Wan alone. Even
assuming that Wan fails to disclose or suggest automatically adding items to
medicine bottles, as Patent Owner contends, Patent Owner does not show
persuasively that the combination of Hastings and Wan (and other
references) also fails to disclose or suggest the disputed claim feature.
In any event, as the Examiner points out, Wan discloses automatically
performing an action (i.e., “filling of the prescription for the medicine is
performed automatically” – Ans. 36), which Patent Owner does not dispute
and also does not distinguish sufficiently from the claim feature of a
computer automatically performing an action.

Claims 106 and 123

The Examiner rejects claim 106 under 35 U.S.C. § 103(a) as being
unpatentable over Hastings, Bhatt, Jacobi, and Czuchry and claim 123 under
35 U.S.C. § 103(a) as being unpatentable over Hastings, Elston, Czuchry,
and one of Wan, Szabo, or Sherr. Claim 106, for example, recites a
computer at the content provider that supports queue monitoring performed
by a routine operating on a server computing system at a website separate
from the content provider. Claim 123 recites a similar feature. Patent
Owner argues that Czuchry fails to disclose or suggest “anything that meets
the required separate computing system” (PO App. Br. 28). The Examiner
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states that Czuchry discloses separate computing systems (see, e.g., Ans. 36,
citing Czuchry at Fig. 1, “item 24” being separate from “item 12”), thus
rendering the use of separate computing components obvious to one of
ordinary skill in the art as a known practice that provides predictable results
of the use of separate computing components. While Patent Owner argues
broadly that Czuchry allegedly fails to disclose “separate” computing
systems, Patent Owner does not demonstrate sufficiently a difference
between the separate computing components of Czuchry and the “separate”
computing system recited in the disputed claims.
Patent Owner does not provide additional arguments in support of
claims 106 ad 123. The Examiner did not err in rejecting claims 106 and
123 as obvious over the combination of Hastings, Bhatt, Jacobi, and
Czuchry and the combination of Hastings, Elston, Czuchry, and one of Wan,
Szabo, or Sherr, respectively.

Claims 110, 111, 127, and 128

The Examiner rejects claims 110 and 111 under 35 U.S.C. § 103(a) as
being unpatentable over Hastings, Bhatt, Jacobi, and Steele and claims 127
and 128 under 35 U.S.C. § 103(a) as being unpatentable over Hastings,
Elston, Steele, and one of Czuchry, Szabo, or Sherr. Claim 110 recites
reducing the first capacity of the first titles out list so as to increase a second
capacity of a second titles out list. Claim 111 recites a capacity of the queue
can be allocated to another user. Patent Owner argues that Steele “has no
teaching or suggestion concerning capacity for items” (PO App. Br. 29).
However, as the Examiner explains, Steele discloses “air minutes . . . that
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can be given to users by other users” (Ans. 37; see also Steele, col. 1, ll. 54-
55 – “users will be allowed to transfer air time minutes from one account to
another”). Hence, Steele discloses modifying a “capacity” (or a maximum
amount ) of one account so as to perform a corresponding modification to
the capacity (i.e, maximum amount) of another account.
Patent Owner does not explain sufficiently a difference between
reducing/increasing the capacity of one account by increasing/reducing the
capacity of another account, as disclosed by Steele, and the disputed claim
limitation of reducing a first capacity so as to increase a second capacity. In
both cases, the capacity of one account is changed based on corresponding
changes in another account.
Further regarding claim 111, Patent Owner argues that “Steele has no
concept of allocating capacity on a temporary basis” (PO App. Br. 30).
Claim 111 recites that the capacity of a queue can be allocated to another
user on a temporary basis.
Steele discloses, for example, setting up restrictions on telephones
(e.g., col. 1, ll. 38-39) that involve “transfer[ring] air time to another user”
(col. 2, ll. 14-15) by an “Account Manager” “temporarily chang[ing] bin
descriptions” (col. 2, ll. 12-13). Patent Owner appears to assert that changes
made to telephone usage in Steele is permanent (and not temporary) but does
not explain sufficiently how the temporary changes made to cause the
transfer of air time from one user to another user in Steele are actually
permanent changes.
Patent Owner does not provide further arguments in support of claims
110, 111, 127, or 128, or other grounds of rejection raised by the Examiner.
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Claims 36, 38-40, 50-52, 62-64, 74-76, 85-87, 102, 104-106, 119, and 121-
123 – Written Description

The Examiner rejects claims 36, 38-40, 50-52, 62-64, 74-76, 85-87
102, 104-106, 119, and 121-123 under 35 U.S.C. 112, first paragraph as
failing to comply with the written description requirement (RAN 11, citing
Third Party Requester Comments Responsive to Patent Owner Comments
After Action Closing Prosecution Pursuant to 37 C.F.R. § 1.951(b), dated
July 11, 2012, at 45-46 (“3PR Resp. to ACP”)).
Claim 36 recites that notification rules are “implemented
automatically for the subscriber as part of a service offered by said content
provider.” Claims 102 and 119 recite a similar feature. Patent Owner argues
that the Specification discloses this feature (PO App. Br. 24-25, citing Spec.
Fig. 2). The Specification discloses a user instructing the system to review
the rental queue when the “Queue is completely empty” and potentially
selecting an option such that the system will provide a service to
“automatically notify [the subscriber] when [the subscriber’s] rental queue is
empty” (Fig. 2). In other words, the Specification discloses that the
implementation of the notification rules (e.g., to inform the subscriber of the
status of the rental queue) is performed automatically (i.e., the subscriber is
“automatically” notified).
The Examiner erred in rejecting claims 36, 102, and 119 as failing the
written description requirement.
Claim 38 recites that the subscriber does not need to be connected to
the provider over the network during step (b) (i.e., during monitoring of the
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rental queue in accordance with the set of notification rules and queue
replenishment control rules). Claims 50, 62, 74, 85, 104, and 121 recite
similar features. Patent Owner argues that the Specification provides this
disclosure (PO App. Br. 25, citing Spec. col. 3, ll. 17-21; col. 9, ll. 3-26).
The Specification discloses “a recommender system that coordinates with a
queue monitoring system, so that the subscribers . . . can enjoy the benefits
of such system even during periods when they are not actively engaged with
an online rental/purchase system” (col. 3, ll. 17-21) and that “the user is not
required to physically log on to the site” (col. 9, ll. 7-8) while the system
“automatically determines [selections] for the subscriber, and adds the same
to [the queue]” (col. 9, ll. 9-11). Hence, the Specification discloses that a
subscriber need not be connected to the provider during monitoring of the
rental queue, as recited in the disputed claims.
The Examiner erred in rejecting claims 38, 50, 62, 74, 85, 104, and
121 as failing the written description requirement.
Claim 39 recites that the monitoring step is performed by a computing
device in the subscriber’s home. Claims 51, 63, 75, 86, 105, and 122 recite a
similar feature. Patent Owner argues that the Specification provides this
disclosure (PO App. Br. 25-26, citing Spec. at Fig. 7; col. 17, ll. 1-12; col.
25, ll. 32-52). The Specification discloses a “network . . . is preferably the
Internet,” and that a “Client Device . . . is a satellite receiver, a TIVO
receiver, or the like” (col. 17, ll. 1, 10); a “Selection Queue” and “titles Out
Queue” that “may be located physically on a home receiver” that “allows
users to ‘rent’ movies temporarily from a . . . menu, and/or to record the
same on a fixed storage system at the user’s facility” (col. 25, ll. 37-38, 40-
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43). Fig. 7 of the Specification discloses an overview of the system that
includes client devices and service provider server components. Hence, the
Specification discloses a client device that includes a satellite receiver and
that a user may rent and record movies by using a home receiver. Patent
Owner has not demonstrated sufficiently that the Specification also discloses
that the claimed monitoring step is performed by a device in the subscriber’s
home. For example, while the Specification may disclose a home receiver
that allows user to rent and record movies, the Patent Owner does not
demonstrate that renting and recording movies using the home receiver
constitutes the monitoring step as recited in the disputed claims.
The Examiner did not err in rejecting claims 39, 51, 63, 75, 86, 105,
and 122 as failing the written description requirement.
Claim 40 recites that rental queue monitoring is performed by a
program routing operating under control of the subscriber on a server
computing system at a website separate from the content provider. Claims
52, 64, 76, 87, 106, and 123 recite similar features. Patent Owner argues
that the Specification provides this disclosure (PO App. Br. 26, citing Spec.
col. 9, ll. 21-27). The Specification discloses a “Threshold Option #4” that
“is useful as an additional check for the subscriber to make sure that any
interesting selections have been considered.” The Specification also
discloses “third party monitoring services” in which “a nominal fee could be
associated with” checking a queue (col. 9, ll. 21-27). Hence, the
Specification discloses a process in which a third party monitoring service
may be used to check for “interesting selections” of media. Patent Owner
does not demonstrate sufficiently that the Specification also discloses the
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location of the “third party monitoring service” (e.g., whether the “third
party monitoring service” is “separate from the content provider”), or
whether third party monitoring service in checking for “interesting
selections” of media performs the “monitoring” as recited in claim 40, for
example.
The Examiner did not err in rejecting claims 40, 52, 64, 76, 87, 106,
and 123 as failing the written description requirement.

Claims 41, 53, 65, 77, 88, 107, and 124 – 35 U.S.C. § 112, second
paragraph

The Examiner rejects claims 41, 53, 65, 77, 88, 107, and 124 under 35
U.S.C. § 112, second paragraph as being indefinite (RAN 12, 59).
Claims 41, 53, 88, and 124 recite a specific action taking place
“during step (f).” Claim 41 depends from claim 4, claim 53 depends from
claim 11, claim 88 depends from claim 24, and claim 124 depends from
claim 23. None of claims 4, 11, 23, or 24 recite “step (f).” Claims 41, 53,
88, and 124 are indefinite because one of ordinary skill in the art would not
know when the recited action would be performed.
The Examiner did not err in rejecting claims 41, 53, 88, and 124 under
35 U.S.C. § 112, second paragraph.
Claims 65, 77, and 107 recite that playable media items can be
automatically added and removed from a queue during step (f). The
Examiner finds that it is unclear “how ‘item can be automatically both added
to and removed . . . during step (f)” when “step (f) . . . provides that such
adding takes place in response to subscriber input” (Ans. 34). We disagree
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with the Examiner. One of ordinary skill in the art would have understood
that an action taken “during” another action is performed at the same time as
the other action. Here, the action of automatically adding and removing
media items from a queue would be performed at the same time as adding
media title recommendations to the queue (i.e., “step (f)”).
The Examiner also states that claims 65, 77, and 107 recite that a step
“can be” performed and that such a recitation is “by definition . . .
ambiguous” (Ans. 35). We disagree. One of ordinary skill in the art would
have understood that claims 65, 77, and 107 require the capability of
performing the recited step. The Examiner erred in rejecting claims 65, 77,
and 107 as indefinite.
CONCLUSION
The Examiner did not err in rejecting claims 13, 15, 17, 19-22 under
35 U.S.C. 103(a) as unpatentable over Hastings, Bhatt, Jacobi, and
Anderson, Hastings II, Czuchry, Konshak, and Elston; claims 95-97 and 100
under 35 U.S.C. 103(a) as unpatentable over Hastings, Bhatt, Jacobi, and
Elston; claims 23, 25, and 26 under 35 U.S.C. 103(a) as unpatentable over
Hastings, Elston, Schwartz, Konshak, and one of Czuchry, Szabo, or Sherr;
claim 102 under 35 U.S.C. § 103(a) as being unpatentable over Hastings,
Bhatt, Jacobi, and Szabo; claim 119 under 35 U.S.C. § 103(a) as being
unpatentable over Hastings, Elston, Szabo, and one of Czuchry or Sherr;
claims 99, 103, and 105 under 35 U.S.C. § 103(a) as being unpatentable over
Hastings, Bhatt, Jacobi, and Wan; claims 116, 120, and 122 under 35 U.S.C.
§ 103(a) as being unpatentable over Hastings, Elston, Wan, and one of
Czuchry, Szabo, or Sherr; claim 106 under 35 U.S.C. § 103(a) as being
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unpatentable over Hastings, Bhatt, Jacobi, and Czuchry; claim 123 under 35
U.S.C. § 103(a) as being unpatentable over Hastings, Elston, Czuchry, and
one of Wan, Szabo, or Sherr; claims 110 and 111 under 35 U.S.C. § 103(a)
as being unpatentable over Hastings, Bhatt, Jacobi, and Steele; claims 127
and 128 under 35 U.S.C. § 103(a) as being unpatentable over Hastings,
Elston, Steele, and one of Czuchry, Szabo, or Sherr; claim 98 under 35
U.S.C. § 103(a) as unpatentable over Hastings, Bhatt, and Jacobi; claims 115
and 117 under 35 U.S.C. § 103(a) as unpatentable over Hastings, Elston, and
one of Szabo, Sherr, or Czuchry; claim 119 under 35 U.S.C. § 103(a) as
unpatentable over Hastings, Elston, and Szabo; claim 112 under 35 U.S.C. §
103(a) as unpatentable over Hastings, Elston, Bhatt, and one of Czuchry,
Szabo, or Sherr; claims 96 and 97 under 35 U.S.C. § 103(a) as unpatentable
over Hastings, Bhatt, and Jacobi; claims 113 and 114 under 35 U.S.C. §
103(a) as unpatentable over Hastings, Elston, Linden, and one of Czuchry,
Szabo, or Sherr; claim 101 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Bhatt, Jacobi, and Bellman; claim 118 under 35 U.S.C. § 103(a) as
unpatentable over Hastings, Elston, Bellman, and one of Czuchry, Szabo, or
Sherr; claims 39, 40, 51, 52, 63, 64, 75, 76, 86, 87, 105, 106, 122, and 123
under 35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement; and claims 41, 53, 88, and 124 under 35 U.S.C.
§ 112, second paragraph as being indefinite.
The Examiner erred in rejecting claims 36, 38, 50, 62, 74, 85, 102,
104, 119, and 121 under 35 U.S.C. § 112, first paragraph as failing to
comply with the written description requirement and claims 65, 77, and 107
under 35 U.S.C. § 112, second paragraph as being indefinite.
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DECISION
We affirm the following Examiner’s rejections:
1) claims 13, 15, 17, 19-22 under 35 U.S.C. 103(a) as
unpatentable over Hastings, Bhatt, Jacobi, and Anderson, Hastings II,
Czuchry, Konshak, and Elston;
2) claims 95-97 and 100 under 35 U.S.C. 103(a) as unpatentable
over Hastings, Bhatt, Jacobi, and Elston;
3) claims 23, 25, and 26 under 35 U.S.C. 103(a) as unpatentable
over Hastings, Elston, Schwartz, Konshak, and one of Czuchry, Szabo, or
Sherr;
4) claim 102 under 35 U.S.C. § 103(a) as being unpatentable over
Hastings, Bhatt, Jacobi, and Szabo;
5) claim 119 under 35 U.S.C. § 103(a) as being unpatentable over
Hastings, Elston, Szabo, and one of Czuchry or Sherr;
6) claims 99, 103, and 105 under 35 U.S.C. § 103(a) as being
unpatentable over Hastings, Bhatt, Jacobi, and Wan;
7) claims 116, 120, and 122 under 35 U.S.C. § 103(a) as being
unpatentable over Hastings, Elston, Wan, and one of Czuchry, Szabo, or
Sherr;
8) claim 106 under 35 U.S.C. § 103(a) as being unpatentable over
Hastings, Bhatt, Jacobi, and Czuchry;
9) claim 123 under 35 U.S.C. § 103(a) as being unpatentable over
Hastings, Elston, Czuchry, and one of Wan, Szabo, or Sherr;
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10) claims 110 and 111 under 35 U.S.C. § 103(a) as being
unpatentable over Hastings, Bhatt, Jacobi, and Steele;
11) claims 127 and 128 under 35 U.S.C. § 103(a) as being
unpatentable over Hastings, Elston, Steele, and one of Czuchry, Szabo, or
Sherr;
12) claim 98 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Bhatt, and Jacobi;
13) claims 115 and 117 under 35 U.S.C. § 103(a) as unpatentable
over Hastings, Elston, and one of Szabo, Sherr, or Czuchry;
14) claim 119 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Elston, and Szabo;
15) claim 112 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Elston, Bhatt, and one of Czuchry, Szabo, or Sherr;
16) claims 96 and 97 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Bhatt, and Jacobi;
17) claims 113 and 114 under 35 U.S.C. § 103(a) as unpatentable
over Hastings, Elston, Linden, and one of Czuchry, Szabo, or Sherr;
18) claim 101 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Bhatt, Jacobi, and Bellman;
19) claim 118 under 35 U.S.C. § 103(a) as unpatentable over
Hastings, Elston, Bellman, and one of Czuchry, Szabo, or Sherr;
20) claims 39, 40, 51, 52, 63, 64, 75, 76, 86, 87, 105, 106, 122, and
123 under 35 U.S.C. § 112, first paragraph as failing to comply with the
written description requirement; and
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21) claims 41, 53, 88, and 124 under 35 U.S.C. § 112, second
paragraph as being indefinite.

We reverse the following Examiner’s rejections:
1) claims 36, 38, 50, 62, 74, 85, 102, 104, 119, and 121 under 35
U.S.C. § 112, first paragraph as failing to comply with the written
description requirement, and
2) claims 65, 77, and 107 under 35 U.S.C. § 112, second
paragraph as being indefinite.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

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PATENT OWNER:

Law Office of J. Nicholas Gross, Prof. Corp.
PO Box 9489
Berkeley, CA 94709