Ex Parte 7389243 et alDownload PDFPatent Trial and Appeal BoardMay 23, 201495000469 (P.T.A.B. May. 23, 2014) 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. 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.”). Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 3 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.” Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 4 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. Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 5 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); Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 6 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). Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 7 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 8 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 9 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 10 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 11 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 12 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 13 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). Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 14 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 15 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 16 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. Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 17 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 18 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 19 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). Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 20 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. Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 21 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 22 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 23 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]). Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 24 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. Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 25 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 26 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). Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 27 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 28 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 29 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. Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 30 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 31 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- Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 32 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 33 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 34 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 35 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. Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 36 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; Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 37 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 38 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 Appeal 2014-003307 Reexamination Control 95/000,469 Patent 7,389,243 B2 39 PATENT OWNER: Law Office of J. Nicholas Gross, Prof. Corp. PO Box 9489 Berkeley, CA 94709 Copy with citationCopy as parenthetical citation