Ex Parte Ashbrook et alDownload PDFPatent Trial and Appeal BoardDec 28, 201512895122 (P.T.A.B. Dec. 28, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/895, 122 09/30/2010 Jeffrey R. Ashbrook 77755 7590 12/28/2015 DISNEY ENTERPRISES, INC. c/o Ference & Associates LLC 409 Broad Street Pittsburgh, PA 15143 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 10DIS192STUDIO 820.047 7211 EXAMINER DANG,HUNGQ ART UNIT PAPER NUMBER 2484 MAILDATE DELIVERY MODE 12/28/2015 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) u-NITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFREY R. ASHBROOK, KYLE FRESTENBACK, EV AN ACOSTA, BRIAN KWAN, and DAVID JESSEN Appeal2013-009883 Application 12/895, 122 Technology Center 2400 Before JOHN G. NEW, JEFFREY A. STEPHENS, and JAMES W. DEJMEK, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 seek our review under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-20, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 The real party in interest is identified as Disney Enterprises, Inc. (Br. 3.) Appeal2013-009883 Application 12/895, 122 Claimed Subject Matter The invention generally relates to systems and methods for incentivizing content engagement. (Title.) Claim 1, reproduced below, is illustrative: 1. A method for incentivizing content engagement compnsmg: responsive to determining a multi-media disc inserted into an optical drive of a media player is recommended feature enabled, accessing one or more recommended feature preference files; utilizing the one or more recommended feature preference files to select a recommended feature; and displaying a selection option for the recommended feature. Rejections Claims 11-19 stand rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1-3, 8-13, and 18-20 stand rejected under 35 U.S.C. § 102(b) as anticipated by Murakami (US 2007 /0079333 Al, published Apr. 5, 2007). (Final Act. 4---6.) Claims 4--7 and 14--17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Murakami and Miki (US 2009/0172737 Al, published July 2, 2009). (Final Act. 7-9.) ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments (Br. 9-17). We are not persuaded by Appellants' contentions and 2 Appeal2013-009883 Application 12/895, 122 we adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken and in the Answer (see Ans. 11- 18). We highlight and address specific arguments and findings for emphasis as follows. Rejection under 35 US.C. § 101 Appellants argue claims 11-19 are directed to a tangible product because claim 11 recites a computer readable storage medium. (Br. 9-10.) In support, Appellants cite the Board's decision in Ex parte Hu, Appeal No. 2010-000151(BPAI2012), and paragraph 51 of Appellants' Specification, which provides, in part: In the context of this document, a computer readable storage medium may be any tangible medium that can contain or store a program for use by or in connection with an instruction execution system, apparatus, or device. We agree with the Examiner that the claimed computer program product comprising a computer readable storage medium, under the broadest reasonable interpretation consistent with the Specification, encompasses a transitory propagating medium. (See Ans. 11-12.) In particular, we agree with the Examiner's finding that "a propagating medium, e.g. an electro-magnetic wave, can store data in electro-magnetic form and transits through the air to carry the stored data to a destination point" (Ans. 11 ), and that in this way data can be stored at least temporarily in such a medium. See also Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PT AB 2013) (precedential in relevant part) (reviewing extrinsic evidence and concluding "those of ordinary skill in the art would understand the claim term 'machine-readable storage medium' would include signals per se"). 3 Appeal2013-009883 Application 12/895, 122 We note Appellants do not submit a reply to rebut the Examiner's findings. We further agree with the Examiner's observation (Ans. 11-12) that the examples and definitions in paragraph 51 of the Specification are open- ended and non-limiting. Where, as here, the broadest reasonable interpretation of claims 11-19 covers a signal per se, the claims must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (holding a transitory, propagating signal is not a process, machine, manufacture, or composition of matter); U.S. Patent & Trademark Office, Subject Matter Eligibility of Computer-Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). In light of the foregoing, we sustain the rejection of claims 11-19 under 35 U.S.C. § 101. Rejection under 35 USC§ 102 Appellants argue Murakami does not disclose the "responsive" condition recited in claim 1, i.e., responsive to determining a multi-media disc inserted into an optical drive of a media player is recommended feature enabled. (Br. 11-12.) Appellants contend Murakami discloses only that an identifier extracted from a compact disc (CD) may be used to poll a database to determine the CD's title and discover information regarding user preferences (e.g., a preference for purchasing concert tickets for a musician that is associated with the CD title). (Br. 11.) Appellants assert use of the CD identifier and database "is different from a determination that a 'multi- media disc' is 'recommended feature enabled,' i.e., has the appropriate formatting to display a recommended feature, e.g., in the top menu or via a 4 Appeal2013-009883 Application 12/895, 122 popup along with other multi-media disc contents that are not selected as a recommended feature." (Br. 11-12.) The Examiner finds (Ans. 12-13), and we agree, presenting the items recommended to the viewer (e.g., purchase of concert tickets, live DVD) is enabled by the keyword associated with the CD in Murakami, and that in this way the disc is recommended feature enabled, as recited in claim 1. Appellants' proposed definition of recommended feature enabled, including the limitation that a recommended feature is displayed in the top menu or a pop-up along with other multi-media disc contents (see Br. 11-12), imports limitations into the claim that are not recited and not shown to be appropriate limitations of the claim terms based on the Specification. See In re Self, 671 F .2d 1344, 1348 ( CCP A 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Appellants further argue the claimed recommended feature is not additional content for purchase but is rather a feature of the multi-media disc, and that, therefore, Murakami does not disclose utilizing the one or more recommended feature preference files to select a recommended feature; and displaying a selection option for the recommended feature, as recited in claim 1. (Br. 12-14.) Appellants contend Murakami's teachings are "irrelevant to selecting and displaying a 'recommended feature' for promotion among the other multi-media disc contents" (Br. 13). According to Appellants, interpreting "recommended feature" as a generic recommendation renders the term "feature" meaningless, and the Final Action "is silent as to how or why one of ordinary skill in the art would consider additional content generally (e.g., for purchase) to be a "recommended feature" of a "multi-media disc" (Br. 14). 5 Appeal2013-009883 Application 12/895, 122 Contrary to Appellants' argument, claim 1 does not recite a recommended feature of a multi-media disc. (See Ans. 14.) In contrast, dependent claim 5 recites content categories available on the multi-media disc inserted into the optical drive, which shows Appellants could use language specifying content is on the multi-media disc when such a limitation was intended. In addition, the Examiner is not interpreting the term recommended feature to mean a "generic recommendation" because the recommendations disclosed in Murakami relate specifically to the content of the CD and user preferences in Murakami. (See Ans. 14 ("This feature is derived or selected from the keyword 'Mika Nakashima' utilizing at least one preference file as described at least in [0120], wherein the preference file is information of the client preference that is analyzed by the server as shown in Figs. 10-12 and described in at least [0130]-[0l 34] .").) In light of the foregoing, we sustain the rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Murakami. Appellants argue claim 1 as representative of claims 1-3, 8-13, and 18-20 rejected under§ 102 (Br. 10- 11, 14). Thus, we similarly sustain the rejections of claims 2, 3, 8-13, and 18-20. See 37 C.F.R. § 41.37(c)(l)(iv). Rejection under 35 USC§ 103 Claim 4 Appellants argue the combination of Murakami and Miki does not teach or suggest hard coding a mapping of content to content categories locally in media player memory, as recited in dependent claim 4. (Br. 14-- 15.) In particular, Appellants contend the Final Action simply ignores the 6 Appeal2013-009883 Application 12/895, 122 phrase locally in media player memory and provides no explanation for the admission. We do not agree with Appellants' argument regarding the rejection of claim 4. The Examiner refers specifically to Figure 1 of Miki as showing the content categories are mapped locally in a media player memory. (See Final Act. 7.) Figure 1 of Miki shows "Viewing history information storage portion" 15 inside media player 2. Figure 2 of Miki, relied on by the Examiner (see Final Act. 7), shows that viewing history information includes a genre name and a viewing count for each genre, and Appellants do not challenge the Examiner's finding that the viewing history information constitutes the claimed mapping of content to content categories. The Examiner further clarifies these findings in the Answer (see Ans. 15-16 (citing Miki Figs. 1, 2, i-fi-153, 57, 65)), and Appellants submit no reply in rebuttal. Accordingly, we sustain the Examiner's rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Murakami and Miki. Claim 5 Appellants argue Murakami and Miki do not teach or suggest content categories available on the multimedia disc inserted into the optical drive, as recited in dependent claim 5. (Br. 15.) Appellants contend paragraphs 65 through 67 of Miki do not disclose the claimed limitation because "Miki simply does not have anything to do with content categories available on the multi-media disc inserted into the optical drive, as claimed" (Br. 15). The Examiner responds that the multi-media disc in Miki is a hard disc drive (see Miki i1 50), and that the teachings of Miki can be applied to the multi-media disc inserted in an optical drive as taught in Murakami "so 7 Appeal2013-009883 Application 12/895, 122 that the recommended content list can be constructed based on those contents played back from removable disks." (Ans. 17.) The Examiner, therefore, relies on the combined teachings of Murakami and Miki for the disputed limitation. We agree with the findings and reasoning of the Examiner based on the combined teachings of Murakami and Miki, and Appellants do not persuasively rebut them. Accordingly, we sustain the Examiner's rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Murakami and Miki. Claim 7 Appellants argue Murakami and Miki do not teach or suggest content categories across a plurality of titles, as recited in dependent claim 7. (Br. 16.) Appellants contend "Miki simply does not have anything to do with content categories across a plurality of titles (of different multi-media discs), as claimed," and that the alleged mistake of the Examiner "stems from a misunderstanding of what across a plurality of titles means, i.e., a plurality of multimedia disc titles." (Br. 16 (citing claim 7).) Appellants do not explain why a plurality of titles necessarily means titles of different multimedia discs when such language is not recited in claim 7. In addition, claim 7 is rejected based on the combined teachings of Murakami and Miki, and the Examiner finds Murakami teaches multi-media discs inserted into an optical drive (see Final Act. 4). In light of the foregoing, we sustain the Examiner's rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Murakami and Miki. 8 Appeal2013-009883 Application 12/895, 122 Claims 6 and 14--1 7 Appellants present no additional arguments regarding the rejection of dependent claims 6 and 14--17. Thus, we affirm the rejection of these claims for the same reasons as the claims from which they depend, and based on representative claims 4, 5, and 7. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION We affirm the Examiner's decision to reject claims 1-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation