Ex Parte Gates et alDownload PDFPatent Trial and Appeal BoardMay 12, 201611685098 (P.T.A.B. May. 12, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/685,098 03/12/2007 77970 7590 Polsinelli -- Apple Inc. c/o Polsinelli PC 1000 Louisiana Street Fifty-Third Floor Houston, TX 77002 05/16/2016 FIRST NAMED INVENTOR Patrick Gates 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. 8802.373.CPUSOO_P4136USX1 4029 EXAMINER LEVINE, ADAM L ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 05/16/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): Apple@Polsinelli.com cadocket@Polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRICK GATES, RICHARD WAGNER, DARREN LEW, SAM GHARABALL Y, TRACY PIRNACK, PATRICE GAUTIER, DEBRA AMEERALL Y, HIRO MITSUJI, and ALAN WARD Appeal2013---009230 Application 11/685,098 Technology Center 3600 Before ANTON W. PETTING, KENNETH G. SCHOPPER, and TARA L. HUTCHINGS, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL Appeal2013-009230 Application 11/685,098 STATEMENT OF THE CASE1 Patrick Gates, Richard Wagner, Darren Lew, Sam Gharabally, Tracy Pimack, Patrice Gautier, Debra Ameerally, Hiro Mitsuji, and Alan Ward (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 1-17 and 24--36, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellants invented a form of network-based purchase of sets of digital media assets. Specification para. 2. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A computer-implemented method for upgrading a media asset bundle using at least one computing device, said method comprising: [ 1] receiving, at the at least one computing device, a request from a user to view information pertaining to a media asset bundle available from an on-line media store; [2] determining, 1 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed April 1, 2013) and Reply Brief ("Reply Br.," filed July 12, 2013), and the Examiner's Answer ("Ans.," mailed May 14, 2013), and Final Action ("Final Act.," mailed May 24, 2012). 2 Appeal2013-009230 Application 11/685,098 and at the at least one computing device, an upgrade cost associated with the upgrade of the media asset bundle; [3] providing responsive information for the user to view, the responsive information pertaining to the media asset bundle, and the responsive information including at least descriptive information for the media asset bundle and the upgrade cost. The Examiner relies upon the following prior art: Robbin US 2004/0268451 Al Gould US 7,173,177 Bl Dec. 30, 2004 Feb. 6,2007 Claims 1-9, 11-17, 24--29, and 31-36 stand rejected under 35 U.S.C. § 102( e) as anticipated by Gould. Claims 10 and 30 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gould and Robbin. Claims 1-17 stand rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. ISSUES The issues of anticipation and obviousness tum primarily on the breadth of the claim scope and the patentable weight accorded data labels. 3 Appeal2013-009230 Application 11/685,098 FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Gould 01. Gould is directed to management of inventory. Gould 1: 12. 02. Gould describes maintaining an inventory of goods or services in an organization which is customized to the user's individual needs. The organized items include both those items owned by the user and those which need to be purchased, and the user is provided with an indication of which items fall into which category, allowing the user to easily determine which items remain to be purchased. Purchase can be made directly by selecting the needed item without requiring the user to compile a list of items and without visiting different vendors to purchase all needed items. Gould 2:54---65. 03. Gould describes selecting an item having a status icon indicating that it needs to be purchased causing a window to be displayed which includes a description of the item along with information such as price, availability. Gould 3:9-14. 04. Gould describes a user selecting a list, and a selection of items contained in that list being displayed. When a particular list is selected, the name of the list appears at the top of the second window region as a list heading. Gould 5:35--47. 4 Appeal2013-009230 Application 11/685,098 05. Gould describes making a product available under license for a particular time. Gould 8: 2-9. 06. Gould describes the activity of purchasing each item being done directly from the user interface each time an item is used up. The purchases can be tallied in an account which can be checked at any time to determine the amount charged. Gould 8: 12-16. 07. Gould describes purchasing music tracks on a play list that can be delivered as a compact disk. Gould 3 :21--40. 08. Gould describes storing the product listings as a set of hierarchical category checklists. Gould 8:28-50. ANALYSIS Claims 1-9, 11-17, 24-29, and 31-36 rejected under 35 U.S.C. § 102(e) as anticipated by Gould Claim 1 recites three steps, viz., receiving X, determining a cost of Y and providing descriptive information Z, where X is labeled as a request from a user to view information pertaining to a media asset bundle available from an on-line media store, Y is labeled as upgrade cost associated with the upgrade of the media asset bundle, and Z is labeled as responsive information pertaining to the media asset bundle, and the responsive information including at least descriptive information for the media asset bundle and the upgrade cost. Thus the claim is really to receiving one datum, determining some cost and then displaying descriptive data. Nothing in the claim requires or enforces the labels the claim suggests the data be perceived as. Mental perceptions of what data represents are non-functional 5 Appeal2013-009230 Application 11/685,098 and given no weight. King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) ("[T]he relevant question is whether 'there exists any new and unobvious functional relationship between the printed matter and the substrate."') (citations omitted); see also In re Lowry, 32F.3d1579, 1583 (Fed. Cir.1994) (describing printed matter as "useful and intelligible only to the human mind") (quoting In re Bernhart, 417 F .2d 1395, 1399 (CCPA 1969)). Data labels are just examples of such mental perceptions. The Examiner finds that Gould describes receiving, at a computing device, a request from a user to view information pertaining to a product available from an on-line store; determining, at the computing device, a replenishment cost associated with the replenishment of the products; and providing responsive information for the user to view, the responsive information pertaining to the products, and the responsive information including at least descriptive information for the products and the replenishment cost. Ans. 4--8. This is not under contention, and indeed we find Gould does describe these facts. FF 01---06. We are not persuaded by Appellants' argument that Gould fails to describe a bundle of plural assets for selection in limitation [ 1]. App. Br. 5- 6. First, as we found supra, limitation [ 1] is a step of receiving a request, not of viewing information for a bundle. The recitation of viewing a bundle is an aspirational label for the request and cannot distinguish the claim over the art. Second, even if we were to grant patentable weight to the limitation of a bundle, the claim neither recites nor narrows how such a view is implemented. As the Examiner finds (Ans. 5), as Gould provides plural products for selection, those products are a form of bundle. 6 Appeal2013-009230 Application 11/685,098 We are not persuaded by Appellants' argument that Gould fails to describe an upgrade cost for a bundle of plural assets in limitation [2]. App. Br. 6-8. First, as we found supra, limitation [2] is a step of determining a cost. The limitation does not recite what the cost is of, only that the cost is in some sense associated with something referred to as a bundle. The limitation refers to the cost as an upgrade cost, but does not recite what that means. The Specification provides no lexicographic definition. The claim does not perform any step involving an upgrade. The recitation of the upgrade and bundle is an aspirational label for the object of the cost and cannot distinguish the claim over the art. Second, even if we were to grant patentable weight to the limitations of upgrade and a bundle, the claim neither recites nor narrows how such a determination is implemented. No algorithm for determining the cost is recited and nothing further defines what the scope of such an upgrade and bundle is. As the Examiner finds (Ans. 5-8), Gould provides individual and total costs for replenishing plural product. We are not persuaded by Appellants' argument that Gould fails to describe a description of a bundle in limitation [3] (App. Br. 8) for the same reasons we find supra. As to claim 3, reciting "an expiration date for the availability of the upgrade of the media asset bundle," we are not persuaded by Appellants' argument that Gould's time period license is not an expiration date for an upgrade. As we find supra, because the price is never actually used, its characterizations are non-functional aspirational uses that cannot distinguish the claims over the art. Further, a limited license is an expiration date for the 7 Appeal2013-009230 Application 11/685,098 availability of the upgrade to be used. Claim 3 does not specify what the availability pertains to. As to claim 4, reciting "determining whether the media asset bundle is eligible for upgrade," Appellants refer to their arguments in support of claim 1. App. Br. 9-10. As to claim 5, reciting that the eligibility and cost are determined based on the user, we are not persuaded by Appellants' argument that Gould does not describe this. App. Br. 11-12. As we find supra, because the price is never actually used and nothing is actually purchased, eligibility and cost characterizations are non-functional aspirational uses that cannot distinguish the claims over the art. Further, as the Examiner finds, eligibility depends on when a user makes a purchase and cost depends on what is selected for purchase. Ans. 15-16. Both are determined based on the user's actions and therefore based on the user. Appellants also argue that the Specification provides additional detail. Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). As to claim 6, reciting that the media asset bundle is an album including a plurality of audio tracks, we are not persuaded by Appellants' argument that Gould does not describe this. App. Br. 12-13. Gould describes purchasing music tracks on a playlist that can be delivered as a compact 8 Appeal2013-009230 Application 11/685,098 disk. FF 07. Appellants do not explain why this is not within the scope of claim 6. As to claim 9, reciting that determining of the upgrade cost is dependent on those individual media assets of the media asset bundle that the user previously purchased, we are not persuaded by Appellants' argument that Gould does not describe this. App. Br. 14--15. Appellants essentially repeat the argument that Gould does not describe a bundle. Further, as the Examiner is treating Gould's replenishment as being within the scope of an upgrade, replenishment, and therefore its cost, by its very nature depends on previous purchase levels. As to claim 12, reciting that purchase history is stored in multiple data structures in a hierarchical manner, whereby completeness and frequency of update for the purchase history differ within the hierarchy, we are not persuaded by Appellants' argument that Gould does not describe this. App. Br. 16-17. As the Examiner finds, Gould describes storing the product listings as a set of hierarchical category checklists. Ans. 18; FF 08. The whereby clause is met as a natural outcome of purchasing different product at different times. As to claim 13, reciting "processing purchase of an individual media asset of the media asset bundle; and updating the upgrade cost in view of the purchase of the individual media asset," we are not persuaded by Appellants' argument that Gould does not describe this. App. Br. 17-18. Appellants essentially repeat the argument that Gould does not describe a bundle. App. Br. 18. Appellants also argue that the Specification provides 9 Appeal2013-009230 Application 11/685,098 additional detail. App. Br. 17-18. Again, we do not import the Specification into the claims. The remaining claims are argued on the basis of either claim 1 or their parent claims. Claims 10 and 30 rejected under 35 U.S.C. § 103(a) as unpatentable over Gould and Robbin Appellants do not separately argue these claims. Claims 1-17 rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter Because we find these claims are properly rejected under art, we do not reach this rejection. CONCLUSIONS OF LAW The rejection of claims 1-9, 11-17, 24--29, and 31-36 under 35 U.S.C. § 102( e) as anticipated by Gould is proper. The rejection of claims 10 and 30 under 35 U.S.C. § 103(a) as unpatentable over Gould and Robbin is proper. The rejection of claims 1-17 under 35 U.S.C. § 101 as directed to non- statutory subject matter is not reached. DECISION The rejection of claims 1-17 and 24--36 is affirmed. 10 Appeal2013-009230 Application 11/685,098 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv) (2011). AFFIRMED 11 Copy with citationCopy as parenthetical citation