Ex Parte Gross

Patent Trial and Appeal Board

Jan 28, 2013

10770937 (P.T.A.B. Jan. 28, 2013)

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.
10/770,937 02/02/2004 John N. Gross JNG 2004-1 1607
52447 7590 01/28/2013
PATENTBEST
1195 Park Avenue
Suite 202A
EMERYVILLE, CA 94608
EXAMINER
ROSEN, NICHOLAS D
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
01/28/2013 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
____________________
Ex parte JOHN N. GROSS
____________________

Appeal 2010-012197
Application 10/770,937
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-36. We affirm.

THE CLAIMED INVENTION
Appellant claims a method of monitoring purchase orders and/or
rental selections made by consumers, and providing automatic selections,
notifications, shipments and exchanges of new items (Spec. 1, ll. 11-13).
Claims 1 and 35 are illustrative of the claimed subject matter:
1. A method of distributing playable media items over an
electronic network from a first computer maintained by a
provider of a media distribution service to a second computer
used by a subscriber of such service, the playable media items
corresponding to machine readable media readable by a
subscriber machine player, the method comprising the steps of:
(a) setting up a subscriber selection queue for the
subscriber to be controlled by the first computer, said
subscriber selection queue consisting of an ordered list of one
or more playable media items to be delivered to the subscriber
in a subscriber-defined priority;
wherein said subscriber selection queue is set up at least
in part in response to item selection directions provided by the
subscriber over the network using the second computer;
(b) setting up queue replenishment control rules for the
subscriber selection queue including an automatic queue refill
option; and
(c) monitoring said subscriber selection queue in
accordance with said queue replenishment control rules to
automatically determine with said first computer if an
additional playable media item should be added to said
subscriber selection queue; and
(d) automatically modifying said subscriber selection
queue with said first computer to generate a new ordered list of
one or more playable media items in response to the subscriber
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confirming that said additional playable media item can be
included in said subscriber selection queue;
wherein steps (c) and (d) are repeated as needed
when said automatic queue refill option is enabled so that
said subscriber selection queue is maintained
automatically for the subscriber so as to include at least
one playable media item which is accepted for delivery
by such subscriber.

35. A method of distributing playable media items comprising
the steps of:
(a) setting up a subscriber selection queue for the
subscriber, said subscriber selection queue consisting of a list of
one or more playable media items to be viewed by the
subscriber;
wherein said subscriber selection queue is set up at least
in part in response to item selection directions provided by the
subscriber;
(b) setting up queue replenishment control rules for the
subscriber selection queue including an automatic queue refill
option; and
(c) automatically monitoring said subscriber selection
queue in accordance with said queue replenishment control
rules to automatically determine with a first computing system
if changes should be made to said subscriber selection queue;
wherein said monitoring includes analyzing the content
and/or characteristics of other playable media items within said
subscriber selection queue to determine said changes; and
(d) automatically modifying said subscriber selection
queue with said first computing system to generate a new list of
one or more playable media items based on a confirmation from
the subscriber;
wherein steps (c) and (d) are repeated as needed when
said automatic queue refill option is enabled so that said
subscriber selection queue is maintained automatically for the
subscriber so as to include at least one playable media item
which is accepted for delivery by such subscriber.

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Application 10/770,937

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Davis
Berstis
Jacobi
Hastings
US 6,105,006
US 6,105,021
US 6,317,722 B1
US 6,584,450 B1
Aug. 15, 2000
Aug. 15, 2000
Nov. 13, 2001
Jun. 24, 2003
Kamel
Nakagawa
Raphel
Postelnik
US 2001/0014145 A1
US 2002/0046129 A1
US 2003/0023743 A1
US 2006/0218054 A1
Aug. 16, 2001
Apr. 18, 2002
Jan. 30, 2003
Sep. 28, 2006

Ostrom, With newer releases, Netflix users can anticipate a 'very
Long Wait', Mercury News (2002) (hereafter “Ostrom”).
Official Notice.

REJECTIONS
The following rejections are before us for review:
The Examiner rejected claims 1-4, 7, 8, 15, 17-19, 22-24, 28-30, 31,
and 35 under 35 U.S.C. § 103(a) over Hastings and Ostrom.
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) over
Hastings, Ostrom, and Raphel.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) over
Hastings, Ostrom and Berstis.
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) over
Hastings, Ostrom and Postelnik.
The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103(a)
over Hastings, Ostrom, Postelnik and Official Notice.
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The Examiner rejected claim 12 under 35 U.S.C. § 103(a) over
Hastings, Ostrom, Postelnik, and Jacobi.
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) over
Hastings, Ostrom, Postelnik, Jacobi, and Davis.
The Examiner rejected claim 14 under 35 U.S.C. § 103(a) over
Hastings, Ostrom, Postelnik, and Nakagawa.
The Examiner rejected claim 16 under 35 U.S.C. § 103(a) over
Hastings, Ostrom, and Kamel.
The Examiner rejected claims 20, 21, 25-27, 32-34, and 36 under 35
U.S.C. § 103(a) over Hastings, Ostrom, and Official Notice.

ISSUES
At issue with respect to claims 1-4, 7, 8, 15, 17-19, 22-24, and 28-31
is whether Hastings discloses an automatic queue refill process.
At issue with respect to claim 35 is whether Hastings or Ostrom
disclose or suggest analyzing the content or characteristics of items within a
subscriber’s selection queue to determine if changes to that queue should
occur.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. Hastings discloses the automatic selection of titles for customers:
Instead of identifying particular movie titles, the movie
selection criteria may specify movie preferences for customer
502, e.g., types of movies, directors, actors, or any other movie
preferences or attributes. In this situation, provider 504
automatically selects particular titles that satisfy the movie
selection criteria. For example, the movie selection criteria may
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6. Hastings discloses an automatic selection of movies for customers using
customer-supplied attributes, stating,
Customers 502 may identify specific movies or music by the
item selection criteria, or may provide various attributes and
allow provider 504 to automatically select particular movies
and music that satisfy the attributes specified. For example,
customers 502 may specify item selection criteria that include
horror movies released in 1999 and let provider 504
automatically select horror movies that were release[d] in 1999.
(Col. 8, ll. 50-57).
7. Hastings discloses customer-defined order priority, stating “[c]ustomers
502 may also specify an order or priority for the specified item selection
criteria.” (Col 8, ll. 60-65).
8. The Specification describes in the Background that:

…where subscribers can search, review and select movie titles
(in DVD media format). If a particular title is available, the
subscriber's choice is then placed into a rental selection
"queue." During an interactive online session, a subscriber can
select a number of titles, and then prioritize them in a desired
order for shipment within the selection queue.

During this same sessions, the system can also make
recommendations for titles to a user using a well-known
recommender algorithm. Such algorithms are commonplace in a
number of Internet commerce environments, including at
Amazon, CDNOW, and Netflix to name a few. While the
details of such algorithms are often proprietary, the latter
typically demographics, prior movie rentals, prior movie
ratings, user navigation statistics, comparison with other users,
etc.
(Specification 1:23-32; 2:1-2).

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9. Postelnik discloses “notification of the change in the integrated order
status is sent via the client system 105 to the customer 102.” (para.
[0074]).
10. Jacobi discloses “recommendations can automatically be generated
periodically and sent to the user by e-mail, in which case the e-mail
listing may contain hyperlinks to the product information pages of the
recommended items.” (Col. 10, ll. 56-60).
11. Davis discloses using a delay before taking an action, stating, “the bank
can wait for receipt of an acknowledgment 1618 comprising a returned
secure financial transaction message that confirms execution of the
financial transaction.” (Col. 23, ll. 16-19).
12. Kamel discloses a system for delivering advertising messages to
individuals (para. [0029]).
13. Hastings discloses a method for renting and delivering items to
customers (col. 1, ll. 49-56).
14. Kamel discloses the replenishment of queues using the concept of
economic order quantity, stating, “the use of EOQ for replenishment
ensures that messages are delivered only to those queues in need of
additional messages ...” (para. [0162]).
15. The Specification describes an embodiment where an inducement is
provided to a customer who has a long-wait item rented to return that
item so that another customer will not become frustrated by waiting for
that out-of-stock item, further stating “from a customer satisfaction
perspective, it is desirable to always have at least one title of interest in
the possession of the customer, and to reduce stock-out of particular
titles for such customer. By identifying potential ‘weak points’ the
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system can preempt and reduce customer defections by preventing
stock-out.” (Spec. 33, ll. 1-5).

ANALYSIS
Claims 1-3, 5-11, 14, 15, 20-27, and 28-34
Appellant argues “Hastings does not teach a separate automatic queue
refill option. When the user’s queue is emptied, as a result of seeing every
movie that meets their criteria, there is nothing in Hastings that is described
as refilling that selection queue automatically for him/her to maintain at least
one title.” (Appeal Br. 15; see also Appeal Br. 11-14, 16, Reply Br. 2-4).
We are not persuaded by Appellant’s argument, because Hastings
discloses automatic selection of titles for customers (FF 1) which places
titles into the customer’s selection queue for mailing. Moreover, Hastings
discloses, in Figure 6, a flowchart for the movie rental process that uses a
repeating loop coming out of steps 612 and 614 back to the delivery of the
next movie at step 608 (FF 2). We do not find any disclosure in Hastings of
an empty subscriber queue (FF 3). Instead, we find Hastings discloses an
advantage of allowing the greatest number of items to be rented (FF 4, 5)
and that the provider can “automatically select particular movies and music
that satisfy the attributes specified” (FF 6). Therefore, we find that Hastings
teaches an automatic queue refill option through the repeating process to
maximize the number of movies automatically selected and rented. Thus,
we affirm the rejection of claim 1 and dependent claims 2, 3, 7, 8, 15, 22-24,
and 28-31 that were not separately argued. In addition, we affirm the
separate rejections of dependent claims 5, 6, 9-11, 14, 20, 21, 25-27, and 32-
34 that were not separately argued (Appeal Br. 18, 19, 20, 21).
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Claim 4
Dependent claim 4 recites, inter alia, “wherein said additional
playable media item is automatically inserted in a subscriber-defined
delivery order position in said new ordered list of one or more playable
media items.”
Appellant argues Ostrom does not meet the claim requirement
because it “is not referring to an additional playable item; it is referring to
rearranging a preexisting item in the subscriber’s queue, or letting the
subscriber add something manually.” (Appeal Br. 17, Reply Br. 6).
We are not persuaded by Appellant’s argument, because Hastings
discloses customer-defined delivery order position for selected items. (FF
7). Therefore, when the automatic queue refill adds movie titles to the
customer’s selection queue, it uses the customer-defined delivery order
position for selected items, thus meeting the claim requirements. Therefore,
Hastings meets the claim requirements and Ostrom is cumulative.
Claims 17-19
Dependent claim 17 recites, inter alia, “wherein said trigger event is
associated with a determination by an item recommendation system that said
additional playable media item should be added to said subscriber selection
queue as a recommended playable media item.”
Appellant argues the “specification makes clear what a
recommendation system is (see page 1, ll. 28+), and there is no such mention
of this type of a system in Hastings.” (Appeal Br. 18).
We are not persuaded by Appellant’s argument. We look to
Appellant’s Specification and find that the Specification describes in the
Background that the Netflix website can “make recommendations for titles
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to a user using a well-known recommender algorithm.” (FF 8). We find
Hastings discloses an automatic selection of movies for customers using
customer-defined attributes (FF 6), thus meeting the claim requirement.
Appellant also argues the “prior art relies solely on a manual
interaction with the system to derive such recommendations.” (Appeal Br.
18).
We are not persuaded by Appellant’s argument because we find
Hastings discloses an automatic selection of movies for customers using
customer-defined attributes (FF 6), thus meeting the claim requirement.
Dependent claim 18 recites, inter alia, “wherein said recommended
playable media item is designated as the next to be delivered from said
subscriber selection queue.”
Appellant argues “neither Ostrom nor Hastings says anything about
bumping a recommended title to the top of the queue, as set out in claim 18.”
(Appeal Br. 18).
However, the Appellant’s arguments fail from the outset because they
are not based on a limitation appearing in the claims and are not
commensurate with the broader scope of the claim, which merely recites that
an item is designated as the next to be delivered, but says nothing of moving
items within a queue. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In
addition, in Hastings an item would become next to be delivered if it
matches the customer-defined attributes that make it a top priority selection
(FF 6), thus meeting the claim requirement.
Appellant further argues that unlike the claimed system, Hastings does
not disclose “suggesting other actors” with its recommender system. (Reply
Br. 6).
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Appellant’s argument fails from the outset because it is not based on
limitations appearing in the claim, and is not commensurate with the broader
scope of claims 17-19 which do not recite “suggesting other actors.” In re
Self, 671 F.2d 1344, 1348 (CCPA 1982).

Claim 12
Dependent claim 12 recites, inter alia,
wherein said notification specifies that said subscriber selection
queue will be automatically modified in accordance with said
queue replenishment control rules and includes an embedded
embedded uniform resource links (URL) or an electronic
response field in said electronic notification so as to allow the
subscriber to review playable media title recommendations
from said recommender system.
Appellant argues Hastings teaches away from using an embedded
URL in a notification of a change in the subscriber selection queue, because
Hastings cannot profit from additional rentals since it charges a fixed rate for
any quantity of rentals. (Appeal Br. 19).
We are not persuaded by Appellant’s argument, because Hastings
does not discourage notifying the consumer of changes in the selection
queue, or providing information about those changes. “A reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(citations and internal quotation marks omitted). We further find Postelnik
discloses informing customers of changes in order status (FF 9), which
corresponds to changing the claimed subscriber selection queue, and Jacobi
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discloses that an e-mail notification can include URL links to convey
additional information about products (FF 10). We find including URL
references corresponding to additional information about titles added to the
selection queue in a notifying e-mail is reasonable and would help provide
information to a subscriber to keep them informed of changes to their queue.
Appellant also argues hindsight in the motivation for combination,
because the stated motivation of “for the obvious advantage of profiting
from selling (or renting) items to the subscriber that the subscriber is likely
to be interested in” (Ans. 12) does not makes sense if there is no additional
financial profit based on a fixed-fee rental system independent of the number
of rentals (Reply Br. 6-7). In response, the Examiner further argues the
“profit” is in the form of “customer satisfaction.” (Ans. 30).
We are not persuaded by Appellant’s argument, because we agree that
notifying a customer of a change in their selection queue, and including a
link to more information about the change, would be something customers
would value, making the subscription more profitable by keeping happy
customers. Therefore, we find the motivation to combine is reasonable and
not drawn from the Appellant’s own disclosure, but instead would be
recognized by one of ordinary skill.
Claim 13
Dependent claim 13 recites, inter alia, “wherein said subscriber
selection queue is automatically modified in accordance with said queue
replenishment control rules after a predefined time delay.”
Appellant argues there is no motivation to combine a teaching of a
delay with the prior art, except in Appellant’s own Specification. (Appeal
Br. 20).
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We disagree, because we find one of ordinary skill in the art would
understand from Davis’ disclosure the motivation to offer a customer an
opportunity to respond to a proposed transaction, such as adding a title to the
selection queue, but postpone implementing the transaction until after a
delay, so that the consumer has an opportunity to override the transaction
(FF 11).
The Appellant also argues, without citation, that the “Examiner
acknowledges that the motivation is taken directly from Applicant’s own
disclosure.” (Reply Br. 7).
First, we find no evidence the Examiner made any such
acknowledgement. (Ans. 12-13, 30-31). The Examiner did, however, recite
a motivation to combine “of giving someone (the subscriber, or an
administrator), time to make any manual modification which seem
indicated.” (Ans. 13). We find this motivation reasonable and not based on
the Applicant’s disclosure, because one of ordinary skill in the art would
recognize from Davis the benefit of a delay to wait for a response in case
one is appropriate before continuing the transaction.
Claim 16
Dependent claim 16 recites, inter alia, “wherein said trigger event is
associated with a quantity of playable media items remaining in said
subscriber selection queue.”
Appellant first argues Kamel is not analogous art. (Appeal Br. 20-21).
We are not persuaded by Appellant’s argument because we find Kamel is
concerned with delivery of messages to individuals (FF 12), and has
common issues and problems in common with the Hastings system of
distributing rentals to individuals (FF 13), each facing common problems
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surrounding queues, such that their combination is reasonable. Moreover,
we find one of ordinary skill in the art would recognize from Hastings’
disclosure of a goal of maximizing the number of rentals (FF 5) that the
number of items in a selection queue cannot become empty, such that a low
queue size would trigger the addition of items to the queue, thus meeting the
claim requirement.
Appellant also argues “however Kamel is not ‘replenishing’ anything
in a queue as the claim calls for. Here the Examiner is confusing the act of
replenishing a queue with increasing its size.” (Reply Br. 8).
We are not persuaded by Appellant’s argument, because Kamel
discloses the use of economic order quantities is specifically for
“replenishment” (FF 14), and thus is to add additional messages to queues
which have depleted them, but based on the EOQ actually need the queue
replenished.
Claim 35
Appellant argues that in Hastings there is “no mention of the system
doing monitoring based on analyzing the content of other selections made by
the subscriber.” (Appeal Br. 16, Reply Br. 5).
The Examiner found it is “obvious for the monitoring to include
analyzing the content and/or characteristics of other playable media items
within the selection queue to determine the changes, so as to accomplish the
disclosed purpose of providing the subscriber with movies according to his
selected criteria, as taught by Hastings.” (Ans. 17). The Examiner also
found that Ostrom’s program to provide recommendations based on
customers’ ratings, and applying the selection of movies in a queue as a
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rating to generate recommendations, can be considered to be analyzing the
content and/or characteristics of other playable media items. (Ans. 27).
We agree with the Examiner and find further support for the
Examiner’s finding of obviousness in Appellant’s Specification where it
explicitly discloses that it is known to use a Netflix program where a
subscriber himself selects a number of titles (other playable items), and
those titles which are not available are sent to the queue (FF 8). Further, that
during this same session the system makes recommendations for titles based
on a recommender algorithm, a characteristic of which is prior movie
rentals. (FF8). We find by inference if the recommendation system is using
prior movie rental to recommend new titles, and some of those titles are in
the queue, then the recommendation engine could be analyzing the content
of other playable media in the queue as required by the claims. See KSR
Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). (In making the
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”)
For these reasons, we affirm the rejection under 35 U.S.C. § 103(a) of
claim 35.
Claim 36
Appellant first argues the Examiner’s use of Official Notice that “it is
well known for salespersons to repeatedly select items or information about
items to be presented to potential customers” (Ans. 21) is inapplicable,
because the claimed system “is not a situation where a salesman is
presenting something to a ‘potential’ customer. In the present claims there is
already a subscriber – not a potential customer – who is receiving content.”
(Appeal Br. 22).
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We disagree with Appellant, because although an individual may be a
subscriber to a service, that subscriber is a potential customer with respect to
the rental of any individual title, which meets the claim requirements.
Appellant additionally argues that the Examiner’s motivation of
“making people more likely to see subscribing as worth the money” (Ans.
22) is hindsight because it is “taken directly from the applicant’s own
disclosure” (Appeal Br. 22, Reply Br. 9). Appellant directs us to page 33 of
the Specification, which discusses “customer satisfaction” and “reduc[ing]
customer defections by preventing stock-outs.” (FF 15).
We are not persuaded by Appellant’s argument, because we do not
think incenting one customer to return a rented item to benefit another
customer who is waiting for that item, to prevent the second customer from
leaving the subscription service out of frustration, as stated in the
Specification (FF 15), is the same thing as repeatedly suggesting items to
rent so customers see the value in their subscriptions (Ans. 22). Therefore,
we do not think the Examiner took the motivation from the Specification,
and do not find hindsight in the combination.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-36 under 35 U.S.C. §
103(a).

DECISION
For the above reasons, the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 1-36 are AFFIRMED.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED

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