Ex Parte Gross

Patent Trial and Appeal Board

Aug 21, 2013

10856220 (P.T.A.B. Aug. 21, 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.
10/856,220 05/28/2004 John N. Gross JNG 2004-12 3247
40280 7590 08/22/2013
STEVEN VOSEN
1563 SOLANO AVENUE #206
BERKELEY, CA 94707
EXAMINER
ROJAS, HAJIME S
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
08/22/2013 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 2011-000935
Application 10/856,220
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John N. Gross (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 1-13 and 21-27. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of rejection under 35
U.S.C. § 103(a).1

THE INVENTION
Claim 12, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of monitoring availability of media titles offered
by a media rental service on behalf of a subscriber using a
computer usable medium executing on a computing system, the
method comprising the steps of:
(a) specifying a set of subscriber selection rules to be
satisfied by a media title with a first software module
implemented within a computer usable medium; wherein said
set of subscriber selection rules include an availability status to
be satisfied by said media title;
[(b)] inspecting media titles offered by the media rental
service to determine if they meet said set of subscriber
availability rules, including said availability status using a
second software module implemented within a computer usable
medium;
wherein step (b) is performed automatically on behalf of the
subscriber, and without requiring the subscriber to manually

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Apr. 19, 2010) and Reply Brief (“Reply Br.,” filed Sep. 9, 2010),
and the Examiner’s Answer (“Answer,” mailed Jul. 9, 2010.)
2 Although the Examiner (Ans. 2) had no comment on the copy of the claims
contained in the Appendix to the Brief, claim 1 of the Appendix lists the
steps as (a), (c), and (c). We presume this was inadvertent and the list should
follow the lettering of the original claim, i.e., (a), (b), and (c).
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inspect an availability status or web pages containing selections
for such media titles;
(c) generating a report to the subscriber identifying a list
of media titles satisfying said set of subscriber selection rules
and said availability status using a third software module
implemented within a computer usable medium.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Payton
Al-Azzawe

US 5,790,935
US 2002/0169656 A1
Aug. 4, 1998
Nov. 14, 2002
Judith Wagner et al., Automated Circulation Systems in Libraries
Serving the Blind and Physically Handicapped: A Reference Guide
for Planning, 2-3, 5, 7-11, 13-51, 53, 54, 56-95, 97-99, 101-61, 163-
69, 171-85, 187-97, 207-23, 225, 227-37, 239-41 (May 15, 1981)
(Wanger.)
The following rejection is before us for review:
1. Claims 1-13 and 21-27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Al-Azzawe, Payton, and Wanger.

ISSUE
Did the Examiner err in rejecting the claims under 35 U.S.C. § 103(a)
as being unpatentable over Al-Azzawe, Payton, and Wanger?

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FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
With respect to sole independent claim 1, the Examiner’s position is
that Al-Azzawe discloses all the claim limitations but for “wherein said set
of subscriber selection rules include an availability status to be satisfied by
said media title and does not explicitly disclose without requiring the
subscriber to manually inspect web pages containing selections for such
media titles” (Ans. 5) for which Payton and Wagner are relied upon. The
Examiner found that “Payton teaches as a subscriber selection rule,
availability status {column:line}{6:31} and Wanger teaches that a subscriber
is not required to inspect web pages containing selections of media titles (pg
66, paragraph 3 and pg 89, paragraph 4 and C-10, 5.3.3, C-11 6.2).” Ans. 5.
The Examiner concluded that it would have been obvious to one of ordinary
skill in the art to modify Al-Azzawe’s selection rules in view of Payton and
Wanger and reach the method as claimed. Ans. 5.
The Appellant disagrees, in part, on the grounds that “Payton does not
teach an "availability status" as argued by the Examiner. ... there is no
subscriber selection rule in Payton that a subscriber can specify which
includes a title availability status as a parameter to select titles” App. Br. 11.
We agree with the Appellant. The difficulty with the Examiner’s
rationale is that, notwithstanding that Payton expressly discloses a menu of
“available” items (see Payton, col. 6, l. 31), the claim calls for something
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else. According to claim 1, the “set of subscriber selection rules include an
availability status to be satisfied by said media title” (emphasis added).
Claim 1 requires (a) selection rules and (b) an availability status included
with the set of subscriber selection rules. The fact that Payton discloses a
menu indicating “available” items does not support the finding that “Payton
teaches as a subscriber selection rule, availability status” (Ans. 5).
For the foregoing reason, we will not sustain the rejection of claim 1,
and the claims that depend therefrom, because a prima facie case of
obviousness has not been made out in the first instance.

NEW GROUND OF REJECTION
Claims 1-13 and 21-27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hastings (US 6,584,450 B1; filed Apr. 28, 2000, granted
Jun. 24, 2003).
Findings of Fact
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Specification states:
The Internet is now being used for a number of
commercial purposes, including purchase and rental of movie
films in different media formats. One such popular website is
maintained by Netflix®, 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.
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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. Spec. 1:18-24.
2. Hastings describes that conventional rental models require a customer to
go to a video rental store to rent movies and that new release movies are
generally due back the next day. (Col. 1, ll. 12-19.)
3. In the Hastings method, “[i]n general, the decision of what items to rent
is separated from the decision of when to rent the items.” (Col. 4, ll. 7-8.)
4. The decision of what items to rent is a matter of “item selection criteria.”
A customer provides one or more item selection criteria to the provider
indicative of the particular items the customer desires to rent from the
provider.
Item selection criteria may specify any type of item attributes
and the invention is not limited to particular item attributes.
Examples of item attributes include, without limitation,
identifier attributes, type attributes and cost attributes. Item
selection criteria may be changed at any time to reflect changes
in items that customers desire to rent from a provider.
Col. 4, ll. 60-64. The items selected are placed into a customer’s order queue
by the provider.
5. Hastings discloses that
As used [in Hastings], the term “items” refers to any
commercial goods that can be rented to customers. Examples
of items include movies, music and games stored on a non-
volatile memory such as a tape, other magnetic medium, optical
medium, read-only memory or the like, and the invention is not
limited to any particular type of item.
(Col. 4, ll. 1-7.)
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6. Via the Hastings method, customers enter into a rental agreement with
the provider to rent items from the provider. (Col. 8, ll. 23-24). Once
customers and the provider have entered into a rental agreement and
customers have made item selection criteria, then items are rented to
customers over delivery channels “in accordance with the terms of the
rental agreement.” (Col. 8, l. 66 – col. 9, l. 3).
7. The Internet can be the delivery channel. (Col. 3, ll. 37-39.)
8. In one embodiment, customers enter into a rental agreement with the
provider to rent items from provider according to “MAX OUT” and/or
“MAX TURNS” approaches.
9. The “MAX OUT” approach allows a customer to simultaneously rent out
a specified number of items. (Col. 4, ll. 35-37.)
10. The MAX OUT limit can be increased to allow additional items to be
immediately mailed to the customer. (Col. 11, ll. 5-9.)
11. The “MAX TURNS” approach allows a customer to exchange up to a
specified number of items during a specified time period. (Col. 4, ll. 37-
40.)
12. The MAX TURNS limit can be overridden to allow more exchanges
during the current cycle. (Col. 10, ll. 55-57.)
13. The “MAX TURNS” approach and the “MAX OUT” approach can be
used together. (Col. 4, ll. 40-42.)
14. This combination of approaches is illustrated in Figure 6 of Hastings,
reproduced below.
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OUT limits to four, “a determination is made whether four or more
movies have been ‘mailed in the current month. If not, then ... additional
movies … are mailed to customer ... to the ‘Max Out’ limit of four.” Col.
10, ll. 47-51.
20. There is no evidence on record of secondary considerations of
nonobviousness for our consideration.
21. Additional findings of fact may appear in the Analysis below.
Analysis
We take claim 1 as representative.
Claim 1 is directed to a method for monitoring availability of media
titles offered by a media rental service. The method comprises the steps of
 specifying a set of subscriber selection rules including an availability
status to be satisfied by said media title;
 inspecting media titles offered by the media rental service to determine if
they satisfy said rules/status; and,
 generating a report to the subscriber identifying a list of satisfying media
titles.
Each of these steps are known per se. Specifying a set of subscriber
selection rules including an availability status to be satisfied by said media
title, inspecting media titles offered by a media rental service to determine if
they meet said rules/status, and generating a report identifying the satisfying
titles were known at the time of the invention. In fact, one of ordinary skill
would expect a subscriber to necessarily perform these actions in the normal
course of practicing the Hastings method. In determining what media titles a

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subscriber wants to watch, a subscriber specifies a set of subscriber selection
rules, including an availability status, to be satisfied by said media title. This
is so because a subscriber will only watch a media title if it is a title a
subscriber wants to watch (according to rules, e.g., subject matter
preference) and if it is available to rent out. In searching through a rental
service’s media titles for a title a subscriber wants to watch and is available
to rent out, a subscriber necessarily inspects media titles offered by a media
rental service to determine if they meet said rules/status. A subscriber
performing these steps necessarily receives a report identifying the satisfying
titles.
We appreciate that the claimed method is not describing a purely
mental or manual process for selecting desired and available media titles.
The claim expressly includes the use of a computer. Each of the three claim
steps discussed above employ a “software module implemented within a
computer usable medium” (claim 1; “first,” “second,” and “third,” modules,
respectively). However, we do not find that the use of such “modules” per se
so that these steps are “performed automatically on behalf of the subscriber”
(claim 1) renders the claimed process obvious over Hastings. It is generally
obvious to automate a known manual procedure. See Leapfrog Enters., Inc.
v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
For the foregoing reasons, we enter a new ground of rejection under §
103(a) over Hastings.

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CONCLUSIONS
The rejection of claims 1-13 and 21-27 under 35 U.S.C. § 103(a) as
being unpatentable over Al-Azzawe, Payton, and Wanger is reversed.
Claims 1-13 and 21-27 are newly rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hastings (US 6,584,450 B1; filed Apr. 28, 2000,
granted Jun. 24, 2003).

DECISION
The decision of the Examiner to reject claims 1-13 and 21-27 is
reversed.
Claims 1-13 and 21-27 are newly rejected.

NEW GROUND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner . . . .

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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

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

REVERSED; 37 C.F.R. § 41.50(b)

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