Ex Parte Harper et al

Patent Trial and Appeal Board

Nov 18, 2013

11772931 (P.T.A.B. Nov. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GREGORY W. HARPER and STEVEN SKIBA
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Appeal 2011-010879
Application 11/772,931
Technology Center 3600
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Before ANTON W. FETTING, NINA L. MEDLOCK, and
JAMES A. TARTAL, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010879
Application 11/772,931

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM-IN-PART.1

BACKGROUND
Appellants’ invention relates to systems that allow customers to
preview or sample the content of media products, such as CDs, DVDs,
software, video games, etc., prior to purchase (Spec., para. [0003]).
Claims 1 and 24, reproduced below, are representative of the subject
matter on appeal:
1. A media sampling method, comprising:
storing product content samples and product content
information;
disposing at a location within a retail site a sampling
station, the sampling station being operable to enable a user to
listen to and/or view one or more of the product content
samples, and the sampling station comprising a display device,
a bar code scanner, and a headphone;
communicatively connecting the sampling station to a
server located within the retail site via a network cable, the
sampling station being configured to (a) receive all of its
electrical power via the network cable and (b) use the network
cable to transmit data to and receive data from the server;
displaying on the display device a prompt prompting an
administrator to configure the sampling station upon the

1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
December 22, 2010) and Reply Brief (“Reply Br.,” filed May 13, 2011) and
the Examiner’s Answer (“Ans.,” mailed March 16, 2011).
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sampling station being communicatively connected to the
server via the network cable for the first time;
storing in a point-of-sale (POS) database pricing
information for products being sold at the retail site;
automatically in response to the bar code scanner
scanning a bar code of a product placed by the user adjacent to
the bar code scanner, transmitting information encoded in the
bar code to the server coupled to the POS database;
in response to receiving the information at the server,
using the information to retrieve from the POS database pricing
information for the product;
after retrieving the pricing information, transmitting the
pricing information and product content information related to
the product to the sampling station, wherein, upon receiving the
pricing and product content information, the sampling station
uses the display device to display the pricing and product
content information to the user.

24. A media sampling method, comprising:
storing a plurality of product content samples and
product content information;
operating a point-of-sale (POS) system within a retail
site, the point-of-sale system comprising a POS database
storing real-time product inventory information;
disposing at a location within the retail site a sampling
station, the sampling station being operable to enable a user of
the sampling station to listen to and/or view one or more of the
product content samples and to obtain product content
information for a particular product, and the sampling station
comprising a display device, a bar code scanner, and a
headphone;
in response to the user using the sampling station to
obtain product content information for a particular product,
selecting a set of other products to bring to the attention of the
user; and
for each of the selected other products, displaying on the
display device of the sampling station an identifier identifying
the selected other product,
wherein the selecting step comprises:
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selecting an other product based, at least in part, on
the particular product,
retrieving real-time product inventory information
from the POS system for the selected other product,
using the retrieved real-time product inventory
information to determine whether the selected other
product is included in the inventory of the retail-site, and
if it is determined that the selected other product is
included in the inventory, then including the selected
other product in the set of other products, otherwise not
including the selected other product in the set of other
products.

THE REJECTIONS
The following rejections are before us for review:
Claims 24 and 25 are rejected under 35 U.S.C. § 102(e) as anticipated
by Sitnik (US 6,300,880 B1, iss. Oct. 9, 2001).
Claims 1-23 and 26-31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sitnik in view of Tindal (US 6,978,301 B2, iss. Dec. 20,
2005), and further in view of Makinen (US 6,563,801 B2, iss. May 13,
2003).

ANALYSIS
Anticipation
Independent claim 24
Appellants argue that the Examiner erred in rejecting claim 24 under
35 U.S.C. § 102(e) because Sitnik fails to disclose
in response to the user using the sampling station to obtain
product content information for a particular product . . . using . .
. real-time product inventory information [retrieved from the
POS system] to determine whether the selected other product
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[to bring to the attention of the user] is included in the
inventory of the retail-site,
as recited in claim 24 (App. Br. 9-11 and Reply Br. 2-4).
The Examiner maintains that the rejection is proper and that Sitnik
discloses the argued feature. In this regard, the Examiner maintains that the
“related albums,” described in column 8 of Sitnik, correspond to the claimed
“selected other product[s]” (Ans. 3-4; see also Ans. 17), and points to
column 7, lines 40-43 and column 8, lines 29-36 as disclosing “using . . .
real-time product inventory information to determine whether the selected
other product is included in the inventory of the retail-site” (Ans. 4; see also
Ans. 17). We disagree.
Sitnik discloses a multichannel switched communication system
adapted to distribute information, preferably audio information, to a plurality
of mobile receivers (see Sitnik, col. 3, ll. 38-40 and col. 8, ll. 29-36), and
describes that the system includes a mass store device. The mass store
device stores audio information (e.g., music), and may comprise a jukebox
that houses a plurality of audio CDs (Sitnik, col. 7, ll. 4-11). Sitnik
describes that the mass store device also may include “further data relating
to [an audio selection], such as price, availability, information about the
artist, images, or other audio, video or text information and related albums”
(Sitnik, col. 8, ll. 14-23).
Sitnik describes at column 7, lines 40-43, cited by the Examiner, that
a CD from inventory may be placed in the jukebox. However, as Appellants
point out, Sitnik does not disclose that the “related albums,” i.e., the
“selected other products,” are placed in the jukebox, and even if a related
album were present in the jukebox, that would only indicate that the album
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was in inventory at one time; it provides no information regarding whether
the related album is currently in inventory (App. Br. 10).
The Examiner asserts that “applicant did not claim anywhere that
‘whether the inventory still contains a copy of the related album’”
(Ans. 18). However, claim 24 plainly recites “using real-time product
inventory information to determine whether the selected other product is
included in the inventory of the retail-site” (emphasis added).
Sitnik describes at column 8, lines 29-36 that in order to supply audio
selections to a plurality of mobile receivers simultaneously, the stored
information may be transferred to a buffer memory storage in greater than
real time and delivered in real time to the user over a selected channel. But
that disclosure relates to the rate at which the audio data is transferred, not to
the retrieval or use of “real-time product inventory information,” as the
Examiner asserts.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 24 under 35 U.S.C. § 102(e).
Independent claim 25
We are persuaded that the Examiner erred in rejecting claim 25 under
35 U.S.C. § 102(e) by Appellants’ argument that Sitnik fails to disclose
“retrieving real-time information from the POS system; and using the
retrieved real-time information to select one or more products to include in
said set of other products,” as recited in claim 25 (App. Br. 11-12 and Reply
Br. 4-5).
The Examiner again directs our attention to column 7, lines 38-53 and
column 8, lines 29-36 of Sitnik (Ans. 6 and 18-19). However, we find
nothing in these portions of Sitnik that discloses the argued feature. Indeed,
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the Examiner does not explain how, and we fail to see how, a discussion of
the rate at which audio data is transferred, as set forth at column 8, lines 29-
36, discloses that “related albums,” i.e., selected other products, as described
at column 7, lines 38-53, are selected using real-time information retrieved
from the POS system, as called for in claim 25.
Therefore, we will not sustain the Examiner’s rejection of claim 25
under 35 U.S.C. § 102(e).
Obviousness
Independent claims 1, 9, and 20
Each of claims 1, 9, and 20 is directed to a media sampling method,
and recites that the method comprises, inter alia, “displaying on the display
device [of the sampling station] a prompt prompting an administrator to
configure the sampling station upon the sampling station being
communicatively connected to the server . . . for the first time.” Appellants
argue that the Examiner erred in rejecting claims 1, 9, and 20 under
35 U.S.C. § 103(a) because none of the cited references discloses or suggests
displaying a prompt on the display device of the sampling station, as
required by claims 1, 9, and 20 (App. Br. 13-15 and Reply Br. 6-8).
The Examiner maintains that the rejection is proper and cites
column 10, lines 3-6 of Sitnik, as well as column 1, lines 49-54 and
column 11, lines 16-18 and 49-54 of Tindal, as disclosing the argued feature.
The Examiner reasons that:
in column 10 lines 3-6 Sitnik discloses [a] display stating
“provide information unrelated to the identified objects as either
audio information or through a visual display,” in column 11
lines 35-37 [Tindal] discloses prompting the administrator
stating “prompt the network administrator 110 for the necessary
information,” in column 11 lines 16-18 [Tindal] discloses
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attribute fields for configuration and reconfiguration of network
device and column 1 lines 49-54 [of Tindal] discloses that the
configuration occurs to install new router which construes as
the first time
(Ans. 19).
Appellants argue that the rejection cannot be sustained because
“Tindal discloses displaying the administrator prompt to network
administrator 110 using global GUI 310, not a display device of the network
device [315] in need of configuration. See Tindal at col. 11, lines 16-18 and
35-37 and Fig. 8” (App. Br. 14-15 and Reply Br. 7-8), and further because
“even if Tindal disclosed displaying a prompt at some time during
installation of a new router, the prompt may be displayed during installation
at some time after connection to the server for the first time” (Reply Br. 7).
It is well established that the mere existence of differences between
the prior art and the claim does not establish nonobviousness. See Dann v.
Johnston, 425 U.S. 219, 230 (1976). The relevant question in considering
obviousness is not whether the claimed invention is different from the prior
art, but rather “whether the difference between the prior art and the subject
matter in question is a differen[ce] sufficient to render the claimed subject
matter unobvious to one skilled in the applicable art.” Dann, 425 U.S. at
228 (internal quotations and citations omitted). Indeed, the Supreme Court
made clear in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) that when
considering obviousness, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id. at 418 (2007).
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Here, Appellants argue that Tindal is different in that a global GUI,
rather than a display on the network device to be configured, is used to
display prompts to the network administrator. But Appellants do not
explain, for example, why it would have been non-obvious to display the
prompt on the network device.
The Examiner concluded that it would have been obvious to one of
ordinary skill in the art, at the time of the invention, to modify the method of
Sitnik, in accordance with Tindal, to include displaying, on a display device,
a prompt prompting an administrator to configure the sampling station upon
the sampling station being communicatively connected to the server via the
network cable for the first time “since so doing could be performed readily
and easily by any person of ordinary skill in the art, with neither undue
experimentation, nor risk of unexpected results” (Ans. 12). In our view, the
Examiner’s obviousness determination is amply supported by articulated
reasoning with some rational underpinning.
Therefore, we will sustain the Examiner’s rejection of claims 1, 9, and
20 under 35 U.S.C. § 103(a).
Dependent claims 29 and 30
Claim 29 depends from claim 28, which in turn, depends from
claim 1. Claim 28 recites that “the step of prompting the administrator to
configure the sampling station comprises displaying a user interface screen
to the administrator that enables the administrator to assign a configuration
parameter to the sampling station.” Claim 29 recites that the configuration
parameter is “a location identifier identifying the location of the sampling
station within the retail site.” Claim 30 depends from claim 29 and recites
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that “a label displaying the location identifier is disposed on a mounting
bracket to which the sampling station is mounted.”
Appellants argue that the Examiner erred in rejecting claim 29 under
35 U.S.C. § 103(a) because none of the cited references discloses or suggests
“displaying a user interface screen ‘upon the sampling station being
communicatively connected to the server via the network cable for the
first time,’ wherein the user interface screen enables ‘a location identifier
identifying the location of the sampling station within the retail site’ to be
assigned, as recited by claim 29” (App. Br. 15-16).
The Examiner maintains that the rejection is proper and cites
column 7, lines 45-57 and column 9, lines 26-35 of Tindal as disclosing the
argued feature (Ans. 11 and 17). We agree with Appellants.
Tindal discloses at column 7, lines 45-57 that configuration records
stored in a directory may be searched by device location, and describes at
column 9, lines 26-35 that the pointer portion of a configuration record can
be used to point to a storage location, i.e., a memory location, where device
specific commands for an associated network device are stored. But the
Examiner does not explain how, and we fail to see how, either of the cited
portions of Tindal discloses or suggests a location identifier identifying the
physical location of the sampling station within the retail site, as recited in
claim 29.
Therefore, we will not sustain the Examiner’s rejection of claim 29
under 35 U.S.C. § 103(a). For the same reasons, we also will not sustain the
Examiner’s rejection of claim 30, which depends from claim 29.
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Dependent claims 2-8, 10-19, 21-23, 26-28, and 31
Each of claims 2-8, 10-19, 21-23, 26-28, and 31 depends from one of
claims 1, 9, and 20. Appellants did not present any arguments for the
separate patentability of these dependent claims. Therefore, we will sustain
the Examiner’s rejection of dependent claims 2-8, 10-19, 21-23, 26-28, and
31 under 35 U.S.C. § 103(a) for the same reasons as set forth above with
respect to independent claims 1, 9, and 20.

DECISION
The Examiner’s rejection of claims 24 and 25 under 35 U.S.C.
§ 102(e) is reversed.
The Examiner’s rejection of claims 1-23, 26-28, and 31 under
35 U.S.C. § 103(a) is affirmed.
The Examiner’s rejection of claims 29 and 30 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED-IN-PART

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