Ex Parte Svendsen

Board of Patent Appeals and Interferences

Feb 7, 2012

11403597 (B.P.A.I. Feb. 7, 2012)

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.
11/403,597 04/13/2006 Hugh Svendsen 1116-003C 9961
71739 7590 02/07/2012
WITHROW & TERRANOVA CT
100 REGENCY FOREST DRIVE , SUITE 160
CARY, NC 27518
EXAMINER
UBER, NATHAN C
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
02/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HUGH SVENDSEN
____________

Appeal 2011-012505
Application 11/403,597
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012505
Application 11/403,597

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-6 and 8-13. We
have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to providing previews, such as song
or video previews, to a portable media player. (Spec., para. [0001]). Claim
1, reproduced below, is further illustrative of the claimed subject matter
(numbered bracketing has been added).
1. A method of operating a central system
communicatively coupled to a user system via a network, the
user system associated with a portable media player,
comprising:
communicating with the user system via a
communication interface connecting the central system to the
network to identify media content of a plurality of media files
forming a user media collection stored at the user system, the
communication interface being one of a wired communication
interface and a wireless communication interface;
storing information identifying the media content of the
plurality of media files in the user media collection;
receiving, via the communication interface, a play history
of the portable media player from the user system associated
with the portable media player;
selecting a plurality of previews for the portable media
player based on the play history of the portable media player
and the information identifying the media content of the
plurality of media files in the user media collection; and
providing, via the communication interface, the plurality
of previews to the user system, wherein the user system
provides the plurality of previews to the portable media player.

Appeal 2011-012505
Application 11/403,597

3
Claim 1-6 and 8-121 stand rejected under 35 U.S.C. § 101 for failing
to recite statutory subject matter; claims 1-6, 8, 12, and 13 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Martin (US Pub. No.
2004/0225519 A1, pub. Nov. 11, 2004) in view of Official Notice; and
claims 9-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Martin in view of Official Notice and Yen (US Pub. No. 2005/0038753 A1,
pub. Nov. 11, 2004).
We AFFIRM-IN-PART.

ISSUES
Did the Examiner err in rejecting claims 1-12 under 35 U.S.C. § 101
for failing to recite statutory subject matter?
Did the Examiner err in asserting that a combination of Martin and
Official Notice renders obvious independent claim 12? The issue turns on
whether Martin discloses both “information identifying the media content of
the plurality of media files in the user media collection” at the user system
and “a play history of the portable media player,” as recited in independent
claim 1.

FINDINGS OF FACT
Martin
FF1. Martin discloses that the word or phrase “‘preference data’” or
“‘preference information’” includes any indication that a user favors or

1 While the Appellant and Examiner reference claims 1-12 as rejected under
35 U.S.C. § 101, claim 7 is cancelled.
2 We choose independent claim 1 as representative, pursuant to our authority
under 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-012505
Application 11/403,597

4
disfavors an individual multimedia work or a class of multimedia works.
For example, preference data could be as simple as a user’s choice to
terminate the performance of a work before it is over. But preference data
could be complex and detailed. Preference information can be derived from
and more abstract than preference data. For example, if a user repeatedly
stops performance of rock music works, the raw data would capture the
individual events, while preference information derived from the raw
preference data could be that the user dislikes rock music (para. [0066]).
FF2. A handheld device 1504, including an Apple IPOD or any of a
wide variety of so-called MP3 players, can store and play audio works
encoded in MP3 format under the control of the user. The device 1504
contains a microprocessor 1514 to execute software 1516 contained in a
RAM 1518 (or in firmware). Information about the works that are playing
or may be played and other information associated with use of the device is
stored in RAM 1518 or on a larger volume storage device 1524 and may be
shown to the user on a display 1526 (paras. [0067], [0068]).
FF3. The interaction with a retailing website can be through a host
and through a computer to a user's local device. The computer can serve as
an intermediary between the host and the local device acting as a proxy for
the local device by storing downloaded works, play sequences, and
preference information and then forwarding them to the local device at a
convenient time and place. Preference data and preference information that
is to be uploaded to the host can also be stored temporarily on the computer.
The host can be configured to interact with the retailing website by
providing preference information for a user to the website automatically or

Appeal 2011-012505
Application 11/403,597

5
as requested or authorized by the user. The host can also serve as an
intermediary on behalf of the user for buying works to be downloaded to the
local devices (para. [0085]).

ANALYSIS
Rejection under 35 U.S.C. § 101
We are persuaded the Examiner erred in rejecting claims 1-6 and 8-12
under 35 U.S.C. § 101 for failing to recite statutory subject matter (App. Br.
6-8). The Examiner references “prior art infrastructure” and “core inventive
concept[s]” that are “not directed to novel or non-obvious… procedures” in
determining that claims 1-6 and 8-12 do not meet the machine-or-
transformation test (Exam’r’s Ans. 14-15). However, the Federal Circuit has
held that Section 101 is “merely a threshold check” and “no more than a
‘coarse eligibility filter’” that “are certainly not substitutes for the
substantive patentability requirements set forth in § 102, § 103, and § 112.”
See Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1326 (Fed. Cir. 2011),
(citing Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859, 869
(Fed. Cir. 2010)). Accordingly, the aforementioned Examiner references are
not entirely germane to a Section 101 analysis.
“In line with the broadly permissive nature of § 101’s subject matter
eligibility principles, judicial case law has created only three categories of
subject matter outside the eligibility bounds of § 101—laws of nature,
physical phenomena, and abstract ideas.” Id. at 1326 (citing Bilski v.
Kappos, 130 S. Ct. 3218, 3225 (2010)). “Although abstract principles are
not eligible for patent protection, an application of an abstract idea may well
be deserving of patent protection.” Id. at 1327 (citing Diamond v. Diehr,
Appeal 2011-012505
Application 11/403,597

6
450 U.S. 175, 187 (1981); Parker v. Flook, 437 U.S. 584, 591 (1978)).
Indeed, “[t]he application of an abstract idea to a ‘new and useful end’ is the
type of invention that the Supreme Court has described as deserving of
patent protection.” Id. at 1327 (citing Gottschalk v. Benson, 409 U.S. 63, 67
(1972)). Specifically, “inventions with specific applications or
improvements to technologies in the marketplace are not likely to be so
abstract that they override the statutory language and framework of the
Patent Act.” Research Corp., 627 F.3d at 869.
Like the invention in Ultramercial, claims 1-6 and 8-12 invoke
computers and applications of computer technology. Even if we are to give
weight to the Examiner’s assertion that “[t]he core of Appellant’s claimed
invention involves procedures for selecting/targeting previews to present to a
user based on information from the user,” claims 1-6 and 8-12 recite a
practical application of this core concept with computer technology (e.g.,
networks, user systems, user media collections, portable media players),
specific method “steps [that] are likely to require intricate and complex
computer programming” for communications between the aforementioned
computer technology structures, and, by the claims own terms, extensive use
of those communications interfaces. See Ultramercial, 657 F.3d at 1328.
And also as in Ultramercial, claims 1-6 and 8-12 do not claim “a
mathematical algorithm, a series of purely mental steps, or any similarly
abstract concept.” See Id. at 1329.
Finally, while we appreciate the Examiner’s attempt to apply extra-
solution activity, that doctrine is more properly applicable to cases where
Appellant is attempting to circumvent the prohibition on patenting abstract
ideas by adding insignificant and unrelated activity. See Bilski v. Kappos,
Appeal 2011-012505
Application 11/403,597

7
130 S. Ct. 3218, 3230 (2010) (citing Diamond v. Diehr, 450 U.S. 175, 191-
92 (1981)) (“Flook stands for the proposition that the prohibition against
patenting abstract ideas ‘cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment’ or adding
‘insignificant postsolution activity’”). Here, however, the storing and
transmitting steps are clearly integral to the selection and delivery of media
previews. For example, without “storing information identifying the media
content of the plurality of media files in the user media collection,” user
preferences could not be determined in order to select media previews.

Obviousness Rejection
We are not persuaded the Examiner erred in asserting that a
combination of Martin and Official Notice renders obvious independent
claim 1 (App. Br. 9-16). Appellant asserts that the preference information of
Martin cannot correspond to both “information identifying the media content
of the plurality of media files” and “a play history of the portable media
player,” as recited in independent claim 1 (App. Br. 10-15). However,
Martin discloses storing audio works and information about the audio works
(FF2), which corresponds to the recited “storing information identifying the
media content of the plurality of media files.” Furthermore, Martin also
discloses preference information (FF1), which corresponds to the recited
“play history of the portable media player.”
Appellant asserts that the preference information is not related to
audio works stored on the user’s system, and thus cannot correspond to the
recited “play history of the portable media player” (App. Br. 11). However,
such an aspect is not set forth in the claims. See CollegeNet, Inc. v.
Appeal 2011-012505
Application 11/403,597

8
ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (while the
specification can be examined for proper context of a claim term, limitations
from the specification will not be imported into the claims).
Appellant further asserts that Martin does not disclose either that
“information identifying the media content of the plurality of media files” is
stored in the user media collection at the user system, or that the play history
is stored on the portable media player, as claimed (App. Br. 11-13).
However, Martin discloses all of “downloaded works, play sequences, and
preference information” being stored on any of a host, a proxy computer,
and a local device (FF3), of which the proxy computer and the local device
correspond to the recited user system and portable media player,
respectively.

DECISION
The decision of the Examiner to reject claims 1-6 and 8-12 under 35
U.S.C. § 101 is REVERSED.
The decision of the Examiner to reject claims 1-6 and 8-13 under 35
U.S.C. § 103(a) is AFFIRMED.
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-IN-PART

hh