Ex Parte Svendsen et alDownload PDFPatent Trial and Appeal BoardDec 31, 201311757263 (P.T.A.B. Dec. 31, 2013) Copy Citation 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. 11/757,263 06/01/2007 Hugh Svendsen CT-REC-003CIP4/US P016CIP 2384 71739 7590 12/31/2013 Concert Technology Corporation 5400 Trinity Road, Suite 303 Raleigh, NC 27607 EXAMINER PULLIAM, CHRISTYANN R ART UNIT PAPER NUMBER 2164 MAIL DATE DELIVERY MODE 12/31/2013 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 HUGH SVENDSEN and WAYMEN J. ASKEY ____________ Appeal 2011-008077 Application 11/757,263 Technology Center 2100 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and CARL W. WHITEHEAD JR., Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008077 Application 11/757,263 2 Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-10, 12-24, and 26-29. The Examiner indicated that claims 11 and 25 would be allowable if rewritten in independent form. (Final Office Action, mailed May 10, 2010, p. 22). We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Appellants’ claimed invention provides a computer-implemented method and system for replaying of media items on a media device. Aspects of the method and system include in response to one of the media items being played, calculating a respective replay score for the media item that affects replay of the corresponding media item; and using the replay score to sort the media items for playing. (Spec. ¶ [006]). Independent claim 1, reproduced below, is representative of the subject matter on appeal: 1. A computer-implemented method for replaying media items on a media device, comprising: in response to one of the media items being played, calculating a respective replay score for the media item that affects replay of the corresponding media item; and using the replay score to sort the media items for playing. REJECTIONS 1. The Examiner rejected claims 1, 2, 12-14, and 29 under 35 U.S.C. § 102(e) as anticipated by Beaupre (US 2006/0195790 A1, Aug. 31, 2006). Appeal 2011-008077 Application 11/757,263 3 2. The Examiner rejected claims 3-10, 15-24, and 26-28 as being unpatentable under 35 U.S.C. § 103(a) based upon the combined teachings and suggestions of Beaupre and Plastina (US 2006/0218187 A1, Sep. 28, 2006). GROUPING OF CLAIMS Based on Appellants’ arguments (App. Br. 7), we decide the appeal of the anticipation rejection of claims 1, 2, 12-14, and 29 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).1 We address the obviousness rejection of claims 4, 7, and 8 separately, infra. Based on Appellants’ arguments (App. Br. 13-15), we decide the appeal of the obviousness rejection of claims 15-22 and 26-28 on the basis of representative claim 15. We address the obviousness rejection of dependent claims 9, 10, 23, and 24 separately, infra. We address the obviousness rejection of dependent claims 3, 5, and 6 separately, infra. ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the Brief. 1 Appellants filed a Notice of Appeal on Aug. 10, 2010. The date of filing the Notice of Appeal determines which set of rules applies to an ex parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1) applies to the appeal. See also MPEP § 1220, Rev. 8, July 2010. Appeal 2011-008077 Application 11/757,263 4 Independent Claim 1 Issue: Under §102, did the Examiner err in finding Beaupre discloses: “in response to one of the media items being played, calculating a respective replay score for the media item that affects replay of the corresponding media item; and using the replay score to sort the media items for playing,” within the meaning of representative independent claim 1? Appellants contend: In short, even if one assumes, arguendo, that the Patent Office’s paraphrasing of the teachings of Beaupre to be correct, it is evident from the above citation that Beaupre nowhere recites calculating anything in response to one of the media items being played as claimed. Rather, Beaupre discloses that the media server generates an order for songs in a playlist in response to a user selecting a smart shuffle button (4805) on a user interface. (App. Br. 8). We disagree with Appellants’ contentions. We observe Beaupre expressly describes “the system will consider various factors such as user ratings and/or other factors such as frequency of play, time the song was last played . . . .” (Beaupre, ¶ [0178] (emphasis added)). Thus, we find the order of the playlist is determined (i.e., calculated), at least in part, responsive to previous song plays, these occurring before the “smart shuffle button 4805” is selected by the user. (Id.). Although Beaupre does not disclose a literal “replay score,” our reviewing court guides that anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S. Int'l Trade Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). “An anticipatory reference . . . need Appeal 2011-008077 Application 11/757,263 5 not duplicate word for word what is in the claims.” Standard Havens Prods. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). This reasoning is applicable here. We agree with the Examiner’s finding that Beaupre discloses “the order of the playlist is based in part on data that the media engine 106 and/or media server 118 has acquired about the user” (Ans. 4 (quoting Beaupre, ¶ [0178]) (internal quotation marks omitted)). Thus, we find the contested “replay score” is inherent in the Beaupre’s description at paragraph [0178], and is particularly described at paragraph [0179]: Once the media engine106 receives this information from the media server 118, a score is generated for each particular media file based on when the media file was last played by the user 102. Step 4905. This “last played score” according to one embodiment is generated on a 1-100 scale with 100 being the most recently played media file from the list of media files being included in the playlist and 1 being the least recently played song and all of the other songs containing a value between 1 and 100 based on their linear relation to most and least recently played songs. . . . Once all the scores are computed and weighted, which computation may occur on user processor 103 as part of media engine 106, or at media server 118, or elsewhere on network 300, the weighted scores are added to each other and compiled to create one “overall score” for each media file in the list of files to be included in the playlist. Once an “overall score” is computed for each of the media files, a formula is run for each individual file to ascertain the proper slot in the playlist for that media file. . . . (Beaupre, ¶ [0179]). Because Beaupre expressly discloses an “order of the playlist” and a “last played score” (Id.), we find Beaupre uses an order of play that involves a sort of the media items for playing using a scoring scheme (i.e., reply score), as described above. Appeal 2011-008077 Application 11/757,263 6 Therefore, on this record, we are not persuaded the Examiner erred. We sustain the § 102 rejection of representative independent claim 1, and grouped claims 2, 12-14, and 29 (not argued separately) which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii) (2004). See also n.1 supra. Dependent claim 4 Claim 4 recites: “The computer-implemented method of claim 3 wherein the no repeat factor is based on a total number of media items in a playlist.” Appellants contend “Plastina does not teach anything, let alone a no repeat factor, is based on a total number of media items in a playlist.” (App. Br. 11). We agree with the Examiner’s findings (Ans. 9-10) regarding Plastina’s teachings and suggestions at paragraph [0036]: “system 21 plays the more highly rated media items more often, which should be more pleasing to the user 23. As the number of media items increases from five, to twenty, to several hundred, the time duration between repetition of a particular highly rated media item increases . . . .” (emphasis added). Accordingly, we sustain the § 103 rejection of claim 4. Dependent claim 7 Claim 7 recites: “The computer-implemented method of claim 6 wherein the respective replay score is calculated based on a plurality of category weights, and wherein the no repeat factor comprises one of the plurality of category weights.” Appeal 2011-008077 Application 11/757,263 7 Appellants contend, “Assuming, arguendo, [Beaupre’s] data to be identical to the claimed category weights, there is no teaching that any such data is in any way related to a no repeat factor.” (App. Br. 12). Given that claim 7 does not define the meaning of “category weights,” on this record, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness regarding the combination of Beaupre and Plastina (principally Beaupre) as articulated on page 11 on the Answer. Accordingly, we sustain the § 103 rejection of claim 7. Dependent claim 8 Claim 8 recites: “The computer-implemented method of claim 7 further comprising calculating the no repeat factor for the media item as a function of a weighted no repeat (WNR) value.” Given that claim 7 (from which claim 8 depends) does not define the meaning of “category weights,” on this record, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness regarding the combination of Beaupre and Plastina (principally Beaupre) as articulated on page 12 on the Answer with respect to claim 8. Accordingly, we sustain the §103 rejection of claim 8. Independent claim 15 Appellants contend, inter alia, even if one assumes, arguendo, that the biased streaming of the media server is identical to the claimed intersperse[ing] the real-time media recommendations with an existing playlist of media items designated by a user, the biased streaming is Appeal 2011-008077 Application 11/757,263 8 performed by the media server. In contrast, claim 15 recites that the interspersing is performed by the peer device, which, as noted above, is assumed to be the device 114 of Beaupre. (App. Br. 14). We find Appellants’ arguments unpersuasive because claim 15 is rejected under § 103, not § 102. Thus, § 103 does not require a precise 1-1 mapping from each claim element to the corresponding feature in the references (as required for anticipation), rather, a claim element can be rendered obvious by a suggestion in the reference(s) and/or the common knowledge known to artisans of ordinary skill. Regarding the contested limitations, we note that claim 15 requires a peer device comprising, inter alia, “a communication interface” and “a control system associated with the communication interface that functions to . . . intersperse the real-time media recommendations with an existing playlist of media items designated by a user” (emphasis added). We conclude the term “peer” is a term that only has meaning when related to another “peer,” thus all the elements in Beaupre’s Figure 1 may be considered “peer” to one another under a broad but reasonable interpretation. The plain language of claim 15 merely requires “a control system associated with the communication interface” that performs the contested “interspersing” functional limitation. We observe that paragraph [0200] of Beaupre describes: If a user chooses to add his or her “friend” as an “influencer”, when the media server 118 streams music via an Internet Radio to the user it will stream songs with a bias toward songs preferred by the “influencer” or when providing recommendations to a user those recommendations will be based on songs rated highly by the “influencer”. In other words the songs streamed or recommended by the media server 118 Appeal 2011-008077 Application 11/757,263 9 will be songs rated highly by the “friend” chosen as an influencer. Appellants’ arguments notwithstanding, on this record, we are not persuaded of error regarding the Examiner’s findings regarding the contested limitations. See Ans. 14 (“[Beaupre’s] paragraph [0200]: “when the media server 118 streams music via an Internet Radio to the user it will stream songs with a bias toward songs preferred by the ‘influencer’”). We sustain the § 103 rejection of representative independent claim 15, and grouped claims 16-22 and 26-28 (not argued separately) which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii) (2004). See also n.1 supra. Dependent claims 9, 10, 23, and 24 We reverse the Examiner’s obviousness rejection of dependent claims 9, 10, 23, and 24, because we agree with Appellants (App. Br. 12-13) that neither Beaupre nor Plastina teaches or fairly suggests the specific formula recited in claims 9 and 23. Claims 10 and 24 depend directly from claims 9 and 23, respectively. Dependent claims 3, 5, and 6 Appellants have not presented separate arguments for claims 3, 5, and 6 which depend directly or indirectly on claim 1. Arguments not made are considered waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004). Because we have sustained the § 102 rejection of claim 1 supra (over Beaupre), we summarily sustain the uncontested § 103 rejection of claims 3, 5, and 6 over the combination of Beaupre and Plastina. Appeal 2011-008077 Application 11/757,263 10 Reply Brief To the extent Appellants advance new arguments in the Reply Brief not in response to a shift in the Examiner’s position in the Answer (see e.g., Reply Br. 2-3 (arguments regarding claims 13 and 14)), we note that “[a]ny bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf. with Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”) (citations and quotation marks omitted). DECISION We affirm the Examiner’s decision rejecting claims 1, 2, 12-14, and 29 under § 102. We affirm the Examiner’s decision rejecting claims 3-8, 15-22, and 26-28 under § 103. We reverse the Examiner’s decision rejecting claims 9, 10, 23, and 24 under § 103. 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. § 41.50(f). AFFIRMED-IN-PART msc Copy with citationCopy as parenthetical citation