Shimpi, Anirudha et al.

Patent Trials and Appeals Board

Mar 11, 2020

11344917 - (D) (P.T.A.B. Mar. 11, 2020)

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.
11/344,917 02/01/2006 Anirudha Shimpi RTM-1009 (12054.8) 6945
95084 7590 03/11/2020
Loza & Loza, LLP
Tyler Barrett, Esq.
305 N. Second Avenue #127
Upland, CA 91786
EXAMINER
NILFOROUSH, MOHAMMAD A
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/11/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@lozaip.com
tyler@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANIRUDHA SHIMPI, MARK NAKADA, and
JON BUTLER

____________

Appeal 2019-000910
Application 11/344,917
Technology Center 3600
____________

Before NORMAN H. BEAMER, ADAM J. PYONIN, and
GARTH D. BAER, Administrative Patent Judges.

BAER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 18–23, 28, and 29, which are all pending claims.
Claims 46–51 have been withdrawn. Claims 1–17, 24–27, and 30–35 have
been cancelled. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

BACKGROUND
A. The Invention
Appellant’s invention is directed to “delivering digital content from a
central location to one or more remote locations,” in which “[a]t the remote
location(s), the digital content may be previewed, viewed, or purchased by
the end user.” Abstract. Independent claim 18 is representative and
reproduced below, with emphasis added to disputed elements:
18. A method for distributing digital content to a user,
comprising:
providing a kiosk for distributing the digital content
to the user;
semi-dynamically receiving at the kiosk the digital
content from an external storage device, wherein semi-
dynamically receiving the digital content includes
receiving at least some of the digital content at scheduled
push times in response to a determination by the external
storage device that the at least some of the digital content
will make efficient use of the kiosk, and subsequently
receiving other of the digital content not received at the
scheduled push times in substantially real-time in

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Mediaport Entertainment, Inc. as the real
party in interest. Appeal Br. 2.
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response to an individual request for the other of the
digital content not received at the scheduled push times;
storing the received digital content in a storage
device of the kiosk;
receiving data consisting of use instructions from a
provider of the digital content, settings selected by an
operator of an intermediary device between the provider
and the kiosk, and a selection by the user;
generating customized digital rights management
information at the kiosk using the received data;
incorporating the customized digital rights
management information with the digital content at the
kiosk; and
distributing the digital content including the
incorporated customized digital rights management
information from the kiosk to the user.
Appeal Br. 18 (Claims Appendix).

B. The Rejections on Appeal2
The Examiner rejects claims 18–23, 28, and 29 under 35 U.S.C.
§ 112, second paragraph, as being indefinite. Final Act. 11.
The Examiner rejects claims 18–22 and 28 under 35 U.S.C. § 103(a)
as unpatentable over Kleiman (US 5,959,945; Sept. 28, 1999), Greenwood
(US 5,568,181; Oct. 22, 1996), and Boyer (US 7,320,140 B1; Jan. 15, 2008).
Final Act. 13.
The Examiner rejects claims 23 and 29 under 35 U.S.C. § 103(a) as
unpatentable over Kleiman, Greenwood, Boyer, and Ginter (US 5,892,900;
Apr. 6, 1999). Final Act. 17.

2 The rejection of claims 18–23, 28, and 29 under 35 U.S.C. § 101 has been
withdrawn in the Answer. See Ans. 3, Final Act. 6–11.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are waived. See 37 C.F.R. § 41.37(c)(1)(iv). We adopt the Examiner’s
findings and conclusions as our own, and add the following primarily for
emphasis.

A. Indefiniteness Rejection of Claims 18–23, 28, and 29
Appellant argues that
the Examiner’s own argument in the Final Office Action that “a video
rental store branch periodically receiving an inventory of videos based
on a determination by its headquarters of which titles would make
the most efficient use of the store’s floor space,” is indeed a showing
that this language is clear to a person of ordinary skill in the art.

Reply Br. 2, citing Final Act. 8 (emphasis Appellant’s). Appellant contends
the claim limitation, when considered in its entirety, “simply recites a step
performed by the kiosk in response to an action by the external storage
device.” Reply Br. 3.
We do not find this argument persuasive. The Examiner finds, and we
agree, that
[t]he term “efficient use” is subjective - what could be considered to
be efficient according to one criterion could be considered inefficient
according to another criterion.

Ans. 4. Appellant’s agreement with the Examiner that “efficient use” could
refer to floor space usage with respect to inventory illustrates the subjective
nature and flexibility of the phrase “efficient use.” The claimed
“determination by the external storage device that the at least some of the
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digital content will make efficient use of the kiosk” might refer to
maximizing cost efficiency or download speed efficiency, or minimizing
memory used by the kiosk, or something else. Appellant points to nothing
in the disclosure that would assist one skilled in the art in understanding the
phrase. See Appeal Br. 8–9, Reply Br. 2–3.
Accordingly, we sustain the Examiner’s indefiniteness rejection of
independent claim 18, and dependent claims 19–23, 28, and 29.

B. Obviousness Rejections of Claim 18–23, 28, and 29
Appellant argues that
Kleiman expressly states that the “OSC [Operations Service Center]
periodically broadcasts to all locations a list of new songs available
for distribution,” while the “Personal Jukebox downloads the list of
new songs,” “determines the users’ demand,” and “then determines
which new titles are convenient to download.”

Reply Br. 4, citing Kleiman 8:62–9:20. Appellant contends that “[s]uch
teachings suggest that the personal jukebox itself determines which content
to download.” Reply Br. 4.
We are not persuaded by this argument. The Examiner finds, and we
agree, that
Kleiman discloses that the central storage location can periodically
transmit songs that are determined to generate the most sales, or “Top
Performers”, and songs that generate another portion of the sales, or
“Average Performers”, to the jukeboxes without any requests from the
jukeboxes, and that this transmission can occur at programmable
periods, such as twice a month.

Ans. 7, citing Kleiman 10:18–40. The Examiner further finds, and we agree,
that “Kleiman also discloses that the central storage location or operation
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service centers can provide content based on demand from the jukeboxes”
(Ans. 7, citing Kleiman 6:41–59, 7:5–25), and thus
Kleiman discloses receiving at least some of the digital content at
scheduled push times in response to a determination by the external
storage device that the at least some of the digital content will make
efficient use of the kiosk.

Ans. 7. Appellant does not address the Examiner’s detailed findings.
Appellant further argues that Greenwood
explicitly discloses that both the scheduled playback and the
immediate playback options are both in response to a request from the
station 17. As a result, Greenwood et al. fails to disclose, teach, or
suggest two different mechanisms for the digital content the scheduled
push times and the digital content of the substantially real-time
transfers.

Reply Br. 4.
We are not persuaded by this argument. The Examiner finds, and we
agree, with regard to the claimed “semi-dynamic[]” digital content receipt
that is “not received at the scheduled push times,”
Greenwood discloses content can be requested for either immediate
playback or scheduled for future playback. If the content is requested
for immediate playback, a preface of the content is immediately
transferred while the rest of the content is transferred during playback
of the preface, and if the content is requested for future playback, it is
downloaded to the local cache at a convenient time prior to the
requested playback time.

Ans. 7–8, citing Greenwood Fig. 2; 1:34–60, 1:66–2:3; 2:13–17; 3:15–23;
4:9–35, 43–55, 5:29–60, 7:3–40. The Examiner further finds, and we agree,
that under Kleiman’s and Greenwood’s combined teachings, “the limitation
that the content be received in response to a determination by the external
storage device is addressed by Kleiman.” Ans. 8. Appellant attacks the
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references individually. “[O]ne cannot show non-obviousness by attacking
references individually where . . . the rejections are based on combinations
of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). Appellant
also does not address the Examiner’s detailed findings regarding Kleiman’s
and Greenwood’s combination as teaching or suggesting the claim
limitation.
Accordingly, we sustain the obviousness rejection of independent
claim 18, as well as dependent claims 19–22 and 28 not argued separately,
and dependent claims 23 and 29 not argued separately with particularity.
See Appeal Br. 15, Reply Br. 6.
CONCLUSION
In summary:

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)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
18–23,
28, 29
112, ¶ 2 Indefiniteness 18–23,
28, 29

18–22,
28
103(a) Kleiman,
Greenwood, Boyer
18–22,
28

23, 29 103(a) Kleiman,
Greenwood,
Boyer, Ginter
23, 29
Overall
Outcome
18–23,
28, 29