APPLE INC.

Patent Trials and Appeals Board

Sep 27, 2021

2020002820 (P.T.A.B. Sep. 27, 2021)

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.
14/869,635 09/29/2015 Thomas Alsina P27174US1
(119-1545US1)
8636
61947 7590 09/27/2021
Apple - Blank Rome
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
EXAMINER
ELJAIEK, ALEXANDER L
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
09/27/2021 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ALSINA, ARVIND S. SHENOY,
DANIEL CARTOON, JEFFREY L. ROBBIN, and MARK LEVY
Appeal 2020-002820
Application 14/869,635
Technology Center 2600
Before JOSEPH L. DIXON, BETH Z. SHAW, and
NORMAN H. BEAMER, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, 5, 7–9, 11, 12, 14–16, 18, 19,
21, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2018). Appellant identifies the real party in interest as Apple Inc.
Appeal Br. 3.
Appeal 2020-002820
Application 14/869,635
2
CLAIMED SUBJECT MATTER
The claims are directed to automated content medium selection.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for delivering content for playback comprising:

receiving, by a computer processor, from a client device,
a first play mode request to play, on the client device, one or
more unspecified content items;

receiving contextual data describing an environment of a
user that is associated with the first play mode request, the
contextual data including at least one of a location of the
client device, a time of day, or a network connection status of
the client device;

in response to receiving the first play mode request,
selecting, by the computer processor and without user input,
a first content category of media from a plurality of available
content categories based on the contextual data;

selecting a content source based on the selected first
content category of media;

selecting, independent of an indication related to content
for playback from the user, by the computer processor and
based on the first content category, a first content medium
from a plurality of content medium types, the plurality of
content medium types comprising a podcast, album, or
playlist, and wherein the first content medium comprises a
preferred delivery content medium associated with the first
content category;

determining, by the computer processor, a first content
item to play that is included within the first content category
and the first content medium; and

delivering the first content item for playback by the
client device from the selected first content medium.
Appeal 2020-002820
Application 14/869,635
3

REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Sakai et al. US 2015/0230022 A1 Aug. 13, 2015

REJECTIONS
Claims 1, 2, 4, 5, 8, 9, 11, 12, 15, 16, 18, 19, and 22 stand rejected
under 35 U.S.C. § 102(a)(2) as being anticipated by Sakai.
Claims 7, 14, and 21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Sakai.
OPINION
35 U.S.C. § 102(a)(2)
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
[A]s an initial matter, the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words
in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant’s
specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
To anticipate “it is not enough that the prior art reference discloses
part of the claimed invention, which an ordinary artisan might supplement to
make the whole, or that it includes multiple, distinct teachings that the
Appeal 2020-002820
Application 14/869,635
4
artisan might somehow combine to achieve the claimed invention.” Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
“[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102.” Id.
“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not . . . resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies” in the cited references. In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967).

Claims 1, 2, 4, 5, 8, 9, 11, 12, 15, 16, 18, 19, and 22
As an initial matter, we note that Appellant presents arguments to
independent claim 1 and does not separately address independent claims 8
and 15. Because independent claims 8 and 15 contain similar limitations,
we address independent claim 1 as the illustrative claim for Appellant’s
arguments. We also note that the Examiner has rejected each of the
independent claims based upon anticipation, and the Examiner does not
reject the independent claims based upon obviousness. We limit our review
to the anticipation rejection and make no findings regarding the obviousness
of independent claims 1, 8, and 15 based upon Sakai alone. We further note
that the claimed invention is directed to the “quick play mode” disclosed in
paragraphs 83–88 of Appellant’s Specification where the computer
processor selects the playlist without user input, rather than the user
selecting the playlist.
Appeal 2020-002820
Application 14/869,635
5
With respect to illustrative independent claim 1, the Examiner
provides a rejection and provides a laundry list of citations to paragraphs and
figures. Final Act. 2–4; Ans. 3–5. In the Response to Argument Sections in
the Final Action and the Examiner’s Answer, the Examiner further details
the responses to Appellant’s arguments by including quotations from the
various portions of Sakai cited in the rejection. Final Act. 8–11; Ans. 8–20.
Additionally, we note that the Examiner’s anticipation rejection
hedges in the Response to Arguments section where the Examiner states
“[o]ne of ordinary skill in the art would certainly recognize that no matter
the type of content medium selected by the claim; a podcast, an album, and a
playlist, are all just playlists, by plain meaning.” Ans. 9. The Examiner
further states that the “Examiner believes that Sakai’s host device selects a
first content medium from the claimed plurality of content medium types.”
Ans. 14. The Examiner states that the “Examiner believes that Sakai’s first
content medium comprises the claimed preferred delivery content medium
associated with the first content category.” Ans. 17.
Appellant argues that Sakai “does not teach or suggest” the claimed
feature of “selecting, independent of an indication related to content for
playback from the user . . . a first content medium from a plurality of
content medium types, the plurality of content medium types comprising a
podcast, album, or playlist,” as recited in claim 1. Appeal Br. 7. Appellant
further argues that Sakai “addresses selecting content from different content
categories, but does not address further selections as between the scriptable
or parseable content. Parsing and assembling content from multiple sources
does not address selecting a medium type from a set of medium types.”
Appeal Br. 8. Appellant also argues that Sakai does not teach or suggest the
claimed features of “wherein the first content medium comprises a preferred
Appeal 2020-002820
Application 14/869,635
6
delivery content medium associated with the first content category,” as
recited in claim 1. Appeal Br. 8.
Appellant contends that while a particular script may be used to
process content from a particular site, there is no indication in Sakai that any
particular script may be associated with a category of content, and Sakai
fails to teach or reasonably suggest “wherein the first content medium
comprises a preferred delivery content medium associated with the first
content category,” as recited in claim 1. Appeal Br. 8.
Although we disagree with Appellant’s specific argument based upon
Sakai not “teach[ing] or suggest[ing]” where the standard is whether Sakai
“discloses” the claimed invention, we interpret Appellant’s arguments to be
that of Sakai does not “disclose” the claimed limitations based upon the
anticipation rejection. See generally Appeal Br. 7–9; Reply Br. 2–5.2
Looking at the totality of the evidence provided by the Examiner and
the Examiner’s statement of the grounds of anticipation rejection and the
Response to Argument section of the Examiner’s Answer, we agree with
Appellant that the Examiner’s factual findings are insufficient to support the
anticipation rejection. We further find that the Examiner’s arguments and
rejection are based upon speculation and hindsight reconstruction because
the Examiner finds many alternative teachings and suggestions in the prior
art reference, but the Examiner does not make a persuasive showing how or
why Sakai discloses the identical claimed invention as recited in illustrative
independent claim 1. While the Examiner could have alternatively rejected
independent claim 1 based upon obviousness and provided similar factual

2 We note that the Reply Brief does not include page numbers, and we count
the pages with the cover page as page 1.
Appeal 2020-002820
Application 14/869,635
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findings, as in the anticipation rejection, and could have provided logical
reasoning for the skilled artisan’s to combine the various alternative
disclosures and embodiments of Sakai, the Examiner set forth the
anticipation rejection alone, and we make no specific findings or conclusions
regarding the obviousness of the claimed invention based upon Sakai alone.
With regards to dependent claims 2, 9, and 16, Appellant argues that
Sakai does not teach or suggest the claimed feature of “ranking a plurality of
content mediums based at least in part on a number of times the user has
selected the content medium,” as recited in claim 2. Appeal Br. 9.
The Examiner does not specifically address the “ranking” in the
rejection or the responses to Appellant’s arguments and merely quotes
portions of Sakai. For this additional reason, we cannot sustain the
Examiner’s anticipation rejection of dependent claims 2, 9, and 16.

35 U.S.C. § 103
Claims 7, 14, and 21
Appellant argues that the dependent claims depend from the allowable
independent claims (Appeal Br. 9), and the Examiner merely finds that the
arguments have been addressed with respect to the independent claims (Ans.
20, see also Final Act. 6–7). Because the Examiner has not shown how
Sakai teaches or suggests the showings found to be deficient with respect to
the anticipation rejection, we cannot sustain the Examiner’s obviousness
rejection.

CONCLUSIONS
The Examiner’s anticipation and obviousness rejections are reversed.
Appeal 2020-002820
Application 14/869,635
8
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 8,
9, 11, 12,
15, 16, 18,
19, 22
102(a)(2) Sakai 1, 2, 4, 5, 8,
9, 11, 12,
15, 16, 18,
19, 22
7, 14, 21 103 Sakai 7, 14, 21
Overall
Outcome
1, 2, 4, 5,
7–9, 11, 12,
14–16, 18,
19, 21, 22

REVERSED