Christopher John. Sanders et al.

Patent Trials and Appeals Board

Aug 28, 2019

13587850 - (D) (P.T.A.B. Aug. 28, 2019)

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/587,850 08/16/2012 Christopher John Sanders
150004 7590 08/28/2019
DENTONS US LLP - Apple
4655 Executive Dr
Suite 700
San Diego, CA 92121
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONERFORPATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl2343US1/77770000295101 8161
EXAMINER
HO,RUAYL
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELNERYMODE
08/28/2019 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):
dentons_PAIR@firsttofile.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER JOHN SANDERS et al.
Appeal 2017-011279
Application 13/587,850
Technology Center 2100
ERRATUM
The Decision on Appeal for the above-identified application mailed
August 28, 2019 contains errors.
The last paragraph on page 8 is removed and replaced with:
Thus, we do not sustain the rejection of independent
claims 1 and 3 under 35 U.S.C. § 101. Claims 2, 4, 5, 7-26,
and 28-68 depend from independent claims 1 and 3. We do not
sustain the rejection of claims 2, 4, 5, 7-26, and 28-68 under
35 U.S.C. § 101 for the same reasons discussed with respect to
independent claims 1 and 3.
The last sentence on page 19 is removed and replaced with:
The Examiner's decision rejecting claims 1-5, 7-34, and
37-68 under 35 U.S.C. § 101 is reversed.
The first sentence on page 20 is removed and replaced with:
The Examiner's decision rejecting claims 1, 2, and 38-70 under
35 U.S.C. § 103(a) is affirmed.
All other portions the Decision on Appeal remain unchanged. Any
confusion caused regarding this matter is regretted. If there any questions
Appeal 2017-011279
Application 13/587,850
pertaining to this Erratum, please contact the Patent Trial and Appeal Board
at 571-272-9797.
BAR
2
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER JOHN SANDERS, TIMOTHY B. MARTIN,
IMRAN CHAUDHRI, LUCAS C. NEWMAN, SEAN BOLAND KELLY,
THOMAS M. ALSINA, JEFFREY L. ROBBIN,
ANDREW M. W ADYCKI, and PATRICE 0. GAUTIER
Appeal 2017-011279
Application 13/587,850
Technology Center 2100
Before MAHSHID D. SAADAT, ERIC B. CHEN, and
CARLL. SILVERMAN, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-011279
Application 13/587,850
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-5, 7-26, and 28-70. Claims 6 and 27 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b ). An oral hearing scheduled for
June 25, 2019 was waived. We affirm-in-part.
STATEMENT OF THE CASE
Appellants' invention relates to a client device that displays media
library information corresponding to a set of media items. (Abstract.)
Claims 1 and 3 are exemplary, with disputed limitations in italics:
1. A method comprising
at a client device with a display:
displaying a user interface for managing a set of media items,
the media items comprising:
one or more local media items, the one or more local
media items comprising media items stored at the client device,
and
one or more remote media items, the one or more remote
media items comprising media items stored at a remote system
and not at the client device;
displaying affordances identifying the remote media items as
remote media items;
detecting a first user command to activate playback of a
respective remote media item;
in response to detecting the first user command, initiating a
process for playing the respective remote media item, including:
downloading a copy of the respective remote media item
from the remote system to a cache at the client device, and
playing the copy of the respective remote media item in
the cache; and
maintaining the affordance that identifies the respective
media item as a remote media item;
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after playing the copy of the respective remote media item,
detecting a second user command to download the respective remote
media item to the media library; and
in response to detecting the second user command,
downloading the respective remote media item to the media library
and ceasing to display the ajfordance that identifies the respective
media item as a remote media item.
3. A method comprising:
at a client device with a display:
displaying a user interface for managing a set of media items,
wherein the set of media items includes one or more
remote media items and one or more local media items wherein
the one or more remote media items are media items stored at a
remote system and not in a media library at the client device,
wherein a respective representation of a respective
remote media item includes a respective affordance identifying
the respective remote media item as a remote media item; and
wherein the one or more local media items are media items
stored in a media library at the client device, wherein representations
of the one or more local media items do not include remote-media
affordances identifying the local media items as remote media items;
wherein displaying the user interface for managing the set of
media items comprises:
when the client device has an online connection to the remote
system, displaying local media items, and displaying remote media
items and their respective affordances; and
when the client device is ojjline, displaying the local media
items and suppressing display of the remote media items stored at the
remote system and not in a media library at the client device;
while displaying the user interface for managing the set of
media items, detecting user interaction with the respective affordance
identifying the respective remote media item as a remote media item;
and
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in response to detecting the user interaction, initiating a process
for downloading a copy of the respective remote media item to the
client device for storage in a media library at the client device.
Claims 1-5, 7-34, and 37-68 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.
Claims 1-5, 7-17, 19, 21-24, 28, 30, 31, 34-50, 52-57, 61, 63, 64,
67-70 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cassidy
(US 2012/0088477 Al; Apr. 12, 2012) and Des Jardins (US 8,682,722 Bl;
Mar. 25, 2014).
Claims 18 and 51 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cassidy, Des Jardins, and Kidron (US 2012/0215684 Al;
Aug. 23, 2012).
Claims 20 and 53 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cassidy, Des Jardins, and Jarman (US 2007/0186235 Al;
Aug. 9, 2007).
Claims 25, 26, 29, 32, 33, 58-60, 62, 65, and 66 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Cassidy, Des Jardins, and Kelts (US
2012/0005708 Al; Jan. 5, 2012).
ANALYSIS
§ 1 OJ Rejection
We are persuaded by Appellants' arguments (App. Br. 20; see also
Reply Br. 5-6) that the Examiner has not satisfied the proper burden for
making a prima facie case for patent ineligibility under 35 U.S.C. § 101.
The Examiner determined that independent claims 1 and 3 "recite a
'method' comprising steps that may be performed manually and/or
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mentally" and "the recited method is an abstract idea in that it is not tied to a
particular machine or apparatus and it does not transform a particular article
into a different state or thing." (Final Act. 6; see also Ans. 3.) We agree
that the Examiner has not satisfied the proper burden for a prima facie case.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
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[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019). Under that guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed.
2019)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. at 56.
Although the Examiner generally states that independent claims 1 and
3 "recite a 'method' comprising steps that may be performed manually
and/or mentally" this statement neither: (a) identifies the specific limitations
in the claims under examination that the Examiner believes recite an abstract
idea; nor (b) demonstrates the identified limitations fall within the subject
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matter groupings of abstract ideas of mathematical concepts, certain
methods of organizing human activity, or mental processes. See 84 Fed.
Reg. at 56. In particular, the Examiner had not adequately compared the
claimed concepts of claims 1 and 3 to an appropriate Federal Circuit or
Supreme Court case. Moreover, the Examiner stated that "the recited
method is an abstract idea in that it is not tied to a particular machine or
apparatus and it does not transform a particular article into a different state
or thing." However, as articulated by the Supreme Court, while "the
machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under § 10 l ," but such "test is not the sole test for deciding
whether an invention is a patent-eligible 'process."' Bilski v. Kappas, 130
S.Ct. 3218, 3227 (2010).
Accordingly, we are persuaded by Appellants' arguments that "[t]he
rejection is fatally flawed because the Examiner failed to apply the two-part
Alice test for determining patent-eligible subject matter." (App. Br. 20; see
also Reply Br. 5-6.)
Thus, we do not sustain the rejection of independent claims 1 and 3
under 35 U.S.C. § 101. Claims 2, 4, 5, 7-26, and 28-70 depend from
independent claims 1 and 3. We do not sustain the rejection of claims 2, 4,
5, 7-26, and 28-70 under 35 U.S.C. § 101 for the same reasons discussed
with respect to independent claims 1 and 3.
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§ 103 Rejection-Cassidy and Des Jardins
Claims 1, 2, 38-50, 52-57, 61, 63, 64, and 67-70
We are unpersuaded by Appellants' arguments (App. Br. 35-37; see
also Reply Br. 27-30) that the combination of Cassidy and Des Jardins
would not have rendered obvious independent claim 1, which includes the
limitation "displaying affordances identifying the remote media items as
remote media items."
The Examiner found that songs interface 602 of Cassidy, as illustrated
in Figure 6, in which songs are stored either locally or remotely, and visually
distinguished with a graphical device, corresponds to the limitation
"displaying affordances identifying the remote media items as remote media
items." (Ans. 26.) We agree with the Examiner's findings.
Cassidy relates to "managing the unlimited access to media, local
storage of accessed media, and local playback of media from the mobile
handset." (,-J 2.) Figure 6 of Cassidy illustrates exemplary interfaces
associated with playlist creation and management (,-J 17), including songs
interface 602 "corresponding to an album for which one or more tracks are
stored" (,-J 60) or playlist interface 608 for the selection of songs (,-J 63).
Cassidy explains that "[t]he interface can correspond to local content, i.e.,
one or more songs already stored in the local media archive, or remote
content, such as a listing of one or more songs associated with the media
store or the local media archive of another subscriber." (,-J 60.) Moreover,
Cassidy explains that "[i]f all names are included, the names of tracks that
are stored in the local media archive ... can be visually distinguished from
the names of the remaining tracks, such as through highlighting, text color,
shading, or the presentation of a graphical device." (Id.) Because Cassidy
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explains the need to visually distinguish between local content and remote
content, for example, by "the presentation of a graphical device," Cassidy
teaches the limitation "displaying affordances identifying the remote media
items as remote media items."
Appellants argue the following:
All that the playlist icon does is launch a different interface:
Cassidy explains that: "The playback interface 722 also can
include a playlist button 724, which can be selected to add the
item of media content being played back to a play list. Upon
selection of play list button 724, a play list management interface
710 can be presented." Even if the interface in which Cassidy's
playlist icon appears included both local and remote items of
media content, the playlist icon does not serve to identify which
items are remote items.
(App. Br. 37 (emphasis omitted).) Similarly, Appellants argue that "despite
the new citation to [0060], the Examiner again relies on 'a playlist icon' as
described in Cassidy to show the 'affordances' recited in claim l" (Reply
Br. 27 (emphasis omitted)) and "[t]he Examiner's citation to the bottom
portion of [0060] does not cure the deficiency of Cassidy with respect to the
limitation 'displaying affordances identifying the remote media items as
remote media items' as recited claim l" (id. at 30). However, as found by
the Examiner, Cassidy explains that "highlighting, text color, shading, or the
presentation of a graphical device" is used to visually distinguish between
different types of tracks. (ii 60.) Appellants have not presented any
persuasive arguments or evidence as to why the Examiner's findings with
respect to Cassidy are improper.
Thus, we agree with the Examiner that the combination of Cassidy
and Des Jardins would have rendered obvious independent claim 1, which
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includes the limitation "displaying affordances identifying the remote media
items as remote media items."
We are unpersuaded by Appellants' arguments (App. Br. 41; see also
Reply Br. 33) that the combination of Cassidy and Des Jardins would not
have rendered obvious independent claim 1, which includes the limitation
"after playing the copy of the respective remote media item, detecting a
second user command to download the respective remote media item to the
media library."
The Examiner found that playlist management interface 710 of
Cassidy, which controls songs during playback, and the "Secure Media
Content Deliver System" for subscriber play lists of Cassidy, collectively
correspond to the limitation "after playing the copy of the respective remote
media item, detecting a second user command to download the respective
remote media item to the media library." (Final Act. 8-9; see also Ans. 27.)
We agree with the Examiner's findings.
Figure 7 of Cassidy illustrates "playback interface 722 [that] can be
presented during playback of an item of media content, e.g. a song" and
"include[ s] one or more user interface commands, controls, and widgets, e.g.
implemented using buttons and sliders, that can be used to control
playback." (,-J 68.) In addition, Figure 6 of Cassidy includes "download
indicator 605 ... presented in association with a track in the track listing 604
that is in the process of being downloaded." (,-J 60.) Moreover, Cassidy
explains that the "Media Storage and Delivery" system "provide 30 second
samples of a file for preview purposes." (,-J 150.) Because Cassidy explains
that 30 second sample files are provided and playback interface 722 is used
to playback a downloaded song, Cassidy teaches the limitation "after playing
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the copy of the respective remote media item, detecting a second user
command to download the respective remote media item to the media
library."
Appellants argue the following:
Cassidy Paragraphs [0067] and [0068] ... teach playlist
management and playback functionalities. But they do not
teach or suggest detecting a second command to download a
remote media item to a media library after playing a copy of
that remote media item. In fact, Cassidy teaches the opposite:
that a media item must be downloaded to the local media
archive before it is played.
(App. Br. 41 (emphases omitted); see also Reply Br. 33.) However, the
Examiner has also provided a general citation to the "Secure Media Content
Deliver System" of Cassidy for subscriber playlists (Final Act. 8-9; see also
Ans. 27), which explains that 30 second samples can be previewed before
downloading.
Thus, we agree with the Examiner that the combination of Cassidy
and Des Jardins would have rendered obvious independent claim 1, which
includes the limitation "after playing the copy of the respective remote
media item, detecting a second user command to download the respective
remote media item to the media library."
We are unpersuaded by Appellants' arguments (App. Br. 39; see also
Reply Br. 30) that the combination of Cassidy and Des Jardins would not
have rendered obvious independent claim 1, which includes the limitation
"in response to detecting the second user command ... ceasing to display
the affordance that identifies the respective media item as a remote media
item."
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The Examiner found that modifying the local play list of Cassidy
corresponds to the limitation "in response to detecting the second user
command ... ceasing to display the affordance that identifies the respective
media item as a remote media item." (Final Act. 9; see also Ans. 5.) We
agree with the Examiner's findings.
Cassidy explains that "[t]he subscriber also is free to modify or delete
the local play list at any time" and"[ o ]nee a subscription to a remote play list
has been established, the media content corresponding to that playlist can be
downloaded to the local media archive." (,-J 59.) As discussed previously,
Cassidy explains that "[i]f all names are included, the names of tracks that
are stored in the local media archive ... can be visually distinguished from
the names of the remaining tracks, such as through highlighting, text color,
shading, or the presentation of a graphical device." (,-J 60.) Because Cassidy
explains that "local music archive ... can be visually distinguished from the
names of the remaining tracks, such as through ... the presentation of a
graphical device," one of ordinary skill art would have modified Cassidy,
such that the remote content, rather than local content, is distinguishable via
the presentation of graphical content. Moreover, once media content is
downloaded from a remote play list and becomes part of the local play list,
the presentation of graphical content distinguishing between the remote
playlist and local playlist becomes unnecessary, and thus, such graphical
content will no longer be displayed. Accordingly, Cassidy teaches the
limitation "in response to detecting the second user command ... ceasing to
display the affordance that identifies the respective media item as a remote
media item."
Appellants argue the following:
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Remember, it is the Examiner's position that Cassidy' s "play
list icon" is the claimed affordance. Nothing in Cassidy's
Paragraph [0059] teaches, expressly or inherently, that the
play list icon ceases to be displayed. Cassidy' s play list icon is
the command button in a user interface that causes a playlist
management interface to be presented. It does not represent a
play list, remote or local, or even a collection of play lists. It is a
command button. Modifying or deleting a local playlist would
do nothing to the playlist icon.
(App. Br. 39; see also Reply Br. 30.) However, as discussed previously, the
Examiner also cited to paragraph 60 of Cassidy, which explains that
"highlighting, text color, shading, or the presentation of a graphical device"
to visually distinguish between different types of tracks for teaching the
limitation "affordances identifying the remote media items." Moreover, as
discussed previously, once media content is downloaded from a remote
play list and becomes part of the local play list, the presentation of graphical
content distinguishing between the remote playlist and local playlist
becomes unnecessary, and thus, Cassidy teaches the limitation "ceasing to
display the affordance that identifies the respective media item as a remote
media item."
Thus, we agree with the Examiner that the combination of Cassidy
and Des Jardins would have rendered obvious independent claim 1, which
includes the limitation "in response to detecting the second user command
... ceasing to display the affordance that identifies the respective media
item as a remote media item."
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Claims 2, 38-50, 52-57, 61, 63, 64, 67, and 68 depend
from claim 1, and Appellants have not presented any substantive arguments
with respect to these claims. Therefore, we sustain the rejection of claims 2,
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38-50, 52-57, 61, 63, 64, 67, and 68 under 35 U.S.C. § 103(a), for the same
reasons discussed with respect to independent claim 1.
Independent claims 69 and 70 recite limitations similar to those
discussed with respect to independent claim 1, and Appellants have not
presented any additional substantive arguments with respect to these claims.
We sustain the rejection of claims 69 and 70, for the same reasons discussed
with respect to claim 1.
Claims 3, 4, 5, 7-17, 19, 21-24, 28, 30, 31, and34-37
We are persuaded by Appellants' arguments (App. Br. 47-48) that the
combination of Cassidy and Des Jardins would not have rendered obvious
independent claim 3, which includes the limitation "when the client device is
offline ... suppressing display of the remote media items stored at the
remote system and not in a media library at the client device."
The Examiner found that the play list icon of Cassidy for either local
or remote media content, corresponds to the limitation "when the client
device is offline ... suppressing display of the remote media items stored at
the remote system and not in a media library at the client device." (Final
Act. 11; see also Ans. 7-8.) In particular, the Examiner found the following:
When the client device is offline, it is well known that no
remote items can be accessed. Cassidy discloses an interface
displaying media items, either local or remote, in a client server
environment over the Internet. "When the client device is
offline ... suppressing display of the remote media items stored
at the remote system" is inherently disclosed.
(Final Act. 11 (emphasis omitted).) We do not agree with the Examiner's
findings with respect to inherency.
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Figure 7 of Cassidy illustrates play list management interfaces. (ii 18.)
Cassidy explains that "an interface displaying one or more items of media
content, either local or remote, also can include a playlist command button,
which can be actuated to add any selected item or items of media content to
a playlist." (ii 67.) As discussed previously, Cassidy explains that "[i]f all
names are included, the names of tracks that are stored in the local media
archive ... can be visually distinguished from the names of the remaining
tracks, such as through highlighting, text color, shading, or the presentation
of a graphical device." (ii 60.)
Although the Examiner cited to playlist command button 714 to
control both local or remote media content, and such media content can be
visually distinguishable via a graphical device, the Examiner has not
established that the limitation "suppressing display of the remote media
items stored at the remote system and not in a media library at the client
device" is necessary present is Cassidy. In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) ("To establish inherency, the extrinsic evidence 'must make
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill. Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given
set of circumstances is not sufficient."'). For example, one possibility of
indicating that remote media is offline is visually distinguishing via
"highlighting, text color, shading, or the presentation of a graphical device."
(ii 60.) In addition, Cassidy is silent respect to accessing remote media
content when mobile communications device is offline. Moreover, Des
Jardins does not cure the above-noted deficiencies of Cassidy.
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Thus, we are persuaded by Appellants' arguments that "[t]he
Examiner did not provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of Cassidy." (App. Br.
4 7-48 ( emphasis omitted).)
Thus, we do not agree with the Examiner that the combination of
Cassidy and Des Jardins would have rendered obvious independent claim 3,
which includes the limitation "when the client device is offline ...
suppressing display of the remote media items stored at the remote system
and not in a media library at the client device."
Accordingly, we do not sustain the rejection of independent claim 3
under 35 U.S.C. § 103(a). Claims 4, 5, 7-17, 19, 21-24, 28, 30, 31, 34, and
37 depend from independent claim 3. We do not sustain the rejection of
claims 4, 5, 7-17, 19, 21-24, 28, 30, 31, 34, and 37 under 35 U.S.C.
§ 103(a) for the same reasons discussed with respect to independent claim 3.
Independent claims 35 and 36 recites limitations similar to those
discussed with respect to independent claim 3. We do not sustain the
rejection of claims 35 and 36 for the same reasons discussed with respect to
claim 3.
§ 103 Rejection-Cassidy, Des Jardins, and Kidron
Claim 18
Claim 18 depends from independent claim 3. Kidron was cited by the
Examiner for teaching the additional features of claim 18. (Final Act. 24-
25.) However, the Examiner's application of Kidron does not cure the
above noted deficiencies of Cassidy and Des Jardins.
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Claim 51
Although Appellants nominally argue the rejection of dependent
claim 51 separately (App. Br. 50-51 ), the arguments presented do not point
out with particularity or explain why the limitations of this dependent claim
are separately patentable. Instead, Appellants argue that "[t]he rejection of
dependent claim[] ... 51 cannot be sustained because the Examiner did not
rely on Kidron to supply any claim element other than the additional
elements." (Id. at 51.) We are not persuaded by these arguments for the
reasons discussed with respect to claim 1, from which claim 51 depends.
Accordingly, we sustain this rejection.
§ 103 Rejection-Cassidy, Des Jardins, and Jarman
Claim 20
Claim 20 depends from independent claim 3. Jarman was cited by the
Examiner for teaching the additional features of claim 20. (Final Act. 25.)
However, the Examiner's application of Jarman does not cure the above
noted deficiencies of Cassidy and Des Jardins.
Claim 53
Although Appellants nominally argue the rejection of dependent
claim 53 separately (App. Br. 50-51), the arguments presented do not point
out with particularity or explain why the limitations of this dependent claim
are separately patentable. Instead, Appellants argue that "[t]he rejection of
dependent claim[] ... 53 cannot be sustained because the Examiner did not
rely on Jarman to supply any claim element other than the additional
elements." (Id. at 51.) We are not persuaded by these arguments for the
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reasons discussed with respect to claim 1, from which claim 53 depends.
Accordingly, we sustain this rejection.
§ 103 Rejection-Cassidy, Des Jardins, and Kelts
Claims 25, 26, 29, 32, and 33
Claims 25, 26, 29, 32, and 33 depend from independent claim 3.
Kelts was cited by the Examiner for teaching the additional features of
claims 25, 26, 29, 32, and 33. (Final Act. 26-28.) However, the Examiner's
application of Kelts does not cure the above noted deficiencies of Cassidy
and Des Jardins.
Claims 58-60, 62, 65, and 66
Although Appellants nominally argue the rejection of dependent
claims 58-60, 62, 65, and 66 separately (App. Br. 51-52), the arguments
presented do not point out with particularity or explain why the limitations
of these dependent claims are separately patentable. Instead, Appellants
argue that "[t]he rejection of dependent claims ... 58-60, 62, and 65-66
cannot be sustained because the Examiner did not rely on Kelts to supply
any claim element other than the additional elements." (Id. at 52.) We are
not persuaded by these arguments for the reasons discussed with respect to
claim 1, from which claims 58-60, 62, 65, and 66 depend. Accordingly, we
sustain this rejection.
DECISION
The Examiner's decision rejecting claims 1-5, 7-34, and 37-68 under
35 U.S.C. § 101 is affirmed.
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The Examiner's decision rejecting claims 1, 2, 38-70 under 35 U.S.C.
§ 103(a) is reversed.
The Examiner's decision rejecting claims 3, 4, 5, 7-26, and 28-37
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. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
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