12776604 (P.T.A.B. Jun. 30, 2014)

Ex Parte Askey et al

Patent Trial and Appeal BoardJun 30, 2014

12776604 (P.T.A.B. Jun. 30, 2014)

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. 12/776,604 05/10/2010 Waymen J. Askey CT-REC-018D/US (P059BDIV) 2686 71739 7590 06/30/2014 Concert Technology Corporation 5400 Trinity Road, Suite 303 Raleigh, NC 27607 EXAMINER KIM, PAUL ART UNIT PAPER NUMBER 2169 MAIL DATE DELIVERY MODE 06/30/2014 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 WAYMEN J. ASKEY and HUGH SVENDSEN _____________ Appeal 2012-001229 Application 12/776,604 Technology Center 2100 ______________ Before STEVEN D. A. MCCARTHY, DENISE M. POTHIER, and DAVID M. KOHUT, Administrative Patent Judges. KOHUT, Administrative Patent Judge. Appeal 2012-001229 Application 12/776,604 2 DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejection of these claims. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection against claims 14- 26 under 35 U.S.C. § 101 as being directed to non- statutory subject matter. INVENTION The invention is directed to a computer readable medium and method for sorting media items on a media device playlist using a ranking score. Spec. para. 6. Claim 1 is illustrative of the invention and is reproduced below: 1. A method of operation of a media device comprising: providing a playlist comprising a plurality of media items, each media item of the plurality of media items having a profile score calculated based on one or more user preferences and a replay score that affects replay of the media item; receiving, from a user, a selection of a sort criterion corresponding to a user preference of the one or more user preferences; changing the user preference corresponding to the sort criterion in response to the selection of the sort criterion by the user; recalculating the profile score and the replay score for each of the plurality of media items in the playlist; and sorting the plurality of media items in the playlist according to the replay scores of the plurality of media items and the sort criterion. Appeal 2012-001229 Application 12/776,604 3 REFERENCE Rogers US 7,720,871 B2 May 18, 2010 (filed Feb. 24, 2006) REJECTION AT ISSUE Claims 1-26 are rejected under 35 U.S.C. § 102(e) as being anticipated by Rogers. Ans. 4-7. ISSUE Did the Examiner err in finding that Rogers discloses provision of a playlist comprising a plurality of media items, wherein each of the plurality of media items has a profile score calculated based on one or more user preferences; receipt, from a user, a selection of a sort criterion corresponding to one of the user preferences; and change of the user preference corresponding to the sort criteria, as required by claim 1? 1 ANALYSIS Claims 1-26 Independent claim 1 requires provision of a playlist comprising a plurality of media items, wherein each of the plurality of media items has a profile score calculated based on one or more user preferences; receipt, from a user, a selection of a sort criterion corresponding to one of the user preferences; and change of the user preference corresponding to the sort 1 Appellants make additional arguments with respect to claims 2-13 and 15- 26. App. Br. 6-13; Reply Br. 2-7. However, we do not address the additional issues as the stated issue is dispositive of the Appeal. Appeal 2012-001229 Application 12/776,604 4 criteria. Independent claim 14 contains similar limitations. Claims 2-13 depend upon independent claim 1; claims 15-26 depend upon claim 14. The Examiner finds that Rogers discloses a media device that includes a media file playlist where at least an “overall score” is calculated for each media file of the playlist based on user preference(s) (“rating score”) and a “replay score (“last played score”).” The “overall score” is taken into account “to ascertain the proper slot in the playlist for that media file.” Ans. 5 (citing Rogers, 34:1-2, 23-26, 62-65). The Examiner additionally finds that Rogers discloses that a user of the device can indicate a selection of a modifier, i.e., “is not,” and term, i.e., “disco,” that changes the user preference genre previously associated with the playlist by excluding media items categorized as “disco.” Ans. 5 and 8-9 (citing Rogers 36: 9-14, 19- 22). In other words, the Examiner refers to Rogers’ calculated “overall score” as the claimed “profile score,” and to Rogers’ selection of modifier and term as the claimed “selection of a sort criterion.” Ans. 8. Further, the Examiner finds that following the selection of the modifier and term “the playlist generator would change the conditions for the playlist (i.e. user preference) to not include songs that were [] disco.” Ans. 8. The Examiner then finds that the overall score is recalculated and the order of the playlist is sorted “each time the playlist is selected or requested, [as] the media engine creates the updated playlist based on the previous criteria assigned to the playlist.” Ans. 5 (citing Rogers 36:57-60). Thus, the Examiner finds that Rogers discloses the subject matter of independent claims 1 and 14. Appellants argue that the Examiner’s findings are in error because the Examiner combines different embodiments of Rogers in order to disclose the Appeal 2012-001229 Application 12/776,604 5 claimed invention fully. App. Br. 8-9; Reply Br. 3-4. Specifically, Appellants contend that “the criteria [i.e., the user preferences] in column 35, lines 60-67 teach an embodiment of Rogers in which the criteria chosen by the user (as modified through modifiers) are what is being used to generate the playlist instead of the scores as with the other embodiment [found] in column 34, lines 23-26 of Rogers.” App. Br. 9 (emphasis in original); see also Reply Br. 4. We agree with Appellants (App. Br. 8-9; Reply Br. 3-4) and find that the Examiner combines separate and distinct embodiments of Rogers without providing support in the reference that the teachings of the embodiments may be combined. 2 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 artisan might somehow combine to achieve the claimed invention, as found by the Examiner. Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Because of the Examiner’s reliance on multiple distinct embodiments in Rogers, the Examiner’s rejection of the claims under 35 U.S.C. § 102(e) is in error. Additionally, we agree with Appellants (App. Br. 7) that the combination of the embodiments does not describe how the user preference corresponding to the sort criterion is changed. Therefore, for the reasons stated supra, we cannot sustain the Examiner’s rejection of claims 1-26. 2 While we agree with Appellants’ argument, we note that Rogers further discloses that “any number of the features of the different embodiments described herein may be combined into one single embodiment. . . .” Rogers 46:52-56. We leave it to the Examiner to consider whether and how teachings associated with the distinct embodiments of Rogers could be combined to satisfy the limitations of the appealed claims. Appeal 2012-001229 Application 12/776,604 6 Claims 14-26 - New Ground of Rejection Claims 14-26 are directed to a “computer readable medium.” Appellants’ Specification, on page 32, states that “a computer-readable medium is intended to include a computer readable signal, which may be, for example, transmitted over a network.” Thus, the term “computer readable medium” encompasses transitory signals. Accordingly, claims 14- 26 are directed to non-statutory subject matter and are rejected under 35 U.S.C. § 101. See In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007). We designate our analysis to be a new ground of rejection. CONCLUSION Based on the record as presented, the Examiner erred in finding that Rogers discloses a playlist comprising a plurality of media items, wherein each of the plurality of media items has a profile score calculated based on one or more user preferences, and receiving, from a user, a selection of a sort criterion corresponding to one of the user preferences that changes the user preference corresponding to the sort criteria, as required by claim 1. SUMMARY The Examiner’s decision to reject claims 1-26 is reversed. We enter a new ground of rejection for claims 14-26 as being directed to non-statutory subject matter under 35 U.S.C. § 101. TIME PERIOD This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial Appeal 2012-001229 Application 12/776,604 7 review." 37 CFR § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . 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). REVERSED 37 C.F.R. § 41.50(b) kis