Ex Parte Barger et al

Patent Trial and Appeal Board

Aug 8, 2016

11427323 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111427,323 06/28/2006 Sean Barger
22862 7590 08/10/2016
GLENN PATENT GROUP
c/o Perkins Coie LLP
P.O. Box 1247
Seattle, WA 98111-1247
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
110595-8003.USOl 2263
EXAMINER
ROBINSON, MARSH ON L
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN BARGER, BRETT DURRETT, and
DAVID C. SALMON
Appeal2015-000078
Application 11/427,323
Technology Center 2100
Before JEFFREYS. SMITH, DANIEL N. FISHMAN, and
JON M. JURGOV AN, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 4, and 6-20, all remaining claims of the application. 1 Claims 3 and 5
are cancelled. Br. 6. We have jurisdiction over the pending claims under 3 5
U.S.C. § 6(b).
We affirm.
1 In this Opinion, we refer to the original Specification ("Spec.," filed June
28, 2006); the Final Office Action ("Final Act.," mailed June 20, 2013);
Appellants' Supplemental Appeal Brief ("Br.," filed February 25, 2014); and
the Examiner's Answer ("Ans.," mailed July 17, 2014).
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Application 11/427,323
THE INVENTION
Appellants' invention is directed to "methods and systems for pre-
loading digital media players." Spec. i-f 2.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A processor implemented method for pre-loading
digital media players comprising the steps of:
storing digital media assets owned by a customer of a
vendor by said vendor;
receiving from the customer an order specifying which of
said stored digital assets are to be loaded onto a digital media
player by said vendor prior to delivery of said media player to
said customer; and
delivering said media player to said customer by said
vendor with said specified stored digital media assets pre-
loaded onto said digital media player;
wherein said step of storing digital media assets
comprises the processor effected steps of:
over an interactive network connection,
authenticating said digital media assets O\'l/ned by said
customer at the time said customer makes a request to
purchase said digital media player;
after authentication, copying said owned digital
media assets by said vendor, via said interactive network
connection from a storage medium provided by said
customer; and
storing said copied digital assets to an asset server;
and
wherein said step of receiving an order from the customer
comprises the processor effected steps of:
displaying a list of stored digital assets owned by
said customer;
said customer specifying which of said stored
digital assets are to be loaded onto said digital media
player by responding to said customer selection of at
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least one of said digital assets from said displayed list;
and
receiving said order at a central server by said
vendor.
THE REJECTIONS
Claims 1, 2, 4, 6-11, 13, and 15-19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hubbard (US 2004/0139130 Al; July 15,
2004), Kraft (US 2002/0116277 Al; August 22, 2002); and Wiser (US
6,868,403 Bl; March 15, 2005). Final Act. 2-12.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hubbard, Kraft, Wiser, and Masaki (US 2002/0120586 Al; August 29,
2002). Final Act. 12-13.
Claims 14 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hubbard, Kraft, Wiser, and Verchere (US
2001/0047312 Al; November 29, 2001). Final Act. 13-15.
ANALYSIS
Only those arguments actually made by Appellants have been
considered in this Decision. Arguments that Appellants did not make in the
Brief are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by Appellants' contentions of Examiner error
(Br. 12-19). We adopt as our own the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 2-15) and
as set forth by the Examiner in the Answer (Ans. 3-9). However, we
highlight and address specific arguments and findings for emphasis as
follows.
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Application 11/427,323
Claim Construction
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted). Initially, we note the Examiner's
assertion that, to overcome a rejection under 35 U.S.C. § 112, i-f 2,
Appellants accepted the Examiner's broad but reasonable interpretation of
the terms "digital media player" and "digital media assets." Ans. 3
(referring to Appellants' Response filed February 25, 2013). Applying the
broadest reasonable interpretation standard, the Examiner interprets "digital
media player" to mean "a computing device capable of storing and using
various forms of content" and interprets "digital media assets" to mean
"content which can be stored and used on a computing device." Id. We
agree with and adopt the Examiner's broad but reasonable construction of
these terms.
Rejection of Claims 1, 2, 4, 6--11, 13, and 15-19
Regarding claim 1, Appellants argue the proposed combination fails
to disclose or suggest the recited step of "authenticating said digital media
assets" because Wiser, as relied on by the Examiner, discloses authentication
of the purchaser of a digital media asset (i.e., a music file) rather than
authenticating the asset per se as recited. Br. 13. Appellants quote portions
of paragraph 44 of their Specification as disclosing the type of authentication
to be performed. Id. (quoting Spec. i-f 44 (cited as page 10, lines 5-13) "[t]he
customer provides the authentication program access to the customer's
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Application 11/427,323
media and, using a challenge-response mechanism, the media is
authenticated by the vendor's authentication server. . . . Possible forms
include checksum of random segments of data from the media, waveform
comparisons, image comparisons, serial numbers or Digital Rights
Management authorization."). Furthermore, Appellants argue the
authentication operations performed by Wiser are not performed at the time
of the request to purchase the assets as recited in claim 1. Id. at 14.
We are unpersuaded of Examiner error. Initially, we note Appellants'
selected quotation allegedly defining the step of authenticating is an open-
ended example rather than a limiting definition. Still further, Appellants'
selected quotation leaves out another portion stating "[t]he form of the
challenge/response can vary as needed for the media type, legal
requirements, media variations or many other factors." Spec. ,-r 44. This
excluded portion of the selected quotation makes clear that there are
numerous forms of authentication that will be apparent to the ordinarily
skilled artisan. The Examiner finds, and we agree, the claims (and the
Specification) do not specifically limit the scope of what kind of
authentication is to be performed other than it relates to authentication of the
digital media assets. Ans. 3. The Examiner further finds, and we agree,
Wiser discloses authentication of digital media assets through encryption of
the purchased media along with unique purchaser identification information.
Id. at 4--5.
Appellants next argue Hubbard in the proposed combination fails to
disclose or suggest the recited step of "receiving from the customer an
order." Br. 14--15. We remain unpersuaded of Examiner error. The
Examiner finds, and we agree, "Hubbard discloses an 'order' in a plurality
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of locations." Ans. 5 (citing Hubbard iii! 13, 16, and 41--43). For example,
Hubbard discloses,
FIG. 1 further shows the applicability of the present
embodiment to a computer manufacturer using a build-to-order
process. In such a process, a customer orders a build-to-order
computer with a customized configuration. For example, the
customized configuration may include specific hardware types
as well as specific software applications. The manufacturer
assembles the build-to-order computer to these customized
configuration instructions, and loads the software applications
desired by the customer.
Hubbard if 41. Thus, Hubbard discloses receiving an order from a customer
for a digital media player (a build-to-order computer) pre-loaded with
selected digital media assets (specific software applications). The Examiner
quotes other portions of Hubbard providing similar disclosures of a customer
ordering selected digital media assets (application and/or images) to be pre-
loaded on a digital media player (build-to-order computer). Ans. 5-7.
Appellants further contend the proposed combination fails to disclose
or suggest the recited step of "copying said owned digital media assets by
said vendor, via said interactive network connection from a storage medium
provided by said customer." Br. 15-16. Specifically, Appellants argue
"Wiser ... discusses receiving/uploading media files from an authoring tool,
e.g., an artist who created the media data file. An artist of Wiser is not the
same as the customer of Claim 1 who owns the digital media assets or is
purchasing the digital media player." Id. We are not persuaded the
Examiner erred. The Examiner relied on column 21, lines 3-26 for this
feature (Final Act. 4) and finds "nothing within this portion of Wiser that
suggests that the use of this upload process would be limited to an artist."
Ans. 8. We agree the cited portion of Wiser may apply to any person
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Application 11/427,323
including the purchaser. We further observe, in fact, the artist as recited in
Wiser may be the claimed purchaser in that works of art owned by the artist
may be copied from the artist's storage medium to a new media player being
purchased by that artist that is to be pre-loaded with the artist's works of art.
In view of the above discussion, we are unpersuaded of error in the
Examiner's rejection of independent claim 1. Independent claim 15 is a
system claim with limitations similar to claim 1, was rejected for similar
reasons (Final Act. 9-10), and Appellants contend error in the rejection of
claim 15 for the same reasons as claim 1 (Br. 16). Thus, for the same
reasons as claim 1, we are not persuaded the Examiner erred in rejecting
claim 15.
Regarding claim 2 and claim 8, both dependent from claim 1,
Appellants argue "[ w ]hile computers may be configured to play digital
media, they are not themselves digital media players; nor is computer
software application the same thing [as] a digital media asset." Br. 17. In
view of our claim construction discussed supra and Appellants' earlier
statements in prosecution, we are not persuaded the Examiner erred in
rejecting claims 2 and 8. See also Ans. 8-9.
Regarding claim 9, Appellants similarly argue "[t]he Examiner has
not established that Hubbard discloses or suggests a digital media player,
customer selection of any type of system, or acquiring any system of any
type from a third party." Br. 17. We are not persuaded of Examiner error.
The Examiner finds, and we agree, "[t]he [(build-to-order)] computing
system of Hubbard would be a digital media player of a type within the
agreed upon definitions of the claim terms." Ans. 9.
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Regarding claims 6 and 7, dependent directly and indirectly from
claim 1, the Examiner took Official Notice that the recitations of each are
well-known. Final Act. 5---6. Appellants repeat an argument in prior
responses (filed Feb. 2, 2012 and June 21, 2012) asserting "Appellants
dispute that the techniques claimed in the subject application were
sufficiently well known at the time that the invention was made" and refer
the Examiner to MPEP § 2144.03 regarding Official Notice. Br. 17. We are
not persuaded the Examiner erred. We remind Appellants that the cited
section of MPEP includes "To adequately traverse such a finding, an
applicant must specifically point out the supposed errors in the examiner's
action, which would include stating why the noticed fact is not considered to
be common knowledge or well-known in the art." MPEP § 2144.03(C). In
this Appeal Brief as well as the earlier responses in prosecution, Appellants
have failed to adequately traverse the Examiner's assertion of Official
Notice. Specifically, Appellants' arguments do not state why the noticed
fact is not considered to be common knowledge or well-known in the art.
Regarding claim 11, indirectly dependent from claim 1, the Examiner
finds Hubbard discloses the recited limitations. Final Act. 8 (citing Hubbard
i-fi-135-37 and 41). Appellants argue Hubbard fails to disclose or suggest the
recited step of requesting digital assets by said synchronization server
because "Appellants are unable to identify any such thing as a
synchronization server in these cited portions of Hubbard." Br. 17.
Appellants contend a synchronization server is a "specific device"
supposedly defined in the Specification. Id. (quoting Spec. i1 32 (cited as
page 6, lines 2 7-31 )("The system 100 also includes one or more
synchronization servers-sync stations-I 02, 104, that take load orders and
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Application 11/427,323
distribute the processing jobs to asset servers 114, 116 and then load
processed assets onto a media storage device")). We are unpersuaded of
Examiner error. We find no limiting definition of "synchronization server"
in the quoted portion of Appellants' Specification nor elsewhere in the
Specification. At most, Appellants' Specification limits interpretation of
"synchronization server" to a server (a computer) that receives customer
orders and distributes the processing to load requested media assets to a
media player. We agree with the Examiner (see Final Act. 7; see also Ans.
9) that the cited portions of Hubbard teach, or at least suggest, a
synchronization server by disclosing order engine 35 (see, e.g., Hubbard
i-fi-135-37) operable on computer platform 34 (see, e.g., Hubbard i132).
Regarding claim 19, dependent from claim 15, Appellants argue the
proposed combination fails to disclose or suggest "a cache hint server for
monitoring which asset servers have previously processed assets cached
locally" as recited. Br. 18. We remain unpersuaded the Examiner erred.
The transition phrase in the preamble of claim 19 recites "further comprising
any of' and then lists three features - only any one of which need be found
in the prior art references. In rejecting claim 19, the Examiner relies on
Hubbard for disclosing both central and local storage of assets and relies on
Wiser in the proposed combination with Hubbard for disclosing a cache used
for storage. Final Act. 11-12. Thus, the Examiner finds, and we agree, the
combination of Hubbard and Wiser teaches or suggests, at least, "a central
cache for storing processed assets" as recited in claim 19.
Appellants do not separately argue with particularity the rejection of
dependent claims 4, 10, 13, 16, and 17. Thus, we are unpersuaded of error
in the rejection of these dependent claims.
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For the reasons discussed above, we sustain the rejection of claims 1,
2, 4, 6-11, 13, and 15-19.
Rejection of Claim 12
Claim 12 indirectly depends form claim 1. Appellants argue the
Examiner erred in rejecting claim 12 for essentially the same reasons as
claim 1 (Br. 18) and, thus, for the reasons discussed supra, we are not
persuaded of error and we sustain the rejection of claim 12.
Rejection of Claims 14 and 20
Claim 14 depends from claim 1 and claim 2 0 depends from claim 15.
Appellants argue the Examiner erred in rejecting these claims for essentially
the same reasons as claims 1and15, respectively, (Br. 18-19) and, thus, for
the reasons discussed supra, we are not persuaded of error and we sustain
the rejection of claims 14 and 20.
DECISION
For the above reasons, the Examiner's decision rejecting claims 1, 2,
4, and 6-20 affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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