Ex Parte Dougherty et al

Patent Trial and Appeal Board

Sep 15, 2017

13450419 (P.T.A.B. Sep. 15, 2017)

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.
13/450,419 04/18/2012 Casey Maureen Dougherty 8802.148.NPUS00_P12338US1 3873
77970 7590 09/19/2017
Polsinelli — Apple Inc.
c/o Polsinelli PC
Three Embarcadero Center, Suite 2400
San Francisco, CA 94111
EXAMINER
ZUKANOVICH, BRANDY A
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
09/19/2017 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):
Apple @ Polsinelli. com
cadocket @ Polsinelli. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte CASEY MAUREEN DOUGHERTY and
MELISSA BREGLIO HAJJ
Appeal 2016-0024101
Application 13/450,4192
Technology Center 3600
Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—10 and 12—23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
Aug. 3, 2015) and Reply Br. (“Reply Br.,” filed Dec. 22, 2015), and the
Examiner’s Answer (“Ans.,” mailed Oct. 22, 2015) and Final Office Action
(“Final Act.,” mailed Feb. 6, 2015).
2 Appellants identify Apple Inc. as the real party in interest. App. Br. 2.
Appeal 2016-002410
Application 13/450,419
CLAIMED INVENTION
Appellants’ claimed invention “relates generally to gifting and more
specifically to techniques and systems for personalizing digital gifts
available on an online store.” Spec. 11.
Claims 1, 14, 22, and 23 are the independent claims on appeal. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method comprising:
receiving, from a first device signed into a first user
account, a selected segment of a digital media item from an
online media store library corresponding to the first user account,
wherein the selected segment is to be associated with a second
user account, and wherein the selected segment comprises a
portion of playable media content from the digital media item
selected on the first device;
personalizing, via a processor, the digital media item with
a personal message to generate a gifted digital media item, the
personal message including the selected segment;
notifying, via a plurality of social networking services, a
second device associated with the second user account that the
gifted digital media item is available for redemption, wherein
notifying the second device comprises posting a message on a
plurality of pages associated with the second user account, the
pages belonging to the plurality of social networking services;
receiving a request from the second device to redeem the
gifted digital media item; and
associating the gifted digital media item and personal
message with an online media store library corresponding to the
second user account in response to the request; and
updating the plurality of pages associated with the second
user account with the redeemed status of the gifted digital media
item.
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Application 13/450,419
REJECTIONS3
Claims 1—10 and 12—23 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lin (US 2010/0082489 Al, pub. Apr. 1, 2010), Gadel (US
2010/0223314 Al, pub. Sept. 2, 2010), and Berner (US 2013/0246524 Al,
pub. Sept. 19, 2013).
ANALYSIS
Non-Statutory Subject Matter
In rejecting claims 1—10 and 12—23 under 35 U.S.C. § 101, the
Examiner finds that the claims are directed to the abstract idea of gifting an
item, which is similar to the concept of a “human activity relating to
commercial practices (e.g., hedging),” which the Federal Circuit concluded
is an abstract idea. Final Act. 2—3 (citing Bilski v. Kappos, 130 S. Ct. 3218
(2010)). And the Examiner finds that the additional elements, viewed
individually and as an ordered combination, are used for data gathering and,
thus, do not add significantly more to the abstract idea of gifting an item. Id.
at 3. Instead, the Examiner finds that the additional elements represent
insignificant pre-solution activity, and merely limit the abstract idea to a
particular technological environment. See id.
Appellants argue that the claims solve a problem found in electronic
media distribution wherein every copy is an exact digital copy of the
original. App. Br. 8—10. In this regard, Appellants contend that although
3 In the event of further prosecution, the Examiner and Appellants should be
aware that claim 12 depends from canceled claim 11.
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Application 13/450,419
digital media can be gifted, it cannot be readily personalized; instead, each
copy is an “exact digital copy” of the digital media purchased at an online
store. Id. at 8; see also Reply Br. 2 (“[t]he claimed invention, when viewed
as a whole, includes creating a personalized digital media item,. . . [which is
a solution] rooted in technology”). Appellants’ arguments are persuasive.
Here, claim 1 recites receiving “a selected segment of a digital media
item” that “comprises a portion of playable media content from the digital
media item selected on the first device,” and “personalizing ... the digital
media item with a personal message to generate a gifted digital media item,
the personal message including the selected segment.” In other words, the
claim personalizes or customizes the digital media item with a personal
message (i.e., a custom message) that includes a selected segment of
playable media from the digital media item (i.e., a custom segment).
Moreover, the Background section of the Specification describes the
claimed invention’s advance over the prior art as a technique for
personalizing or customizing gifts of digital media. See Spec. ]ff[ 4 (“[a] user
can select a song from an online store and gift the song to another user[, but]
there is still a need for improved techniques for personalizing gifts of digital
content”), 24 (the invention “addresses the need in the art for systems,
techniques, and methods for personalizing a gift of digital media”).
Metadata created by the user for personalization is attached to the copy of
the digital media item to be gifted. Id. H 38, 41 (“[p]ersonalization
metadata . . . can be stored separately and combined with the master copy
before the digital media item is presented to the user), 64. In addition, the
Specification describes programming the digital media item to include “hot
spots,” which are predetermined areas on the digital media that the user can
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Application 13/450,419
select to initiate an action, such as gifting the digital media item. Id. 143.
The selected segment can be included in the personalization of the digital
media item. Id. 146.
The Examiner finds that the claims are not directed to customizing a
digital media item, but instead are directed to customizing a message that
accompanies a gift. Ans. 5. And the Examiner determines that customizing
a message is “well known outside of the [Ijntemet and is not a problem
arising in a particular computer realm.” Id. But the present record fails to
adequately support the determination that the claimed invention is not rooted
in technology, and does not solve a problem of being able to personalize a
digital media item specifically for a gift recipient.
Therefore, we do not sustain the Examiner’s rejection of claims 1—10
and 12-23 under 35 U.S.C. § 101.
Obviousness
Appellants do not present arguments in response to the Examiner’s
rejection of claim 22 under 35 U.S.C. § 103(a). App. Br. 15. Therefore, we
summarily sustain the Examiner’s rejection under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1—10 and 12—23 under 35 U.S.C.
§ 101 is reversed.
The Examiner’s rejection of claims 22 under 35 U.S.C. § 103(a) is
affirmed.
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Appeal 2016-002410
Application 13/450,419
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-IN-PART
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