Ex Parte Kreitzer et al

Board of Patent Appeals and Interferences

May 8, 2012

11284750 (B.P.A.I. May. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STUART S. KREITZER, JOSEPH L. DVORAK,
and CHARLES D. ESTES
____________

Appeal 2010-005768
Application 11/284,750
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and ANDREW
CALDWELL, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

Appeal 2010-005768
Application 11/284,750

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STATEMENT OF THE CASE
Appellants’ invention shares podcast information while the podcast
plays. See generally Spec. ¶¶ 0004-08. Claim 1 is illustrative with key
disputed limitations emphasized:
1. A method of sharing podcast information, comprising the steps of:

playing a podcast having associated metadata on a wireless
communication device;

and

transferring a hyperlink and the associated metadata to a remote
device while playing the podcast on the wireless communication device.

RELATED APPEAL
This appeal is said to be related to Application No. 11/284,751
(Appeal No. 2010-002740). Br. 2.

THE REJECTIONS
1. The Examiner provisionally rejected claims 1-20 over the ground
of non-statutory obviousness-type double patenting as unpatentable over
claims 1-20 of Application No. 11/284,751. Ans. 3-4.
2. The Examiner rejected claims 1-20 under 35 U.S.C. § 102(e) as
anticipated by Jones (US 2006/0265503 A1; Nov. 23, 2006 (filed June 25,
2005)). Ans. 4-7.1

1 Throughout this opinion, we refer to the Appeal Brief filed July 28, 2009,
and the Examiner’s Answer mailed September 4, 2009.
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Application 11/284,750

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THE DOUBLE PATENTING REJECTION
Since Appellants present no arguments pertaining to the Examiner’s
provisional double patenting rejection of claims 1-20, we summarily sustain
this rejection. See MPEP § 1205.02, 8th ed., Rev. 8, July 2010 (“If a ground
of rejection stated by the examiner is not addressed in the appellant's brief,
that ground of rejection will be summarily sustained by the Board.”).

THE ANTICIPATION REJECTION
The Examiner finds that Jones discloses every recited feature of
independent claim 1 including transferring a hyperlink and appended
metadata while a user plays a podcast. Ans. 3-4, 9. According to the
Examiner, Jones updates podcasts only when they are “active.” Ans. 4, 9.
Appellants argue that Jones does not transfer a hyperlink and
appended metadata while a user plays a podcast, let alone do so on a
wireless communication device as claimed. Br. 4-5. According to
Appellants, an active podcast does not mean that it is playing during updates
as the Examiner contends. Br. 5. The issue before us, then, is as follows:

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Jones transfers a hyperlink and appended metadata while a user plays a
podcast?

ANALYSIS
We agree with Appellants (Br. 4-5) that the Examiner’s anticipation
rejection based on Jones is erroneous. Claim 1 unambiguously requires that
Appeal 2010-005768
Application 11/284,750

4
the recited transfer occurs while a user plays a podcast—simultaneous
events that do not necessarily occur in Jones. Even assuming, without
deciding, that the user’s selecting a link to a podcast preview page in a
publication message transfers a hyperlink and appended metadata as the
Examiner seems to suggest (see Ans. 4, 7-8) (citing Jones, ¶ 0065), we
cannot say—nor has the Examiner shown—that this transfer necessarily
occurs while the user plays a podcast. If anything, this functionality
suggests just the opposite, since this link transfer merely verifies that a user
wants to publish a podcast on a remote site before it is available to play. See
Jones, ¶¶ 0064-65; Figs. 4-5B (discussing podcast preview and publication).
The Examiner’s reliance on Jones’ updating “active” podcasts (Ans.
4, 7-8) is likewise unavailing. As Appellants indicate (Br. 5), an “active”
podcast in Jones’ parlance does not necessarily mean that it is playing, let
alone while hyperlink and appended metadata are transferred as claimed.
Rather, Jones determines a podcast’s activity with respect to (1) the number
of downloads, and (2) when the initial episode was downloaded. Jones, ¶¶
0111-12; Fig. 13. This podcast activity determination also examines client
activity from when the initial episode was downloaded to determine user
interest. Jones, ¶ 0112; Fig. 13 (step 1306). If a podcast is deemed “active”
based on this determination, new episodes are downloaded to the client.
Jones, ¶¶ 0107-10; Fig. 12.
Even assuming, without deciding, that the monitored client activity to
determine “active” podcasts involves playing them, we cannot say—nor has
the Examiner shown—that this playing occurs when the recited hyperlink
and appended metadata are transferred—a crucial temporal requirement of
claim 1.
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We are therefore persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 10 and 17 which recite
commensurate limitations; and (3) the dependent claims for similar reasons.

CONCLUSION
The Examiner did not err in rejecting claims 1-20 under the doctrine
of obviousness-type double patenting, but erred in rejecting claims 1-20
under § 102.

ORDER
The Examiner’s decision rejecting claims 1-20 is 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)(1)(iv).

AFFIRMED

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