Ex Parte Kreitzer et al

Board of Patent Appeals and Interferences

May 8, 2012

11284751 (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 2010-002740
Application 11/284,751
Technology Center 2400
____________

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

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002740
Application 11/284,751

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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
reverse.

STATEMENT OF THE CASE
Appellants’ invention shares podcast information while the podcast
plays. See generally Spec. ¶¶ 0004-07. Claim 1 is illustrative with key
disputed limitations emphasized:
1. A machine-readable storage, having stored thereon a computer
program having a plurality of code sections executable by a machine for
causing the machine to provide a communication construct used for sharing
podcast information associated with a podcast, and causing the machine to:
obtain a hyperlink capable of being sent to a remote device while
playing the podcast;
append metadata to the hyperlink associated with the podcast; and
transfer the hyperlink and the appended metadata while the a [sic]
user is playing the podcast.

RELATED APPEAL
This appeal is said to be related to Application No. 11/284,750
(Appeal No. 2010-005768). Br. 2.

THE REJECTION
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. 3-8.1

1 Throughout this opinion, we refer to the Appeal Brief filed July 28, 2009,
and the Examiner’s Answer mailed September 9, 2009.
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Application 11/284,751

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CONTENTIONS
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 does 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 begin by noting that independent claim 1 is broader that
independent claim 19 in two respects, namely by not requiring transferring
the hyperlink and appended metadata to a remote device while playing a
podcast on a wireless communication device. Rather, claim 1 more broadly
recites transferring a hyperlink and appended metadata to an unspecified
location while a user plays a podcast on an unspecified device.
Despite these distinctions, however, we agree with Appellants (Br. 4-
5) that the Examiner’s reliance on Jones for these features is erroneous.
Claim 1 unambiguously requires that the recited transfer occurs while a user
Appeal 2010-002740
Application 11/284,751

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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, 9 (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, 9) 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 19 which recite
commensurate limitations; and (3) the dependent claims for similar reasons.

CONCLUSION
The Examiner erred in rejecting claims 1-20 under § 102.

ORDER
The Examiner’s decision rejecting claims 1-20 is reversed.

REVERSED

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