Ex Parte Lester et al

Patent Trial and Appeal Board

Oct 24, 2016

12749177 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121749,177 03/29/2010
106503 7590 10/26/2016
AEON Law/Intel
Adam Philipp
c/o CPA Global
900 2nd A venue South, Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
James P. Lester
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.
P46302C 6593
EXAMINER
JOSHI, SURAJ M
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
10/26/2016 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):
patents@aeonlaw.com
inteldocs _ docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES P. LESTER and ALEXANDER J. KIRK
Appeal2015-005099
Application 12/749,177
Technology Center 2400
Before MAHSHID D. SAADAT, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-3 and 6-17, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Intel Corporation.
App. Br. 3.
Appeal2015-005099
Application 12/749,177
STATEMENT OF THE CASE
The Invention
According to the Specification, "[t]he invention relates to electronic
media delivery, and more particularly, to interactive delivery of electronic
media over a network to a group of users." Spec. ,-r 2. 2 For example,
"a media server maintains a play list of media files to broadcast, and requests
for media must satisfy certain restrictive criteria to be added to the play list."
Abstract. If the requested media satisfies "a set of restrictive criteria, the
media server will seamlessly schedule the requested media for later
broadcasting to the clients." Spec. ,-r 9.
Representative Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows, with italics identifying the
limitations at issue in claim 1:
1. A computer implemented method of interactively
delivering media over a computer network from a media server
to a plurality of clients, the method comprising:
generating a play list that defines a plurality of media files
in an order, the play list satisfying a set of restrictive criteria, the
playlist having been defined by a first client among the plurality
of clients;
sequentially transmitting the media files as defined by the
playlist over the computer network to the plurality of clients,
which media files are to be rendered in real time by the plurality
of clients;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed March 29, 2010; "Final Act." for the Final Office Action,
mailed July 8, 2014; "App. Br." for the Appeal Brief, filed December 2,
2014; "Ans." for the Examiner's Answer, mailed February 10, 2015; and
"Reply Br." for the Reply Brief, filed April 10, 2015.
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Application 12/749,177
while transmitting the media files, receiving a request
from one of the plurality of clients other than the first client
among the plurality of clients to add a media file to the play list;
and
while transmitting the media files, scheduling the
requested media file into the play list if the updated play list would
satisfj; the restrictive criteria, whereby the media files are
transmitted to each of the plurality of clients according to the
updated playlist.
App. Br. 32 (Claims App.).
The Prior Art Supporting the Rejection on Appeal
Dwek US 6,248,946 B 1
Dunning et al. ("Dunning") US 2002/0082901 Al
Lapcevic US 7,756,743 Bl
The Rejection on Appeal
June 19, 2001
June 27, 2002
July 13, 2010
(filed June 21, 2000)
Claims 1-3 and 6-17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dunning, D\x1ek, and Lapcevic. Final i'.\~ct. 3-12; ii~pp.
Br. 11, 15; Ans. 2-11.
ANALYSIS
We have reviewed the rejection of claims 1-3 and 6-17 in light of
Appellants' arguments that the Examiner erred. For the reasons explained
below, we disagree with Appellants' assertions regarding error by the
Examiner.
The Rejection of Claims 1and2 Under 35 U.S.C. § 103(a)
Appellants argue that no reference "teach[ es] or suggest[ s] a user-
defined channel which is edited by a user other than the original user who
created the user-defined channel and that the edited user-defined channel is
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Application 12/749,177
then sent to both users and rendered in real time." App. Br. 17; see id. at 16.
Appellants then address each reference and seek to distinguish it from the
claimed subject matter. Id. at 17-30.
For Dwek, Appellants note that the Examiner cites (1) a portion of
column 10 concerning changes to a user-defined channel and (2) a portion of
column 11 concerning shared-channel playback and streaming. App.
Br. 17-18; see id. at 25. Appellants contend that by citing those two
portions of Dwek the Examiner improperly conflates "i) a change to a
playlist made by the person who created the playlist with ii) a request to
change a playlist made by someone else." Id. at 18-19; see id. at 25; see
also Reply Br. 4--5. Appellants also contend that those two portions are
"unrelated" and that Dwek does not "affirmatively teach" that changes to a
user-defined shared channel will upload and propagate to users currently
listening to the shared channel. App. Br. 24--25, 30; see Reply Br. 5---6, 7-8.
In addition, Appellants assert that in Dwek only the creator of a user-
defined channel can change that channel. App. Br. 20-23, 25; Reply Br. 5.
Appellants point out that Dwek Figure 3B depicts the interface for a user-
defined channel and that interface includes an "edit" button permitting the
creator to modify the user-defined channel. Id. at 21-22. Appellants then
point out that Dwek Figure 3C depicts the interface for a shared channel and,
in contrast to the Figure 3B interface, the Figure 3C interface lacks an "edit"
button. Id. at 22-23.
For Dunning, Appellants concede that Dunning teaches that a first
user may create a channel or playlist that the first user may share with a
second user. App. Br. 26. But Appellants argue that Dunning-like
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Application 12/749,177
Dwek---does not disclose that the second user has the ability to modify the
channel or playlist created by the first user. Id.
For Lapcevic, Appellants assert that the Examiner wrongly relies on
Lapcevic for the "real time" features recited in the claims because Lapcevic
describes a "highly manual" process that provides weekly updates. App.
Br. 26-28. Appellants also assert that Lapcevic does not teach a "client"
according to the claims that requests a play list change. Id. at 27. In
particular, Appellants contend that the Application defines a "client" as a
"computer" and, in contrast, "facility personnel" in Lapcevic gather "user
input" concerning future content and utilize the "user input" to provide
information to a "central network computer" that generates a new or updated
playlist in some unspecified manner. Id. at 27-28.
In response, the Examiner explains that the combination of references
teaches the claimed subject matter, in particular, (1) Dunning teaches the use
of restrictive criteria for play lists, (2) Dwek teaches a user-defined play list
that the playlist's creator may share with others and real-time streaming of a
shared playlist to multiple users, and (3) Lapcevic teaches that a user other
than the playlist's creator may request a playlist change. Ans. 13-14.
In reply, Appellants do not address the combined teachings of the
references and instead dispute that a particular reference discloses a
particular feature. Reply Br. 3-8. As an example, Appellants contend that
"[n]either DUNNING nor DWEK dealt with interactive, real time playlists."
Id. at 7. As another example, Appellants contend that Lapcevic lacks "a real
time aspect" because it concerns a "relatively old system" where playlist
changes occur through a manual process spread "across days, weeks, or even
months." Id. at 6-7.
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In addition, Appellants argue that the Answer presents a "different
analysis" for Dwek and Lapcevic than the Final Office Action and that the
Answer "does not squarely address" the claim language. Reply Br. 3--4.
Appellants also argue that Dwek and Dunning teach away from the claimed
subject matter. Reply Br. 5, 7.
We agree with the Examiner that the combination of references
teaches the claimed subject matter. Ans. 13-14; see id. at 2-11; Final
Act. 2-12. In essence, Appellants address the references individually, e.g.,
asserting that each does not teach or suggest a second user requesting a
change to a channel or playlist created by a first user where the second user
makes the request during media-file transmission or broadcasting. App.
Br. 16-30; Reply Br. 3-8. For instance, Appellants argue that the Examiner
wrongly relies on Lapcevic for the "real time" features recited in the claims.
App. Br. 26-28. But the Examiner relies on Dwek for the "real time"
features. Final Act. 2-3, 5---6; Ans. 4--5, 13-14.
Where a rejection rests on a combination of references, an appellant
cannot establish nonobviousness by attacking the references individually.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Moreover,
"the test for combining references is not what the individual references
themselves suggest but rather what the combination of disclosures taken as a
whole would suggest to one of ordinary skill in the art." In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971); see In re Keller, 642 F.2d 413, 425
(CCPA 1981). Appellants do not address what the combination of
references "taken as a whole would suggest to one of ordinary skill in the
art" and, therefore, have not established Examiner error. App. Br. 16-30;
Reply Br. 3-8.
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As for Appellants' assertions seeking to distinguish Lapcevic based
on a "client" according to the claims differing from a change requester
according to Lapcevic, those assertions disregard the Specification's
disclosure as well as the claim language. While claim 1 refers to a "client"
or multiple "clients," claim 2 refers to a "user" or multiple "users." App.
Br. 32-33 (Claims App.). Appellants admit that "Claim 2 contains language
equivalent to Claim 1 for the purpose of this Appeal." Id. at 12. Moreover,
the Specification explains that a "client" may comprise (1) "a system owned
by a user capable of receiving media over a network, such as a personal
computer," or (2) "another device equipped to receive and play media, such
as a cellular telephone or a personal digital assistant (PDA)." Spec. i-f 20. So
the Specification broadly describes a "client" as a user-operated device
capable of receiving media.
Lapcevic discloses a user-operated device capable of receiving media
that requests a playlist change. In particular, Lapcevic teaches that users can
provide input regarding future content through a kiosk or a computer, e.g.,
"any computer suitable to access the Internet." Lapcevic 4:8-12, 4:19-25,
7:67-8:2, Fig. 1 (kiosks 44, computers 46 and 47); see also id. 5:29-32,
7:39--40.
As for Appellants' contentions concerning the cited portions of
columns 10 and 11 in Dwek being "unrelated" and the failure of Dwek to
"affirmatively teach" that changes to a user-defined shared channel will
upload and propagate to users currently listening to the shared channel, those
contentions disregard the principle that a prior-art reference must be
considered in its entirety for what it fairly teaches to one skilled in the art.
See In re Fracalossi, 681 F .2d 792, 794 n.1 (CCP A 1982).
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Also, an obviousness analysis "need not seek out precise teachings
directed to the specific subject matter of the challenged claim" because the
analysis "can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." Id. at 421.
Here, based on the cited portions of columns 10 and 11 in Dwek,
a person of ordinary skill would appreciate that changes to a user-defined
shared channel should propagate to users who subsequently access that
channel. See Dwek 10:60-67, 11:23-32; see also Final Act. 2-3, 6;
Ans. 4--5.
As for Figures 3B and 3C in Dwek, they "show a preferred
embodiment of a user interface .... " Dwek 5:34--35. They do not restrict
the concepts disclosed in Dwek. See id. 18:7-16.
As for Appellants' teaching-away arguments, they do not respond to
any arguments in the Answer. Appellants present them for the first time in
the Reply Brief. Such arguments "will not be considered by the Board"
unless an appellant shows good cause. See 37 C.F.R. § 41.41(b)(2); see also
Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) ("informative")
(discussing procedural difficulties with belated arguments). Here,
Appellants have not shown good cause for belatedly presenting their
teaching-away arguments. Thus, those arguments are deemed waived.
Accordingly, Appellants' arguments have not persuaded us that the
Examiner erred in rejecting claims 1 and 2 for obviousness based on
Dunning, Dwek, and Lapcevic. Hence, we sustain the rejection.
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The Rejection of Claim 3 Under 35 U.S.C. § 103(a)
In the Final Office Action, the Examiner states, "The limitations of
Claim 3 are rejected in the analysis of Claim 1 above, and the claim is
rejected on that basis." Final Act. 7. Appellants contend that independent
method claim 3 "contains different language" than claim 1 and that the
rejection of claim 1 did not address that different language. App. Br. 12-13.
In particular, Appellants assert that the rejection of claim 1 did not address
claim 3 's requirement regarding "the restrictive criteria including a set of
channel preferences unique between at least two channels." Id. at 13.
In the Answer, the Examiner determines that the combination of
references used to reject claim 1 teaches "the restrictive criteria including a
set of channel preferences unique between at least two channels." Ans. 12.
More specifically, the Examiner finds that: (1) Dunning teaches streaming
different jukebox track selections (channels) "subject to various
constraints/definitions (restrictive criteria)," such as different music genres
(e.g., rock versus country/western); and (2) "Dwek further improves upon
Dunning" by teaching "shared unique channels also subject to restrictive
criteria," i.e., restrictive criteria corresponding to preferences "unique to
each individual user, and thus unique between at least two channels."
Ans. 12 (citing Dunning i-fi-186, 119; Dwek 10:60-67, Fig. 3B, Fig. 3C).
Regarding the combination of references used to reject claim 3,
Appellants argue that the Examiner has "never described how two different,
unique, user preferences are integrated" into one channel or playlist that "is
sent to both users" during media-file transmission or broadcasting. Reply
Br. 10. But claim 3 does not require integrating different "restrictive
criteria" into one channel or playlist. App. Br. 33 (Claims App.). Rather,
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claim 3 requires that different "restrictive criteria" apply to the different
channels. Id.; see Spec. i-f 32 (stating that "distinct sets of restrictive criteria
may beneficially help to maintain the logical character or category of each
channel").
As the Examiner explains, if user A defines channel A employing
user A's unique preferences and user B defines channel B employing
user B's unique preferences, different "restrictive criteria" apply to the
different channels. See Ans. 12. Those "restrictive criteria" correspond to
"a set of channel preferences unique between at least two channels" as
recited in claim 3.
Appellants argue that (1) "neither DWEK nor DUNNING imagine
real time interaction with the playlist, as it is being streamed" and
(2) "LAPCEVIC did not include a real time component." Reply Br. 11.
Although Appellants include those arguments in the Reply Brief section
concerning claim 3, those arguments do not relate to claim 3 's requirement
regarding "the restrictive criteria including a set of channel preferences
unique between at least two channels."
As discussed above, the Examiner relies on Dwek for the "real time"
features recited in the claims. Final Act. 2-3, 5---6; Ans. 4-5, 13-14. Dwek
explains that "[a] user may edit an existing user-defined channel," for
example, by modifying "the musical preferences for the user-defined
channel." Dwek 10:60---67. That explanation does not limit an editor-user to
a creator-user or place any restrictions on when an editor-user may change a
user-defined channel. Id. Additionally, that explanation does not indicate
that any delay occurs before changes become effective once an editor-user
changes a user-defined channel. Id. Appellants do not contend that
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changing a user-defined channel in real time provides some surprising or
unexpected advantage. App. Br. 13-30; Reply Br. 3-12. Nor have
Appellants presented any evidence demonstrating that the modification
would have been "uniquely challenging or difficult for one of ordinary skill
in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007).
Appellants further argue that Lapcevic "was fundamentally not
addressed to the question of how to reconcile potentially conflicting user
demands with respect to one user-created playlist." Reply Br. 11. But
claim 3 does not include any requirement regarding "reconcil[ing]
potentially conflicting user demands with respect to one user-created
playlist." App. Br. 33 (Claims App.). Thus, Appellants' argument is not
commensurate in scope with claim 3.
Accordingly, Appellants' arguments have not persuaded us that the
Examiner erred in rejecting claim 3 for obviousness based on Dunning,
Dwek, and Lapcevic. Hence, we sustain the rejection.
The Rejection of Claims 6--17 Under 35 U.S.C. § 103(a)
Claims 6-12 depend directly or indirectly from claim 1; claims 13-14
depend directly from claim 2; and claims 15-17 depend directly from
claim 3. App. Br. 33-35 (Claims App.). Appellants do not present any
separate patentability arguments for any dependent claims. App. Br. 12-31;
Reply Br. 2-12. Because Appellants do not argue the dependent claims
separately, we sustain the obviousness rejection of the dependent claims for
the reasons applicable to the independent claims. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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DECISION
We affirm the Examiner's decision to reject claims 1-3 and 6-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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