Ex Parte Novak et al

Patent Trial and Appeal Board

Oct 26, 2017

09817801 (P.T.A.B. Oct. 26, 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.
09/817,801 03/26/2001 Michael J. Novak 037834.00170/150649-US-NP 8360
141746 7590 10/30/2017
ARENT FOX LLP& Microsoft Technology Licensing, LLC
1717 K Street, NW
WASHINGTON, DC 20006-5344
EXAMINER
SHIN, KYUNG H
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
patentdocket @ arentfox. com
U S Docket @ micro soft. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. NOVAK, GEOFFREY HARRIS,
and KIPLEY J. OLSON
Appeal 2017-005361
Application 09/817,801
Technology Center 2400
Before ALLEN R. MacDONALD, BRYAN F. MOORE, and
TREVOR M. JEFFERSON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-005361
Application 09/817,801
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—5, 7—16, 18—22, 24—32, 34—39, 41—51, 54—65, and 69. Claims 6,
17, 23, 33, 40, 52—53, and 66—68 were cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claims
Exemplary claims 1 and 12 under appeal read as follows (emphasis
added):
1. A method of providing a user experience when
playing media on a media player comprising:
downloading a file that includes:
media content;
data associated with the media content; and
user interface data associated with the media
content, wherein the user interface data defines a
custom graphical interface, the custom graphical
interface including a user interface element for
presenting the data associated with the media
content;
playing the media content with a media player; and
when the media content is played with the media
player, automatically modifying a user interface of the
media player to display the custom graphical interface,
including the user interface element, and presenting the
data associated with the media content via the user
interface element of the custom graphical interface.
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12. A method of organizing media content comprising:
providing at least one media content file configured for
play via a media player;
providing at least one media-specific file associated with
the at least one media content file, the media-specific file
configured to provide a custom graphical user interface control
on at least a portion of a media player user interface;
providing a metafile that associates the at least one
media-specific file with the at least one media content file,
packaging the at least one media-specific file, the
metafile, and the at least one media content file in a single
downloadable file,
determining that a link associated with the at least one
media content file has been selected, and
sending the single downloadable file to a client computer.
Rejections on Appeal
1. The Examiner rejected claims 1—4, 8—10, 12, 15—16, 18—19, 21—22,
24—26, 28-32, 35-39, 42, 4A47, 49-51, and 5A-65 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Dwek
(US 6,248,946 Bl; issued June 19, 2001), Chasen (US 6,760,721 Bl; issued
July 6, 2004), Bodin (US 6,223,224 Bl; issued Apr. 24, 2001), and Eyal
(US 6,389,467 Bl; issued May 14, 2002).* 1
1 The patentability of claims 2—4, 8—10, 15—16, 18—19, 21—22, 24—26, 28—32,
35—39, 43—47, 49—51, and 54—65 is not separately argued from that of claims
1 or 12. See App. Br. 37-40. Appellants’ arguments for patentability of
claims 5, 7, 11, 13—14, 20, 27, 34, 41—42, 48, and 69 relies upon Appellants’
arguments of patentability of claims 1 and 12. See App. Br. 41—43. Thus,
except for our ultimate decision, claims 2—5, 7—11, 13—16, 18—22, 24—32,
34—39, 41—51, 54—65, and 69 are not discussed further herein.
Appellants’ argument for patentability of claims 5,7, 11, 13—14, 20, 27, 34,
41—42, 48, and 69 also cites CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d
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2. The Examiner rejected claims 5, 14, 20, 27, 34, 43, 48, and 69
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Dwek, Chasen, Bodin, Eyal, and van Zoest (US 6,496,802 Bl; issued Dec.
17, 2002).
3. The Examiner rejected claims 7, 11, 13, and 41 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Dwek,
Chasen, Bodin, Eyal, and England (US 6,330,670 Bl; issued Dec. 11, 2001).
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The Office Action cites Eyal as allegedly teaching, “when the
media content is played with the media player,” “automatically
modifying a user interface of the media player,” as claim 1
recites. [] However, Eyal does not teach, “when the media
content is played,” “automatically modifying a user interface of
the media player” “to display the custom graphical interface,
including the user interface element, and presenting the data
associated with the media content via the user interface element
of the custom graphical interface,” as claim 1 recites.
Instead, Eyal discusses a “second window 2210 showing a web
site” containing, for example, “banner ads, artist name and titles,
and copyright information,” wherein the “second window” is
1333, 1342 for the outdated proposition that “obviousness requires a
suggestion of all limitations in a claim.” See App. Br. 41^42. However, the
Supreme Court has subsequently held that, when considering obviousness,
“the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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Application 09/817,801
“displayed on the desktop alongside]” the “user-interface 1900”
for the “media playback system.”
Eyal does not teach that “when the media content is played,”
“automatically modifying a user interface of the media player”
and “presenting the data associated with the media content via
the user interface element of the custom graphical interface,” as
claim 1 recites. Rather, Eyal describes launching a new web
browser window to display additional data while media content
is presented via the separate media player.
Appellant respectfully disagrees with the Examiner that EyaVs
“second window” “discloses one or more windows comprising
a user interface analogous to a user interface defined by the
[Appellanfs] specificationas the Office Action states.
Assuming for the sake of argument that the second window that
Eyal describes modifies any user interface, it is the user interface
of the desktop, so that the desktop contains a user-interface 1900
and a second window 2210. However, the Examiner has not
shown that the desktop of Eyal is a “user interface of the media
player,” as claim 1 recites. Thus, Eyal does not teach at least
“automatically modifying a user interface of the media player
to display the custom graphical interface, including the user
interface element, and presenting the data associated with the
media content via the user interface element of the custom
graphical interface,” as claim 1 recites.
App. Br. 33, 35—37, Appellants’ emphasis and citations omitted, panel’s
emphasis added; see also Reply Br. 4—6.
2. Appellants also contend that the Examiner erred in rejecting claim
12 under 35 U.S.C. § 103(a) because:
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In the rejection of independent claim 12, the Office cites Dwek
as allegedly teaching “providing a metafile that associates the at
least one media-specific file with the at least one media content
file,” as claim 12 recites. [] Dwek does not so teach. In contrast,
Dwek describes a ‘“skins’ button to allow a user to create, or
select a [pre-created], ‘skin’ or custom appearance template for
the user interface 250 of the music player 120.” [] Thus, Dwek
merely describes the creation or selection of skins for a user
interface, but provides no teaching or suggestion of “a metafile
that associates the at least one media-specific file with the at
least one media content file, ” as claim 12 recites.
App. Br. 39, Appellants’ citations omitted, panel’s emphasis added.
Issue on Appeal
Did the Examiner err in rejecting claims 1 and 12 as being obvious?
PRINCIPLES OF LAW
The Supreme Court has rejected the rigid requirement of
demonstrating a teaching, suggestion, or motivation to combine references in
order to show obviousness. See KSR, 550 U.S. at 419. Instead, a rejection
based on obviousness only needs to be supported by “some articulated
reasoning with some rational underpinning” to combine known elements in
the manner required by the claim. Id. at 418. Further, one cannot show non­
obviousness by attacking references individually when the rejection is based
on a combination of references. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA
1981).
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We adopt as our own: (1) the findings and reasons set forth by
the Examiner in the action from which the appeal is taken (Final Act. 2-49);
and (2) the reasons set forth by the Examiner in the Examiner’s Answer
(Ans. 2—51) in response to the Appellants’ Appeal Brief. We concur with
the conclusions reached by the Examiner. We add the following.
As to Appellants’ above contention 1, we are not persuaded the
Examiner erred. Appellants’ argument that Eyal does not teach or suggest
automatically modifying a user interface of a media player to display data
associated with media content because Eyal’s second window is a user
interface of a desktop rather than the claimed “media player” does not
address the Examiner’s combination of references. More specifically, the
Examiner relied upon Dwek to teach updating an appearance of a user
interface of a media player via a user interacting with a graphically
displayed button within the user interface, and further relied upon Eyal to
teach automatically modifying a displayed user interface to open a second
window that displays media-associated content. See Final Act. 3, 5—6 (citing
Dwek 11:66—12:4, 15:14—18; Eyal 37:62—38:9); see also Ans. 44-45. As
Appellants’ argument does address the actual reasoning of the Examiner’s
rejection, the argument is not persuasive.
Thus, we conclude the Examiner did not err in rejecting claim 1 under
35 U.S.C. § 103(a) in light of the cited prior art references. Accordingly, we
sustain the rejection of claim 1.
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As to Appellants’ above contention 2, we are not persuaded the
Examiner erred. Similar to Appellants’ contention 1, Appellants’ argument
that Dwek fails to teach or suggest a metafile that associates a media-
specific file with a media content file because Dwek merely describes the
creation or selection of a “skin” for a user interface does not address the
Examiner’s combination of references. More specifically, the Examiner
relied upon Dwek to teach an association of media content and a user
interface template (or media-specific information, e.g., advertisement
information), and further relied upon Chasen to teach a database that stores
metadata that includes information describing content data along with the
content data itself. See Final Act. 8 (citing Dwek 11:66—12:4, 15:14—18;
Chasen 1:65—2:7); see also Chasen 9:25—51. As Appellants’ argument does
address the actual reasoning of the Examiner’s rejection, the argument is not
persuasive.
Thus, we conclude the Examiner did not err in rejecting claim 12
under 35 U.S.C. § 103(a) in light of the cited prior art references.
Accordingly, we sustain the rejection of claim 12.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—5, 7—16, 18—22,
24—32, 34—39, 41—51, 54—65, and 69 as being unpatentable under
35 U.S.C. § 103(a).
(2) Claims 1-5, 7-16, 18-22, 2U-32, 34—39, 41-51, 54—65, and 69
are not patentable.
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DECISION* 2
We affirm the Examiner’s rejection of claims 1—5, 7—16, 18—22,
24—32, 34—39, 41—51, 54—65, and 69 as being unpatentable under
35 U.S.C. § 103(a).
2 As the Examiner has shown that claims 1—5, 7—16, 18—22, 24—32, 34—39,
41—51, 54—65, and 69 are not patentable, we do not further address whether
claims 18, 24, 54, 60, and 65 should be rejected under 35 U.S.C. § 112,
second paragraph, for being indefinite. However, should there be further
prosecution of these claims, the Examiner’s attention is directed to our
following concern.
Appellants’ application as filed contained sixty-eight claims, nineteen
of which (claims 1, 8, 9, 12, 19, 25, 28, 31, 32, 39, 45, 50, 51, 55, 56, 61, 63,
66, and 68) depended from no other claim and, therefore, are independent
claims. Five other claims (claims 18, 24, 54, 60, and 65) were structured as
an article of manufacture (“one or more computer-readable media”), each
referencing a method claim for its limitations. Although such
“manufacture/method” claims are sometimes construed as independent
claims that reference other claims for certain limitations, here the intrinsic
evidence does not support such an interpretation. Rather, this record
requires us to interpret claims 18, 24, 54, 60, and 65 as dependent
manufacture claims, which depend from parent method claims. The
evidence supporting such an interpretation includes: (1) Appellants’ New
Application Fee Transmittal form, filed November 9, 2001, which states
only nineteen (not twenty-four) independent claims have been filed;
(2) Appellants’ Appeal Brief at page 8, which states “each independent
claim (claims 1, 8, 9, 12, 19, 25, 28, 31, 32, 39, 45, 50, 51, 55, 56, 61, and
63)”.
Because claims 18, 24, 54, 60, and 65 each recite both an article of
manufacture (“one or more computer-readable memories”) and a method (by
their dependency) for using that manufacture, they do not apprise a person of
ordinary skill in the art of their scope, and they are unclear. Particularly, it is
unclear whether infringement occurs when one creates a manufacture that
allows the user to perform the method, or whether infringement occurs when
the user actually uses the manufacture to perform the method. See IPXL
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383—84 (Fed.
Cir. 2005) (holding claims indefinite because they claimed both a system
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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
and a method for using that system) and In re Katz, 639F.3d 1303, 1318
(Fed. Cir. 2011) (holding claims indefinite because they claimed both an
apparatus and method of use). We note that Appellants are not precluded
from declaring claims 18, 24, 54, 60, and 65 to be independent claims, and
paying the appropriate fees.
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