Ex Parte Sadovsky et al

Patent Trial and Appeal Board

Mar 29, 2018

11155433 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111155,433 06/17/2005 Vladimir Sadovsky
45809 7590 04/02/2018
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT TECHNOLOGY LICENSING, LLC)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
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.
312368.01/MFCP.119136 4951
EXAMINER
KUDDUS, DANIEL A
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VLADIMIR SADOVSKY, STEPHEN R. HANDLEY,
and OREN ROSENBLOOM
Appeal2016-006042
Application 11/155,433
Technology Center 2100
Before MAHSHID D. SAADAT, DAVID M. KOHUT,
and JOHNNY A. KUMAR,AdministrativePatentJudges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-fmal Rejection of claims 1-14, 20, and21, which are all the claims
pending in this application. 2 We have jurisdiction under 3 5 U.S. C. § 6(b ).
We affrrm.
1 According to Appellants, the real party in interest is Microsoft Technology
Licensing, LLC, which is a subsidiary of Microsoft Corporation. Br. 3.
2 Claims 15-19 have been canceled.
Appeal2016-006042
Application 11/155,433
STATEMENT OF THE CASE
Introduction
Appellants' invention relates to systems and methods for generating
an index database for selecting objects. See Spec. if 18. According to
Appellants, the index database is generated using device parameters of a
responder device, which makes the index database device specific for the
responder device. Id.
Exemplary Claim
Claim 1 is illustrative of the invention and reads as follows:
1. A computer-storage hardware device storing
computer-useable instructions that, when used by an
initiator device, cause the initiator device to perform a
method for generating an index database, the method
compnsmg:
receiving an indication of a set of objects;
accessing at least one device parameter of a
responder device that affects playback performance of
the responder device;
generating an index database for all objects in the
set of objects based on the at least one device parameter
of the responder device to customize the index database
for the responder device; and
transferring the index database to the responder
device.
Br. 14 (Claims Appendix).
The Rejections
Claims 1---6, 8-14, and21standrejectedunder35U.S.C.§102(b)as
being anticipated by Robbin et al. (WO 03/036541 Al, Published May 1,
2003) ("Robbin"). See Non-fmal Act. 6-13.
2
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Application 11/155,433
Claim 20 standsrejectedunder35 U.S.C. § 103(a)as being
unpatentable over Robbin and Johnson et al. (US 2003/0132953 Al,
Published July 17, 2003) ("Johnson"). See Non-fmalAct. 14--17.
Claim 7 standsrejectedunder35 U.S.C. § 103(a)as being
unpatentable over Robbin and Palm (US 2001/0042107 Al, Published Nov.
15, 2001). 3 See Non-fmal Act. 17.
Appellants' Contentions
1. With respect to independent claim 1, Appellants contend that
(a) "Robbin fails to describe 'generating an index database for all objects in
the set of objects based on the at least one device parameter of the responder
device to customize the index database for the responder device'" (Br. 18);
and (b) "Robbin is not clear on the modification of a play list to remove a
media item based on the capacity of the media player to store media items."
Id.
2. Regarding independent claim 21, Appellants contend "Robbin
fails to describe generating an index database using 'at least one device
parameter comprising a software and/ or static hardware characteristic
affecting playback performance of the device"' and instead discloses that the
"available storage capacity is a dynamic hardware feature of the media
player." Br. 10.
3. Regarding claim 20, Appellants contend Robbin looks at the
available storage capacity of a media player, which is in contrast to the
3 The Examiner withdrew the rejection of claims 1-14, 20, and 21 under
35U.S.C.§l12(a) or 35 U.S.C. § 112 (pre-AIA), frrst paragraph. Ans. 2.
3
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Application 11/155,433
claimed "generating a device-specific index database based on a device
parameter that affects playback performance." Br. 11.
4. With respect to claim 7, Appellants contend Palm does not cure
the deficiencies of Robbin discussed above for claim 1. Br. 12.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We concur with the findings and the
conclusions reached by the Examiner, and emphasize the following. We
observe that no Reply Brief is of record to rebut such fmdings including the
Examiner's responses to Appellants' arguments.
35USC§102(b)Rejection
With respect to the 35 U.S. C. § 102(b) rejection of independent claims
1and21, we are unpersuaded by Appellants' contentions 1and2. We adopt
as our own ( 1) the fmdings and reasons set forth by the Examiner in the
action from which this appeal is taken (see Non-fmal Act 6-8) and (2) the
rebuttals to arguments expressed by the Examiner in the Examiner's Answer
in response to Appellants' Appeal Brief (see Ans. 3-9).
Regarding claim 1, the Examiner has identified the relevant portions
of Robbin and has properly mapped the claimed index database to the media
database including media items such as songs, their title, albums, and artists.
Ans. 6-7 (citing Robbin iii! 10-16, 20, 21, 25, 29, 33-35, 50). As further
explained by the Examiner, one of the ways the media items are chosen is
when it is determined that the device has sufficient capacity to store all of
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Appeal2016-006042
Application 11/155,433
the identified media items or objects, which causes the identified media
items and their associated attributes to be sent to the device. Ans. 7 (citing
Robbin if 35). We also agree with the Examiner's fmding that Robbin
teaches the media device evaluates and determines its capacity to store all
the media items and provides the device parameter of the responder device.
Ans. (citing Robbin Fig. 2, iii! 15, 20).
Regarding the 3 5 U.S. C. § 102(b) rejection of independent claim 21,
we are also unpersuaded by Appellants' contention 2. As explained by the
Examiner (Ans. 10), Robbin discloses that at least one device parameter,
which affects the device playback performance, is accessed. Ans. 10-11
(citing Robbin ifil 14, 34, 39, 41, 44, 72). The Examiner further found that,
similar to the discussion of claim 1, Robbin generates an index database for
a plurality of objects based on at least one device parameter of the device.
Ans. 10-11 (citing Robbin iii! 16, 33-35, 67).
35USC§103(a)Rejection
With respect to the 35 U.S.C. § 103(a)rejections of claims 7 and 20,
we are unpersuaded by Appellants' contentions 3 and 4. We adopt as our
own ( 1) the fmdings and reasons set forth by the Examiner in the action
from which this appeal is taken (see Non-fmal Act 14--17); and (2) the
rebuttals to arguments expressed by the Examiner in the Examiner's Answer
in response to Appellants' Appeal Brief (see Ans. 11-12).
In addition to the teachings of Robbin, the Examiner has further
provided sufficient explanation with corresponding citations to various
portions of Johnson and Palm for teaching "accessing ... the at least one
device parameter of the responder device, . . . comprising a software and/ or
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Appeal2016-006042
Application 11/155,433
static hardware" and the connectivity protocol, as recited in claims 20 and 7
respectively. Non-finalAct. 14--18;Ans. 11-12.
CONCLUSIONS
On the record before us, we are unpersuaded by Appellants'
contentions and conclude that the Examiner has not erred in rejecting claims
1---6, 8-14, and21 as being anticipated under 35 U.S.C. § 102(b) and claims
7 and 20 as being unpatentableunder 35 U.S.C. § 103(a).
DECISION
We affrrm the Examiner's decision to reject claims 1-14, 20, and21.
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
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