Ex Parte Svendsen et al

Patent Trial and Appeal Board

Mar 7, 2014

11609962 (P.T.A.B. Mar. 7, 2014)

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.
11/609,962 12/13/2006 Hugh Svendsen CT-REC-008/US (P026) 1989
71739 7590 03/07/2014
Concert Technology Corporation
5400 Trinity Road, Suite 303
Raleigh, NC 27607
EXAMINER
TANG, KIET G
ART UNIT PAPER NUMBER
2469
MAIL DATE DELIVERY MODE
03/07/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HUGH SVENDSEN and MICHAEL T. HOFFMAN
____________________

Appeal 2011-009681
Application 11/609,962
Technology Center 2400
____________________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
THOMAS F. SMEGAL, Administrative Patent Judges.

SMEGAL, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE1 1
Appellants seek review under 35 U.S.C. § 134 (a) of a final rejection 2
of claims 1, 2 and 4-27. App. Br. 1. We have jurisdiction over the appeal 3
pursuant to 35 U.S.C. § 6(b). 4
5
We AFFIRM-IN-PART. 6
CLAIMED SUBJECT MATTER 7
Appellants’ claimed subject matter relates to a “method for matching 8
participants in a Peer-to-Peer (P2P) recommendation network by” 9
comparing their media collections (Spec., ¶ [0006]. 10
An understanding of the invention can be derived from a reading of 11
exemplary claim 1, which is reproduced below. 12
1. A method for matching participants in a Peer-to-Peer 13
(P2P) recommendation network comprising: 14
15
receiving a request from a first peer device of a plurality of 16
peer devices in the P2P recommendation network for a new 17
friend for a P2P recommendation group of a user of the first 18
peer device; 19
20
determining whether the user of the first peer device is a 21
subscriber of at least one of a number of subscription media 22
services; 23
24
if the user of the first peer device is a subscriber of at least 25
one of the number of subscription media services, selecting 26
the new friend for the user of the first peer device from users 27
of other ones of the plurality of peer devices that are also 28

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed May 18, 2010) and the Examiner’s Answer (“Ans.,” mailed February
22, 2011).
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subscribers of at least one of the number of subscription 1
media services; and 2
3
effecting addition of the new friend to the P2P 4
recommendation group of the user of the first peer device 5
such that media recommendations are provided to the first 6
peer device from one of the plurality of peer devices 7
associated with the new friend; 8
wherein if the user of the first peer device is a subscriber of 9
at least one of the number of subscription media services, 10
selecting the new friend comprises: 11
comparing a user profile of the user of the first 12
peer device to user profiles of users of the other ones of 13
the plurality of peer devices that are also subscribers of at 14
least one of the number of subscription media services; 15
comparing a media collection of the user of the 16
first peer device to media collections of the users of the 17
other ones of the plurality of peer devices that are also 18
subscribers of at least one of the number of subscription 19
media services; and 20
selecting one of the users of the other ones of the 21
plurality of peer devices having a user profile that has a 22
high correlation to the user profile of the user of the first 23
peer device and a media collection that has a low 24
correlation to the media collection of the user of the first 25
peer device as the new friend for the user of the first peer 26
device. (Emphasis added). 27
28
REFERENCES 29
30
The Examiner relies upon the following prior art: 31
32
Chaudhuri US 2005/0038876 A1 Feb. 17, 2005 33
Wu US 2006/0143236 A1 Jun. 29, 2006 34
Spiegelman US 2006/0195479 A1 Aug. 31, 2006 35
36
37
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REJECTIONS ON APPEAL 1
Claims 1, 2, 4-10, 17-20, 22, 23, 25 and 26 are rejected under 35 2
U.S.C. § 103(a) as unpatentable over Chaudhuri and Wu2. 3
Claims 11-16, 21, 24 and 27 are rejected under 35 U.S.C. § 103(a) as 4
unpatentable over Chaudhuri, Wu and Spiegelman. 5
6
FINDINGS OF FACT 7
We find that the findings of fact (FF), which appear in the Analysis 8
below, are supported by a preponderance of the evidence. Ethicon, Inc. v. 9
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general 10
evidentiary standard for proceedings before the U.S. Patent and Trademark 11
Office (“PTO”)). Additional facts may appear in the analysis. 12
Facts Related to Appellants’ Disclosure 13
FF1. The Specification states at page 22, lines 18-20 that “a low 14
correlation between two music collections occurs when the two music 15
collections have less than a static or dynamic threshold number of songs in 16
common”. 17
Facts Related to the Prior Art 18
Chaudhuri 19
FF2. Chaudhuri states that “[o]n the Internet, social networking 20
started as online dating services and is spreading its wings to match people 21
with similar interests in anything from sports to music to business and 22
politics”. Chaudhuri, ¶ [0006]. 23
24

2 We correct the typographical error at page 3 of the Examiner’s Answer as
Appellants canceled claim 3 in an amendment filed January 19, 2010.
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Wu 1
FF3. Wu states that “[p]referably, the network community playlist 2
sharing system further includes a playlist browsing process capable of 3
browsing by playlist ranking, playlist category, relationship to other 4
playlists, or media identification data”. Wu, ¶ [0027]. 5
FF4. Wu states that “[t]he network community playlist sharing system 6
may even further include a playlist ranking process for ranking playlists 7
based on correlation of the actual playlist rating values for each playlist and 8
the total number of ratings values for each playlist”. Wu, ¶ [0029]. 9
ANALYSIS 10
Obviousness of claims 1, 2, 4-10, 17-20, 22, 23, 25 and 26 based on 11
Chaudhuri and Wu. 12
We are persuaded by Appellants’ arguments that the Examiner failed 13
to establish a prima facie showing of obviousness in rejecting claims 1, 2, 14
4-10, 17-20, 22, 23, 25 and 26 under 35 U.S.C. § 103(a) as being 15
unpatentable over the combined teachings of Chaudhuri and Wu. In 16
particular, Chaudhuri teaches a method for matching participants with 17
reciprocal interests based on preferences (FF2), but the Examiner 18
acknowledges that “Chaudhuri does not explicitly teach media 19
recommendations” (Ans. 4). 20
While Wu teaches that “individuals can develop musical interest 21
networks and social networks based on similar music interests” ¶ [0118], we 22
agree with Appellants that “Wu fails to teach that a user that has a media 23
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collection that has a low correlation to a media collection of another user is 1
selected as a new friend of that other user. As such…Wu fails to correct the 2
deficiencies of Chaudhuri” (Br. 12). See also FF1. 3
Thus the combination of Chaudhuri and Wu does not teach to one of 4
ordinary skill in the art “selecting one of the users of the other ones of the 5
plurality of peer devices having a user profile that has a high correlation to 6
the user profile of the user of the first peer device and a media collection 7
that has a low correlation to the media collection of the user of the first peer 8
device as the new friend for the user of the first peer device, as recited by 9
claim 1. 10
For the foregoing reasons, we will not sustain the Examiner’s 11
rejection of claim 1, 2, 4-10, 17-20, 22, 23, 25 and 26 over Chaudhuri and 12
Wu. 13
Obviousness of claims 11-16, 21, 24 and 27 over Chaudhuri, Wu and 14
Spiegelman. 15
Claims 11, 21, 24 and 27 16
This rejection is directed to claims 11, 21, 24 and 27, which depend 17
from claims 1, 19, 22 and 25. We reverse the rejections of claim 1, 19, 22 18
and 25 above, and thus, we do not sustain the rejection of claims 11, 21, 24 19
and 27 over the cited prior art. Cf. In re Fritch, 972 F. 2d 1260, 1266 (Fed. 20
Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims 21
from which they depend are nonobvious”). 22
23
24
25
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Claims 12-16 1
Having been grouped with claim 11, Appellants argue that “claims 2
12-16 stand or fall with claims 1 and 11” (Br. 18). We were persuaded by 3
Appellants’ argument [as to claim 1] at page 12 of the Brief that “Wu fails to 4
teach that a user that has a media collection that has a low correlation to a 5
media collection of another user is selected as a new friend of that other 6
user”. However, that argument is not commensurate with claim 12 which 7
requires a media collection that has a high correlation to a media collection 8
of another user. Thus, claims 12-16 fail to recite the limitation argued by 9
Appellants that we found persuasive for the allowance of claim 1 (Br. 10
11-13). 11
We agree with the Examiner in finding that “[w]ith respect to claim 12
12, the combination of Chaudhuri, Wu, and Spiegelman teaches the method 13
of claim 11… Wu teaches comparing a media collection ([0072], lines 14
10-12) and a high correlation to the media collection ([0029], lines 1-5)” 15
(emphasis added) (Ans. 18). Appellants offered no argument in rebuttal to 16
this finding of the Examiner to support allowance of claims 12-16. 17
For those reasons, we sustain the Examiner’s rejection of claims 18
12-16 over Chaudhuri, Wu and Speigelman. 19
DECISION 20
The rejections of claims 1, 2 and 4-27 are REVERSED. 21
The rejection of claims 12-16 is AFFIRMED. 22
23
24
25
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a) (1)(iv) (2011). 3
4
AFFIRMED-IN-PART 5
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