Ex Parte Yoakum et al

Patent Trial and Appeal Board

Aug 23, 2016

11610878 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111610,878 12/14/2006
27820 7590 08/25/2016
WITHROW & TERRANOVA, PLLC
106 Pinedale Springs Way
Cary, NC 27511
FIRST NAMED INVENTOR
Graham C. Yoakum
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.
7000-569 3466
EXAMINER
KIM, PAUL
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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@wt-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GRAHAM C. YOAKUM and JOHN H. YOAKUM
Appeal2014-009760
Application 11/610,878
Technology Center 2100
Before MAHSHID D. SAADAT, DAVID M. KOHUT, and HUNG H. BUI,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-24. We have jurisdiction under 35
U.S.C. § 6(b ).
We REVERSE. 2
1 According to Appellants, the real party in interest is Rockstar Consortium
US LP. App. Br. 2
2 Our Decision refers to Appellants' Appeal Brief filed March 3, 2014
("App. Br."); Reply Brief filed September 17, 2014 ("Reply Br.");
Examiner's Answer mailed July 17, 2014 ("Ans."); Final Office Action
mailed September 9, 2013 ("Final Act."); and original Specification filed
December 14, 2006 ("Spec.").
Appeal2014-009760
Application 11/610,878
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention relates to a presence system, shown in Figure 4,
including presence application 24 installed at subscriber entity 18 to allow a
subscriber to access, follow or mirror activities that monitored entity 18
(e.g., person) takes in relation to accessing media content, including media
content that is currently being accessed by monitored entity 18. Spec. i-fi-18-
10, 25, 30-31, 34, Fig. 4.
Appellants' Figure 4 is reproduced below:
MONITORED
ENTITY
MONITORED
ENTITY
MONITORED
ENTITY
MEDIA
CONTENT
SOURCE
14
26
PRESENCE
SERVER
PRESENCE
FUNCTION
22
20
COMMUNICATION
NEiWORK
1Q_
INFORMATION
SOURCE
28
SUBSCRIBER
ENTITY
! PRESENCE
! APPLICATION
I 24 t ___ -
Appellants' Figure 4 shows how subscriber entity 18 can monitor activities
taken by monitored entity 14 relative to "media content."
For example, if monitored entity 14, shown in Figure 4, accesses
media content such as a song, and plays that particular song, subscriber
entity 18 is able to follow the activities taken by monitored entity 14 in the
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Application 11/610,878
context of presence information, including information regarding that the
monitored entity 14 has selected and begun listening to that particular song.
Spec. iii! 30, 31, 34.
Claims 1 and 1 7 are independent. Independent claim 1 is illustrative
of Appellants' invention, and is reproduced with disputed limitations
emphasized below:
1. A method of operating a subscriber terminal
associated with a subscriber comprising:
receiving from a presence system media context
information indicative of a monitored user accessing media
content, the presence system adapted to generate the media
context information from media state information received from
at least one monitored entity associated with the monitored
user, wherein the media state information comprises
information that indicates what media content the monitored
user is currently accessing; and
providing at the subscriber terminal an action related to
that taken by the at least one monitored entity with regard to the
media content based on the media context information, wherein
the subscriber is able to access the same or similar media
content that is currently being accessed by the monitored user.
App. Br. 20 (Claims App'x.).
Linden
Headings
Alves de Moura
Evidence Considered
U.S. 2002/0198882 Al
U.S. 6,925,469 B2
U.S. 2006/0080592 Al
Examiner's Rejections
Dec. 26, 2002
Aug. 2, 2005
Apr. 13, 2006
(1) Claims 1--4, 9-11, 17, and 18 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Headings. Final Act. 2-5.
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Application 11/610,878
(2) Claims 5-7, 12-14, 16, 19, 20, and 22-24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Headings and Linden. Final
Act. 5-9.
(3) Claims 8, 15, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Headings, Linden, and Alves de Moura. Final Act.
9-10.
ANALYSIS
35 USC §102(b) Rejection of Claims 1-4, 9-11, 17, and 18
With respect to independent claims 1 and 17, the Examiner finds
Headings discloses a method of operating a subscriber terminal associated
with a subscriber comprising, inter alia, the disputed limitations: (1)
"wherein the media state information comprises information that indicates
what media content the monitored user is currently accessing" and (2)
"wherein the subscriber is able to access the same or similar media content
that is currently being accessed by the monitored user" in the context of
subscriber management system 130, shown in Figure 1, arranged to track
"media content usage" and "capture, for example, the type of content a
consumer views or listens to, what hard goods the consumer buys, the
number and type of advertisements the consumer has viewed or listened to."
Final Act. 3 (citing Headings 7:20-35, 8:23-38).
Appellants acknowledge Headings describes a business platform for
managing, distributing, and/or retailing digital media assets from various
content suppliers. App. Br. 10 (citing Headings 2:15-18). However,
Appellants argue Headings does not disclose (1) "media state information ..
. that indicates what media content the monitored user is currently
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Application 11/610,878
accessing" and (2) "subscriber is able to access the same or similar media
content that is currently being accessed by the monitored user" as recited in
independent claims 1 and 17 (emphasis added). App. Br. 9--15; Reply Br. 2-
9. According to Appellants, "Headings uses various content usage related to
what media content a user has consumed to perform targeted advertising or
to generate royalty reports" and "does not disclose tracking the content that a
monitored user is currently accessing." App. Br. 10 (citing Headings 2: 15-
18, 7:27-35, 7:64---67, 8:1--4). Similarly, Appellants argue:
Headings describes a supplier console, wherein media content
providers can view information related to content usage of their
provided media items, such as the number of times a consumer
has viewed a particular media item. For example, a movie
production company may be able to log into a website and view
the number of times a consumer has watched one of their
movies using the service described by Headings.
App. Br. 11; Reply Br. 5 (citing Headings 8:23-54). According to
i\.ppellants, "Headings does not describe the supplier console being adapted
to receive information regarding the media content that a consumer is
currently accessing." App. Br. 11; Reply Br. 5.
The Examiner responds that Headings' "media content usage (i.e.,
media state information) would comprise the type of content a consumer
views or listens to (i.e., what media content the monitored user is currently
accessing)." Ans. 4 (citing Headings 7:20-35). The Examiner also takes the
position that because "the instant claim allows a subscriber to either access
'the same or similar media content that is currently being accessed by the
monitored user," (1) "a subscriber need not access the same media content
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Application 11/610,878
'currently being accessed by the monitored user"' and (2) "the claimed
features of the instant invention allows for a subscriber to access similar
media content other than the same media content currently being accessed
by the monitored user." Id.
We do not agree with the Examiner's reading of Headings with
respect to Appellants' claims 1 and 17. The cited portion of Headings
describes:
[M]edia content usage may be tracked by subscriber
management system 130 to capture, for example, the type of
content a consumer views or listens to, what hard goods the
consumer buys, the number and type of advertisements the
consumer has viewed or listened to, and how long the consumer
uses the entertainment service per day or week.
Headings 7:27-33 (emphasis added). In the context of Headings, the media
content usage refers to "consumer usage information for reporting (e.g., to
content suppliers or clients) and analysis" and, more specifically, "the past
media content usage of the consumer" used to assist in consumer marketing
decisions. Headings 2: 28-29, 7:9-10, 11:8-11. In particular, the media
content usage is described as information regarding:
the amount of time the media content was viewed or listened to,
consumer viewing or listening habits, and consumer
preferences for different types or genres of media content ...
Headings 8: 1--4. Based on Headings' disclosure, we agree with Appellants
that Headings does not disclose Appellants' claimed "media state
information ... that indicates what media content the monitored user is
currently accessing" recited in claims 1 and 17, which contemplates a real
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time aspect of what media content is being accessed by the monitored user.
App. Br. 6.
Second, "the instant claim allows a subscriber to either access 'the
same or similar media content that is currently being accessed by the
monitored user,"' as recognized by the Examiner. Ans. 4. However, we
disagree with the Examiner's reading of claims 1 and 17 that allows for a
subscriber to access any similar media content "other than the same media
content currently being accessed by the monitored user." Id. Rather, either
the same or similar media content must be the "media content that is
currently being accessed by the monitored user" particularly, when the
media content recited in Appellants' claims 1 and 1 7 expressly refers to
"media content the monitored user is currently accessing."
Anticipation under 35 U.S.C. § 102 is a question of fact. Brown v. 3M,
265 F.3d 1349, 1351 (Fed. Cir. 2001). A claim is anticipated only if each
and every element as set forth in the claim is found, either expressly or
inherently described in a single prior art reference. Verdegaal Bros. v. Union
Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Because
Headings does not disclose the disputed limitations of claims 1 and 17, we
do not sustain the Examiner's anticipation rejection of claim 1 and 17, and
their respective dependent claims 2--4, 9--11, and 18.
We also do not sustain the Examiner's obviousness rejection of (I)
claims 5-7, 12-14, 16, 19, 20, and 22-24 as being unpatentable over
Headings and Linden, and (2) claims 8, 15, and 21 as being unpatentable
over Headings, Linden, and Alves de Moura, for the same reasons discussed.
Neither Linden nor Alves de Moura cures the deficiencies of Headings to
arrive at Appellants' claimed subject matter recited in those claims.
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CONCLUSION
On the record before us, we conclude Appellants have demonstrated
that the Examiner erred in rejecting claims 1-24 under 35 U.S.C. § 102(b)
and 35 U.S.C. § 103(a).
DECISION
As such, we REVERSE the Examiner's final rejection of claims 1-24.
REVERSED
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