Ex Parte Black

Patent Trial and Appeal Board

Aug 21, 2014

11695327 (P.T.A.B. Aug. 21, 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.
11/695,327 04/02/2007 Gary Black CT-REC-010/US (P039) 2466
71739 7590 08/22/2014
Concert Technology Corporation
5400 Trinity Road, Suite 303
Raleigh, NC 27607
EXAMINER
SHECHTMAN, CHERYL MARIA
ART UNIT PAPER NUMBER
2157
MAIL DATE DELIVERY MODE
08/22/2014 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 GARY BLACK
____________________

Appeal 2012-003464
Application 11/695,327
Technology Center 2100
____________________

Before: MAHSHID D. SAADAT, HUNG H. BUI, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–33. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.2

1 The Real Party in Interest is identified as Napo Enterprises, LLC, a
subsidiary of Concert Technology Corporation.
2 Our Decision refers to the original Specification filed Apr. 2, 2007
(“Spec.”); the Appeal Brief filed July 5, 2011 (“Appeal Br.”); the
Examiner’s Answer mailed Oct. 14, 2011 (“Ans.”); and the Reply Brief filed
Dec. 8, 2011 (“Reply Br.”).

Appeal 2012-003464
Application 11/695,327
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STATEMENT OF CASE
Appellant’s Invention
Appellant’s invention is directed to a media item recommendation
rating system and method. Spec. ¶ 30.
Claims on Appeal
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of rating media item recommendations that are
sent from a sending user to a recipient user, at a server,
comprising the steps of:
receiving a report of a media item being recommended
from a sending user to a recipient user; and
altering, in memory, a recommendation rating associated
with the media item in response to receiving the report.
Independent claim 26 is a computer-readable medium claim mirroring
claim 1. Independent claim 32 is directed to a computer-readable medium
storing software for instructing a controller to provide a user interface
including media item titles and recommendation ratings for associated media
items. Claims 1, 26, and 32 are the only independent claims pending in the
application.
Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Molander US 7,614,006 B2 Nov. 3, 2009
Hoch
Bodlaender
US 2003/0191753 A1
US 2005/0278758 A1
Oct. 9, 2003
Dec. 15, 2005

Appeal 2012-003464
Application 11/695,327
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Examiner’s Rejections
The Examiner made the following rejections:
A. Claims 1, 3-5, 10, 11, 13, 18-21, and 24-26 are rejected under 35
U.S.C. § 102(b) as being anticipated by Bodlaender. Ans. 4-9.
B. Claims 2, 6-9, 12, 14-17, 22, 23, and 27-31 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Bodlaender and Hoch.
Ans. 9-14.
C. Claims 32 and 33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bodlaender and Molander. Ans. 14-17.
Appellant seeks our review of these rejections.

ANALYSIS
A. Rejection of claims 1, 3-5, 10, 11, 13, 18-21, and 24-26 under
35 U.S.C. § 102(b) based on Bodlaender

Independent Claims 1 and 26
Appellant argues that none of the steps of Claim 1 is disclosed in
Bodlaender. Appeal Br. 12-14; Reply Br. 2-4. With respect to the first step
“receiving a report of a media item being recommended from a sending user
to a recipient user,” the Examiner found that Bodlaender discloses
community preference information which relates to media clips (Bodlaender
¶ 10) can be exchanged (Id. at ¶ 14) by ad-hoc connections (Id. at ¶ 22)
between terminals in a peer-to-peer network (Id. at ¶15) in which each
terminal can act as a server for the others. Community preference
information can include user ratings (Id. at ¶ 17). User ratings can be used
to generate recommendations (Id. at ¶ 17) at terminals.
Appellant argues that user ratings of Bodlaender are not the
recommendations claimed. Appeal Br. 12. Bodlaender specifically
Appeal 2012-003464
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discloses that community preferences information can include user ratings,
and that user ratings can be used to generate recommendations. Id. at ¶ 17.
Community preference information can also be exchanged between peer
terminals. Id. at ¶ 17. Therefore, Bodlaender’s user ratings may be regarded
as recommendations exchanged between users, as correctly found by the
Examiner. Ans. 5, 17-18.
Appellant also argues that Bodlaender does not disclose “a media item
being recommended from a sending user to a recipient user” because user
preference information is generalized for all users and is not specific to a
recipient user. Appeal Br. 12. As noted by the Examiner, transmitting a user
rating or recommendation from a sending user to all other recipient users
necessarily would include transmitting the same from a sending user to a
recipient user as claimed. Ans. 17-18. The claim uses the open-ended
“comprising” transition, so the claim’s scope is not restricted to a
recommendation transmitted from a sending user to only a recipient user. Id.
18.
Next, Appellant argues that transmission of ratings from one user to
another in Bodlaender does not imply that the rating is reporting that the
media clip is being recommended from the transmitting user to the receiving
user. Appeal Br. 12-13. As noted by the Examiner, Bodlaender discloses
that the database 115 is updated to include new preference information
including user ratings of media clips transmitted from another user. Ans. 5.
The update of the database 115 with new preference information can
constitute a “report of a media item being recommended from a sending user
to a recipient user” as claimed. The term “report” is used broadly in the
claim and is not restricted to any particular content beside that it must be of a
media item being recommended from a sending user to a recipient user.
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Furthermore, the term “report” is not defined in the claim as originating
from any particular transmission point or arriving at any particular reception
point. Because the claim terms are given their broadest reasonable
interpretation consistent with the Specification3 and limitations from the
Specification cannot be imported into the claim in doing so,4 we are not
persuaded of error in the Examiner’s finding that the first step of claim 1 is
fully met by Bodlaender.
Appellant argues that the second step of claim 1, namely, “altering a
recommendation rating associated with the media item in memory in
response to receiving the report,” is also not disclosed in Bodlaender.
Appeal Br. 13-14. Specifically, Appellant argues that creating or deriving an
average user rating in Bodlaender is not the same as altering a
recommendation rating as claimed because average user ratings are never
changed. Id. However, as correctly noted by the Examiner, the term
“altering” applies to the act of creating or deriving a user rating necessitating
changes to be made, i.e., where there was no previous user rating, now there
is one through its creation. Ans. 4-5, 18-19. In addition, Bodlander teaches
that the database 115 records or generates a rating to a media clip (e.g.,
media clip #1, see Bodlaender Fig. 2, Table 200, col. 1). Bodlaender also

3 Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)):
MPEP §2111.
4 SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004)(“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim.”); In re Van
Geuns, 988 F.2d 1181, 1184-1185 (Fed. Cir. 1993) (Although the claims are
interpreted in light of the specification, limitations from the specification
may not be read into the claims).

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teaches updating the database of community preference information
including user ratings in response to the received community preference
information, and dynamically updating the community preference
information to provide for automatically adapting recommendations based
on the community preference information (Bodlaender ¶ 8-10; ¶ 43-47). We
are not persuaded of error in the Examiner’s finding that Bodlaender teaches
the second “altering” step of claim 1.
Independent claim 265 is argued together with claim 1. Appeal Br.
17. Therefore, our findings with respect to claim 1 apply to claim 26.6

Dependent Claims 3-5
Appellant contends that Bodlaender does not disclose the step of
“determining if the media item has an established recommendation rating in
memory before the step of altering” as recited in claim 3. Appeal Br. 19. In
particular, Appellant argues that Bodlaender discloses updating community
preference information on a user basis, and not on a media clip basis. Id. at
14-15. However, as noted by the Examiner, Bodlaender teaches that the
database 115 is dynamically expanded to include a new column when
preference information (including user ratings) for a new media clip is
encountered. Ans. 6, 19–20; Bodlaender ¶¶ 39, 40, 47–49, Fig. 2. We
therefore discern no error in the Examiner’s finding that Bodlaender teaches
the limitations of claim 3.

5 Independent claim 26 is not restricted to a computer-readable medium in
which the software is non-transistory in nature. Transitory propagating
signals are unpatentable under 35 U.S.C. § 101. In re Nuijten, 500 F.3d
1346, 1355 (Fed. Cir. 2007); Ex parte Mewherter, 107 USPQ2d 1857
(PTAB 2013) (precedential) (holding recited machine-readable storage
medium ineligible under § 101 since it encompasses transitory media)..
6 See 37 C.F.R. § 41.37(c)(1)(iv) (2013).
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Appellant argues claims 4 and 5 using the same argument presented
for claim 3. Accordingly, our findings with respect to claim 3 apply to
claims 4 and 5 as well.7

Dependent Claim 21
Claim 21 recites:
altering, in memory, the recommendation rating
associated with the media item in response to receiving
the report, is a step comprised from the group of steps
consisting of: increasing the recommendation rating
associated with the media item in memory in response to
receiving the report, and decreasing the recommendation
rating associated with the media item in memory in
response to receiving the report.

Appellant argues that Bodlaender does not disclose increasing or
decreasing a recommendation rating associated with a media item in
response to receiving a report, but rather discloses determining whether
received community preference information is newer than that stored in
Bodlaender’s database and therefore needs to be replaced. Appeal Br. 16-17.
We fail to see the distinction Appellant argues, for the community preference
information in Bodlaender includes user ratings (recommendations) which
may be increased or decreased as a result of an update. Bodlaender ¶¶ 8-9,
46-48. As noted by the Examiner, Bodlaender discloses the use of an
average time a media clip is played to measure the preference of the media
clip. See Ans. 20-21; Bodlaender ¶ 35. Relative to the average play time,
Bodlaender discloses assigning a higher preference for media clips that are
frequently fully played, and assigning reduced preference for clips that are

7 Id.
Appeal 2012-003464
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frequently terminated. Id. We agree with the Examiner that Bodlaender
discloses the limitations of claim 21.
Claims 10, 11, 13, 18-20, and 24-25
Claims 10, 11, 13, 18-20, and 24-25 are argued together with
independent claim 1 from which they depend. Thus, our findings with
respect to claim 1 apply to these dependent claims.8

B. Rejection of Claims 2, 6-9, 12, 14-17, 22, 23, and 27-31 under 35
U.S.C. § 103(a) based on Bodlaender and Hoch

Dependent Claims 2 and 27
Appellant argues that Bodlaender and Hoch fail to disclose the
limitation of claim 2, namely, “not altering, in memory, the recommendation
rating associated with the media item in response to a play or usage of the
media item by a play user, if the media item was not previously
recommended to the play user.” Appeal Br. 18. As noted by the Examiner,
in Hoch, a play user can simply view the ratings assigned to songs by other
peer users without storing or altering those recommendations. Ans. 9-10,
21-22; Bodlaender ¶¶ 75-76; Hoch ¶¶ 63, 87, 89, Fig. 3D - element 316. We
agree with the Examiner that the limitations of claims 2 and 27 are taught in
the combination of Bodlaender and Hoch.
Claim 27 is argued together with claim 2 so our findings regarding
claim 2 apply as well to claim 27. 9

8 When the patentability of dependent claims is not argued separately, the
claims stand or fall with the claims from which they depend. In re King, 801
F.2d 1324, 1325 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991 (Fed.
Cir. 1983).
9 See 37 C.F.R. § 41.37(c)(1)(iv) (2013).
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Dependent Claims 6-8, 14, 28, and 29
Appellant contends that Bodlaender and Hoch fail to disclose the
limitation of claim 6, namely, “determining if a recommendation path,
comprised of a sending user and a recipient user, has been previously
established in a recommendation path table associated with a media item
being recommended”. Appeal Br. 18-20. In particular, Appellant argues that
even if the buddy list of Hoch is regarded as a recommendation table, it is
not associated with a media item being recommended from a sending user to
a recipient user as claimed. Id. 19. However, the combination of
Bodlaender and Hoch teaches applying a level-of-detail algorithm to a
browseable hierarchy of users to build on music searches. Ans. 10-11, 23;
Hoch ¶ 27. Specifically, Hoch teaches a buddy playlist which includes a
recommendation path because preferred buddies on a user’s buddy list will
show preferred recommendations for songs. Hoch ¶ 87. The buddy list and
songs listed for each buddy may be regarded as having a tabular format, as
would the data defining these tables. See Hoch Fig. 3D, Fig. 9.
Accordingly, we agree with the Examiner that all limitations of claim 6 are
disclosed in Bodlaender and Hoch.
Claims 7 and 8 were argued together with claim 6. Appeal Br. 19-20.
Accordingly, our findings with respect to claim 6 also apply to claims 7 and
8.10
Claim 14 was argued along with claim 6. Appeal Br. 20. Therefore,
our conclusion with respect to claim 6 also applies to claim 14.11
Claim 28 is similar to claim 6. Appeal Br. 26. Therefore, our
conclusion with respect to claim 6 applies to claim 28.12

10 Id.
11 Id.
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Claim 29 corresponds to claim 14. Therefore, our conclusion with
respect to claim 14 applies as well to claim 29.13

Dependent Claim 9
Appellant argues that the limitation of claim 9 is not disclosed
in the combination of Boldaender and Hoch. Appeal Br. 20. Claim 9 recites
“only performing the step of altering the recommendation rating associated
with the media item if the recommendation path was not previously
established.” As noted by the Examiner, in Hoch, a user can only rate
another peer’s songs after clicking on the peer’s name in the display to see
what their recommendations are, thereby establishing a recommendation
path. Ans. 12, 24-25. Hoch ¶ 63, Fig. 3D. Accordingly, Appellant’s
arguments have not persuaded us of error in the Examiner’s finding that the
limitation of claim 9 is disclosed in the combination of Bodlaender and
Hoch.

Dependent Claim 12
Appellant argues that the limitation of claim 12 is not disclosed in the
combination of Bodlaender and Hoch. Appeal Br. 21. Claim 12 recites
“wherein the recommendation path table comprises a recommendation id, a
recipient id identifying the recipient user, and a recommender id identifying
the sending user.” As correctly noted by the Examiner, peers may have alias
names to communicate with other peers without revealing their true identity.
Ans. 12, 25-26; Hoch ¶ 63, Fig. 3D; ¶ 93-94, Fig. 10A. These are the user
names appearing on the buddy list through which users can access each

12 Id.
13 Id.
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other’s songs. Id. Hoch also discloses that, after selecting a particular peer,
the songs that peer is recommending are identified in a sub-display area 316
in Fig. 3D of Hoch. Id. Therefore, we agree with the Examiner that the
limitation of claim 12 is disclosed in the combination of Bodlaender and
Hoch.

Dependent Claims 15 and 30
Appellant argues that the limitation of claim 15 is not disclosed in
Bodlaender and Hoch. Appeal Br. 21-22. Claim 15 recites “determining if
the media item associated with the play or usage action was previously
recommended to the play user by determining if the play user is the recipient
user in the recommendation path table for the media item associated with the
play or usage action.” As noted by the Examiner, Hoch discloses that a peer
user playing a song can view a buddy list to find songs shared in common
with the user. Ans. 13, 26-27; Hoch ¶¶ 72, 89-92, Figs. 9, 10A. We agree
with the Examiner that a person of ordinary skill in the art, using ordinary
creativity and considering the prior art as a whole, would regard it obvious
to determine if the played song was previously recommended to the play
user by determining if the peer user and buddy share that song on their
lists.14 We are not persuaded of error in the Examiner’s finding.

14 See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. at 421(“The person of
ordinary skill in the art is a person of ordinary creativity.”); Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 3 (1966)(“This is the test of
obviousness, i.e., whether ‘the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art to which said subject matter pertains.”)(emphasis added); 35
U.S.C. § 103(a).
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Claim 30 is similar to claim 15. Therefore, our conclusion with
respect to claim 15 applies as well to claim 30.15

Dependent Claims 16 and 31
Appellant argues that the limitation of claim 16 is not disclosed in
Bodlaender and Hoch. Appeal Br. 13, 22-23. Claim 16 recites “altering a
recommendation rating for the media item associated with the play or usage
action if the media item associated with the play or usage action was
previously recommended to the play user.” Hoch discloses that users can
play and participate in the rating of songs of other peers. Hoch ¶ 63, Fig. 3 -
element 316. Appellant argues that the play user is someone other than the
sender and recipient of the recommendation. Appeal Br. 22-23. However,
Appellant’s argument is not commensurate with the scope of claim 16 as the
limitation argued is not present in the claim. Thus, we agree with the
Examiner that the limitation of claim 16 is disclosed in Bodlaender and
Hoch. Ans. 13, 28-29.
Claim 31 is similar to claim 16. Our findings with respect to claim 16
therefore apply to claim 31.16

Dependent Claim 17
Appellant argues that the limitation of claim 17 is not disclosed in
Bodlaender and Hoch. Appeal Br. 23-24. Claim 17 recites “the
recommendation path table is comprised of two tables consisting of a
received recommendations table and a sent recommendations table.” As
correctly noted by the Examiner, Bodlaender discloses that the database

15 Id.
16 Id.
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structure 115 is a table that contains ratings of the community of all users of
the peer-to-peer system, including sending and receiving users. Ans. 13, 28-
29; Bodlaender ¶ 39, database 115. We agree with the Examiner’s findings
that the limitation of claim 17 is disclosed in the combination of Bodlaender
and Hoch.

Dependent Claim 22
Appellant argues that the limitation of claim 22 is not disclosed in
Bodlaender and Hoch. Appeal Br. 24. Claim 22 recites:
“wherein the altering of the recommendation rating for
the media item associated with the play or usage action if
the media item associated with the play or usage action
was previously recommended to the play user, and the
altering, in memory, the recommendation rating
associated with the media item in response to receiving
the report, are performed according to different alteration
scales.

Reviewing the prior art cited in the rejection, we do not agree with the
Examiner that Bodlaender and Hoch teach altering the recommendation
rating for plays of a media item previously recommended, as opposed to
receiving the report of the recommendation, are performed according to
different rating scales. In Bodlaender, the user rating of a media clip is on
a scale from one to ten. Bodlaender ¶ 39. In Hoch, the rating mechanism is
a “thumbs up” rating. Hoch ¶ 27. However, Bodlaender and Hoch do not
teach altering of the recommendation rating on different alteration scales
based on whether it is a play or usage following a recommendation, or a
report of the recommendation. Accordingly, we are persuaded that
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Appellant is correct that claim 22 is not taught by the combination of
Bodlaender and Hoch.

Dependent Claim 23
Appellant argues that the limitation of claim 23 is not disclosed in
Bodlaender and Hoch. Appeal Br. 24-25. Claim 23 recites:
wherein the altering of the recommendation rating for the
media item associated with the play or usage action if the
media item associated with the play or usage action was
previously recommended to the play user comprises:
increasing the recommendation rating for the media item
if the play or usage action occurs within a prescribed
period of time; and decreasing the recommendation
rating for the media item if the play or usage action does
not occur within a prescribed period of time.

As noted by the Examiner, Bodlaender discloses the use of average
play time as a measure to reduce preference of a media clip if frequently
terminated and to increase preference for one that is frequently fully played.
Ans. 14, 29-30; Bodlaender ¶35. Thus, we agree with the Examiner that this
limitation is disclosed in the combination of Bodlaender and Hoch, as
correctly noted by the Examiner.

C. Rejection of Claims 32 and 33 under 35 U.S.C. § 103(a) based on
Bodlaender and Molander

Independent Claim 32
Appellant states that independent claim 3217 has similar features to
claim 1, and argues that the combination of Bodlaender and Molander does

17 Claim 32 is not restricted to a computer-readable medium storing non-
transitory software. See footnote 5.
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not disclose “wherein the recommendation rating of each media item of the
one or more media items comprises a rating altered in response to the media
item having been recommended by a sending user.” Appeal Br. 26-27. As
correctly found by the Examiner, Bodlaender discloses an average user
rating for a media clip that is derived in response to receiving ratings from
multiple users, including sending and receiving users. Ans. 14-16;
Bodlaender ¶ 35. The database 115 records or generates (i.e. alters) ratings
given to a plurality of media clips by a plurality of users. Bodlaender ¶¶ 8-9,
39, 42, 46; Fig. 2, Table 200, media clips 1-4. The database 115 is updated
to include new preference information with respect to media clips
recommended by users. Bodlaender ¶¶ 8-9, 46-48. In view of these
disclosures, we agree with the the Examiner that this limitation of claim 32
is disclosed in the combination of Bodlaender and Molander. Ans. 14-17,
32.

Dependent Claim 33
Claim 33 is argued together with claim 32. Accordingly, our
conclusion regarding claim 32 applies to claim 33 as well.18

DECISION
For the above reasons, the Examiner’s decision with respect to the
rejection of claims 1-21 and 23-33 is affirmed, but is reversed with respect
to claim 22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

18 See 37 C.F.R. § 41.37(c)(1)(iv) (2013).
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AFFIRMED-IN-PART

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