Ex Parte Buil et al

Board of Patent Appeals and Interferences

Apr 10, 2009

09932070 (B.P.A.I. Apr. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte VINCENTIUS PAULUS BUIL and
JOSEPHUS HUBERTUS EGGEN
________________

Appeal 2008-1992
Application 09/932,070
Technology Center 2100
________________

Decided:1 April 10, 2009
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Before JAMES D. THOMAS, JOSEPH L. DIXON, and
STEPHEN C. SIU, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 through 9, 11 through 15, and 17 through 21,
Appellants having cancelled claim 16 and the Examiner having objected to
claim 10 as noted at pages 2 and 3 of the Answer. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

Invention
The invention relates to a system for browsing a collection of
information units, such as audio or video files, comprising presentation
means for presenting an information unit from said collection, and attribute
means for associating a respective information unit with an attribute value
for at least a first attribute. The system randomly selects information units
which meet certain criteria for said first attribute. The selection and
presentation is made without interaction by a user. (Spec. 11, Abstract;
claim 1).

Representative Claim
1. A system for browsing a collection of information units,
comprising presentation means for presenting at least one of said
information units via audio or video playback, and attribute means for
associating a respective one of said information units with an attribute
value for a plurality of attributes, wherein the system comprises
random selection means for automatically randomly selecting and
presenting for playback a unit whose attribute value meets a criterion,
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the selection and presentation for playback being made without
interaction by a user based on the plurality of attributes.

Prior Art and Examiner’s Rejections
The Examiner relies on the following references as evidence of
anticipation and unpatentability:
Cluts 5,616,876 Apr. 1, 1997
Dunning 2003/0229537 A1 Dec. 11, 2003
(filed Apr. 30, 2001)

Dependent claims 18 and 20 stand rejected under 35 U.S.C. § 112,
first paragraph, the written description portion. Claims 1 through 5, 9, 11
through 15, and 21 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Cluts. Lastly, claims 6 through 8, and 17 through 20 stand
rejected under 35 U.S.C. § 103(a). As evidence of obviousness, the
Examiner relies upon Cluts in view of Dunning.

Claim Groupings
Based upon Appellants’ arguments in the principal Brief, Appellants
consider the corresponding features of claims 18 and 20 collectively with
respect to the rejection under the first paragraph of Section 112. They also
consider the subject matter of independent claims 1, 11, and 21 collectively,
and independent claim 14 is argued separately with respect to the rejection
under Section 102. Separate arguments are presented as to dependent claims
2, 3, 12, and 15 within this rejection under 35 U.S.C. § 102. With respect to
the rejection of certain claims under 35 U.S.C. § 103, claims 6 and 17 are
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considered representative of claims 6 through 8 and 17 through 20
respectively.

ISSUES
1. Have Appellants shown that the Examiner erred in finding that
the subject matter of dependent claims 18 and 20 has no written description
support within 35 U.S.C. § 112, first paragraph?
2. Have Appellants shown that the Examiner erred in finding that
Cluts anticipates the subject matter of the noted claims as grouped earlier in
this opinion?
3. Have Appellants shown that the Examiner erred in finding that
the subject matter of representative claims 6 and 17 would have been
obvious to the artisan within 35 U.S.C. § 103?

Prior Decision
This application was subject to a prior Decision by an earlier panel of
the Board noted as Appeal No. 2006-0531, decided on February 28, 2006.
Since the Examiner has utilized two of the same references in this present
appeal as were utilized in the prior appeal, we reproduce here our findings
with respect to Cluts as reflected in our discussion at pages 3 and 4 of our
prior Decision:
At least with respect to those portions of Cluts specifically
relied upon by the examiner (column 4, lines 38 through 54; column
14, lines 28 through 50 and column 18, lines 51 through 54), Cluts
effectively in our view teaches the substance of the subject matter of
representative independent claim 1 on appeal. In Cluts, at least with
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respect to the style tables and the ability to utilize a so-called style
slider, there exists an association as claimed of an individual song or
information unit with a criterion such as a given style of music.
Additionally, at least one seed song entered by a user may correspond
to the claimed criterion which is met by the structure and software in a
comparison operation which functions in an automatic random
selection and presentation process to present the new selections of
songs to the user.

Contrary to the apparent view expressed by the examiner at the
bottom of page 4 of the answer, it appears to us from our study of this
reference that Cluts does automatically select and present a new song
without interaction by a user. It is emphasized here that the
requirement of claim 1 is that this automatic selection and automatic
presentation be done without an interaction by the user, thus
indicating in the claim that the user may specify a given criterion.
Even appellants disclose an invention and in an example require a
user to enter into the overall system as disclosed a criterion on which
the system is to automatically and randomly select a given new song
for presentation. The ability of the user in Cluts to select a so-called
seed song or initial criterion as well as to set a style slider mechanism
to a given position permits the user in Cluts to establish a relative
association of a given style to individual songs. The user also has the
ability to select the "more style" button and the "more" and "like"
buttons as depicted in Figures 5 through 10. In any event, the flow
chart element 1020 in Figure 10 clearly corresponds to the teaching
relied upon by the examiner at column 18, lines 51 through 54 that the
system automatically does a random sort of a list of songs before
presentation to a listener.

Also with respect to Cluts, we noted in the paragraph bridging pages7
and 8 of the prior Decision that the subject matter of program product client
13 was met by the teachings at column 22, line 51 to the end of the patent of
Cluts. Although the Examiner does not utilize in this appeal the reference to
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Looney2, this reference was stated as having corresponding analogous
teachings as in Cluts at page 5 of the prior Decision. Lastly, we stated in
the paragraph bridging pages 6 and 7 of our prior Decision that “[e]ven at
the bottom of page 16 of the brief, in characterizing the examiner’s view that
it was well known in the art to randomize the function of CD players,
appellants have not denied this assertion made by the examiner on its
merits.”

FINDINGS OF FACT
1. As quoted at pages 2 and 3 of the Reply Brief, the Discussion
of the Summary of the Invention, at page 3, lines 1 through 24 of the
Specification, discusses a user-operable skip means and an ability to abort
the presentation of the currently selected information unit. The discussion at
lines 10 through 24 relates to the number of times or the frequency in which
a skip button would be utilized as well as the length of time or duration in
which this button would be pressed. With respect to the Figure 3
embodiment, the discussion at page 7, line 32 through page 8, line 16 of the
Specification is more explicit by giving various examples of the number of
times and the duration in which a button 303 of the Figure 3 embodiment is
pressed.
2. The Specification at page 5, line 6 through 9, states: “[r]andom
selection means 103 [of Figure 1] are capable of randomly selecting a music
file from the database 101 and sending it to an audio processor 104 and a
loudspeaker 105, which thus constitute presentation means for presenting the

2 Looney, U.S. Patent 5,969,283.
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audio file.” With respect to the same Figure, the paragraph at lines 15
through 21, relates to a personal computer embodiment and the retrieval of
music files from a database of the personal computer “and presenting them
via the computer’s sound card and loudspeakers” as noted at lines 20 and 21.
3. It is not disputed that the patent of Cluts relates to downloading
audio or video files as claimed. In an initial screen display, shown in Figure
4, a find button 420 permits the user to find a specific song within the
database of Cluts. Alternatively, the list function keys 425 permit the user to
retrieve user selected, predetermined playlists by the actuation of these
buttons. With respect to the showings in Figures 5 and 6, we note the
discussion at column 13, lines 38 through 40, which state that “a playlist is a
collection of songs. When a playlist is selected, the audio on demand system
begins to play the first song in the playlist.” The discussion beginning at
column 13, line 63, relating to Figure 5, makes a specific mention of the so-
called “more” button 540 which activates the “more like” music search
function, the details of which are extensively discussed through the top of
column 17. This includes a discussion of Figures 7 and 8 relating to the
actuation of “more style” button 720 within the “more like” panel 705 as
well as the illustration of the capability of actuating functions relating to the
“more artists” respective button 705 and the “more album” with respect to
button 710. A so-called “style slider” button 725 is also illustrated.
4. With respect to the flow chart Figure 9, we reproduce the
following from column 17, lines 4 through 12:
FIG. 9 is a flow diagram that summarizes the steps carried out
by a subscriber who is using the more button 540 to find more music.
The method 900 begins at step 905 when the user selects a song to
hear. This is accomplished by using the find button to select a
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specific song, or by selecting a playlist. Those skilled in the art will
appreciate that the "more like" function uses the current song as a
"seed song" 10 and selects other songs that match the style criteria
associated with the seed song.

5. A brief mention is made of Figure 10 at column 17, lines 23
through 31, the details of which are discussed beginning at line 50. We
reproduce here the text of lines 50 through 55:
FIG. 10 is a flow diagram illustrating the "more like" function
of the present invention as implemented in a program module running
on a headend server, which forms a part of the interactive network.
The method 1000 begins at step 1005 after the user has selected a seed
song and activated the more style button.

The details of flow chart Figure 10 continue to be discussed through
column 19. The entire discussion of Figure 10 relates to the system
performing automatically and without user interaction the functions of
determining the position of a style slider noted earlier, the functions of
identifying songs with a similar style as a seed song entered by the user and
the functions of randomly sorting this list of newly found songs and finally
automatically presenting to the user the top ten songs thus obtained.
Additionally, a corresponding automatic, without user interaction, capability
is illustrated in Figure 13 of the style equalizer feature 510 in Figure 5 of
Cluts.
6. With respect to the hold function set forth in dependent claims
2 and 12 and in independent claim 14, we note the discussion of Figures 7
and 8 beginning at column 16, line 25 and the corresponding showing in
Figure 10 in block 1045.
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7. With respect to dependent claim 3, we note that the discussion
of the “more like” function beginning at column 14, line 12, where it is
specifically stated at lines 41 and 42 that “[e]ach song can be associated with
any number of different styles.” Associated with this discussion is an
extensive discussion of searching, matching, and weighting according to
Cluts’ subjective similarity of song approach.
8. With respect to dependent claims 6 and 17, Cluts already
teaches features of aborting and skipping with respect to the discussion at
column 11, lines 43 through 46; the showing in Figure 5 and the
corresponding discussion at column 13, line 44 through column 14, line 11;
the separate showings in Figures 7 and 8 and the corresponding discussion at
column 16, lines 34 through 37, and lines 50 through 53; the showing in
Figure 9 in elements 930, 940, and 945, and the separate illustration in
Figure 10 with respect to elements 1030, 1040, and 1045.
9. In the paragraph bridging pages 15 and 16, Dunning’s
paragraph [0256] is reproduced here:
Finally, play logs may include information as to which tracks
were repeated, which were aborted or skipped, and at what volume
level the tracks were played. Weights can be assigned to tracks in the
log, based on such observations. For example, the system may assign
a higher weight to a track that was repeated on the assumption that the
user probably enjoyed that track, while a lower weight may be
assigned to a track that was skipped halfway through, on the
assumption that the user probably did not enjoy the track.

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PRINCIPLES OF LAW
Anticipation
“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). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Obviousness
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)). Our reviewing court has repeatedly warned against confining the
claims to specific embodiments described in the specification. Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Section 103 forbids issuance of a patent when “the differences
between 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.”

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

The Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” and
discussed circumstances in which a patent might be determined to be
obvious. Id. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12
(1966)). The Court reaffirmed principles based on its precedent that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 1740.
We must determine whether or not the differences between 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.
See id. at 1734. Obviousness determination is not the result of a rigid
formula, and we will consider the facts of a case and the common sense of
those skilled in the art. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1161 (Fed. Cir. 2007). That is, the test for obviousness is
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rather what the combined teachings of the references would have suggested
to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425
(CCPA 1981); In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).

ANALYSIS
Because we generally agree with Appellants’ arguments at pages 2
through 4 of the Reply Brief, the rejection of dependent claims 18 and 20
under the written description portion of the first paragraph of 35 U.S.C. §
112 is reversed (Issue 1). The material we noted earlier in Finding of Fact 1
justifies the features recited in these claims with respect to a mode of
operation of the skip means being selected from “the group consisting of
frequency of skip means operation and duration of skip means operation.”
Although not expressed in this noted portion of the Specification in
corresponding terms, the number of times the pressing and the duration of
the pressing of the skip button discussed in the portions in Finding of Fact 1
of the Specification as filed, clearly convey to the artisan the notion of
frequency of operation of the skip button as well as the duration of time of
operation of the skip button. Contrary to the apparent view of the Examiner,
there is no word for word or “ipsis verbis” requirement for the written
description portion of 35 U.S.C. § 112, first paragraph. This is discussed in
detail in MPEP § 2163.01.
We turn now to Issue 2 and begin with the rejection of representative
independent claim 1 on appeal as representative of the subject matter of
claims 1, 11, and 21. The only part of the Examiner’s extensive discussion
in the responsive arguments portion in the Answer that relates to certain
identifiable features of claim 1 is identified in the paragraph bridging pages
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5 and 6 of the Reply Brief. The reader should first understand the material
we quoted from our prior Decision earlier in this appeal relating to the
automatic and random features associated with Figure 10 as to the disputed
feature of the selection and presentation for playback being made without
interaction by a user. Our discussion of this is also noted in Finding of Fact
5 in this Opinion.
On the other hand, the bulk of the discussion in the Reply Brief
focuses on the feature of the “presentation means for presenting . . .
information units via audio or video playback” and the additional recitation
at the end of claim 1 of “the selection and presentation for playback being
made without interaction by a user.”
Finding of Fact 2 and the showing in Figure 1 of the Specification as
filed clearly conveys to the reader the concept of the presentation means
presenting at least one of the information units “via” audio or video
playback as conveying to the reader, as argued at page 6 of the Reply Brief,
that the claim requires an initial actual playback operation for at least one of
the information units or music selections. At least with respect to the
recitation of this portion of claim 1, the claim is construed to require an
actual audio playback operation because of the specific references to the
audio processor 104 and loudspeaker 105 in Figure 1 are stated to constitute
the presentation means for presenting the audio file. The features of
“sending” in independent claim 14 as well as a corresponding sending
function in independent claim 21 are also encompassed by this teaching in
Finding of Fact 2. The use of the claimed word “via” also noted in Finding
of Fact 2, relating to the computer’s sound card and loud speakers. We
therefore agree with what appears to be Appellants’ first argument at page 6
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of the Reply Brief that there is a recited function at least with respect to the
so-called “via” clause of claim 1.
On the other hand, we do not necessarily agree with the Appellants’
view that the recitations at the end of claim 1 of selecting and presenting
“for playback” relate to a statement of playing back since plainly, “for
playback” is not recited as occurring in the present tense and is clearly
different than “playing back” in the present tense.
Thus, an initial presentation requires an information unit or music
selection to be played, yet the remaining portions of the claim do not
positively require a playback function but merely a presenting for the user a
playback selection upon which a separate function or act of the user must be
necessary for the actual playback event to occur. Additionally, even if we
were to construe the selection and presentation “for playback” as
constituting a positive statement of playing back, our finding of anticipation
by Cluts still applies.
These claim interpretation issues consider the subject matter of
independent claim 1 most favorable to Appellants. The same may be said of
the sending function in independent claim 14 and the ability of sending to a
presentation means for playing in that claim. The same sending function is
recited as “sending the selected unit for playback by a playback device” in
independent claim 21.
In addition to our initial findings in our prior Decision noted earlier in
this appeal, Findings of Fact 3 through 5 clearly convey to the artisan the
understanding from the various embodiments of Cluts that Cluts’ system
requires at least the playing (and thus a sending) of an initial selection of a
song, which may be characterized as a so-called “seed song.” The user’s
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manual operation (Finding of Fact 4) in Figure 9 is contrasted by Cluts’
embodiment in Figure 10. As depicted in Figure 10 and briefly discussed in
Finding of Fact 5, selection and presentation then automatically and without
user interaction provides for further presentation to the user of more songs
from the database that have a similar “style.” Block 1020 performs a
random sort of the newly derived songs from the automatic system of
operation in Figure 10 just before the presentation of them in the form of 10
songs in block 1025, from which the user must selectively determine which
songs are accepted or not in decision block 1030. There is no requirement of
an automatic random selection and presentation in independent claim 14,
merely the random selection occurring. It is not until dependent claim 15
that recites the function of random selection must occur without the user’s
interaction. With respect to independent claim 11, there is a comparable
recitation of automatically and randomly selecting and presenting
substantially like the feature in independent claim 1. (Claim 11 reproduced
as an attachment to the principal Brief on appeal does not reflect the
amendments entered on April 28, 2006 and presented again in the
amendment of October 17, 2006.)
We generally agree with the Examiner’s correlation of features of
Cluts to the subject matter of argued dependent claims 2, 3, 12, and 15.
Findings of Fact 6 and 7 provide additional support for the Examiner’s
findings. The Reply Brief does not contest or otherwise traverse the
Examiner’s findings with respect to these claims. Thus, the weight and
extent of the arguments and evidence support the Examiner’s findings with
respect to these claims.
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We turn now to the rejection under 35 U.S.C. § 103 of representative
dependent claims 6 and 17 (Issue 3) where the Examiner relies upon Cluts in
view of Dunning. As to the combinability argument, the requirements of
combinability with respect to the case law noted in this Opinion are
buttressed by the findings we made in Finding of Fact 8 with respect to the
teachings already present in Cluts relating to the argued features of aborting
and otherwise skipping the selection of a song. The discussion in Finding of
Fact 9, noted by the Examiner in the discussion bridging pages 39 and 40 of
the Answer, buttresses the already extensive teachings of aborting and
skipping noted earlier that are already present in Cluts. The arguments at
pages 16 and 17 of the principal Brief on appeal do not appear in fact to
contest the Examiner’s reliance upon specific features of Dunning and only
on their face allege the lack of proper combinability within 35 U.S.C. § 103.
In view of our discussion noted here, the position at the top of page 17 of the
principal Brief that “it would make little or no sense to apply Dunning’s
playback skip function to Cluts’ tabular list of songs as suggested by the
Examiner” is clearly misplaced.

CONCLUSIONS OF LAW
1. Appellants have shown that the Examiner erred in finding that
the features recited in dependent claims 18 and 20 have no written
description basis within the present invention’s disclosure as required by the
written description portion of 35 U.S.C. § 112, first paragraph.
2. Appellants have not shown that the Examiner erred in finding
that the subject matter of the noted representative claims were anticipated by
Cluts.
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3. Likewise, Appellants have not shown that the Examiner erred
in finding that the combination of teachings of Cluts and Dunning would
have rendered obvious the subject matter of representative dependent claims
6 and 17 on appeal.

DECISION
The Examiner’s rejection of dependent claims 18 and 20 under the
written description portion of the first paragraph of 35 U.S.C. § 112 is
reversed. The rejection of various claims under 35 U.S.C. § 102(b) is
affirmed, as is the separate rejection of further dependent claims under 35
U.S.C. § 103. Since at least one rejection of every claim on appeal is
affirmed, the decision of the Examiner is affirmed. Claims 1 through 9, 11
through 15, and 17 through 21 are not patentable.
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).

AFFIRMED

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