Ex Parte Ewald

Patent Trial and Appeal Board

Jul 27, 2016

12049877 (P.T.A.B. Jul. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/049,877 03/17/2008
29150 7590 07/29/2016
LEE & HA YES, PLLC
601 W. RIVERSIDE A VENUE
SUITE 1400
SPOKANE, WA 99201
FIRST NAMED INVENTOR
Stephen A. Ewald
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.
E021-0002US 7687
EXAMINER
FADOK,MARKA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/29/2016 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN A. EWALD
Appeal2013-003880
Application 12/049,877 1
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b ).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A system for purchasing goods and services associated with a
media stream, the system comprising:
a selector configured to receive input from a purchaser, the
input indicating that the purchaser desires to purchase a good or
service associated with a media stream;
1 Appellant identifies Stephen A. Ewald, the inventor of all
right, title and interest in and to the subject invention as the real party in
interest. Appeal Br. 3.
Appeal2013-003880
Application 12/049,877
a detector configured to detect at least a portion of the media
stream and collect data associated with the media stream;
a transmitter that configured to transmit at least a portion of the
media stream and the collected data to an analyzing device configured
to, based on the portion of the media stream:
determine that explicit identification data identifying a
selected good or service is not present in the media stream and
effectuate determination of information relating to the selected
good or service by sending the collected data to a server, the
server configured to use the collected data to identify the
selected good or service and effectuate the purchase without
further interaction from the purchaser;
otherwise determine information relating to the selected
good or service; and
generate an indication when the selected good or service
is not available for purchase;
a receiver configured to receive from the analyzing
device identification data associated with the media stream,
wherein the analyzing device analyzes the transmitted media
stream to determine the explicit identification data; and
a processor configured to generate purchase data, the
purchase data comprising the explicit identification data,
wherein the processor is configured to instruct the transmitter to
transmit the purchase data to a purchasing device.
Appeal Br. 17 (Claims App.).
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Baunach
Lazovsky
Graef
US 2007 /0281606 Al
US 2009/0006256 Al
US 2010/0093393 Al
2
Dec. 6, 2007
Jan. 1,2009
Apr. 15, 2010
Appeal2013-003880
Application 12/049,877
The following rejections are before us for review.
Claims 1-23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lazovsky in view of Graef and further in view of
Baunach.
Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lazovsky in view of Graef and Baunach and further in
view of Official Notice.
ANALYSIS
The Examiner has made a priority statement that "[ t ]he disclosure of
the prior-filed application, Application No. 10/672,133, fails to provide
adequate support or enablement in the manner provided by the first
paragraph of 35 U.S.C. 112 for one or more claims of this application."
(Answer 3, 4).
The Examiner also rejected the claims 1-23 of the application under
35 U.S.C. § 103(a). (Answer 5-16).
Appellant argues in the alternative against the both items in the
Answer. (Appeal Br. 7-15).
Given that Appellant argues the merits of the 35 U.S.C. § 103(a)
rejection before us (Appeal Br. 10-15), we address the merits of the
rejection alone, which is dispositive.
Each of independent claims 1, 6, 11, and 16 requires in one form or
another:
determining, by the computing device, that explicit
identification data identifying a selected good or service
is not present in the media stream and effectuating
determination of information relating to the selected good
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Appeal2013-003880
Application 12/049,877
or service by sending data indicative of the media stream
to a server, the server configured to use the data
indicative of the media stream to identify the selected
good or service and to return the explicit identification
data; ....
Claims 6, 11 (Appeal Br. 19, 20).
Concerning this limitation the Examiner finds,
the combination of Lazovsky and Graef clearly teaches
determining the presence of a data signal which one of
ordinary skill in the art would understand to include the
ability to recognize a null set when metadata was not
present in a corresponding audio signal and the ability to
analyze a signal with no data to arrive at an identifier that
may be used to make a subsequent purchase. Therefore,
it would have been obvious to try, by one of ordinary
skill in the art at the time of the invention was made to
incorporate determining that explicit identification data
identifying a selected good or service is not present in the
media stream and effectuate determination of information
relating to the selected good or service by sending the
collected data to a server into to the system created by the
combination of Lazovsky and Graef, since there are a
finite number of identified, predictable potential solutions
(use an alternate process to determine the identity of a
song for ordering or not ordering using an alternative)
and one of ordinary skill in the art could have pursued the
known potential solutions with a reasonable expectation
of success (benefits of providing alternatives to allow a
customer to purchase a product is well understood).
(Answer 5-6).
Appellant argues:
the Examiner admits that two elements that are not
shown in the suggested combination and anticipates the
argument of the applicant in pointing it out. The
Examiner then glosses over this flaw by arguing that one
of skill in the art "would understand to include the ability
to recognize a null set when metadata was not present in
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Appeal2013-003880
Application 12/049,877
a corresponding audio signal and the ability to analyze a
signal with no data to arrive at an identifier that may be
used to make a subsequent purchase," solely because it is
"obvious to try." FOA, p. 7. The applicant traverses this
assertion of what one of skill in the art would know and
perform without the guidance of the present application.
(Appeal Br. 11 ).
We agree with Appellant. Examination Guidelines set forth at 72 Fed.
Reg. at 57526-27 require, for "obvious to try" findings, the Examiner must
articulate:
( 1) a finding that at the time of the invention, there
had been a recognized problem or need in the art,
which may include a design need or market
pressure to solve a problem;
(2) a finding that there had been a finite number of
identified, predictable potential solutions to the
recognized need or problem;
(3) a finding that one of ordinary skill in the art
could have pursued the known potential solutions
with a reasonable expectation of success; and
( 4) whatever additional findings based on the
Graham factual inquiries may be necessary ...
We find no reasoning by the Examiner in the record, except for a
statement that there "are a finite number of identified, predictable potential
solutions" (Final Act. 7), as to any further analysis of the required articulated
factors for an obvious to try rejection under 35 U.S.C. § 103(a). Moreover,
we do not find convincing the Examiner's reasoning of "recognizing a null
set when metadata was not present" as proof a finite number of solutions.
Therefore, we do not sustain the rejection of the independent claims 1, 6, 11,
and 16 based on the combination of Lazovsky in view of Graef and further
in view of Baunach.
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Appeal2013-003880
Application 12/049,877
Since claims 2-5, 7-10, 12-15, and 17-23 depend from one of claims
1, 6, 11, and 16, and since we do not sustain the rejection of claims 1, 6, 11
and 16, the rejection of claims 2-5, 7-10, 12-15, and 17-23 under 35 U.S.C.
§ 103(a) likewise is not sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1-23 under
35 U.S.C. § 103.
DECISION
The decision of the Examiner to reject claims 1-23 is reversed.
REVERSED
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