Ex Parte EwaldDownload PDFPatent Trial and Appeal BoardJul 27, 201612049877 (P.T.A.B. Jul. 27, 2016) Copy Citation 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 3 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 4 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. 5 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 6 Copy with citationCopy as parenthetical citation