Ex Parte Garmark et al

Patent Trial and Appeal Board

May 16, 2018

14231170 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/231, 170 03/31/2014
24341 7590 05/18/2018
Morgan, Lewis & Bockius LLP (PA)
1400 Page Mill Road
Palo Alto, CA 94304-1124
FIRST NAMED INVENTOR
Sten Garmark
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.
020143-5047-US 5056
EXAMINER
RIEGLER, PATRICK F
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
05/18/2018 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):
padocketingdepartment@morganlewis.com
vskliba@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEN GARMARK, QUENTON COOK, GUSTAV
SODERSTROM, IVO SILVA, MICHELLE KADIR, and PETER
STROMBERG
Appeal 2017-011611
Application 14/231, 17 0
Technology Center 2100
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 The Appeal Brief states "[ t ]he real party in interest in this appeal is Spotify
AB, the assignee of this application." App. Br. 4.
Appeal 2017-011611
Application 14/231, 17 0
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 7-9, 11, 17-19, 21, 27-30, 32, 34, and 36-40. Claims 2-6, 10,
12-16, 20, 22-26, 31, 33, 35, and 41--44 were cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Representative Claim
Representative claim 1 under appeal reads as follows (emphasis
added):
1. A server computer, comprising:
one or more processors; and
memory storing one or more programs, the one or more
programs including instructions that, when transmitted to a
client computer and executed by the client computer, cause the
client computer to:
display an affordance corresponding to first audio
content, wherein the first audio content includes a
plurality of audio content items;
present second audio content;
during presentation of the second audio content,
detect a first input corresponding to activation of the
aff ordance;
in accordance with a first determination that the
first input is maintained throughout a first time period
after detecting the first input, pause the presentation of
the second audio content, the pausing comprising
maintaining a playback position of the second audio
content;
while pausing the presentation of the second audio
content:
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in accordance with a directional
component of the first input, select a respective
audio content item of the plurality of audio
content items; and
play a preview clip of predetermined length,
the preview clip being a portion of the respective
audio content item; and
while playing the preview clip of
predetermined length, in accordance with a
second determination that a predefined change to
the first input is detected:
cease playing the preview clip; and
resume presentation of the second
audio content from the maintained
playback position.
App. Br. 25 (Claims Appendix).
Rejections on Appeal2
1. The Examiner rejected claims 1, 11, 21, and 30 under
35 U.S.C. § 103(a) as being unpatentable over Xu et al.
(US 2012/0078398 Al; published Mar. 29, 2012) ("Xu"), Fino et al.
(US 2011/0234480 Al; published Sept. 29, 2011) ("Fino"), and Yoo et al.
(US 2012/0210214 Al; published Aug. 16, 2012) ("Yoo"). 3
2 Although Appellants and the Examiner respectively provided comments
regarding whether certain elements of claim 1 find sufficient support in
Appellants' Specification (see e.g., App. Br. 9--10; Ans. 3), the Examiner did
not reject the claims under 35 U.S.C. § 112, first paragraph for lack of
written description. See Ans. 2. In light of the absence of a written
description rejection, we decline to address these comments.
3 With respect to the rejection under 35 U.S.C. § 103(a), the patentability of
claims 7-9, 11, 17-19, 21, 27-30, 32, 34, and 36-40 is not separately argued
from that of claim 1. See App. Br. 24. Thus, with respect to this rejection,
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2. The Examiner rejected claims 7, 9, 17, 19, 27, and 29 under
35 U.S.C. § 103(a) as being unpatentable over Xu, Fino, Yoo, and Bhumkar
et al. (US 2008/0022229 Al; published Jan, 24, 2008) ("Bhumkar").
3. The Examiner rejected claims 8, 18, and 28 under
35 U.S.C. § 103(a) as being unpatentable over Xu, Fino, Yoo, Bhumkar, and
Hafeneger et al. (US 2012/0213495 Al; published Aug. 23, 2012)
("Hafeneger").
4. The Examiner rejected claims 32, 34, and 36-40 under
35 U.S.C. § 103(a) as being unpatentable over Xu, Fino, Yoo, and Herberger
et al. (US 2011/0113331 Al; published May 12, 2011) ("Herberger").
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being obvious?
PRINCIPLES OF LAW
Claim Interpretation
A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. See In re
American Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
In the absence of an express definition of a claim term in the specification or
a clear disclaimer of scope, the claim term is interpreted as broadly as the
ordinary usage of the term by one of ordinary skill in the art would permit.
See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007); see also In re Morris, 127 F.3d 1048, 1054
except for our ultimate decision, claims 7-9, 11, 17-19, 21, 27-30, 32, 34,
and 3 6-40 are not discussed further herein.
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(Fed. Cir. 1997). 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. See
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875
(Fed. Cir. 2004).
Obviousness
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the relevant question is "whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art." Dann, 425 U.S. at 228. Indeed, the Supreme Court
made clear that when considering obviousness, "the analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Further, one cannot show non-obviousness
by attacking references individually when the rejection is based on a
combination of references. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425
(CCPA 1981).
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ANALYSIS
The Examiner found, in relevant part:
Regarding claim 1, Xu teaches
[displaying] an affordance corresponding to first audio
content, wherein the first audio content includes a plurality of
audio content items. More specifically, "Song Name 4", among
others within "Album A", in Figures 12 and 13 is construed as
the claimed affordancefor first audio content (Xu, Figs. 12-13,
[0118]).
[presenting] second audio content; during presentation
of the second audio content, detect a first input corresponding
to activation of the affordance. More specifically, Figures 12
and 13 depict that "Song Name 2" (second audio content) is
currently being played back prior to and during the first input
on the first audio content (Xu, Figures 12 and 13, [0116]-
[0118]).
Xu further teaches it is determined whether the first
input is a long press compared to a period of time. The first
input is determined to be a tap if the input is finished/ changed
before a period of time and therefore the playback of the song
(first audio content) is initiated (Xu, [0119]). The first input is
determined to be a long press if the input is maintained
throughout a period of time and therefore the preview of the
song (first audio content) is initiated (Xu, [0120]). Additionally,
the audio is previewed only while the long press continues (Xu,
[0121]-[0123]).
Fino discloses providing an audio preview of songs and
other audio elements. The electronic device may pause a
currently-playing song when the mode of operation switches
from play mode to preview mode so that, if the user exits out of
preview mode, the original song may be resumed from the
pause point (Fino, abstract). The preview of each song may be
of the same, predetermined length (e.g., 5 seconds, 10 seconds)
(Fino, [0079]).
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With both Xu and Fino presenting media in the entirety or as
previews during the playback of other media, with Xu disclosing
the preview audio terminating with the termination of the long
press, and with Fino suggesting that the previews are of
predetermined length and during the preview, content already
playing is paused and then resumed once the preview is
terminated, fit would have been obvious to] one of ordinary skill
in the art [to implement the server taught by Xu to] include [the
features of pausing already-playing content to preview
additional content and resuming the paused content once the
preview of the additional content is terminated as taught by
Fino]. One would therefore be motivated to combine these
teachings as in doing so would create this server for presenting a
first media content as full playback or just a preview based on
time dependent input.
Yoo discloses a computing device that detects simple
gestures, and in response, display a preview of content items
preceding, or following a currently selected content item, from
the list of content items (Yoo, abstract). The computing device
displays via a graphical user interface a list of content items
(e.g., news articles, emails, music clips or tracks, video clips or
tracks, and so on) (Yoo, [0014]). If, for example, the presently
selected content item represents the fifth content item in a long
list of content items, when the user presses his finger to the
touch-sensitive input mechanism and then slides the finger in a
downward direction (or, left-to-right direction), a list view of the
fourth content item in the list may be displayed. By pressing a
finger to a touch-sensitive input mechanism of the computing
device and then moving the finger in an upward direction, or a
right-to-left direction, the user can obtain a list view of the
content item that immediately follows the content item whose
detailed or summary view is presently being displayed (Yoo,
[0015]). Therefore, Yoo at least suggests previewing music
content in a list before or after the currently selected content
using a maintained gesture with a directional component to
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determine which of said content before or after the currently
selected content to preview.
With Xu, Fino, and Yoo presenting previews of audio content
during the consumption of other content, with Xu disclosing the
preview audio terminating with the termination of the long press,
with Fino suggesting that the previews are of predetermined
length and during the preview, content already playing is paused
and then resumed once the preview is terminated, and with Yoo
additionally suggesting that the specific content previewed is
selected via a maintained gesture with a directional component,
fit would have been obvious to]one of ordinary skill in the art
[to implement the server taught by Xu and Fino to] include [the
features of selecting an audio content item of a plurality of
audio content items in accordance with a directional
component of an input as taught by Yoo] [where the server
utilizes a single gesture to both initiate previewing other
content as well as selecting which content to preview as taught
by the cited references]. One would therefore be motivated to
combine these teachings as in doing so would create this server
for presenting a preview of audio content while consuming other
selected other audio content using a first input.
Final Act. 2-7 (Examiner's emphasis omitted; panel's emphasis added).
We agree with the Examiner's finding that Xu teaches presenting
original audio content and subsequently presenting additional audio content
in response to detecting that a touch of a touch panel by a user is a "long
press" rather than a "tap" based on duration of the touch. See Xu i-fi-f 116-
123, Figs. 12, 13. We further agree with the Examiner's finding that Fino
teaches entering a preview mode by pausing playback of original audio
content and previewing additional content in response to horizontally-
directed or vertically-directed input, and exiting preview mode by resuming
the original audio content at a pause point. See Fino i-fi-179, 106-108,
Abstract.
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Even further, we agree with the Examiner's finding that Yoo teaches
displaying a list of content items and selecting a content item from the list of
content items in accordance with an input with a directional component
(e.g., upwards direction, right-to-left-direction). See Yoo i-fi-f 13-15,
Abstract. The modification of the sound processing device taught by Xu to
utilize a single input to both pause original audio content and to select and
preview an additional audio content item, as taught by Fino and Yoo, merely
yields predictable results, and thus, would have been within the capabilities
of a person of ordinary skill in the relevant art. "[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result." KSR, 550 U.S. at 416, citing
United States v. Adams, 383 U.S. 39, 50-51 (1966).
Appellants contend Yoo does not teach or suggest using a first input
that "pause[ d] a presentation of ... second audio content" to "select a
respective audio content item" based on "a directional component of the first
input" as recited in claim 1 because:
Yoo is not concerned with preview clips that are "portion[s] of
... respective audio content item[s]." Yoo describes "a preview
of content items," but Yoo previews "identifying information for
the content item," such as the "title, subject, brief description,
and so forth," rather than "a portion of the respective audio
content item."
Thus, Yoo' s preview is a "list view" of the content item
and does not include a portion of the "music clips or tracks"
themselves .... Thus, Yoo does not teach "the preview clip being
a portion of the respective audio content item," as alleged by
the Examiner.
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[Further], Yoo's "simple gesture" is not used to ''pause
the presentation of the second audio content" (i.e., the
originally presented content).
App. Br. 17-18 (Appellants' emphasis omitted; panel's emphasis added);
see also App. Br. 19; Reply Br. 4--6.
Appellants' argument is not persuasive of Examiner error as the
argument fails to address the rationale of the Examiner's rejection. More
specifically, the Examiner relied upon Fino, not Yoo, for teaching the
features of a preview clip that is a portion of an audio content item and
pausing a presentation of original content. See Final Act. 4 (citing Fino
,-r 79, Abstract).
Appellants additionally contend neither Xu nor Fino teach or suggest
the aforementioned claim element because:
[Fino] uses "directional input[ s ]" in a "scan preview
mode" to "rotate the visual interface" and "play a scan preview
for songs associated with a category." [Fino], i-f 6-7. But [Fino]
is silent on the issue of using "a directional component of' an
"input" to "select a respective audio content item" of a
"plurality of audio content items," where the input is the same
one that initiates and ceases playing a preview clip, as claimed.
App. Br. 20 (Appellants' emphasis omitted; panel's emphasis added); see
also App. Br. 21; Reply Br. 3--4.
This contention does not persuade us of Examiner error either. Again,
the argument fails to address the rationale of the Examiner's rejection, as the
Examiner relied upon Yoo, not Fino, for teaching selecting a content item of
a plurality of content items in accordance with a directional component of an
input. See Final Act. 6 (citing Yoo i-fi-114, 15, Abstract). In light of Xu and
Fino each teaching audio content, we agree with the Examiner that the
combination of Xu, Fino, and Yoo teaches or suggests using a first input that
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"pause[ d] a presentation of ... second audio content" to "select a respective
audio content item" based on "a directional component of the first input" as
recited in claim 1.
Appellants further contend neither Xu nor Fino teach or suggest "in
accordance with a second determination that a predefined change to the first
input is detected ... resum[ing] presentation of the second audio content
from the maintained playback position," where the first input is the same
input that triggered "play[ing] a preview clip of predetermined length," as
recited in claim 1 because:
Xu does not teach that "pausing includes maintaining a
playback position of the second audio content," as recited in
claim 1, and thus does not teach "resum[ing] ... the second audio
content from the maintained position." Xu also does not teach
that "paus[ing] the presentation of the second audio content" and
"maintaining a playback position of the second audio content"
occur "in accordance with a first determination that the first
input is maintained throughout a first time period after
detecting the first input. "
Xu's improvements are directed toward situations in which
"paus[ing]" "the original music" and "reproduc[ing it] again"
require "several operational steps." Id. Xu's mention of
performing "several operational steps" to retrieve the music data
after "pausing" suggests that the ''playback position" is lost. Id.
Xu elsewhere distinguishes between a "tap operation" and a
"long press." Id. i-f 119. The tap operation is used "for selecting a
song," while the long press results in two songs ("song A and
song B") being "simultaneously reproduced." Id. i-fi-1 119-123.
Xu's "long press" thus does not correspond to the claimed first
input.
[Fino] discloses a "scan preview mode" but is silent on the issue
of how the user initiates and "chooses to exit the preview
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mode." [Fino] i-f 6. Thus, [Fino] does not suggest that "a
predefined change" to the same input that triggered his "scan
preview mode" results in "ceas[ing] playing the preview clip;
and resum[ing] presentation of the second audio content," as
recited in claim 1.
Pausing does not necessarily require maintaining a playback
position; to the contrary, as Xu's "several operational steps"
suggests, the playback position may be lost. For example, one of
the "operational steps" could require a user to locate her previous
position in the original music. If the playback position were
maintained, one would not expect several steps to be necessary
to resume playback.
App. Br. 22-24 (Appellants' emphasis omitted; panel's emphasis added).
We are not persuaded of Examiner error. With respect to Appellants'
argument regarding Xu, similar to Appellants' other arguments, the
argument fails to address the rationale of the Examiner's rejection. More
specifically, the Examiner relied upon Fino, not Xu, for teaching
maintaining a playback position of audio content and resuming the audio
content from the maintained position. See Final Act. 4 (citing Fino i-f 79,
Abstract); see also Ans. 10-11; Fino i-f 108. With respect to Appellants'
argument regarding Fino, the argument also fails to address the rationale of
the Examiner's rejection, as the Examiner relied upon Xu, not Fino, for
teaching a predefined change in an input that causes an end to a playing of a
preview clip and a resumption of a presentation of original audio content.
See Ans. 12-13 (citing Xu i-fi-1126, 173, Fig. 13); see also Xu i-f 123 ("[w]hen
the long press is finished, reproduction of only the original song A is
resumed"). In light of the teachings of Xu and Fino, we agree with the
Examiner that the combination of Xu, Fino, and Yoo teaches or suggests "in
accordance with a second determination that a predefined change to the first
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input is detected ... resmn[ ing] presentation of the second audio content
from the maintained playback position," where the first input is the same
input that triggered "play[ing] a preview clip of predetermined length," as
recited in claim 1.
Accordingly, Appellants have not shown the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a).
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 7-9, 11, 17-19,
21, 27-30, 32, 34, and 36-40 as being unpatentable under 35 U.S.C.
§ 103(a).
(2) Claims 1, 7-9, 11, 17-19, 21, 27-30, 32, 34, and 36-40 are not
patentable.
DECISION
We affirm the Examiner's rejection of claims 1, 7-9, 11, 17-19, 21,
27-30, 32, 34, and 36-40 as being unpatentable under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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