Ex Parte Garmark et alDownload PDFPatent Trial and Appeal BoardMay 16, 201814231170 (P.T.A.B. May. 16, 2018) Copy Citation 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: 2 Appeal 2017-011611 Application 14/231, 17 0 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, 3 Appeal 2017-011611 Application 14/231, 17 0 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. 4 Appeal 2017-011611 Application 14/231, 17 0 (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). 5 Appeal 2017-011611 Application 14/231, 17 0 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]). 6 Appeal 2017-011611 Application 14/231, 17 0 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 7 Appeal 2017-011611 Application 14/231, 17 0 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. 8 Appeal 2017-011611 Application 14/231, 17 0 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. 9 Appeal 2017-011611 Application 14/231, 17 0 [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 10 Appeal 2017-011611 Application 14/231, 17 0 "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 11 Appeal 2017-011611 Application 14/231, 17 0 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 12 Appeal 2017-011611 Application 14/231, 17 0 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 13 Copy with citationCopy as parenthetical citation