Ex Parte Gates et al

Patent Trial and Appeal Board

Dec 7, 2016

12646916 (P.T.A.B. Dec. 7, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/646,916 12/23/2009 Patrick Gates 520877 (P7912US1) 1984
77970 7590 12/09/2016
Polsinelli — Apple Inc.
c/o Polsinelli PC
Three Embarcadero Center, Suite 1350
San Francisco, CA 94111
EXAMINER
SOMERS, MARC S
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
12/09/2016 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):
Apple @ Polsinelli. com
cadocket @ Polsinelli. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRICK GATES, JEREMY WERNER, ANDREW H.
VYRROS, JOHN ANDREW McCULLOH, RICHARD FREDERICK
WAGNER, and ERIK DANFORTH STRAHM
Appeal 2015-002902
Application 12/646,916
Technology Center 2100
Before ROBERT E. NAPPI, JOHN P. PINKERTON, and
NABEEL U. KHAN, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
rejection of claims 12 through 19 and 30 through 34. Claims 1 through 11
and 20 through 29 have been withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-002902
Application 12/646,916
INVENTION
Appellants’ disclosed and claimed invention is directed to a method
for generating media mixes where a system selects media based upon what
others have in their media library. Abstract. Claim 12 is representative of
the invention and reproduced below.
12. A method of creating mixes of media items from a
program participant’s collection of media items comprising:
sending to a server, information describing individual
media items of a program participant’s collection of media
items;
receiving from the server, data describing clusters of
media items contained within the program participant’s
collection of media items, the clusters having been compiled
based on an agglomeration of tracks found in hierarchically
related clusters of media items in a media item inventory
available to the server, the clusters of media items in the
inventory having been determined based on a cluster analysis of
similarity data derived from a population of program
participants, wherein the similarity data indicates similarity
between a first media item and a second media item based on a
determined number of different program participant’s media
libraries that include both the first media item and the second
media item; and
determining a mix of media items, the mix comprising
media items selected from one of the clusters of media items
contained within the program participant’s collection of media
items received from the server.
REJECTIONS AT ISSUE1
The Examiner has rejected claims 12 through 14, 16 through 19, and
30 through 33 under 35 U.S.C. § 103(a) as unpatentable over Alcalde (US
1 Throughout this Decision we refer to the Appeal Brief filed August 18,
2014, Reply Brief filed January 21, 2015, Examiner’s Answer mailed
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Appeal 2015-002902
Application 12/646,916
2008/0021851 Al; Jan. 24, 2008) and Harbick (US 8,260,656 Bl; Sept. 4,
2012). Final Act. 2-11.
The Examiner has rejected claims 15 and 34 under 35 U.S.C. § 103(a)
as unpatentable over Alcalde, Harbick, and Vignoli (US 2009/0006353 Al;
Jan. 1,2009). Final Act. 11—13.
ANALYSIS
We have reviewed Appellants’ arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellants’
arguments. Appellants’ arguments have not persuaded us of error in the
Examiner’s rejections of claims 12 through 19 and 30 through 34.
Appellants argue the combination of Alcalde and Harbick does not teach the
claim limitation directed to the similarity data indicating a similarity
between a first and second media item based upon a determined number of
different program participant’s media libraries that include both media
items. App. Br. 7—10, Reply Br. 2-4. Specifically, Appellants assert
Harbick discloses that similarity between two songs can be determined
based upon comparing frequencies with which songs are played (play
histories) and that play histories of other users is not the same as the media
library of the other users. App. Br. 8. Appellants argue that the play history
indicates a user’s indication that songs should be and have been played
together, whereas the media library merely indicates that the media items are
in a library and not that they have been played.
The Examiner has provided a detailed and comprehensive response to
Appellants’ arguments on pages 3 through 6 of the Answer. In this
November 21, 2014, and the Final Action mailed January 29, 2014 (“Final
Act.”).
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Appeal 2015-002902
Application 12/646,916
response, the Examiner finds the claim phrase “based upon” does not
preclude further criteria for evaluating similarity, and that similarity based
upon play history is based upon the library as the played songs are from the
users’ music collections (which the Examiner equates to the media library).
We have reviewed the Examiner’s response, the evidence cited by the
Examiner and we concur with the Examiner’s findings and conclusions.
Appellants’ arguments in the Reply Brief, that the play history can
include content other than that which is in the user’s media music collection
is not persuasive of error. Reply Br. 3 (citing, col. 2,11. 56—58; col. 4.11. 5—
8; and col. 17,11. 65—67). The cited sections of Harbick teach that the play
history can be media played or stored on devices (Harbick col. 2 11. 65—col. 3
11. 2). Further, Appellants’ arguments are applying a narrow interpretation
of the term media library. Neither Appellants’ Specification nor the claim
recites a definition of the term media library, which: a) precludes the media
library from being a library of played media; or b) requires the media library
to be stored on the same device. Further, we note that Harbick column 17,
lines 65 through 67 teaches that the “playlists” or “play histories” don’t have
to be media actually played by the user, but can be media downloaded by a
user. Thus, Appellants’ arguments have not persuaded us that the Examiner
erred in finding the combination of Alcalde and Harbick teaches the claim
limitation directed to the similarity data indicating a similarity between a
first and second media item based upon a determined number of different
program participant’s media libraries that include both media items.
Accordingly, we sustain the Examiner’s rejection of claim 12 and of claims
13 through 19 and 30 through 34, which Appellants have not separately
argued.
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Appeal 2015-002902
Application 12/646,916
DECISION
We sustain the Examiner’s rejections of claims 12 through 19 and 30
through 34 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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