Ex Parte Gross

Board of Patent Appeals and Interferences

Mar 30, 2009

10770937 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN N. GROSS
____________

Appeal 2009-2646
Application 10/770,937
Technology Center 3600
____________

Decided: March 30, 2009
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b).
(2002)

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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a system and method for monitoring purchase orders
and/or rental selections made by consumers, and providing automatic
selections, notifications, shipments and exchanges of new items.
(Specification 1:11-13)
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method of distributing playable media items over an
electronic network from a first computer maintained by a
provider of a media distribution service to a second computer
used by a subscriber of such service, the playable media items
corresponding to machine readable media readable by a
subscriber machine player, the method comprising the steps of:

(a) setting up a subscriber delivery queue for the
subscriber to be controlled by the first computer, said
subscriber delivery queue consisting of an ordered list of one or
more playable media items to be delivered to the subscriber in a
subscriber-defined priority;
wherein said subscriber delivery queue is set up at least
in part in response to item selection directions provided by the
subscriber over the network using the second computer;

(b) setting up queue replenishment control rules for the
subscriber delivery queue; and

(c) monitoring said subscriber delivery queue in
accordance with said queue replenishment control rules to
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automatically determine with said first computer if an
additional playable media item should be added to said
subscriber delivery queue; and

(d) automatically modifying said subscriber delivery
queue with said first computer to generate a new ordered list of
one or more playable media items in response to the subscriber
confirming that said additional playable media item can be
included in said subscriber delivery queue;
wherein said subscriber delivery queue is maintained
automatically for the subscriber so as to include at least one
playable media item which could be delivered to such
subscriber.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Davis US 6,105,006 Aug. 15, 2000
Berstis US 6,105,021 Aug. 15, 2000
Kamel US 2001/0014145 A1 Aug. 16, 2001
Jacobi US 6,317,722 B1 Nov. 13, 2001
Kolawa US 6,370,513 B1 Apr. 9, 2002
Nakagawa US 2002/0046129 A1 Apr. 18, 2002
Raphel US 2003/0023743 A1 Jan. 30, 2003
Hastings US 6,584,450 B1 Jun. 24, 2003
Postelnik US 2006/0218054 A1 Sep. 28, 2006
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M.A. Ostrom, “With newer releases, Netflix users can anticipate a ‘very
long wait’” The Mercury News, July 7, 2002.
The following rejections are before us for review.
1. The Examiner rejected claims 1, 2, 3, 4, 7, 8, 15, 17, 18, 19, 20, 21
23, 24, 28, 29, 30, and 31 under 35 U.S.C. 103(a) as being unpatentable over
Hastings in view of Ostrom.
2. The Examiner rejected claim 5 as unpatentable under § 103 in light
of the rejection (1) above and further in view of Raphel.
3. The Examiner rejected claim 6 as unpatentable under § 103 in light
of the rejection (1) above and further in view of Berstis.
4. The Examiner rejected claims 9, 10, 11 are unpatentable under §
103 in light of the rejection (1) above and further in view of Postelnik.
5. The Examiner rejected claim 12 as unpatentable under § 103 in
light of the rejection (1) above and further in view of Jacobi.
6. The Examiner rejected claim 13 as unpatentable under § 103 in
light of the rejection (1) above and further in view of Davis.
7. The Examiner rejected claim 14 as unpatentable under § 103 in
light of the rejection (1) above and further in view of Nakagawa.
8. The Examiner rejected claim 16 as unpatentable under § 103 in
light of the rejection (1) above and further in view of Kamel.
9. The Examiner rejected claims 20, 21, 25 26, 27, 32, 33, 34 are
unpatentable under § 103 in light of the rejection (1) above and further in
view of Official Notice.
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10. The Examiner rejected claim 36 as unpatentable under § 103 in
light of Hastings taken with Kolawa and Official Notice.
ISSUE
Has Appellant shown that the Examiner erred in rejecting claims 1, 2,
3, 4, 7, 8, 15, 17, 18, 19, 20, 21, 23, 24, 28, 29, 30, and 31 under 35 U.S.C.
103(a) as being unpatentable over Hastings in view of Ostrom on the
grounds that a person with ordinary skill in the art would have known that
the MAX TURNS rules which control the output of titles to the customer in
Hastings also cause the delivery queue to be maintained automatically for
the subscriber so as to include at least one playable media item which could
be delivered to such subscriber.
Has Appellant shown that the Examiner erred in rejecting the
remaining claims on appeal under 35 U.S.C. 103(a) as being unpatentable
over Hastings in view each of several other references in that a person with
ordinary skill in the art would have known to make such combinations.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found that Hastings discloses
(c) monitoring said subscriber delivery queue in
accordance with said queue replenishment rules;
wherein said subscriber delivery queue is
maintained automatically for the subscriber so as
to include at least one playable media item which
could be delivered to such subscriber (ibid.).
(Answer 5)
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2. Ostrom discloses:
Selecting from nearly 12,000 titles, Netflix
subscribers create a list of movies in order of
preference. Movie requests are generally fulfilled
on a first-come, first-serve basis. If a top pick isn't
available, Netflix sends the next movie on the list.
While savvy subscribers reorder their preference
list regularly to ensure that the new releases stay at
the top, even that is not a guarantee… (Ostrom,
p.1)
3. The Specification describes:

A Subscriber Delivery Queue Module 723 controls
and updates subscriber delivery queues in response
to subscriber selections, automatic return and
shipping instructions issued by Media Processing
Module 722 (such as when a title is returned) and
based on a Intelligent Queue Monitor module 726
described below. (Specification 25: 10-19)
4. Hastings discloses “If the specified number of items are currently
rented to customer 102 and the specified item delivery criteria triggers the
delivery of one or more additional items, then those items are not delivered
until one or more items are returned by customer 102 to provider 104.”
(Hastings, col.5, ll. 44-49)
5. Hastings discloses
Instead of identifying particular movie titles, the
movie selection criteria may specify movie
preferences for customer 502, e.g., types of
movies, directors, actors, or any other movie
preferences or attributes. In this situation, provider
504 automatically selects particular titles that
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satisfy the movie selection criteria. For example,
the movie selection criteria may specify a
preference for action movies starring a particular
actor, with a preference for "new release" movies.
Provider 504 attempt to provide movies to
customer 502 that best satisfy the preferences
indicated by the movie selection criteria.
(Hastings, col. 10, ll. 3-14)
6. Hastings discloses
If, in step 612, a determination is made that the
"Max Turns" limit has been met for the current
cycle, i.e., in the present example, four movies 512
have been mailed to customer 502 in the current
month, then in step 614 a determination is made
whether to override the current "Max Turns" limit.
If so, then in step 616, a surcharge is applied to
customer 502 and control returns to step 608 where
the additional movies 514 are mailed to customer
502. If not, then in step 618, a determination is
made whether to continue the subscription service.
If so, then no additional movies are mailed to
customer 502 during the current cycle, e.g., the
current month, and the control returns to step 610.
If, in step 618, a determination is made that service
is not to be continued, then the process is complete
in step 620. (Hastings, col.10, ll. 52-64)

7. The Examiner found:
Hastings discloses the user providing movie
selection criteria such as types of movies, actors,
directors, etc. (column 9, line 63, through column
10, line 14). Thus, Hastings's method would have
to involve analyzing "other playable media items"
to determine what type of movies they were, who
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the actors and directors were, etc., in order to
accomplish Hastings's disclosed purpose. (Answer
22-23)
8. The Examiner found with respect to claim 9 that:

Hastings does not disclose sending a notification to
the subscriber after step (c) when the queue
replenishment control rules determine that the
subscriber delivery queue should be modified, but
it is well known to send customers notifications of
pending deliveries, modifications to their orders,
etc., as taught,, for example, by Postelnik
(paragraph 74). Hence, it would have been obvious
to one of ordinary skill in the art of electronic
commerce at the time of applicant's invention to
send such a notification, for such obvious
advantages as assuring a subscriber of the
imminent shipment of desired items, or enabling a
subscriber to modify his preference list to receive a
more desired item (as set forth in Ostrom).
(Answer 9)
9. The Examiner found with respect to claim 12 that:
Hastings does not disclose that the notification
includes an embedded uniform resource link
(URL) or an electronic response field in the
notification so as to allow the subscriber to review
playable media title recommendations from a
recommender system, but Jacobi teaches
notifications including hyperlinks to allow a user
to review recommendations from a recommender
system (column 10, lines 54-62). Hence, it would
have been obvious to one of ordinary skill in the
art of electronic commerce at the time of
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applicant's invention for the notification to include
an embedded uniform resource link (URL) or an
electronic response field, for the obvious
advantage of profiting from selling (or renting)
items to the subscriber that the subscriber is likely
to be interested in. (Answer 10-11)
10. The Examiner found with respect to claim 13 that
Hastings does not disclose that the subscriber
delivery queue is automatically modified in
accordance with the queue replenishment rules
after a predefined time delay, but it is well known
to take action after a predefined time delay, as
taught, for example, by Davis (column 23, lines
16-26). Hence, it would have been obvious to one
of ordinary skill in the art of electronic commerce
at the time of applicant's invention for the
subscriber delivery queue to be automatically
modified in accordance with the queue
replenishment rules after a predefined time delay,
for at least the obvious advantage of giving
someone (the subscriber, or an administrator), time
to make any manual modification which seem
indicated. (Answer 11)
11. The Examiner found with respect to claim 14 that
Hastings does not disclose that the notification
provides directions for the subscriber to accept
and/or modify said additional playable media item,
but Ostrom, as noted, discloses the subscriber
modifying (or, by default, accepting) a list, and it
is well known to provide directions, as taught, for
example, by Nakagawa (display of directions in
paragraph 41). , Hence, it would have been
obvious to one of ordinary skill in the art of
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electronic commerce at the time of applicant's
invention to provide such directions, for the
obvious advantage of enabling the subscriber to
readily modify (or accept) the queue according to
his wishes. (Answer 11-12)
12. The Examiner found with respect to claim 15 that “…Hastings
discloses a trigger event to determine delivery of an item to a subscriber
(column 5, lines 1-14; column 14, lines 1-17), which implies modifying the
subscriber delivery queue (at least by deleting the item now delivered).”
(Answer 7)
13. The Examiner found with respect to claim 16 that:
Hastings does not disclose that the trigger event is
associated with a quantity of playable media items
remaining in said subscriber delivery queue, but a
trigger event could be associated with a quantity of
playable media items remaining in the delivery
queue in several ways (e.g., the queue might have
become too large or too small), and it is well
known at least to add additional items to a queue
which has become too small, as taught, for
example, by Kamel (paragraphs 161, 162, 167, and
168). Hence, it would have been obvious to one of
ordinary skill in the art of electronic commerce at
the time of applicant's invention for the trigger
event to be associated with a quantity of playable
media items remaining in said subscriber delivery
queue, for the obvious advantage of assuring an
adequate quantity of playable media items in the
queue. (Answer 12)

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PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
ANALYSIS
We affirm the rejection of claims 1-36.
Independent claim 1:
Appellant argues that “Ostrom says nothing about automatically
determining whether an ‘additional playable media item’ should be added to
the queue. It is merely repeating the fact that subscribers could add such
items manually as is already disclosed in Hastings.” (Appeal Br. 9)
(Emphasis original) That argument is not well taken because the Appellant
is attacking the reference individually when the rejection is based on a
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combination of references and the Examiner found that Hastings and not
Ostrom teaches the automatically determining step feature (FF 1). See In re
Keller, 642 F.2d 413, 426 (CCPA 1981); In re Young, 403 F.2d 754 (CCPA
1968). Notwithstanding, see infra, our discussion of the MAX TURNS
feature of Hastings which we conclude includes an automatic determining
feature.
Appellant further argues that “Similarly Ostrom does not
"automatically" modify the subscriber queue, this is something that user
must do on their own again.” (Appeal Br. 9) In light of the breadth of the
claim, the Appellant’s argument is not persuasive as to error in the rejection
because we interpret Ostrom’s disclosure of Netflix sending the next movie
on the list as modifying the list by decrementing the list by one which
decremented list becomes the new list.
Appellant next argues that Hastings
makes no mention anywhere of "monitoring" the
subscriber's queue and using such information to
determine an additional playable media item. He
merely fills the queue with items which are from
manual selections or with items automatically
based on subscriber selection criteria…. (Appeal
Br. 10)
The Examiner’s position is that
…this depends on what one understands
monitoring the subscriber delivery queue to mean.
If monitoring the queue must mean specifically
monitoring the number of items in the queue,
Appellant's contention is true. If monitoring the
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queue can mean monitoring subscriber selections
and criteria associated with the queue, and, by
implication, monitoring whether particular items
are already in the queue, or have been in the past,
then Hastings monitors subscriber delivery queues.
Examiner may properly give the broadest
reasonable interpretation to claim language in the
course of examining claims. (Answer 21)
Claim 1 recites: ... monitoring said subscriber delivery queue in
accordance with said queue replenishment control rules to automatically
determine with said first computer if an additional playable media item
should be added to said subscriber delivery queue. Thus, first, with regard
to Appellant’s argument above, the involved language does not use the
conjunction “and” making the argument more specific than the scope of the
claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Second, we agree with the Examiner that the mailing queue in
Hastings, analogous to Appellant’s Subscriber Delivery Queue, is monitored
to the extent that Hastings determines or monitors the number of titles
mailed to a customer in a given month (FF 6). That is, according to
Hastings, the automatic return and shipping instructions are tied to MAX
OUT or MAX TURNS rules which control the output of titles to the
customer (FF 4, 6). This is similar to Appellant’s Subscriber Delivery
Queue which is described as controlled by a Subscriber Delivery Queue
Module 723 which controls and updates subscriber delivery queues also in
response to, inter alia, automatic return and shipping instructions issued by
Media Processing Module 722 (FF 3).
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Thus, in the MAX TURNS mode, we read the automated
determination as to whether the "Max Turns" limit has been met for the
current cycle (FF 6) to be monitoring because the number of titles that have
been mailed out is monitored. Further, this monitoring process results in a
determination of whether further additional playable media should be
mailed, e.g. added to the subscriber delivery queue for mailing when the
current "Max Turns" limit is overridden to allow additional movies to be
mailed to customer (FF 6). Moreover, in the case where the provider
automatically selects the title for the customer and mails same to him/her
(FF 5), another title is selected and added to the MAX TURNS queue over
the set quota. In so doing, the MAX TURNS mode insures that for a given
cycle, and for however many number of overrides occur, at least one
playable media can be delivered to a subscriber. In light of the breadth of
claim 1, the Appellant’s argument is not persuasive as to error in the
rejection.
Appellant does not argue the separate patentability of dependent
claims 2, 3, 5, 6, 7, 8, 20, 21,23, 24, 25, 26, 27, 28, 29, 20, 31,32, 33 and 34
(Appeal Br. 12) which depend on claim 1. These claims fall with claim 1.
See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).

Claim 35:
Appellant argues that Hastings has no mention of
examining other items in the selection queue as
part of a monitoring process, or even for
determining what titles to send to a subscriber. The
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only criteria noted by Hastings are parameters for
movies given by the subscriber, which are never
then associated with other titles within the
subscriber's queue. This limitation is also not
taught or suggested in the prior art, and is yet
another reason why this claim should be allowed.
(Appeal Br. 11)
The Examiner found that because Hastings discloses selection criteria
specifying preferences by a customer so as to automatically select particular
titles that satisfy the movie selection criteria, Hastings thus must examine
titles to be sure that they meet the selection criteria. (FF 7) In light of the
breadth of the claim, Appellant’s argument is not persuasive as to error in
the rejection because the claim is broad enough to be covered by Hasting’s
auto select mode.
Claim 4:
Claim 4 recites: wherein said additional playable media item is
automatically inserted in a subscriber-defined delivery order position in said
new ordered list of one or more playable media items.

Appellant argues that:
Ostrom is not referring to an additional playable
media item; it is referring to re-arranging a
preexisting item in the subscriber's queue, or
letting the subscriber add something manually.
Thus, it does not teach permitting the subscriber to
define the automatic insertion point of a new item.
(Appeal Br. 12)
However, the claims only require the new ordered list be one in
number playable media item. Thus, the question of order becomes moot
when the claim is read as having only one media in the list. In light of the
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breadth of the claim, the Appellant’s argument is not persuasive as to error
in the rejection.

Claim 9:
Claim 9 recites: sending a notification to the subscriber after step (c)
when said queue replenishment control rules determine that said subscriber
delivery queue should be modified.
Appellant argues that “Applicant finds no mention in Postelnik of
notices for a subscriber delivery queue….” (Appeal Br. 12.) That argument
is not well taken because the Appellant is attacking the reference
individually when the rejection is based on a combination of references and
Hastings discloses the subscriber delivery queue and Postelnik teaches the
general concept of sending a notification back to a user as to a change in the
status of an order (FF 8). This is not disputed. See In re Keller, 642 F.2d
413, 426 (CCPA 1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968).
Appellant does not argue the separate patentability of claims 10 and
11which depend on claim 9. These claims fall with claim 9. See,
37 C.F.R. § 41.37(c)(1)(vii)(2004).

Claims 12, 13, 14, 16
The Examiner found for each of these claims that the prior art
discloses the feature not found in Hastings (FF 9-13). But, Appellant argues
against these rejections citing the shortcomings of Hastings. These
arguments are not well taken because the Appellant is attacking the
reference individually when the rejection of these claims is based on a
combination of references, and a reference other that Hastings is used to
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teach the alleged shortcoming. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968). We note however
with respect to claim 16, that Kamel is cumulative given that Hastings
discloses a queue of titles which remain un-mailed in queue until cleared by
the MAX TURNS or MAXOUT rules (FF 6).
We note that the Examiner’s reasoning behind the rejection of claim
15 is based on Hastings alone. In so doing, the Examiner found that
Hastings teaches a trigger event (FF 12) which Appellant does not challenge.
Also, with respect to claims 12, 14, 15, and 16, Appellant further
argues that “... there was no incentive or suggestion to include such in
systems which practice the present claims.” (Appeal Br. 13) To the extent
Appellant seeks an explicit suggestion or motivation in the reference itself,
this is no longer the law in view of the Supreme Court’s recent holding in
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). Since the
Examiner has provided some articulated reasoning with some rational
underpinning for why a person with ordinary skill in the art would modify
Hastings as proposed (FF 9-13), Appellant’s argument is not persuasive as to
error in the rejection. Thus, we do not find error in the rejections of claims
12-16.

Claims 17, 18, and 19
Appellant argues that Hastings does not automatically add titles to the
subscriber’s queue. We disagree for reasons set forth above related to FF 5.
Appellant further argues that “Hastings says nothing about bumping a
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recommended title to the top of the queue, as set out in claim 18. However,
claim 18 recites wherein said recommended playable media item is
designated as the next to be delivered from said subscriber delivery queue.
Thus, the Appellant’s arguments “fail from the outset because . . . they are
not based on limitations appearing in the claims . . .,” and are not
commensurate with the broader scope of claim 1 which states nothing about
bumping a title. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Even still,
in the case of an empty Queue, the next recommended title in Hastings
would be the next delivered (FF 6). In light of the breadth of the claim, the
Appellants’ argument is not persuasive as to error in the rejection.

Claim 36
We also affirm the rejection of dependent claim 36 since Appellant
has not challenged such with any reasonable specificity (see In re Nielson,
816 F.2d 1567, 1572 (Fed. Cir. 1987)).

CONCLUSIONS OF LAW
We conclude the Appellant has not shown that the Examiner erred in
rejecting appealed claims 1-36 under 35 U.S.C. § 103(a) as unpatentable
over the applied prior art of record.

DECISION
The decision of the Examiner to reject claims 1-36 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

vsh

J. NICHOLAS GROSS, ATTORNEY
2030 ADDISON ST.
SUITE 610
BERKELEY CA 94704