Ex Parte Harper et alDownload PDFPatent Trial and Appeal BoardNov 18, 201311772931 (P.T.A.B. Nov. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GREGORY W. HARPER and STEVEN SKIBA ____________________ Appeal 2011-010879 Application 11/772,931 Technology Center 3600 ____________________ Before ANTON W. FETTING, NINA L. MEDLOCK, and JAMES A. TARTAL, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-010879 Application 11/772,931 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We AFFIRM-IN-PART.1 BACKGROUND Appellants’ invention relates to systems that allow customers to preview or sample the content of media products, such as CDs, DVDs, software, video games, etc., prior to purchase (Spec., para. [0003]). Claims 1 and 24, reproduced below, are representative of the subject matter on appeal: 1. A media sampling method, comprising: storing product content samples and product content information; disposing at a location within a retail site a sampling station, the sampling station being operable to enable a user to listen to and/or view one or more of the product content samples, and the sampling station comprising a display device, a bar code scanner, and a headphone; communicatively connecting the sampling station to a server located within the retail site via a network cable, the sampling station being configured to (a) receive all of its electrical power via the network cable and (b) use the network cable to transmit data to and receive data from the server; displaying on the display device a prompt prompting an administrator to configure the sampling station upon the 1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed December 22, 2010) and Reply Brief (“Reply Br.,” filed May 13, 2011) and the Examiner’s Answer (“Ans.,” mailed March 16, 2011). Appeal 2011-010879 Application 11/772,931 3 sampling station being communicatively connected to the server via the network cable for the first time; storing in a point-of-sale (POS) database pricing information for products being sold at the retail site; automatically in response to the bar code scanner scanning a bar code of a product placed by the user adjacent to the bar code scanner, transmitting information encoded in the bar code to the server coupled to the POS database; in response to receiving the information at the server, using the information to retrieve from the POS database pricing information for the product; after retrieving the pricing information, transmitting the pricing information and product content information related to the product to the sampling station, wherein, upon receiving the pricing and product content information, the sampling station uses the display device to display the pricing and product content information to the user. 24. A media sampling method, comprising: storing a plurality of product content samples and product content information; operating a point-of-sale (POS) system within a retail site, the point-of-sale system comprising a POS database storing real-time product inventory information; disposing at a location within the retail site a sampling station, the sampling station being operable to enable a user of the sampling station to listen to and/or view one or more of the product content samples and to obtain product content information for a particular product, and the sampling station comprising a display device, a bar code scanner, and a headphone; in response to the user using the sampling station to obtain product content information for a particular product, selecting a set of other products to bring to the attention of the user; and for each of the selected other products, displaying on the display device of the sampling station an identifier identifying the selected other product, wherein the selecting step comprises: Appeal 2011-010879 Application 11/772,931 4 selecting an other product based, at least in part, on the particular product, retrieving real-time product inventory information from the POS system for the selected other product, using the retrieved real-time product inventory information to determine whether the selected other product is included in the inventory of the retail-site, and if it is determined that the selected other product is included in the inventory, then including the selected other product in the set of other products, otherwise not including the selected other product in the set of other products. THE REJECTIONS The following rejections are before us for review: Claims 24 and 25 are rejected under 35 U.S.C. § 102(e) as anticipated by Sitnik (US 6,300,880 B1, iss. Oct. 9, 2001). Claims 1-23 and 26-31 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sitnik in view of Tindal (US 6,978,301 B2, iss. Dec. 20, 2005), and further in view of Makinen (US 6,563,801 B2, iss. May 13, 2003). ANALYSIS Anticipation Independent claim 24 Appellants argue that the Examiner erred in rejecting claim 24 under 35 U.S.C. § 102(e) because Sitnik fails to disclose in response to the user using the sampling station to obtain product content information for a particular product . . . using . . . real-time product inventory information [retrieved from the POS system] to determine whether the selected other product Appeal 2011-010879 Application 11/772,931 5 [to bring to the attention of the user] is included in the inventory of the retail-site, as recited in claim 24 (App. Br. 9-11 and Reply Br. 2-4). The Examiner maintains that the rejection is proper and that Sitnik discloses the argued feature. In this regard, the Examiner maintains that the “related albums,” described in column 8 of Sitnik, correspond to the claimed “selected other product[s]” (Ans. 3-4; see also Ans. 17), and points to column 7, lines 40-43 and column 8, lines 29-36 as disclosing “using . . . real-time product inventory information to determine whether the selected other product is included in the inventory of the retail-site” (Ans. 4; see also Ans. 17). We disagree. Sitnik discloses a multichannel switched communication system adapted to distribute information, preferably audio information, to a plurality of mobile receivers (see Sitnik, col. 3, ll. 38-40 and col. 8, ll. 29-36), and describes that the system includes a mass store device. The mass store device stores audio information (e.g., music), and may comprise a jukebox that houses a plurality of audio CDs (Sitnik, col. 7, ll. 4-11). Sitnik describes that the mass store device also may include “further data relating to [an audio selection], such as price, availability, information about the artist, images, or other audio, video or text information and related albums” (Sitnik, col. 8, ll. 14-23). Sitnik describes at column 7, lines 40-43, cited by the Examiner, that a CD from inventory may be placed in the jukebox. However, as Appellants point out, Sitnik does not disclose that the “related albums,” i.e., the “selected other products,” are placed in the jukebox, and even if a related album were present in the jukebox, that would only indicate that the album Appeal 2011-010879 Application 11/772,931 6 was in inventory at one time; it provides no information regarding whether the related album is currently in inventory (App. Br. 10). The Examiner asserts that “applicant did not claim anywhere that ‘whether the inventory still contains a copy of the related album’” (Ans. 18). However, claim 24 plainly recites “using real-time product inventory information to determine whether the selected other product is included in the inventory of the retail-site” (emphasis added). Sitnik describes at column 8, lines 29-36 that in order to supply audio selections to a plurality of mobile receivers simultaneously, the stored information may be transferred to a buffer memory storage in greater than real time and delivered in real time to the user over a selected channel. But that disclosure relates to the rate at which the audio data is transferred, not to the retrieval or use of “real-time product inventory information,” as the Examiner asserts. In view of the foregoing, we will not sustain the Examiner’s rejection of claim 24 under 35 U.S.C. § 102(e). Independent claim 25 We are persuaded that the Examiner erred in rejecting claim 25 under 35 U.S.C. § 102(e) by Appellants’ argument that Sitnik fails to disclose “retrieving real-time information from the POS system; and using the retrieved real-time information to select one or more products to include in said set of other products,” as recited in claim 25 (App. Br. 11-12 and Reply Br. 4-5). The Examiner again directs our attention to column 7, lines 38-53 and column 8, lines 29-36 of Sitnik (Ans. 6 and 18-19). However, we find nothing in these portions of Sitnik that discloses the argued feature. Indeed, Appeal 2011-010879 Application 11/772,931 7 the Examiner does not explain how, and we fail to see how, a discussion of the rate at which audio data is transferred, as set forth at column 8, lines 29- 36, discloses that “related albums,” i.e., selected other products, as described at column 7, lines 38-53, are selected using real-time information retrieved from the POS system, as called for in claim 25. Therefore, we will not sustain the Examiner’s rejection of claim 25 under 35 U.S.C. § 102(e). Obviousness Independent claims 1, 9, and 20 Each of claims 1, 9, and 20 is directed to a media sampling method, and recites that the method comprises, inter alia, “displaying on the display device [of the sampling station] a prompt prompting an administrator to configure the sampling station upon the sampling station being communicatively connected to the server . . . for the first time.” Appellants argue that the Examiner erred in rejecting claims 1, 9, and 20 under 35 U.S.C. § 103(a) because none of the cited references discloses or suggests displaying a prompt on the display device of the sampling station, as required by claims 1, 9, and 20 (App. Br. 13-15 and Reply Br. 6-8). The Examiner maintains that the rejection is proper and cites column 10, lines 3-6 of Sitnik, as well as column 1, lines 49-54 and column 11, lines 16-18 and 49-54 of Tindal, as disclosing the argued feature. The Examiner reasons that: in column 10 lines 3-6 Sitnik discloses [a] display stating “provide information unrelated to the identified objects as either audio information or through a visual display,” in column 11 lines 35-37 [Tindal] discloses prompting the administrator stating “prompt the network administrator 110 for the necessary information,” in column 11 lines 16-18 [Tindal] discloses Appeal 2011-010879 Application 11/772,931 8 attribute fields for configuration and reconfiguration of network device and column 1 lines 49-54 [of Tindal] discloses that the configuration occurs to install new router which construes as the first time (Ans. 19). Appellants argue that the rejection cannot be sustained because “Tindal discloses displaying the administrator prompt to network administrator 110 using global GUI 310, not a display device of the network device [315] in need of configuration. See Tindal at col. 11, lines 16-18 and 35-37 and Fig. 8” (App. Br. 14-15 and Reply Br. 7-8), and further because “even if Tindal disclosed displaying a prompt at some time during installation of a new router, the prompt may be displayed during installation at some time after connection to the server for the first time” (Reply Br. 7). It is well established that the mere existence of differences between the prior art and the claim does not establish nonobviousness. See Dann v. Johnston, 425 U.S. 219, 230 (1976). The relevant question in considering obviousness is not whether the claimed invention is different from the prior art, but rather “whether the difference between the prior art and the subject matter in question is a differen[ce] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art.” Dann, 425 U.S. at 228 (internal quotations and citations omitted). Indeed, the Supreme Court made clear in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) 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.” Id. at 418 (2007). Appeal 2011-010879 Application 11/772,931 9 Here, Appellants argue that Tindal is different in that a global GUI, rather than a display on the network device to be configured, is used to display prompts to the network administrator. But Appellants do not explain, for example, why it would have been non-obvious to display the prompt on the network device. The Examiner concluded that it would have been obvious to one of ordinary skill in the art, at the time of the invention, to modify the method of Sitnik, in accordance with Tindal, to include displaying, on a display device, a prompt prompting an administrator to configure the sampling station upon the sampling station being communicatively connected to the server via the network cable for the first time “since so doing could be performed readily and easily by any person of ordinary skill in the art, with neither undue experimentation, nor risk of unexpected results” (Ans. 12). In our view, the Examiner’s obviousness determination is amply supported by articulated reasoning with some rational underpinning. Therefore, we will sustain the Examiner’s rejection of claims 1, 9, and 20 under 35 U.S.C. § 103(a). Dependent claims 29 and 30 Claim 29 depends from claim 28, which in turn, depends from claim 1. Claim 28 recites that “the step of prompting the administrator to configure the sampling station comprises displaying a user interface screen to the administrator that enables the administrator to assign a configuration parameter to the sampling station.” Claim 29 recites that the configuration parameter is “a location identifier identifying the location of the sampling station within the retail site.” Claim 30 depends from claim 29 and recites Appeal 2011-010879 Application 11/772,931 10 that “a label displaying the location identifier is disposed on a mounting bracket to which the sampling station is mounted.” Appellants argue that the Examiner erred in rejecting claim 29 under 35 U.S.C. § 103(a) because none of the cited references discloses or suggests “displaying a user interface screen ‘upon the sampling station being communicatively connected to the server via the network cable for the first time,’ wherein the user interface screen enables ‘a location identifier identifying the location of the sampling station within the retail site’ to be assigned, as recited by claim 29” (App. Br. 15-16). The Examiner maintains that the rejection is proper and cites column 7, lines 45-57 and column 9, lines 26-35 of Tindal as disclosing the argued feature (Ans. 11 and 17). We agree with Appellants. Tindal discloses at column 7, lines 45-57 that configuration records stored in a directory may be searched by device location, and describes at column 9, lines 26-35 that the pointer portion of a configuration record can be used to point to a storage location, i.e., a memory location, where device specific commands for an associated network device are stored. But the Examiner does not explain how, and we fail to see how, either of the cited portions of Tindal discloses or suggests a location identifier identifying the physical location of the sampling station within the retail site, as recited in claim 29. Therefore, we will not sustain the Examiner’s rejection of claim 29 under 35 U.S.C. § 103(a). For the same reasons, we also will not sustain the Examiner’s rejection of claim 30, which depends from claim 29. Appeal 2011-010879 Application 11/772,931 11 Dependent claims 2-8, 10-19, 21-23, 26-28, and 31 Each of claims 2-8, 10-19, 21-23, 26-28, and 31 depends from one of claims 1, 9, and 20. Appellants did not present any arguments for the separate patentability of these dependent claims. Therefore, we will sustain the Examiner’s rejection of dependent claims 2-8, 10-19, 21-23, 26-28, and 31 under 35 U.S.C. § 103(a) for the same reasons as set forth above with respect to independent claims 1, 9, and 20. DECISION The Examiner’s rejection of claims 24 and 25 under 35 U.S.C. § 102(e) is reversed. The Examiner’s rejection of claims 1-23, 26-28, and 31 under 35 U.S.C. § 103(a) is affirmed. The Examiner’s rejection of claims 29 and 30 under 35 U.S.C. § 103(a) is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED-IN-PART mls Copy with citationCopy as parenthetical citation