Ex Parte Haslam

Patent Trial and Appeal Board

Feb 13, 2015

11315760 (P.T.A.B. Feb. 13, 2015)

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.
11/315,760 12/19/2005 David Haslam 050202 2118
90893 7590 02/17/2015
AT&T Legal Dept. GGGV
Attention: Patent Docketing
Room 2A-212
One AT&T Way
Bedminster, NJ 07921
EXAMINER
KEEHN, RICHARD G
ART UNIT PAPER NUMBER
2456
MAIL DATE DELIVERY MODE
02/17/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID HASLAM
____________

Appeal 2012-011902
Application 11/315,760
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–7 and 9–21, which are all the claims pending in the
application. Claim 8 is cancelled. We have jurisdiction under 35 U.S.C. §
6(b).
We affirm.
Invention
The claimed invention on appeal pertains to providing podcast
content, “wherein the podcast content is categorized into various topics,
and the podcast file includes podcast content of a particular topic”. (Spec.
¶ 2; claim 1).
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Representative Claim
Independent claim 1 is representative of the rejected claims on appeal:

1. A remote server for providing podcast content and other
content distinct from the podcast content, comprising:

an interface for providing a network connection;
storage including a podcast file including the podcast content,
wherein the podcast content includes podcast content received
from at least one subscriber computing device, [a] wherein the
podcast content is categorized into various topics, and the
podcast file includes podcast content of a particular topic;

a processor for receiving the podcast file, wherein the
processor, in response to receiving requests to download the
podcast file, retrieves the podcast file from storage and [b]
provides the podcast file with the other content distinct from the
podcast content for the particular topic of the podcast content
included in the podcast file via the network connection, wherein
the other content distinct from the podcast content is inserted in
the podcast file once a request to download the podcast file is
received.
(Contested limitations [a], [b] lettered and emphasized.)
Rejection
Claims 1–7 and 9–21 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Jones (US
2006/0265503 A1; published Nov. 23, 2006), Plotnick (US 2005/0097599
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A1; published May 5, 2005), and Marriott (US 2006/0265637 A1; published
Nov. 23, 2006).1, 2
Grouping of Claims
Based on Appellant’s arguments, we decide the appeal of all rejected
claims, except claim 20, on the basis of representative claim 1. See 37
C.F.R. § 41.37(c)(1)(iv)(2012). We address claim 20 separately, infra.
Contentions
Appellant advances two principal contentions:

1. No combination of Jones, Plotnick and Marriot[t]
teaches that podcast content is categorized into
various topics. and the podcast file includes podcast
content of a particular topic. (App. Br. 7 regarding
contested limitation [a]).
2. No combination of Jones. Plotnick and Marriot[t]
teaches providing the podcast file with the other
content distinct from the podcast content for the
particular topic of the podcast content included in the
podcast file. (App. Br. 9 regarding contested limitation
[b]).

1 Appellant filed a Notice of Appeal on January 25, 2012. The date of filing
the Notice of Appeal determines which set of rules applies to an ex parte
appeal. If a Notice of Appeal is filed on or after January 23, 2012, then the
2012 version of the Board Rules (Title 37 of the Code of Federal
Regulations (37 C.F.R. § 41.1 et seq.)) published on November 22, 2011 in
the Federal Register notice applies to the appeal.
2 We note both the Appellant and the Examiner have consistently
misspelled the first-named inventor of the Marriott et al. Patent Application
Publication (US 2006/0265637 A1) as “Marriot” (with a single “t”).
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Regarding contested limitation [A], the Examiner finds:
if the podcast content as claimed is categorized into various
topics, it contains at least two particular topics. Now if the
same podcast content is included in the podcast file as claimed,
then the podcast file must necessarily also contain the at least
two particular topics, one of which would be “a particular
topic.” As discussed above, Marriot[t] discloses the same in
¶ [0071].
(Ans. 3–4, emphasis added).
In the Reply Brief, Appellant further responds:
While Appellant agrees that Marriot[t] discloses a
podcast category as one of various selectable categories of
audio information and that a podcast can be segmented into
different chapters as transitions between topics, this is not the
same as categorizing podcast content into various topics ... the
podcast file including content of a particular topic as set forth in
claim 1. As argued in the Appeal Brief (page 8), the only
categorization that Marriot[t] refers to is categorization of audio
information (with podcasts being one among various
categories). As to the Examiner's allegation that that
"transitions between topics" as taught by Marriot[t] indicates at
least two different topics, each having content nature different
than the other, the Examiner makes this allegation without
offering an explanation as to why segmenting podcasts into
different chapters would necessarily mean that the podcast
content is categorized into various topics as claimed.
Moreover, contrary to the Examiner's reasoning, it does not
necessarily follow that having a podcast segmented into
different chapters as transitions between topics, as described in
Marriot[t], means that podcast content is categorized into
various topics, nor is it necessary that different chapters relate
to different topics. There is nothing in Marriot[t] that
demonstrates that a podcast needs to be segmented into
different chapters having different topics, nor is there any
indication in Marriot[t] that podcasts are categorized into
various topics. Rather, Marriot[t] simply indicates that a
podcast may be segmented into different chapters, with no
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indication that those different chapters must relate to different
topics.
(Reply Br. 2–3, emphasis added).
ANALYSIS
Rejection A of Representative Claim 1
Issues: Under § 103, did the Examiner err by finding the cited prior
art would have collectively taught or suggested the following contested
limitations (lettering added):
[a] wherein the podcast content is categorized into various
topics, and the podcast file includes podcast content of a
particular topic;

[b] provides the podcast file with the other content distinct from
the podcast content for the particular topic of the podcast
content included in the podcast file,
within the meaning of representative claim 1?

Claim Construction
As an initial matter of claim construction, a question arises as to how
much patentable weight, if any, should be given to the contested functional
limitations recited in apparatus claim 1, e.g., “wherein the podcast content is
categorized into various topics” and “wherein the processor . . . provides the
podcast file . . . .”3 Further, a question arises as to how much patentable

3 Although the preamble of claim 1 is directed to a remote server (which we
broadly but reasonably construe as an apparatus), we note the claim is silent
regarding what specific element of the apparatus performs the function of
categorizing the podcast content into “various topics.” Presumably the

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weight, if any, should be given to the contested data limitations recited in
apparatus claim 1, e.g., “the podcast content is categorized into various
topics, and the podcast file includes podcast content of a particular topic”
and “wherein the processor . . . provides the podcast file with the other
content distinct from the podcast content for the particular topic of the
podcast content included in the podcast file.” (emphasis added).
Appellant urges us to distinguish the apparatus (structure) of
representative claim 1 over the cited prior art structure(s) merely in terms of
recited intended functions and the particular arrangement or organization
(e.g., “various topics”) of the podcast content (data).4 (App. Br. 6–10). We
particularly note the contested limitations are recited within “wherein
clauses” that do not further limit the structure of the claimed apparatus.5

podcast content has already been “categorized into various topics” by some
unknown apparatus or method external to (and outside the scope of) the
“remote server” of claim 1. Regarding this issue, and in the event of further
prosecution, we leave it to the Examiner to consider whether a rejection
under 35 U.S.C. § 112, second paragraph, would be applicable to at least
claim 1 and associated dependent claims.
4 “An intended use or purpose usually will not limit the scope of the claim
because such statements usually do no more than define a context in which
the invention operates.”' Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Although “[s]uch
statements often . . . appear in the claim's preamble,” In re Stencel, 828 F.2d
751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear
elsewhere in a claim. Id.
5 See MPEP § 2111.04 regarding “wherein” clauses: Claim scope is not
limited by claim language that suggests or makes optional but does not
require steps to be performed, or by claim language that does not limit a
claim to a particular structure. However, examples of claim language,

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Our reviewing court guides the patentability of an apparatus claim
“depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Marketing Int'l., Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 809 (Fed. Cir. 2002). “It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations
omitted). See also Superior Indus., Inc. v. Masaba, Inc., 553 Fed.
Appx. 986, 991 (Fed. Cir. 2014) (Rader, J., concurring) (stating: “[A] system
claim generally covers what the system is, not what the system
does.”6 Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 (1875) (“The
inventor of a machine is entitled to the benefit of all the uses to which it can
be put, no matter whether he had conceived the idea of the use or not.”).
Thus, it is usually improper to construe non-functional claim terms in system
claims in a way that makes infringement or validity turn on their function.
Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir.
2009). See also MPEP 2114.

although not exhaustive, that may raise a question as to the limiting effect of
the language in a claim are:(A) "adapted to" or "adapted for" clauses; (B)
"wherein" clauses; and (C) "whereby" clauses. (MPEP §2111.04 Eighth
Edition, Rev. 9, Aug. 2012, emphasis added).
6 Superior Indus., Inc. v. Masaba, Inc., 553 Fed. Appx. 986 (Fed. Cir.
2014) is a non-precedential opinion of the Court of Appeals for the Federal
Circuit. However, we consider the concurring opinion by former Chief
Judge Rader as guiding because it cites precedential authority in support.
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Moreover, because Appellant has not contested any specific structural
differences between the apparatus of claim 1 and the corresponding
structure(s) found in the cited references, the only purported differences
between representative claim 1 and the corresponding apparatus structure
found in the cited prior art turns on the content or organization of data (i.e.,
“podcast content [which is] categorized into various topics” as recited in
claim 1). See contested limitations [a] and [b], each directed to a type or
arrangement of “podcast content” (data consisting of music and/or speech
content – claim 1).
The PTAB has provided guidance in decisions regarding claims that
differ from the prior art only based on “non-functional descriptive material.”
See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential)
(“[T]he nature of the information being manipulated does not lend
patentability to an otherwise unpatentable computer-implemented product or
process.”); Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative) (“[N]onfunctional descriptive material cannot lend
patentability to an invention that would have otherwise been anticipated by
the prior art.”), aff’d, 191 Fed.Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative)
(“Nonfunctional descriptive material cannot render nonobvious an
invention that would have otherwise been obvious.”), aff’d, No. 06-1003
(Fed. Cir. June 12, 2006) (Rule 36).
Here, we find the claimed “podcast content” (music and/or speech
data) which is “categorized into various topics” is intended for human
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listening, and is not positively recited as data that is actually used to change
or affect any machine function.7 Thus, we conclude representative claim 1,
when considered as a whole, is directed to conveying a message or meaning
to a human reader independent of the intended computer system (“remote
server”, claim 1).
Assuming arguendo our reviewing court may give full patentable
weight to the contested data limitations and functional statements of
intended use, as recited in representative claim 1, we find the preponderance
of the evidence supports the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness for the reasons discussed below:
Contested limitation [a]
As pointed out by the Examiner (Ans. 2). Appellant acknowledges
“Marriott describes how podcasts can be segmented into different chapters
as transitions between topics . . . ,” as follows:

7 See MPEP 2111.05, 8th ed., Rev. 9, Aug. 2012 (“[W]here the claim as a
whole is directed conveying a message or meaning to a human reader
independent of the intended computer system, and/or the computer-readable
medium merely serves as a support for information or data, no functional
relationship exists.”). As an underlying subsidiary question of fact
pertaining to our claim construction, the MPEP (extrinsic to the record)
guides that music is an example of non-functional descriptive material. (id.)
Under a broad but reasonable interpretation, we conclude the “podcast
content” of Appellants’ claim 1 covers speech and/or music content which
are each examples of non-functional descriptive material per se. See MPEP
2111.05 (III.) (“For example . . . tracks of recorded music, utilize[] the
intended computer system merely as a support for the information. Such
claims are directed toward conveying meaning to the human reader rather
than towards establishing a functional relationship between recorded data
and the computer.”).
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while paragraphs 0015,0042 and 0043 of Marriott describe pod-
casts as a category of audio information and paragraph 0071 of
Marriott describes how podcasts can be segmented into
different chapters as transitions between topics, there is no
disclosure or suggestion in these portions or any other portion
of Marriot[t] of categorizing podcast content into various
topics. The only categorization that Marriot[t] refers to is
categorization of audio information (with podcasts being one
among various
categories).

(App. Br. 8, emphasis added; see also Reply Br. 2).

Regarding Appellant’s contentions challenging that segmenting
podcasts into different chapters would not necessarily mean the podcast
content is categorized into various topics, as claimed (App. Br. 8), we note
“‘[a] prima facie case of obviousness is established when the teachings from
the prior art itself would appear to have suggested the claimed subject matter
to a person of ordinary skill in the art.’” In re Bell, 991 F.2d 781, 783 (Fed.
Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976)).
Marriott describes, in pertinent part:
[0071] According to another aspect, chapter information can be
presented at a portable media device. A podcast can be
segmented into different chapters as transitions between topics
or discussions. Each chapter can have different chapter
information that is presented while the corresponding chapter is
being presented. The chapter information is also considered
metadata. The chapter information being presented can be
either requested by a user or automatically requested by the
portable media device. (emphasis and underline added).

Given this evidence, we agree with the Examiner that Marriott’s
description of “a podcast [that] can be segmented into different chapters as
transitions between topics” at least suggests each chapter would be directed
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to a different topic. Otherwise, why would an artisan (author) subdivide, for
example, a podcast, a book, or any work involving authorship into separate
chapters? Even if a podcast or other work is directed as a whole to a single
main topic, we find the chapters within would be divided into subtopics
pertaining to the single main topic, which we find is taught or suggested by
Marriott (¶71). We find Marriott teaches or at least suggests this notoriously
well-known concept, which can be confirmed by opening any book having a
table of contents listing more than one chapter.8 For these reasons, we find
Marriott’s specific teaching (¶71) of different chapter information (or
metadata) at least suggests different chapters pertaining to different topics,
thus teaching or suggesting contested limitation [a]: “wherein the podcast
content is categorized into various topics, and the podcast file includes
podcast content of a particular topic,” as claimed. (Claim 1).
Contested limitation [b]
Claim 1 recites in pertinent part: “wherein the processor . . . [b]
provides the podcast file with the other content distinct from the podcast
content for the particular topic of the podcast content included in the
podcast file . . . .” Appellant contends the Examiner (Final Office Action 6)
admits that this feature is not shown by Jones and Plotnick, and further
contend this feature is not taught by Marriott. (App. Br. 9–10).
In the response to arguments (Ans. 4), the Examiner contends
Appellant has misstated what the Examiner pointed out as deficiencies in the

8 The Supreme Court guides that courts should “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).
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combination of Jones and Plotnick. The Examiner clarifies the basis for the
rejection:
Plotnick was used to disclose the other content distinct from the
content is inserted in the content, referring to Plotnick's
disclosure of advertising content inserted between subscribed
content at 1111 [0090 and 0127]. Marriot was relied upon to
disclose "podcast content of a particular topic"; and "for the
particular topic of the podcast content", which Marriot does as
discussed in Argument 1. It is the combination of references
cited that discloses the argued limitation, not Marriot alone.
The combination of references, as used by the Examiner, has
not been argued by Appellant.
(Ans. 4–5, emphasis added).
Appellant responds in the Reply Brief (4):
[T]he Examiner indicates (on pages 4 and 5 of the Examiner's
Answer) that Plotnick discloses "the other content distinct from
the content is inserted in the content" and that Marriot discloses
"podcast content of a particular topic" and "for the particular
topic". However, as explained above in Part A of this Reply
Brief, Marriot does not disclose categorizing podcast content
into various topics.
Thus, Appellant grounds their argument regarding limitation [b] on a
premise we have found unpersuasive, as detailed above in our discussion
regarding limitation A. Therefore, on this record, we are not persuaded of
error regarding the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness regarding both contested limitations [a] and [b].
Accordingly, we sustain the rejection of representative independent claim 1,
and the rejection of all grouped claims which fall therewith. See Claim
Grouping, supra.
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Dependent Claim 20
Claim 20 recites: The remote server of claim 1, wherein the podcast
content is further categorized into various categories, each podcast file
includes podcast content of a particular category and topic, and the other
content distinct from the podcast content includes different content that is
inserted at respectively different places within the podcast file for the
particular category and topic of the podcast content included in the podcast
file. (Contested limitations emphasized; see also Reply Br. 5).
Appellant advances a nominal argument regarding dependent claim 20
by reciting the language of the claim and asserting it is not taught (App.
Br. 10–11; Reply Br. 5). However, we find Appellant has not traversed the
Examiner’s specific findings regarding paragraphs 1111, 0015, 0042, 0043
and 0071 of Marriott, as relied on in the rejection of claim 20. (Ans. 12–13).
Additionally, claim 20 presents similar problematic claim construction
issues to those discussed above regarding claim 1.
To the extent the Appellant is attempting to claim a purportedly novel
type or arrangement of podcast content per se (i.e., an original and fixed
compilation, arrangement and/or selection of music and/or speech on
various topics including a particular topic), we note that such subject matter
(when considered alone) properly falls under existing copyright law.9

9 See e.g., 17 U.S.C. §102, et seq. To the extent that an original and fixed
compilation, arrangement, and/or selection of “podcast content” (claim 1)
may be protectable under existing copyright law (“wherein the podcast
content is categorized into various topics, and the podcast file includes
podcast content of a particular topic” – claim 1), see 17 U.S.C. §102(b): “In

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In any event, on this record, Appellant has not persuaded us of error
regarding the Examiner’s rejection of dependent claim 20, which we
construe as an apparatus claim in a utility patent application under existing
applicable patent laws.10
DECISION
We affirm the Examiner’s decision rejecting claims 1–7 and 9–21
under § 103. 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.
§ 41.50(f).
AFFIRMED

no case does copyright protection for an original work of authorship extend
to any idea, procedure, process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such work.” See also 17 U.S.C. §101:
“A ‘compilation’ is a work formed by the collection and assembling of
preexisting materials or of data that are selected, coordinated, or arranged in
such a way that the resulting work as a whole constitutes an original work of
authorship. The term ‘compilation’ includes collective works.”
10 Although claim 1 nominally recites generic computer hardware (a remote
server, storage, and a processor), Appellant’s arguments urging patentability
focus solely on the informational content of the claimed “podcast content,”
which we conclude broadly covers speech and/or music. See note 7. In the
event of further prosecution of this application, we leave it to the Examiner
to review all the claims for compliance under 35 U.S.C. § 101 in light of the
recently issued preliminary examination instructions on patent eligible
subject matter. See “Preliminary Examination Instructions in view of the
Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank
International, et al.,” Memorandum to the Examining Corps, June 25, 2014.
Although the Board is authorized to reject claims under 37 C.F.R. §
41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) 1213.02.
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