Ex Parte Houh et al

Patent Trial and Appeal Board

Jun 30, 2016

11446549 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111446,549 0610212006 Henry Houh
104043 7590 07/05/2016
Tarter Krinsky & Drogin LLP
1350 Broadway
New York, NY 10018
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.
RHI14-05 9615
EXAMINER
DA YE, CHELCIE L
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
patentdocket@tarterkrinsky.com
sformicola@tarterkrinsky.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRY HOUR, JEFFREY NATHAN STERN,
ROBERT SPINA, and MARIE METEER
Appeal2015-002948
Application 11/446,549
Technology Center 2100
Before JOHNNY A. KUMAR, CATHERINE SHIANG, and
KAMRAN JIVANI, Administrative Patent Judges.
JIV ANI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 42-56, which are all the claims
pending in the present patent application. Claims 1--41 and 57---64 have been
cancelled. Br. 21, 23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Ramp Holdings, Inc. as the real party in interest. Br. 2.
Appeal2015-002948
Application 11/446,549
STATEMENT OF THE CASE
The present application relates to generating and using enhanced
metadata in search-driven applications. Spec. 1.
Claim 42 is illustrative:
42. A method comprising:
in a microprocessor, obtaining a set of rules that define
instructions for obtaining media content that comprise content
for a media channel, the set of rules including at least one
automatically derived rule with instructions to include media
content resulting from a search;
searching for candidate media content according to a
search query defined by the at least one automatically derived
rule; and
merging one or more of the candidate media content
resulting from the search into the content for the media channel.
THE REJECTIONS
Claims 42--49, 54--56 stand rejected under 35 U.S.C. § 103(a) over
Lim (US 2007/0100787 Al; pub. May 3, 2007) and Ranasinghe
(US 2006/0265421 Al; pub. Nov. 23, 2006).
Claims 50-53 stand rejected under 35 U.S.C. § 103(a) over Lim,
Ranasinghe, and Jean-Manuel Van Thong, et al., SpeechBot: a Speech
Recognition based Audio Indexing System for the Web, Compaq Computer
Corporation (2000).
ANALYSIS
Appellants contend the Examiner errs in rejecting claim 42 because
"No one skilled in this art would equate 'obtaining a set of rules that define
instructions for obtaining media content that comprise content for a media
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channel,' as recited in claim 42, with Lim's converting downloaded digital
content from one format to another." Br. 14. Appellants further contend,
"to those skilled in this art, results returned from a search are considered
'search results'" not the claimed candidate media content results. Id.
Appellants contend, "the words 'merge,' 'merged,' 'merging,' and it
equivalents are no where [sic] to be found in Ranasinghe." Id. at 17.
Appellants further contend, "To one of ordinary skill in this art, the one or
more of the candidate media content resulting from the search into the
content for the media channel of Appellants' claimed invention is not the
same thing as a user on a computer browsing the web for a media portal
containing media content to add to a playlist." Id. at 18. Finally, "Appellant
reserves [sic] the right to specifically address the patentability of the
dependent claims in the future, if deemed necessary." Id. at 19.
We are not persuaded by Appellants' arguments. Rather we agree
with, and adopt as our own, the Examiner's findings and reasons as set for
the in the Final Action and the Answer. We further emphasize the
following.
First, we find Appellants' arguments because they are misdirected. A
determination of obviousness does not require the claimed invention to be
expressly suggested by any one or all of the references. See e.g., In re
Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner was not required to
"seek out precise teachings directed to the specific subject matter of the
challenged claim" as argued by Appellants. KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). Rather, the Examiner's obviousness analysis may
"take account of the inferences and creative steps that a person of ordinary
skill in the art would employ," id., as well as "include recourse to logic,
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Application 11/446,549
judgment, and common sense available to the person of ordinary skill that do
not necessarily require explication in any reference or expert opinion,"
Perfect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009). Thus we are not persuaded by Appellants' arguments that: "no one
skilled in this art would equate" the cited references with the claim language
(Br. 14), the teachings and claim language are "not the same [thing] ... by
any stretch of the imagination for anyone of ordinary skill in this art." (id.;
see also Br. 18), and the words rule, merge, merged, and merging are not
found anywhere in Ranasinghe (Br. 16-17). We instead agree with the
Examiner:
The instructions on how to obtain, convert, and transfer the
plurality of digital content corresponds to the claimed rules that
define instructions for obtaining the media content. As such, the
media content is searched and obtained based on certain rules in
order to obtain the media content is taught throughout Lim (see
par [0060-0098]). Lastly, Ranasinghe was incorporated for the
"automatically" derived rule (see action above and explanation
below [citing Ranasinghe, i-f 6]). Therefore, the above-argued
limitation is in fact taught by the combination of Lim and
Ranasinghe.
Ans. 8.
We further agree with the Examiner:
The adding of the track to the play list corresponds to the claimed
merging because the candidate track is being added to other
media already on the playlist (i.e. merged- as understood within
the art, the term merge is simply to combine or blend into
something else).
Ans. 10 (citing Ranasinghe i-fi-1126, 127, and 129).
These cited teachings and suggestions as mapped to the claim
language are the proper focus of the obviousness inquiry. See In re May,
574 F.2d 1082, 1090 (CCPA 1978) (An ipsissimis verbis test is not
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Application 11/446,549
required). Further, we observe Appellants fail to rebut these findings by the
Examiner.
Second, Appellants' arguments regarding the scope of the claimed
candidate media content results are unavailing. Br. 14--15. Contrary to
Appellants' argument seeking to exclude from the scope "results returned
from a search" (i.e., search results), Appellants' Specification recites, "[t]he
candidate media content can include segments of the media content resulting
from the search." Spec. 5.
Third, Appellants' arguments are not persuasive because they do not
address the Examiner's findings. Appellants' arguments address the cited
references individually. Br. 12-18. Where, as here, a rejection is based on a
combination of references, one cannot show non-obviousness by attacking
references individually. Keller, 642 F.2d at 426 (CCPA 1981); In re Merck
& Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Although Appellants
assert, "Appellant is [sic] well aware that the examiner uses the combination
of Lim and Ranasinghe to reject the claims," Appellants fail to address why
the combined of the cited references as articulated by the Examiner would
not have taught or suggested the claim limitations to one of ordinary skill in
the art. For instance, Appellants do not present adequate evidence that the
Examiner's cited arrangements would have been "uniquely challenging or
difficult for one of ordinary skill in the art" or "represented an unobvious
step over the prior art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Fourth, Appellants attempt to "reserves [sic] the right to specifically
address the patentability of the dependent claims in the future, if deemed
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Application 11/446,549
necessary" (Br. 19) is contrary to our rules. Arguments not raised in
Appellants' Brief are deemed waived. 37 C.F.R. § 41.37(c)(l)(iv) (2012)
Accordingly, on the record before us, we sustain the Examiner's 35
U.S.C. § 103(a) rejection of independent claim 42 as well as the Examiner's
35 U.S.C. § 103(a) rejections of claims 43-56, not separately argued.
DECISION
We affirm the Examiner's decisions rejecting claims 42-56.
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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