Ex Parte Hubbard et alDownload PDFPatent Trial and Appeal BoardMay 31, 201610878238 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/878,238 06/28/2004 11764 7590 Ditthavong & Steiner, P,C, 44 Canal Center Plaza Suite 322 Alexandria, VA 22314 06/02/2016 FIRST NAMED INVENTOR Thomas Hubbard 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. P3191USOO 4907 EXAMINER SINGH, GURKANW ALJIT ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): docket@dcpatent.com Nokia.IPR@nokia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS HUBBARD and JUKKA-PEKKA SALMENKAITA Appeal2014-001080 1 Application 10/878,2382 Technology Center 3600 Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-9, 11-14, 18, 19, and 24--26. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed June 3, 2013) and Reply Brief ("Reply Br.," filed Oct. 28, 2013), and the Examiner's Answer ("Ans.," mailed Aug. 27, 2013) and Final Office Action ("Final Act.," mailed Nov. 21, 2012). 2 Appellants identify Nokia Corporation as the real party in interest. App. Br. 1. Appeal2014-001080 Application 10/878,238 CLAIMED INVENTION Appellants' claimed invention is "directed to collecting preference information in user equipment based on the user's digital content consuming habits." App. Br. 2; see Spec. i-f 1. Claim 1, reproduced below with added bracketed notations, is illustrative of the subject matter on appeal: 1. A method comprising: [ (a)] determining to store, by an apparatus, a ratings electronic data file including a rating record specifying at least identification information on a digital content item and a rating value indicating consumption of the digital content item, the ratings electronic data file being in a presentation application independent format and usable at least by different types of presentation applications; [(b)] receiving, by the apparatus, an input in a format specific to one of the presentation applications, and relating to presenting a first digital content item; [ ( c)] determining, by the apparatus, whether the ratings electronic data file includes a rating record having identification information identifying the first digital content item; and [( d)] selectively creating, by the apparatus, the rating record for the first digital content item. REJECTION Claims 1-9, 11-14, 18, 19, and 24--26 are rejected under 35 U.S.C. § 102(b) as anticipated by Perkes (US 2003/0110503 Al, pub. June 12, 2003). 2 Appeal2014-001080 Application 10/878,238 ANALYSIS Independent claim 1 and dependent claims 2-5 and 24 We are persuaded by Appellants' argument that the Examiner erred in rejecting claim 1under35 U.S.C. § 102(b) because Perkes does not disclose limitation (a), as recited in claim 1. App. Br. 2-5; see also Reply Br. 2-5. The Examiner maintains that the rejection is proper, and cites paragraphs 36-44 of Perkes as disclosing limitation (a) of claim 1. Final Act. 6-7; see also Ans. 3-8. The Examiner determines that Appellants "provide[] no definition of what a presentation application is." Final Act. 4; see also Ans. 6. However, Appellants' Specification describes that presentation applications, such as Microsoft Media Player or Apple's iTunes, run in computers for playing music and video. Spec. i-f 4. The Specification further describes that presentation applications typically track information, such as how many times each song has been played, but the tracking is stored in a propriety format associated with a particular presentation application (e.g., Media Player or iTunes). Id. In our view, one of ordinary skill in the art would understand from the Specification that a "presentation application" is an application that plays digital media, such as music and video. Perkes relates to presenting media to a user in a media on-demand framework. Perkes i-f 12. Client software is loaded on a consumer's computer to collect, store, and transmit a consumer's Cross Technology Usage. Id. i-fi-139--40. The software takes the form of a Universal Media Player that acts as a player for all digital entertainment viewed by the consumer. Id. i-f 40. The Cross Technology Usage refers to the use by the consumer of various types of digital media, including the Internet, video, 3 Appeal2014-001080 Application 10/878,238 movies, music, DVD, CD, and TV/HDTV. Id. if 36. An Exchange Agent's server retrieves the collected information from the consumer's computer via the Internet. Id. if 42. And the information is processed and delivered to profiling software. Id. if 44. The Examiner finds that collecting information about a consumer's usage of various types of digital media, as described at paragraph 36 of Perkes, discloses "determining to store [] a ratings electronic data file ... , the ratings electronic data file being in a presentation application independent format and usable at least by different types of presentation applications," i.e., limitation (a), as recited in claim 1. The difficulty with the Examiner's analysis is that Perkes describes that one presentation application, a Universal Media Player, plays all of the digital entertainment consumed by the user, and collects and stores all of the consumer's Cross Technology Usage. See Perkes if 40. Accordingly, Perkes does not disclose that the usage information collected by the Universal Media Player would be stored by the Universal Media Player in a format independent of the Universal Media Player or that it would be usable by different types of presentation applications, as required by claim 1. Therefore, we do not sustain the Examiner's rejection of claim 1 and dependent claims 2-5 and 24 under 35 U.S.C. § 102(b). Independent claims 6 and 18, and dependent claims 7-9, 11-14, 19, 25, and 26 Independent claims 6 and 18 include language substantially similar to the language of claim 1 and stand rejected based on the same rationale applied in rejecting claim 1. Final Act. 10. Therefore, we do not sustain the Examiner's rejection of independent claims 6 and 18, and dependent claims 4 Appeal2014-001080 Application 10/878,238 7-9, 11-14, 19, 25, and 26 under 35 U.S.C. § 102(b) for the same reasons set forth with respect to claim 1. DECISION The Examiner's rejection of claims 1-9, 11-14, 18, 19, and 24--26 under 35 U.S.C. § 102(b) is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation