Ex Parte Hunter et al

Patent Trial and Appeal Board

Sep 28, 2016

11449420 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111449,420 0610712006 Charles Eric Hunter
52531 7590 09/30/2016
CHRISTENSEN O'CONNOR JOHNSON KINDNESS PLLC
1201 THIRD A VENUE
SUITE 3600
SEATTLE, WA 98101-3029
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.
146160 6243
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES ERIC HUNTER,
BERNARD L. BALLOU JR.,
KELLY C. SP ARKS, and
JOHN H. HEBRANK
Appeal2014-004028
Application 11/449,4201
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Charles Eric Hunter et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
1 The Appellants identify Ochoa Optics, LLC as the real party in interest.
App. Br. 1.
Appeal2014-004028
Application 11/449,420
We REVERSE.
SUMMARY OF DECISION
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for receiving distributed music at a user station, the
system comprising:
a receiver configured to receive a transmission at the user
station, the transmission comprising a music selection in digital
format;
a user interface configured to permit preselection of the
music selection for recording;
a storage medium in communication with the receiver
and configured to record the music selection in digital form,
wherein the user station is configured to create a preview of the
music selection recorded on the storage medium, the preview of
the music selection comprising a copy of the music selection
having a degraded quality accomplished by a process selected
from the group consisting of: compressing the copy of the
music selection, adding distortion to the copy of the music
selection, overlaying voice over the copy of the music selection,
and deleting sections from the copy of the music selection; and
a communications mechanism configured to send a
notification from the user station to a central controller system,
the notification configured to verify that a preselected music
selection has been made available for playback.
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Application 11/449,420
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Tozaki
Capek
Downs
Ogilvie
us 5,729,516
us 6, 112, 192
US 6,226,618 Bl
US 6,343,738 Bl
The following rejections are before us for review:
Mar. 17, 1998
Aug.29,2000
May 1, 2001
Feb. 5,2002
1. Claims 1, 3, 5-8, 10, 12, 13, and 18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Downs and Ogilvie.
2. Claims 2, 4, 9, 11, 15-17, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Downs and Capek.
3. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Downs, Ogilvie, and Tozaki.
ISSUES
Did the Examiner err in rejecting claims 1, 3, 5-8, 10, 12, 13, and 18
under 35 U.S.C. § 103(a) as being unpatentable over Downs and Ogilvie;
claims 2, 4, 9, 11, 15-17, 19, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Downs and Capek; and, claim 14 under 35 U.S.C.
§ 103(a) as being unpatentable over Downs, Ogilvie, and Tozaki?
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Application 11/449,420
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1, 3, 5--8, 10, 12, 13, and 18 under 35 U.S.C. §103(a)
as being unpatentable over Downs and Ogilvie.
Regarding independent claim 1, the Examiner takes the position that
Downs discloses all that is claimed, except that
Downs does not disclose a circuit configured to degrade a
quality of the previewed preselected music selections by a
process selected from the group consisting of: compressing the
preselected music selections, adding distortion to the preselected
music selections, overlaying voice over the preselected music
selections, and deleting sections from the preselected music
selections. Ogilvie, however, does (col 11 In 60-67).
Final Act. 7. According to the Examiner; "[i]t would be obvious to one of
ordinary skill in the art to combine Downs and Ogilvie in order to increase
sales through free sample while preserving security by giving the samples a
limited lifetime." Id. at 7.
The Appellants argue, in part, that Ogilvie does not disclose what the
Examiner says it does. See App. Br. 12. We agree.
As a preliminary matter, the Examiner has not reasonably broadly
construed claim 1. Claim 1 does not require a "circuit configured to degrade
a quality of the previewed preselected music selections." Final Act. 7.
Claim 1 requires a "user station [to be] configured to create a preview of the
music selection recorded on the storage medium, the preview of the music
selection comprising a copy of the music selection having a degraded
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Application 11/449,420
quality." Also, claim 1 does not require a degraded preview- only a copy of
a music selection is degraded. And claim 1 does not even require the user
station to degrade a quality of the previewed preselected music selections.
While the copy of the music selection in the preview has a degraded quality,
the user station need not accomplish the degradation- so long as it has been
accomplished
by a process selected from the group consisting of: compressing
the copy of the music selection, adding distortion to the copy of
the music selection, overlaying voice over the copy of the music
selection, and deleting sections from the copy of the music
selection (claim 1 ).
Be that as it may, we have reviewed Ogilvie, but do not see there
disclosed a degraded music selection as claimed. As the Appellants note,
column 11, lines 60-67 of Ogilvie discloses
[i]n addition, embodiments of the invention permit
samples 508 to be more than "siphoned off' specimens. Content
for a sample 508 may be extracted from the content of the goods
506, but the extraction can be performed in various ways, and it
may depend on the type of digital good 506 involved. Content
for a sample 508 may also be obtained by other techniques, such
as by distorting or enhancing the content of the goods 506.
See App. Br. 12. We do not see any disclosure of a degraded music
selection, let alone via any of the processes as claimed. While Ogilvie may
be understood to disclose a degraded digital image, it is insufficient to lead
one of ordinary skill in the art to modify Downs to include a "preview of the
music selection comprising a copy of the music selection having a degraded
quality" as claimed.
We note the Examiner's statement: "Please note also that the language
'configured to ... ' indicated intended use, and therefore does not serve to
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further distinguish from the prior art. MPEP 2114 and Ex parte Masham, 2
USPQ2d 1647 (1987)." Final Act. 8. However, before that conclusion can
be made, it is incumbent on the Examiner to establish no structural
differentiation between the element "configured to" function as claimed and
the element disclosed in the prior art. That has not been done. See MPEP
2114.
For the foregoing reasons, the rejection of claim 1, and claims 6-8,
10, 12, 13, and 18 dependent therefrom, is not sustained.
The rejection of independent claims 3 and 5 is not sustained for the
same reasons because they include the same "preview of the music selection
comprising a copy of the music selection having a degraded quality" claim
limitation, and the Examiner's position with respect to it is the same. See
Final Act. 8-9.
The rejection of claims 2, 4, 9, 11, 15-17, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Downs and Capek.
Claims 9, 11, 15-17, 19, and 20 depend from claim 1 and its rejection
is thus not sustained for the reasons discussed above in not sustaining the
rejection of claim 1.
Regarding claim 2, the Examiner indicates that Downs does not
disclose - but Capek does- a central controller system configured to:
assign a customer profile according to the first customer
household music preference information communicated by the
user station to the central controller system;
automatically enable blanket transmission to the user
station of music content without requiring music selections from
the user station according to the assigned customer profile;
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and the central controller system further comprising:
a customer preference information storage memory
configured to receive and store the first customer household
designated music preference information;
a general population preference database configure[d] to
store preference information for the at least one customer
household; a customer catalog generator configured to analyze
the customer preference information storage memory and the
general population preference database to create an individual
customer catalog for the first customer household that
determines which music is automatically transmitted and
transmit to the user station the individual customer catalog for
the user station.
Final Act. 13 (emphasis added). That is not a precise reading of what claim
2 reasonably broadly covers. For example, claim 2 does not require a
customer catalog generator.
Be that as it may, Capek does not disclose "analyz[ing] customer
preference information in [a] storage memory and [a] general population
preference database to create an individual customer catalog for [a] user
station that determines which music is automatically transmitted" (claim 2)
as alleged. The Examiner cites column 5, lines 6-12 and lines 20-47. See
Final Act. 14. But column 5, lines 6-12 describe "an HTML file for
ultimate delivery to the client" and lines 20-4 7 describes using "information
from [a] customer profile database, [whereby] pending insertions associated
with the client and acceptable to the web page owner are determined." "Each
time the insertion is used, a count is decremented ( 42). When the count
finally reaches zero ( 43), the pending insertion is then deleted from the
customer's profile database." Capek, col. 5, 11. 24--26.
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We do not find that Capek adequately discloses what was found to be
missing from Downs. Accordingly, the rejection of claim 2 is not sustained
as failing to present in a prima facie case of obviousness in the first instance.
The rejection of claim 4 is also not sustained. The Examiner
apparently relies on column 5, line 47 of Capek as evidence that the
limitation
analyzing the customer profile and preferences of the general
population to create an individual customer catalog for the user
station that determines a plurality of music selections that is to
be transmitted to the user station (claim 4)
missing in Downs is in fact disclosed in the prior art. However, for the
reasons already discussed, we do not find that Capek adequately discloses
said claim limitation missing from Downs. Accordingly, the rejection of
claim 4 is not sustained as failing to present in a prima facie case of
obviousness in the first instance.
The rejection of claim 14 is rejected under 35 U.S. C. § 103 (a) as being
unpatentable over Downs, Ogilvie, and Tozaki.
Claim 14 depends from claim 1 and its rejection is not sustained for
the reasons discussed above in not sustaining the rejection of claim 1.
CONCLUSIONS
The rejection of claims 1, 3, 5-8, 10, 12, 13, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Downs and Ogilvie is reversed.
The rejection of claims 2, 4, 9, 11, 15-17, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Downs and Capek is reversed.
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The rejection of claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Downs, Ogilvie, and Tozaki is reversed.
DECISION
The decision of the Examiner to reject claims 1-20 is reversed.
REVERSED
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