Ex Parte Hyman

Patent Trial and Appeal Board

Mar 16, 2017

13754669 (P.T.A.B. Mar. 16, 2017)

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.
13/754,669 01/30/2013 David Hyman P25199US1
(119-1235US1)
9677
61947 7590 03/20/2017
Ar>r>le - Rlank Rome.
EXAMINER
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
REPSHER III, JOHN T
HOUSTON, TX 77002 ART UNIT PAPER NUMBER
2143
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
mbrininger @ blankrome. com
hou stonpatents @ blankrome .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID HYMAN and BEATS MUSIC, LLC
Appeal 2016-004687
Application 13/754,6691
Technology Center 2100
Before JUSTIN BUSCH, JOHN P. PINKERTON, and
NORMAN H. BEAMER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—23, which are the only claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Beats Music, LLC, a subsidiary of Apple Inc., as the
real party in interest. App. Br. 3
Appeal 2016-004687
Application 13/754,669
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is generally directed to
“location-based music tagging and sharing through a music service.” Spec.
12.2
Claim 1 is representative and reproduced below (with the disputed
limitation emphasized)'.
1. A method, comprising:
providing, through a music server communicatively
coupled to a music device, a capability to a user of the music
device to tag a song;
associating, through the music server, a location of the
music device with the song based on the tagging, wherein the
location includes a venue and a dynamically created perimeter
around the venue, the dynamically created perimeter around the
venue being determined by a predefined set of boundaries', and
enabling, through the music server, a capability to access
the tagged song when the music device or another music device
is within the location.
App. Br. 17 (Claims App’x).
References and Rejections on Appeal
Claims 1, 2, 5—9, 12—15, and 18—20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ankolekar et al. (US 2013/0121503 Al;
published May 16, 2013) (“Ankolekar”), Hough et al. (US 2012/0136998
2 Our Decision refers to the Final Action mailed Apr. 10, 2015 (“Final
Act.”); Appellants’ Appeal Brief filed Oct. 8, 2015 (“App. Br.”) and Reply
Brief filed Mar. 31, 2016 (“Reply Br.”); the Examiner’s Answer mailed Feb.
25, 2016 (“Ans.”); and the original Specification filed Jan. 30, 2013
(“Spec.”).
2
Appeal 2016-004687
Application 13/754,669
Al; published May 31, 2012) (“Hough”), and Joong et al. (US
2012/0330544 Al; published Dec. 27, 2012) (“Joong”).
Claims 3, 10, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ankolekar, Hough, Joong, and Ofek et al. (US
2011/0173565 Al; published July 14, 2011) (“Ofek”).
Claims 4, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ankolekar, Hough, Joong, and Wang et al. (US
2012/0042351 Al; published Feb. 16, 2012) (“Wang”).
Claims 21—23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ankolekar, Hough, Joong, and Anthony Bruno,
The Location-Based Mobile Music App Explosion, A Survey, Mar. 25, 2011,
available at http://www.billboard.eom/biz/artieles/news/l 178612/the-
location-based-mobile-music-app-explosion-a-survey (“Bruno”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Briefs and are not persuaded the Examiner has erred.
Unless otherwise noted, we adopt as our own the findings and reasons set
forth by the Examiner in the Office Action from which this appeal is taken
(Final Act. 2—19) and in the Examiner’s Answer (Ans. 19—28), and we
concur with the conclusions reached by the Examiner. For emphasis, we
consider and highlight specific arguments as presented in the Briefs.
3
Appeal 2016-004687
Application 13/754,669
Rejection of Claims 1, 2, 5—9, 12—15, and 18—20 under § 103(a)3
Appellants contend the combination of references fails to teach or
suggest the “associating” limitation of claim 1. App. Br. 8. In particular,
Appellants argue Hough does not teach “wherein the location includes a
venue and a dynamically created perimeter around the venue being
determined by a predefined set of boundaries.” App. Br. 8—10. Appellants
also argue Hough does not teach “dynamically creating a perimeter by a
music server.” App. Br. 11; Reply Br. 6—7. According to Appellants, the
entire “associating” limitation is performed by the music server, and
Hough’s teaching of creating a perimeter mathematically and manually does
not teach or suggest “the perimeter is in any way created dynamically by a
server (e.g., non-human).” App. Br. 11. Appellants also argue Hough does
not teach tagging media content by a user of a media device. Id. at 11—12.
Appellants argue Joong does not teach or suggest accessing tagged
content with a dynamically created perimeter. Id. at 12. In that regard,
Appellants argue “Joong merely teaches a dynamically created geo-fence
(e.g., perimeter), by a user of a mobile device, to determine the geographic
landscape surrounding a potential parking spot” (citing Joong
134), and, therefore, “does not teach or suggest a user of a music server
tagging a song to a geographic location and creating a dynamic perimeter to
enable access to tagged media content.” Id.
Appellants further argue “there are no rational underpinnings to
combine Joong with Ankolekar and Hough.” Id. at 13. In particular,
3 We decide the rejection of claims 1, 2, 5—9, 12—15, and 18—20, which are
rejected under the first-stated ground of rejection, on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
4
Appeal 2016-004687
Application 13/754,669
Appellants argue “Joong is directed to determining different moving states
of a vehicle (e.g., moving or stopped) and using location data to determine
the type of location when the vehicle is in the stopped state (e.g., parking lot
or a highway),” and the Examiner’s “reliance on the generic statement of
‘location information’ is an insufficient reason to combine these references.”
Id. at 13. Appellants further argue “the Examiner has used knowledge only
from Appellants’] claimed solution (e.g., predefined set of boundaries) and
has therefore improperly relied on hindsight to determine the scope and
content of the prior art relevant to obviousness.” Id. at 14.
Appellants further argue “Joong is non-analogous art” because it is
not in the field of “music access based on location information” and “is not
reasonably] pertinent to the particular problem with which the inventor is
trying to solve.” Id. at 14—15; Reply Br. 7.
We are not persuaded by Appellants’ arguments that the Examiner has
erred. First, we consider the claim construction issue of whether the “music
server” in the “associating” limitation is required to determine “a
dynamically created perimeter around the venue,” as Appellants argue. See
App. Br. 11; Reply Br. 6—7. The Examiner concludes “[t]the claims do not
require a perimeter be created dynamically by a music server, only that the
server associates the location (which includes a venue and a perimeter) of
the music device with the song based on tagging.” Ans. 22. Appellants
argue the Examiner is incorrect based on the language of claim 1, as well as
claim 8. Appellants also cite paragraph 19 of the Specification, which states
“geo-fence 104 may be dynamically generated as a radius around venue 106
through an appropriate capability of music device 102 and/or music server
110.” Based on the language of claim 1, as well as claim 8, we agree with
5
Appeal 2016-004687
Application 13/754,669
the Examiner and conclude the broadest reasonable interpretation of these
claims is that the music server associates the location, which includes a
venue and a perimeter, of the music device with a song based on tagging, but
the music server is not required to dynamically create a perimeter around the
venue. We agree with Appellants that paragraph 19 of the Specification
states that, in one or more embodiments, the geo-fence may be dynamically
created through a capability “of music device 102 and/or music server 110.”
However, while we interpret claims broadly but reasonably in light of the
Specification, we nonetheless must not import limitations from the
Specification into the claims. See Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en banc).
Second, we are not persuaded by Appellants’ arguments that Hough
does not teach tagging media content by a user of a media device and Joong
does not teach or suggest accessing tagged content with a dynamically
created perimeter (see App. Br. 11—12) because, as the Examiner finds (see
Ans. 23—24), these arguments attack the references individually, whereas the
rejection is based on the combined teachings of Ankolekar, Hough, and
Joong. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”). The relevant inquiry is whether the claimed
subject matter would have been obvious to those of ordinary skill in the art
in light of the combined teachings of the references. See In re Keller, 642
F.2d 413, 425 (CCPA 1981).
Third, we agree with the Examiner that the combination of Ankolekar,
Hough, and Joong teaches or suggests the “associating” limitation of claim
6
Appeal 2016-004687
Application 13/754,669
1. Final Act. 2-4; Ans. 20—24. The Examiner finds “Ankolekar teaches
providing, through a music server communicatively coupled to a music
device, a capability to a user of the music device to tag a song (Ankolekar
[0016, 0019, 0046]) and associating, through the music server, a location of
the music device with the song based on tagging (Ankolekar [0020, 0030,
0046]).” Ans. 22—23. The Examiner finds Hough teaches a location that
includes a venue and a dynamically created perimeter around the venue
(Hough [0038, 0065, 0071]). Id. at 21. The Examiner also finds Hough
teaches that a perimeter based on a radius or drawn manually may be
dynamic and changeable from its initial configuration because paragraph 71
of Hough explains “that the geographic area [] may be a dynamically
configurable area, e.g., of various shapes which may change.” Id. 21—22. In
this regard, we find the broadest reasonable interpretation of “dynamically
created perimeter” includes the dynamically configurable perimeter or
shapes as taught by Hough. In regard to Joong, the Examiner finds “Joong
further clarifies the concept of a perimeter created around an area from a
predetermined set of boundaries (Joong [0034]).” Id. 22, 24. For the
reasons stated by the Examiner, we agree with the Examiner’s findings.
Thus, we find the preponderance of the evidence establishes that the
combination of Ankolekar, Hough, and Joong teaches or suggests
“associating, through the music server, a location of the music device with
the song based on the tagging, wherein the location includes a venue and a
dynamically created perimeter around the venue, the dynamically created
perimeter around the venue being determined by a predefined set of
boundaries,” as recited in claim 1.
7
Appeal 2016-004687
Application 13/754,669
Fourth, we are not persuaded by Appellants’ argument “there are no
rational underpinnings to combine Joong with Ankolekar and Hough.” App.
Br. 13—14. The Examiner finds
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have incorporated the concept
[of] a geo-fence perimeter around a point being based on
predefined boundaries as taught by Joong with the combination
of Hough and Ankolekar as all the systems address the need of
providing content based on location.
Final Act. 4. Although we agree with Appellants’ argument that Joong uses
location data to determine the type of location when the vehicle is in the
stopped state (e.g., parking lot or a highway), we agree with the Examiner
that Joong teaches providing content based on the location because, as Joong
explains, when the mobile device enters a geo-fence, the device can receive
a generated notification of the position associated with the stopped motion
state, such as a highway or a residential street or shopping center. See Joong
134. Thus, even though Joong does not teach providing access to music
within a location, it does teach accessing content concerning the type of
position associated with the location within the geo-fence. Thus, we find the
Examiner provides sufficient articulated reasoning having a rational
underpinning—providing content based on location—such that a person of
ordinary skill in the art would have been motivated to combine the teachings
of Joong with Hough and Ankolekar, so as to render obvious the claimed
subject matter. See KSR Int'l Co. v. Teleflex Co., 550 U.S. 398, 418 (2007).
Fifth, we are not persuaded by Appellants’ argument “the Examiner
has used knowledge only from Appellants’ claimed solution (e.g.,
predefined set of boundaries)” and has, therefore, improperly relied on
hindsight. See App. Br. 14. It must be recognized that any judgment on
8
Appeal 2016-004687
Application 13/754,669
obviousness is in a sense necessarily a reconstruction based upon hindsight
reasoning. However, so long as it takes into account only knowledge which
was within the level of ordinary skill at the time the claimed invention was
made, and does not include knowledge gleaned only from the Appellants’
disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d
1392, 1395 (CCPA 1971). Here, we conclude the Examiner did not use
impermissible hindsight because the rejection is based on the references and
what they would have taught or suggested to a person of ordinary skill in the
art.
Sixth, we are not persuaded by Appellants’ argument that Joong is
non-analogous art. See App. Br. 14—15; Reply Br. 7. Although we agree
with Appellants’ argument that Joong is not in the same field of endeavor of
“music access based on location information,” we agree with the Examiner
that Joong is reasonably pertinent to the particular problem with which the
inventor is concerned. Ans. 27. As stated, the Examiner finds “all the
systems address the need of providing content based on location.” Final
Act. 4. Although the Examiner finds, in the Answer, “Joong and []
Appellants] are concerned with determining a user state (either valid or
invalid) based on whether the mobile device of a user is within a
predetermined boundary around a location” (see Ans. 26—27), we discern the
Examiner is again referencing the need of providing content based on
location because, if the mobile device is within the predetermined boundary,
in which case the user state is valid, content is provided. Thus, we agree
with the Examiner that Joong is reasonably pertinent to the problem
addressed by the inventors because both Joong and Appellants are concerned
with the need of defining a boundary and determining whether a mobile
9
Appeal 2016-004687
Application 13/754,669
device is within the boundary so that content is provided—music, with
respect to Appellants, and parking information, with respect to Joong.
Accordingly, we agree with the Examiner’s finding that Joong is analogous
art.4
Thus, we find a preponderance of the evidence supports the
Examiner’s findings that (1) the combined teachings of Ankolekar, Hough,
and Joong would have taught or suggested the “associating” limitation of
claim 1, (2) the need of providing content based on location is sufficient
articulated reasoning having a rational underpinning for the combination of
Joong with Ankolekar and Hough, and (3) Joong is analogous art.
Accordingly, we are not persuaded the Examiner erred in (1) finding the
combined teachings of Ankolekar, Hough, and Joong teach or suggest the
disputed limitation of claim 1 and (2) concluding that the combination of
Ankolekar, Hough, and Joong renders the subject matter of claim 1 obvious
under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner’s rejection
of claim 1. For the same reasons, we sustain the Examiner’s rejection of
independent claims 8 and 14, as well as dependent claims 2, 5—7, 9, 12, 13,
15, and 18—20.
Rejections of Claims 3, 4, 10, 11, 16, 17, and 21—23 under § 103(a)
Appellants advance no separate, substantive arguments for claims 3,
4, 10, 11, 16, 17, and 21—23, which are rejected under the second, third and
fourth stated grounds of rejection. Appellants contend these claims are
patentable because they depend from allowable independent claims 1,8, and
4 Appellants’ argument that Joong, Ankolekar, and Hough are non-
analogous art because they “are of different classifications” (see App. Br.
15) is not persuasive because it is unsupported by any authority or
persuasive argument or evidence.
10
Appeal 2016-004687
Application 13/754,669
14. App. Br. 15—16. However, for the reasons discussed above regarding
the first-stated ground of rejection, we find independent claims 1,8, and 14
are not patentable under § 103(a). Therefore, we sustain the Examiner’s
rejections of claims 3,4, 10, 11, 16, 17, and 21—23, which depend from one
of claims 1, 8, and 14.
DECISION
We affirm the Examiner’s rejections of claims 1—23 under 35 U.S.C.
§ 103(a).
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
11