Ex Parte HymanDownload PDFPatent Trial and Appeal BoardMar 16, 201713754669 (P.T.A.B. Mar. 16, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation