Ex Parte Kessel et al

Patent Trial and Appeal Board

Sep 17, 2012

11113449 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/113,449 04/22/2005 Steven Kessel 120137.511 7800
500 7590 09/17/2012
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
09/17/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEVEN KESSEL, BILL CARR, and SAMUEL HEYWORTH
____________________

Appeal 2011-004050
Application 11/113,449
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/113,449

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-9, 55-61, and 63-76. We have jurisdiction under 35
U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

BACKGROUND
Appellants’ invention relates to a method and system for preloading
digital media player devices with digital media content before the device is
delivered to a consumer or other specified recipient; the digital media
content is personalized for the recipient to whom the device will be sent
(Abstract).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A computer-implemented method for automatically
preloading digital music player devices that are ordered by
customers with personalized groups of digital music files before
providing the digital music player devices to the customers, the
method comprising:
for each of multiple customers of an online retailer,
receiving an order from the customer for a
subscription to an online digital music service, the
subscription allowing the customer to download and play
back digital music files from the online digital music
service while the subscription remains valid;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed August 13, 2010) and Reply Brief (“Reply Br.,” filed December
13, 2010) and the Examiner’s Answer (“Ans.,” mailed October 15, 2010).
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receiving an order from the customer for a digital
music player device;
before shipping a copy of the digital music player
device to the customer, automatically loading the digital
music player device copy with a group of digital music
files from the online digital music service that is
personalized to the customer, the automatic loading of
the digital music player device copy being performed by
one or more configured computing systems of the online
retailer, the automatic loading of the digital music player
device copy including,
retrieving information about indicated songs
in which the customer has previously expressed an
interest and automatically determining additional
songs that are potentially of interest to the
customer, the determining being performed by at
least one of the one or more configured computing
systems and including selecting songs that are
automatically recommended for the customer; and
after the digital music player device copy is
connected to a preload station, loading digital
music files from the online digital music service on
the digital music player device copy for each of the
indicated songs and each of the additional songs;
and
fulfilling the order for the digital music player
device by shipping the digital music player device copy
that is loaded with the digital music files to the customer.

THE REJECTIONS
The following rejections are before us for review:
Claims 64-76 stand rejected under 35 U.S.C. § 112, second paragraph,
for failing to particularly point out and distinctly claim the subject matter of
the invention.
Claims 1-9, 55-61, and 63 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Napster Terms (“Napster Terms
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and Conditions,”
http://web.archive.org/web/20040405153036/www.napster.com/terms.html),
Eynon (US. 6,714,937 B1, iss. Mar. 30, 2004), and Apple iTunes Store
(http://web.archive.org/web/20040202103547/www.apple.com/itunes/store).
Claims 64-76 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Apple iTunes Store and Eynon.

ANALYSIS
Indefiniteness
Independent claim 64 recites a computing system configured to
preload digital media articles with digital media items personalized to the
recipients comprising, inter alia, “one or more processors,” “a personalized
item selector component,” and “a preload controller component.” Each of
the personalized item selector component and the preload controller
component is configured to be executed by at least one of the one or more
processors.
Appellants maintain that the Examiner erred in rejecting claim 64
under 35 U.S.C. § 112, second paragraph, for failing to particularly point out
and distinctly claim the subject matter of the invention. In contrast, the
Examiner maintains that the rejection of clam 64 is proper because (i) “the
claim which is directed to structure is reciting that said structure is
comprised of non-physical elements [i.e., a personalized item selector
component and a preload controller component, which are application
software]” (Ans. 4); (ii) “a personalized item selector component that is
configured to, when executed by at least one of the one or more processors,
automatically determine . . . .” recites both an apparatus and a method of
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using the apparatus (Ans. 4-5); (iii) “as claimed[,] the two ‘components’
[i.e., a personalized item selector component and a preload controller
component] are not coupled to any medium and can only be viewed as
abstract entities” (Ans. 21); and (iv)“no functional relationship has been
established between the ‘one or more processors’ and the recited
‘components’ as the components (i.e. software) have not been recited as
being embodied in media that would allow the processor to perform the
recited function” (Ans. 22).
The test for definiteness under 35 U.S.C. § 112, second paragraph is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Only claims “not amenable to construction or insolubly
ambiguous are indefinite.” Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537
F.3d 1357, 1371 (Fed. Cir. 2008) (citations and quotation marks omitted).
We agree with Appellants that one of ordinary skill in the art would
understand what is claimed when claim 64 is read in light of the
specification. Addressing the Examiner’s first argument, the fact that a
system claim includes software components does not in and of itself render
the claim indefinite. Software applications are frequently recited as system
claim components, and do not render the claim “insolubly ambiguous” or
otherwise objectionable. See, e.g., MPEP § 2106.01 (“Computer programs
are often recited as part of a claim. USPTO personnel should determine
whether the computer program is being claimed as part of an otherwise
statutory manufacture or machine.”).
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We also do not agree that claim 64 is indefinite by virtue of reciting
both an apparatus and a method of using the apparatus. Claim 64 recites a
computing system comprising, inter alia, “one or more processors” and “a
personalized item selector component that is configured to, when executed
by at least one of the one or more processors” perform a particular function,
namely, “automatically determine one or more digital media items for a
recipient.” A person of ordinary skill in the art would understand that claim
64 recites a computing system having a component, i.e., a personalized item
selector component, configured to perform a particular function when the
component is executed, and not an apparatus and a method for using the
apparatus.
Finally, we do not agree that a storage media is a required element of
claim 64. A software component that is executable by a processor of a
computing system also cannot be said to be an abstract entity or to lack a
functional relationship with the processor on which the component is
executed.
In our view, one of ordinary skill in the art, on reading the
specification, would readily ascertain the scope of claim 64. Therefore, we
will not sustain the Examiner’s rejection of independent claim 64 or
dependent claims 65-76 under 35 U.S.C. § 112, second paragraph.

Prior Art Rejections
Independent Claim 1 and Dependent Claims 2-9
We are persuaded of error on the part of the Examiner by Appellants’
argument that none of Napster Terms, Apple iTunes Store, and Eynon
discloses or suggests “automatically loading [a] digital music player device
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copy with a group of digital music files . . . that is personalized to the
customer, the automatic loading . . . including . . . automatically determining
additional songs that are potentially of interest to the customer, . . . including
selecting songs that are automatically recommended for the customer,” as
recited in claim 1 (App. Br. 16). The Examiner relies on Eynon and Apple
iTunes Store as teaching this limitation but neither of these references
discloses or suggests automatically selecting digital content items to be
preloaded on a consumer device before the device is shipped to a consumer
where at least some of the digital content items have not been previously
selected by the consumer.
Eynon describes a system for configuring a customer-ordered
computer before delivery, including preloading software and transferring
configuration settings from the customer’s current computer to the new
computer (Eynon, Abstract and col. 4, ll. 46-65). But Eynon does not
disclose or suggest preloading data onto the new computer system that has
not been selected or otherwise specified by the customer. The Examiner
relies on Eynon’s disclosure at col. 3, l. 59 – col. 4, l. 36 as teaching that
new digital content, i.e., “end user environment information,” that was not
previously selected or specified by the customer, is loaded onto the new
computer system from the customer’s existing system (Ans. 23). But Eynon
explicitly states that “end user information” refers to “the set of options and
capabilities of a product that may be set, configured, or enabled according to
a customer’s preferences” (Eynon, col. 2, l. 63 – col. 3, l. 3). The end user
environment settings that Eynon discloses may be copied from the
customer’s existing computer to his new computer are settings that the
customer previously selected or specified on his existing computer (Eynon,
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col. 2, ll. 56-67). These settings are not new digital content automatically
recommended for the consumer.
The Examiner also relies for support on col. 6, ll. 35-45 where Eynon
discloses displaying digital advertisements during the ordering process
before the ordered computer is shipped to the customer, where the
advertisements are specifically targeted to a customer based on the
customer’s order information or end user environment information (Ans.
24). However, the Examiner provides no articulated reasoning with rational
underpinnings to explain why displaying targeted advertisements to a
customer would provide an apparent reason for a person skilled in the art to
preload a consumer device on order with digital content that was not
previously selected or otherwise identified by the consumer.
The Examiner states that “[w]hat is not disclosed by Eynon is that the
files are music files,” and relies on Apple iTunes Store reference at page 2,
“Discover and Explore” as teaching “automatically determining additional
songs that are potentially of interest to the customer” and “selecting songs
that are automatically recommended for the customer” (Ans. 27-28). But
that portion of the Apple iTunes Store reference does not teach or suggest
that additional songs of potential interest to the customer are automatically
determined. Instead, “Discover and Explore” only describes that playlists
hand-picked by celebrities are displayed, and that a user may “with one click
own all their [the celebrities’] recommendations.” Simply displaying a
celebrity’s playlist does not involve any “automatically determining
additional songs that are potentially of interest to the customer” and
“selecting songs that are automatically recommended for the customer.”
The celebrity playlists are not personalized to a particular user. A user
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accessing the celebrity playlist will see the same non-personalized music
selections that every other user of the Apple iTunes Store sees.
The cited references fail to teach automatically preloading a digital
media device with digital content including “automatically determining
additional songs that are potentially of interest to the customer, the
determining . . . including selecting songs that are automatically
recommended for the customer,” individually. The Examiner has, thus,
failed to establish a prima facie case of obviousness with respect to claim 1.
Therefore, we do not sustain the Examiner’s rejection of independent claim
1 and dependent claims 2-9 under 35 U.S.C. § 103.

Independent Claims 55 and 64 and Dependent Claims 56-61 and 63-76
Independent claims 55 and 64 include language similar to that of
claim 1. Therefore, we will not sustain the Examiner’s rejection of
independent claims 55 and 64 and dependent claims 56-61 and 63-76 for the
same reasons as set forth above with respect to claim 1.

DECISION
The Examiner’s rejection of claims 64-76 under 35 U.S.C. § 112,
second paragraph is reversed.
The Examiner’s rejection of claims 1-9, 55-61, and 63-76 under 35
U.S.C. § 103(a) is reversed.

REVERSED

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MP