Ex Parte Khedouri et alDownload PDFPatent Trial and Appeal BoardSep 20, 201611964238 (P.T.A.B. Sep. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111964,238 67813 7590 BGL/ P.O. BOX 10395 CHICAGO, IL 60610 12/26/2007 09/21/2016 FIRST NAMED INVENTOR Robert Khedouri 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. 10519/961/MGA-0001-l-VIII 1476 EXAMINER EL-ZOOBI, MARIA ART UNIT PAPER NUMBER 2656 MAILDATE DELIVERY MODE 09/21/2016 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 ROBERT KHEDOURI, JONATHAN AXELROD, HAROLD PRICE, JOHN BECKER, MARK EDINGER, and DOUGLAS R. KRAUL Appeal2015-000455 Application 11/964,238 Technology Center 2600 Before MAHSHID D. SAADAT, JOHN A. EVANS, and ALEX S. YAP, Administrative Patent Judges. EV ANS, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 26-39, 41, and 42. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM.2 1 The Appeal Brief identifies SanDisk Technologies, Inc., as the real party in interest. App. Br. 2. 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed June 19, 2014, "App. Br."), the Reply Brief (filed October 6, 2014, "Reply Br."), the Examiner's Answer (mailed August 21, 2014, "Ans."), the Final Action (mailed December 24, 2013, "Final Act."), and the Specification (filed March 17, 2009, "Spec.") for their respective details. Appeal2015-000455 Application 11/964,238 STATEMENT OF THE CASE The claims relate to a system for providing content to a plurality of handheld devices. See Abstract. Claims 26 and 31 are independent. An understanding of the invention can be derived from a reading of exemplary Claim 26, which is reproduced below with some formatting added: 26. A wireless portable device comprising: a wireless transceiver through which to communicate with a network; a memory; and a processor in communication with the wireless transceiver and the memory, wherein the processor is operative to: detect an available connection to the network; and after a connection to the network is available, select and download a play list from a list of play lists stored in a server in the network, wherein the playlists are created by peer wireless portable devices, wherein the wireless portable devices are peers to one another but not to the server. References and Rejections The Examiner relies upon the prior art as follows: Jones, et al. US 6,697,944 Bl Feb.24,2004 Nunome, et al. US 6,954,763 B2 Oct. 11, 2005 Gibbs, et al. US 7,136,945 B2 Nov. 14, 2006 Plastina, et al. US 7,343,384 B2 Priority Mar. 21, 2002 Lamere, et al. US 7,627,605 Bl Filed July 15, 2005 2 Appeal2015-000455 Application 11/964,238 1. Claims 26 and 28-30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones and Gibbs. Final Act. 4--5. 2. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones, Gibbs, and Nunome. Final Act. 5-6. 3. Claims 31, 33-37, 39, 40, and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones and Plastina. Final Act. 6- 8. 4. Claims 32 and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones, Plastina, and Official Notice. Final Act. 8-9. 5. Claim 41 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones, Plastina, and Lamere. Final Act. 9. ANALYSIS We have reviewed the rejections of Claims 26-39, 41, and 42 in light of Appellants' arguments that the Examiner erred. We have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We are not persuaded that Appellants identify reversible error. We adopt the Examiner's finings and provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. We consider Appellants' arguments seriatim, as they are presented in the Appeal Brief, pages 3-7. 3 Appeal2015-000455 Application 11/964,238 INDEPENDENT CLAIMS 26, 27, AND 28-30: OBVIOUSNESS OVER JONES AND GIBBS Independent Claim 26 recites, inter alia, "download a playlist from a list of play lists stored in a server in the network, wherein the play lists are created by peer wireless portable devices." The Examiner finds Jones substantially teaches Claim 26, but Jones does not teach downloading a playlist from a server or that the playlists were created by devices that are peers to one another but not to the server. Final Act. 4. The Examiner finds Gibbs teaches sharing content between multiple devices that are peers to each other and Gibbs teaches playlists. Id. Appellants argue there is no teaching in Gibbs of a server that stores peer-created playlists for downloading to other peer devices. App. Br. 4. Rather, Gibbs teaches a peer-to-peer system wherein a track list, not a playlist, is directly transmitted between peer devices. Id. at 5. Moreover, Appellants argue Jones' server is not a peer device and does not store playlists. Id. The Examiner finds Jones teaches storing and downloading songs from a server, which may be a peer device. Ans. 8. Jones does not teach a playlist, which, under the broadest reasonable interpretation, is a "'fixed song sequence."' Id. (citing Spec., i-f 9). Examiner finds Gibbs teaches sharing content between multiple devices that are peers to each other. Ans. 9. Gibbs teaches a track list is exchanged among the peers. Id. The Examiner finds a track list is a listing of songs and thus, reads on a playlist. Id. Appellants concede Gibbs teaches a playlist: "the communication of a playlist in Gibbs is between peer wireless devices." Reply Br. 3. Rather, 4 Appeal2015-000455 Application 11/964,238 Appellants contend the proposed combination of Jones and Gibbs does not teach a server that stores peer-created playlists for downloading other peer devices. Id. Appellants' arguments are not persuasive. We agree with the Examiner that Jones teaches a server-centric system for storing and broadcasting music-related content. We also agree that provisioning Jones' server with Gibbs' peer-created playlist is likely to be "a combination of familiar elements according to known methods" which "is likely to be obvious" because "it does no more than yield predictable results." KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Appellants do not separately argue dependent Claims 28-30. Nor do they separately argue Claim 27 which is rejected over Jones, Gibbs, and Nunome. INDEPENDENT CLAIM 31 Independent claim 31 recites, inter alia, "performing the following in a server: receiving user preference information from a wireless portable device; generating a recommended playlist based on the received user preference information." Appellants contend the Examiner finds Plastina teaches these limitations. App. Br. 6. Appellants argue Plastina teaches a software play list generator that is resident on the user's device, but not on the server, as claimed. Id. The Examiner finds Plastina teaches the software comprising the experience monitoring and playlist generating modules may optionally reside on the server. Ans. 11 (citing Plastina, col. 15, 11. 57---63). 5 Appeal2015-000455 Application 11/964,238 Appellants reiterate Plastina's playlist generator resides on the user's device, not on the server, as claimed. Reply Br. 3. Appellants' contentions are not persuasive. Plastina does not limit the teachings to user devices: "In some embodiments, the method is implemented in software that resides on multiple user devices." Plastina, col. 15, 11. 23-25. However, as found by the Examiner (Ans. 11), "all of the user's data (content and metadata) can be roamed to a central server." Plastina, col. 15, 11. 58-59. Appellants do not separately argue the dependent claims. DECISION The rejection of Claims 26-39, 41, and 42 under 35 U.S.C. § 103 is affirmed. 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 6 Copy with citationCopy as parenthetical citation