Ex Parte Konttinen

Patent Trial and Appeal Board

Dec 5, 2016

11695851 (P.T.A.B. Dec. 5, 2016)

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.
11/695,851 04/03/2007 Hannu Konttinen 042933/325843 3387
10949 7590 12/07/2016
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
EXAMINER
BELOUSOV, ANDREY
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
12/07/2016 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANNU KONTTINEN
Appeal 2016-000573
Application 11/695,851
Technology Center 2100
Before CARLA M. KRIVAK, JOHN F. HORVATH, and
ADAM J. PYONIN, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 7—10, 13—18, 20-22, 24—28, and 30—38,
which constitute all the claims pending in this application. Claims 5, 6, 11,
12, 19, 23, and 29, have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal 2016-000573
Application 11/695,851
STATEMENT OF THE CASE
Appellant’s invention is directed to generating an arrangement of
media files based on a selected profile (Spec. 11).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. An apparatus comprising at least one processor and at least
one memory including computer program code, the at least one
memory and the computer program code configured to, with the
at least one processor, direct the apparatus at least to:
receive a first electronic communication from a first
device, the first electronic communication comprising a list
identifying a plurality of media files stored on the first device and
an indication of a preferred user other than a user of the first
device;
access a second list identifying a plurality of media files
associated with a predefined profile associated with the preferred
user;
generate an arrangement of select media files from the
plurality of media files identified in the received list wherein the
arrangement is an ordered list of the select media files and a
metadata of a select media file corresponds to a metadata of a
media file on the second list, indicating that the user of the first
device has access to a media file on the second list; and
cause communication of a second electronic
communication to the first device, the second electronic
communication comprising the arrangement.
REFERENCES and REJECTION
The Examiner rejected claims 1—4, 7—10, 13—18, 20-22, 24—28, and
30-38 under 35 U.S.C. § 103(a) based upon the teachings of Rosenberg (US
7,325,043 Bl; Jan. 29, 2008), Ranasinghe (US 2006/0265421 Al; Nov. 23,
2006), Svendsen (US 2009/0055759 Al; Feb. 26, 2009), Playlists (non-
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Application 11/695,851
patent literature titled “Review of iTunes Celebrity Playlists — Death Cab for
Cutie,” Jan. 18, 2006), and Ijichi (US 2007/0012163 Al; Jan. 18, 2007).1
ANALYSIS2
Appellant contends the Examiner erred in finding Ijichi teaches a
second list of media files associated with a preferred user other than a user
of a first device, as required by claim 1, as Ijichi is silent regarding assessing
[sic accessing] a second list of another user (App. Br. 13). Appellant also
contends Svendsen does not teach (1) “a play list of media items is related to
a preferred user,” as “Svendsen merely discusses providing access to various
user’s ratings of media files, not playlists of other users” (App. Br. 13—14),
or (2)
‘an arrangement of select media files from the plurality of
media files identified in the received list wherein the
arrangement is an ordered list of the select media files and a
metadata of a select media file corresponds to a metadata of a
media file on the second list, indicating that the user of the first
device has access to a media file on the second list, ’ as recited in
some form or another by the independent claims.
(App. Br. 14). Appellant additionally asserts various combinations of Ijichi,
Svendsen, Rosenberg, and/or Ranasinghe are improper (App. Br. 16—19;
Reply Br. 1—2). Specifically, Appellant argues (1) “There is no suggestion
1 The Examiner indicates this rejection is under 35 U.S.C. § 102(e) (Final
Act. 2; Ans. 2). As this appears to be an inadvertent typographical error, we
find this error to be harmless.
2 Separate patentability is not argued for claims 2-4, 7—10, 13—18, 20-22,
24—28, and 30—38. Except for our ultimate decision, these claims are not
discussed further herein (App. Br. 12—19; Reply Br. 1—3).
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Application 11/695,851
in Svendsen that a playlist is generated based on a comparison of metadata
of media files on the user device to those indicated on the second list (e.g.,
the play list created by a celebrity or another user other than the user of the
device);” (2) “[NJothing in Rosenberg, Ranasinghe, and/or Svendsen
provides a reasonable basis or rationale for why or how one of ordinary skill
in the art would modify Rosenberg and/or Ranasinghe with the teachings of
Svendsen;” and (3) “There is no suggestion in Ijichi of generating a
playlist,” or “of generating a playlist based on a playlist created by another
user” (App. Br. 16—19). We do not agree.
We agree with and adopt the Examiner’s findings as our own (Final
Act. 4—5; Ans. 4—9). Particularly, we agree with the Examiner’s finding that
Svendsen’s display list of songs, which are recommended by various peers
and friends selected by a user (see Svendsen, Fig. 9), teaches or suggests a
media file associated with a preferred user other than the user of the first
device (Final Act. 4; Ans. 4—5, 8—9). We note that, though not required by
the claims, Svendsen teaches a user of the first device can indicate a single
preferred user (e.g., user A), by giving user A’s recommendations 100%
weight, and giving user B and user C’s recommendations 0% weight. We
also agree with the Examiner that Svendsen’s graphical user interface (GUI),
which displays a column of users that may be peers or friends of the user of
the GUI selected by the user (see Svendsen, Figs. 9, 13), teaches or suggests
a preferred user other than a user of the first device as claimed (Final Act. 4;
Ans. 4—5; Svendsen 172, Fig. 13). Further, Svendsen’s media files are
associated with a predefined profile associated with the preferred user: that
is, for each displayed (i.e., preferred) user, Svendsen’s GUI displays a media
title that was recommended by the respective user (Final Act. 4; Ans. 4—5;
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Application 11/695,851
Svendsen 172, Fig. 13). Accordingly, Appellant’s statement that “Svendsen
merely discusses providing access to various user’s ratings of media files,
not playlists of other users,” does not persuade us of Examiner error (App.
Br. 13-14).
As to Appellants assertion that “ljichi is silent regarding assessing [sic
accessing] a second list of another user,” the Examiner relies on ljichi for
teaching “a metadata of a select media file corresponds to a metadata of a
media file on the second list” (Ans. 6). Svendsen was relied on for
disclosing a second list associated with a preferred user (Final Act. 4; Ans.
7—9). Thus, Appellant is not arguing the references for the teachings relied
on by the Examiner, and is instead addressing the references separately
rather than the combination of teachings proposed by the Examiner (id.) (see
In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986)).
Appellant’s contention that the Examiner has not provided a
reasonable basis or sufficient rationale for combining or modifying the
various references, is merely attorney argument (App. Br. 16—19). Attorney
argument, however, is not the kind of factual evidence required to rebut a
prima facie case of obviousness (see In re Geisler, 116 F.3d 1465, 1470
(Fed. Cir. 1997); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence”)).
Appellant has provided no supporting evidence for their statements. Further,
we find the Examiner has provided articulated reasoning with a rational
underpinning supporting the legal conclusion of obviousness (Final Act. 3—
5; Ans. 3-6, 8-9) (KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
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Application 11/695,851
For the above reasons, we are not persuaded of Examiner error. We
find the weight of the evidence supports the Examiner’s ultimate legal
conclusion of obviousness, and therefore sustain the Examiner’s rejection of
claims 1^1, 7-10, 13-18, 20-22, 2A-28, and 30-38.
DECISION
The Examiner’s decision rejecting claims 1—4, 7—10, 13—18, 20—22,
24—28, and 30-38 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
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