Ex Parte Lin et al

Patent Trial and Appeal Board

Dec 2, 2014

12286447 (P.T.A.B. Dec. 2, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GLORIA LIN, AMIR MAHMOOD MIKHAK,
TAIDO LANTZ NAKAJIMA, SEAN ANTHONY MAYO,
MICHAEL ROSENBLATT, and ANDREW HODGE
____________________

Appeal 2012-0066591
Application 12/286,447
Technology Center 3600
____________________

Before: ANTON W. FETTING, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–4, 6–8, 19–24, 36–42, and 44–47.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 The Appellants identify the real party in interest as Apple Inc. (App.
Br. 2).
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Application 12/286,447

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Appellants’ invention is directed generally to the gifting of digital
media content. (Spec. ¶ 1).
Claim 1 is illustrative of the claims on appeal:
1. A method for using a first device operable by a first user to
gift one or more digital media files to a separate second device
operable by a second user comprising:
transmitting a gift offer from the first device to gift the
one or more digital media files to the second device;
receiving an acceptance of the gift offer from the second
device using the first device; and
after receiving the acceptance of the gift offer,
transmitting a gift request from the first device to a separate
external server associated with an online digital media provider
and configured to, based upon the gift request, authorize the
creation of a gift file corresponding to each of the one or more
digital media files for transmission from the external server to
the second device.

Appellants appeal the following rejections:2
Claims 1926 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter which Applicant regards as the invention.
Claims 1, 2, 6, 7, 19, 20, 22, 23, 36, 37, 40, 41, 46, and 47 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Horel (US 2005/0261988 A1,

2 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the recently issued preliminary
examination instructions on patent eligible subject matter. See “Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to
the Examining Corps, June 25, 2014.
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Application 12/286,447

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pub. Nov. 24, 2005) and Morgenstern (US 20080189188 A1, pub. Aug. 7,
2008).
Claims 3, 21, 38, and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Horel, Morgenstern, and Vanska (US 2007/0299780 A1,
pub. Dec. 27, 2007).
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Horel, Morgenstern, and Fyock (US 2009/0317065 A1, Dec. 24, 2009).
Claims 8, 24, 44, and 45 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Horel, Morgenstern, and Blair (US 2004/0039702 A1,
pub. Feb. 26, 2004).

ANALYSIS
Rejection under 35 U.S.C. § 112, Second Paragraph
We are persuaded by the Appellants’ argument that there is no
indefiniteness in claim 19, because the claim is specifically directed to a
device, not the combination of a device and a server that interoperates with
the device. (App. Br. 12–14). Claim 19 recites three components, i.e., a
processor, a communications interface, and a memory device, with
additional functional recitations about the configuration of the device. As
such, there is no server component that is part of the device. For this reason,
we do not sustain the rejection under 35 U.S.C. § 112 of claim 19, as well as
dependent claims 20–26.
Rejection under 35 U.S.C. § 103(a)
Each of independent claims 1, 19, and 36 recites language
substantially equivalent to “transmitting a gift offer from the first device to
gift the one or more digital media files to the second device.”
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We are persuaded by the Appellants’ arguments that the cited art does
not disclose the claimed gift offer, because no “identified” or “selected” file
is offered. (App. Br. 20; see also App. Br. 19–22, Reply Br. 3–6). The
Examiner relies on Horel’s disclosure of a request to receive a catalog of
content files, from a first device to a second device, as the claimed gift offer.
(Ans. 8, 20).
Horel discloses a method of gifting content from a first device to a
second device where the first device requests, from the second device, a list
of content files. (¶ 48). The receiving/second device responds with a
catalog listing of files. (¶ 50). The first/giving device then selects a file
from the catalog list for gifting, and may send a message to a server to
process the selected one or more files as a gift. (¶ 51).
However, we construe the claim to make an offer for specific content
files, because the claim recites the gift offer is “to gift the one or more
digital media files to the second device.” The claimed “gift file” is recited as
“corresponding to each of the one or more digital media files,” which were
offered. We construe that the offer, therefore, is not a general offer to give
an unspecified gift. Our construction is supported by the specificity of the
gift that is offered in paragraphs 105, 106, 123, and Figs. 7 and 10A of the
Specification. The request for a catalog in Horel, though is a general offer to
gift generic files, without reference to the specific files being offered. As
such, Horel does not disclose the claimed gift offer.
The Examiner also relies on Morgenstern as disclosing a “separate
external server associated with an online digital media provider.” (Ans. 9).
The cited sections of Morgenstern (Ans. 21, citing ¶ 75 and Fig. 4) do not
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disclose a gift offer, as claimed, so Morgenstern does not remedy the
shortcoming of Horel.
For these reasons, we do not sustain the rejection of independent
claims 1, 19, or 36, because no prima facie case of obviousness has been set
forth. We also do not sustain the various rejections of dependent claims 2–4,
6–8, 20–24, 37–42, and 44–47 which depend from independent claims 1, 19,
or 36.

DECISION
We REVERSE the rejection of claims 19–26 under 35 U.S.C. § 112,
second paragraph.
We REVERSE the rejections under 35 U.S.C. § 103(a) of claims 1–4,
6–8, 19–24, 36–42, and 44–47.

REVERSED

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