Ex Parte Lindahl et al

Patent Trial and Appeal Board

Oct 30, 2017

14259571 (P.T.A.B. Oct. 30, 2017)

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.
14/259,571 04/23/2014 Aram Lindahl 337722-331001/P8119USD1 9135
133036 7590 11/01/2017
DLA Piper LLP (US)
2000 University Avenue
East Palo Alto, CA 94303-2215
EXAMINER
DWIVEDI, MAHESH H
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
ApplePros Admin @ dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARAM LINDAHL, WENDY GOH,
ALLEN P. HAUGHAY, SHAWN ELLIS,
BENJAMIN A. ROTTLER, and POLICARPO WOOD
Appeal 2017-002475
Application 14/259,5711
Technology Center 2100
Before BRUCE R. WINSOR, MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 13—32, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants’ Appeal Brief (“App. Br.”) identifies Apple Inc. as the real
party in interest. App. Br. 2.
Appeal 2017-002475
Application 14/259,571
CLAIMED SUBJECT MATTER
Appellants’ claims are directed to selecting and delivering
recommended media items to a user. Spec. 11. Claim 13, reproduced
below with the disputed limitation in italics, is illustrative of the claimed
subject matter:
13. A method for selecting media items from a media library
to recommend to a user, the method comprising:
determining with the electronic device a plurality of
recommended media items from a media library;
transmitting with the electronic device at least one
recommended media item of the plurality of recommended
media items from the media library to an external device,
wherein the at least one recommended media item as transmitted
does not comprise every media item of the determined plurality
of recommended media items;
receiving with the electronic device initial feedback
information for the at least one recommended media from the
external device; and
in response to receiving the initial feedback information,
transmitting with the electronic device the remaining media
items of the determined plurality of recommended media items to
the external device.
App Br. 14 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sighart US 2007/0106672 A1 May 10, 2007
Juster US 2007/0220552 A1 Sept. 20, 2007
Nguyen US 2007/0264982 A1 Nov. 15,2007
Pash, Adam, “iTunes adds Complete My Album feature, charges
only once for a song,” dated March 27, 2007 (“Pash”).
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Application 14/259,571
REJECTIONS
Claims 13, 14, 18, 21, 23, 24, 28, and 31 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Sighart and Pash. Final Act.
2-6.
Claims 15, 22, 25, and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sighart, Pash, and Nguyen. Final Act. 7—10.
Claims 16, 17, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sighart, Pash, Nguyen, and Juster. Final Act. 10—
14.
Claims 19, 20, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sighart, Pash, and Juster. Final Act. 15—17.
ISSUES
First Issue: Has the Examiner erred in finding the limitation “in
response to receiving the initial feedback information, transmitting with the
electronic device the remaining media items of the determined plurality of
recommended media items to the external device,” is taught or suggested by
Sighart and Pash?
Second Issue: Has the Examiner erred in finding that a person of
ordinary skill in the art would have combined the teachings of Sighart and
Pash?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments set forth in the Appeal Brief and Reply Brief. We are not
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Application 14/259,571
persuaded of error by Appellants’ arguments. See Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken (Final Act. 2—21) and (2) the reasons and
explanations set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Brief (Ans. 3—11) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
First Issue
In rejecting claim 13, the Examiner relies primarily on Sighart,
finding it teaches all of the limitations except “in response to receiving the
initial feedback information, transmitting with the electronic device the
remaining media items of the determined plurality of recommended media
items to the external device.” Final Act. 4. The Examiner adds the
teachings of Pash, finding the “Complete My Album” feature described in
Pash cures any deficiency in Sighart. Id. The Examiner explains that
Sighart applies user feedback on a portion of a recommended list that has
been sent to a user. Id. The difference between Sighart and the claim,
according to the Examiner, is that based on that feedback, Sighart selects
new (rather than the recited “remaining”) items to add to the recommended
list. Id. at 4—5.
The Examiner further explains that Pash teaches delivering the
remaining songs in an album when positive feedback is received about the
initially downloaded songs. Id. Combining the “Complete My Album”
functionality with Sighart’s recommended list functionality provides a
system in which “in response to receiving the initial feedback information
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. . . the remaining media items of the determined plurality of recommended
media items [are transmitted] to the external device.” Id. at 5.
Appellants argue Pash fails to cure Sighart’s deficiencies because it
“is little more than a news article describing a new purchasing method for
songs.” App. Br. 8. Appellants further argue Pash provides no “indication
that the ‘Complete My Album’ feature or eligible albums are tied to initial
feedback information of previously recommended media items.” Id. at 9.
Appellants further argue the purchase action in Pash does not explicitly
mention any transfer of songs, and also that it is not based on user feedback,
but instead is in response to selection of a user interface element. Id.
Appellants further contend Pash “does not address the fact that the
‘predetermined list’ or album of Pash is not a plurality of recommended
media items from a media library as recited in claim 13.” App. Br. 10.
According to Appellants, the album in Pash is not an initial recommended
list, nor is the transfer of the remaining items in Pash linked to initial
feedback information. Id. Finally, Appellants argue the combined teaching
would, at most, teach transferring remaining songs in an album, but not
based on feedback of initially received songs. Id.\ Reply Br. 2—3.
We are not persuaded by Appellants’ arguments. Appellants’
arguments regarding the deficiencies of the cited references focus mainly on
their individual teachings. For example, Appellants argue Pash provides no
“indication that the ‘Complete My Album’ feature or eligible albums are tied
to initial feedback information of previously recommended media items.”
This argument is unpersuasive because the Examiner relies on Sighart, and
not on Pash, for teaching the “recommended media item.”
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As we discussed above, the Examiner finds Sighart teaches receiving
initial feedback information about a partial set of recommended media items
and responding to that initial feedback information. Ans. 3 (citing Sighart
| 66). We agree with this finding, and find the Examiner correctly relies on
Sighart as disclosing “in response to receiving the initial feedback
information.” We also agree with the Examiner’s finding that Pash teaches
transmitting remaining media items of a plurality of related media items—
namely, transmitting the rest of the songs in an album based on a user
selection of the “Complete My Album” feature. Ans. 4—5. Although the
transmitted media items in Pash are not explicitly shown to be
“recommended media items,” we agree with the Examiner that Sighart
provides the necessary teaching in this regard. Id. As such, we agree with
the Examiner that Sighart combined with Pash teaches “in response to
receiving the initial feedback information, transmitting with the electronic
device the remaining media items of the determined plurality of
recommended media items to the external device.”
Second Issue
In combining Sighart and Pash, the Examiner finds:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to combine the teachings of the
cited references because teaching Pash’s [sic] would have
allowed Sighart’s to provide a method for allowing users who
prefer to sample a portion of media items before downloading a
set of media items, as noted by Pash (Page 2).
Final Act. 5. The Examiner further finds both Sighart and Pash are directed
to transferring media items. Ans. 9. The Examiner further explains:
Pash would allow the user in Sighart to download the remaining
initial recommended list based off of positive feedback from the
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initial portion of that initial recommended list instead of
receiving a new list because of the benefits of sampling a portion
of a predetermined list as explicitly noted in Pash (See “If you
love full albums, but you prefer sampling a single or two before
you dive into” (Page 2) and “I also see you are listening to some
Daniel Johnston. He’s definitely someone to sample before
buying the whole album” (Page 3)).
Ans. 9.
Appellants argue the Examiner has not provided a sufficient rationale
because it is circular. App. Br. 11; Reply Br. 3^4. Appellants further argue
“[n]o discussion or explanation is given as to why Sighart would want such a
feature or how it would be incorporated into Sighart.” App. Br. 11.
According to Appellants, the references each provide different functions—
Sighart, a recommendation list, and Pash, a purchasing option. Id.
Appellants further argue the combination appears to rely on hindsight, using
the “claims and specification as a cookbook.” Reply Br. 5.
We are not persuaded by Appellants’ arguments. Contrary to
Appellants’ assertion, the Examiner provides a detailed explanation for why
an ordinarily skilled artisan would have combined the references. As
explained by the Examiner, Sighart differs from the invention recited in the
independent claims in that the user feedback prompts discovery of new
recommended items. Ans. 9. We agree with this finding. The Examiner
further explains that a person of ordinary skill in the art having knowledge of
Sighart and Pash would have sought to improve Sighart to allow the user
feedback to induce the transfer of other already identified recommended
items, because Pash teaches the benefit of sampling a predetermination
portion of a larger set of items. Id.
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Although Appellants assert this combination relies on hindsight, they
offer no specific explanation for how this is so. In sum, we find the
Examiner’s rationale for combining Sighart and Pash to be reasonable on its
face, consistent with controlling law, and has rational underpinnings drawn
from evidence in the record. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (“[Tjhere must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.”
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).
Summary
Because we are not persuaded the Examiner erred in finding Sighart
and Pash teach or suggest each element recited in claim 13, and because we
discern no error in the Examiner’s reasons for combining the references, we
sustain the rejection of claim 13 under 35 U.S.C. § 103(a). For the same
reason, we also sustain the rejection of independent claim 23, for which
Appellants rely on the same arguments discussed above. App. Br. 6
(“Although independent claim 23 is not identical in scope, the arguments for
claim 13 are equally applicable.”). Appellants do not argue separately for
patentability of any dependent claim. As such, the dependent claims fall
with their respective independent claims.
DECISION
We affirm the Examiner’s rejections of claims 13—32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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