Ex Parte Marmentini et alDownload PDFPatent Trial and Appeal BoardMay 11, 201611983300 (P.T.A.B. May. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111983,300 11108/2007 33356 7590 05/13/2016 SoCAL IP LAW GROUP LLP 310N. WESTLAKE BLVD. STE 120 WESTLAKE VILLAGE, CA 91362 FIRST NAMED INVENTOR Peter A. Marmentini 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. M037-Pl 1287 4424 EXAMINER PARIKH, HARSHAD R ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 05/13/2016 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): USPTO@socalip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER A. MARMENTINI and SCOTT SPECTOR Appeal2014-001921 1 Application 11/983,300 Technology Center 3600 Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON i\.PPEi\L STATEMENT OF CASE This is an appeal from the Examiner's Final rejection of claims 9--12 and 20-24. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. We AFFIRM. 1 The Appellants identify MyHitMaker LLC, as the real party in interest. (App. Br. 1). Appeal2014-001921 Application 11/983,300 The invention relates generally to product development that allows a product creator to interact with members of the public on a website. Spec. 1, 11. 11-14. Claim 9 is illustrative: 9. A method for interactive development of a product via a website, the method comprising: the website receiving a review product from an original product creator; the website receiving a plurality of choices pertaining to the review product from the original product creator; the website providing the general public the ability to view and/or listen to the review product and the plurality of choices via the website; the website receiving creative inputs including a selection of the plurality of choices related to components of the review product from the general public; the original product creator producing a final product, the final product comprising the review product and a compilation of inputs provided by the original product creator via the website and the creative inputs supplied by the general public via the website; the website storing the final product; the website providing the general public the ability to retrieve, view and/ or listen to the final product; delivering and/or selling the final product to a plurality of members of the general public via the website; generating revenue from one or more of the selling the final product to the general public via the website, viewing of the final product by the general public via the website, and/or listening to the final product by the general public via the website. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over PR Newswire-Dec 23, 1999 (hereinafter "Newswire1999") and Kinney (US 2003/0014277 Al, pub. Jan. 16, 2003). 2 Appeal2014-001921 Application 11/983,300 Claims 10-12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Newswire1999, Kinney, and Cliff (US 6,746,246 B2, iss. June 8, 2004). Claims 20-24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Newswire1999, Cliff, Kinney, and Chacker (US 6,578,008 Bl, iss. June 10, 2003). ANALYSIS Claim 9 We are not persuaded by the Appellants' arguments that, according to Appellants, in Newswire1999, Hanania, the author that is the subject of the press release in Newswire1999, receives only comments from the public, but does not disclose receiving creative inputs including a selection of the plurality of choices related to components of the review product from the general public, as claimed. Appeal Br. 6- 8; see also Reply Br. 1-2. As an initial matter, we note neither the term "choices" nor "a selection of the plurality of choices" is defined or limited by Appellants' Specification, so we rely on the ordinary and customary meaning of "choices" as "a number and variety to choose among," with no limitations as to the manner or format that such "choices" are presented or selected. (Merriam-Webster On-line Dictionary, last retrieved May 9, 2016, from http://www.merriam-webster.com/dictionary/choice). Newswire1999 discloses that the author, Hanania, provides two chapters of a book for the public to review, and from the information in those chapters, the public may make selections about who the protagonist and antagonist in the novel will be. Newswire1999 ("How the story ends, who surfaces as the main protagonist and antagonist, and the development of 3 Appeal2014-001921 Application 11/983,300 the overall plot, will be decided by the public.") We infer that the characters are introduced in the first two chapters so that the public may read about each of the characters as presented. The chapters, thus, provide a plurality of choices by introducing characters from which the public may select a character as a protagonist and a character as an antagonist, meeting the relevant claim language because, as set forth above, there are no limitations as to the manner or format that such "choices" are presented or selected. We also are not persuaded by the Appellants arguments that Newswire1999 fails to provide a website at which the public may view a review product. Appeal Br. 7-8. Newswire1999 discloses that the information posted by the author, Hanania, is available online at a website addressed as www.havania.com. Newswire1999. In addition, we are persuaded that an artisan of ordinary skill would have recognized a website as the most common method to present information on-line to the general public for interaction and feedback. Indeed, we are hard-pressed to conceive of a format more practical than a website. The Appellants also argue Newswire 1999 fails to provide enough detail on how the comments are received from the public and how the novel is completed. The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Newswire1999 discloses the development of the plot will be "decided by the public," and does not indicate the public will actually write any portion of the novel. We are persuaded that an artisan of ordinary skill would have recognized from 4 Appeal2014-001921 Application 11/983,300 Newswire1999 that public input will be considered by the author, but the author will write the novel, because Hanania holds himself out as the author, and one who has authored other works. Newswire1999. Lastly, we are not persuaded by the Appellants' argument that the combination, specifically Kinney's "on-line distribution," fails to disclose sufficient information about selling a completed work on a website to meet the claim language, such as what party makes the sales. Appeal Br. 9--10. We are persuaded that Kinney's statement about "on-line distribution and sales" would suggest to the ordinary artisan an approach of "delivering and/ or selling the final product to a plurality of members of the general public via the website" and "generating revenue from one or more of the selling the final product to the general public via the website," as claimed, because selling works via a website was a common practice at the time of the invention. An example is disclosed in Newswire1999, which discloses that the author has experience with selling his works to the public "mainly through his web page and through Internet companies such as Bames&Noble.com and Amazon.Com." Newswire1999. For these reasons, we sustain the rejection of claim 9. Claims 10-12 Appellants do not argue the rejection of claims 10-12 aside from their dependence on claim 9. Appeal Br. 10. We therefore sustain the rejection of these claims for the same reasons as claim 9, above. 5 Appeal2014-001921 Application 11/983,300 Claim 20-24 We are not persuaded by Appellants' argument Cliff fails to disclose "two or more of intros, verses, choruses, bridges, solos, chord progressions, melodies, riffs and sets of lyrics," as claimed. Appeal Br. 11. Cliff, which the Examiner relies on as disclosing the "interactive development of a song via a website" (Final Act. 14), discloses making available for listening various samples, such as a "single drum beat," a "phrase" from a guitar or drum, and singing. Cliff, col. 1, 11. 22-30. We are persuaded that an artisan of ordinary skill would have recognized a single drum beat as a form of solo, a "phrase" as a riff, and singing as a verse, chorus, or set of lyrics, as claimed. We are not persuaded by the Appellants' arguments that Cliff fails to disclose the claimed providing of choices for selection on a website. Appeal Br. 11. As we explain above at claim 9, the claim language at issue is disclosed by Newswire 1999. The Appellants finally argue Cliff allegedly fails to disclose making choices available to the general public, because Cliff provides its samples to a nightclub audience instead of the general public. Appeal Br. 11. We are not persuaded by the Appellants' argument, because Newswire 1999 discloses making creative choices available to the general public through a website, as claimed (Newswire1999), and Cliff is used merely to expand Newswire1999 to include application of the method to songs (Final Act. 14). In addition, because the Appellants have not defined or otherwise limited the meaning of "general public" in the written disclosure, we are persuaded that the term "general public" encompasses the audience at a nightclub, because 6 Appeal2014-001921 Application 11/983,300 a nightclub is generally open to the public at large that wishes to do what is necessary to enter the nightclub, such as paying an admission. For these reasons, we sustain the rejection of claim 20. We also sustain the rejection of dependent claims 21-24, rejected along with claim 20, that are not argued separately. Appeal Br. 12. DECISION We affirm the rejections of claims 9-12 and 20-24. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation