Ex Parte Morgan

Patent Trial and Appeal Board

Dec 3, 2014

10979014 (P.T.A.B. Dec. 3, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JEFFERY A. MORGAN
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Appeal 2012-006212
Application 10/979,0141
Technology Center 3600
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Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 3, 4, 7, 9, 15, 16, 19, 24, and 38. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to sharing a media asset, e.g., an
audio or video file, between devices. (Spec. ¶¶ 3–4.)

1 According to Appellant, the real party in interest is Hewlett-Packard
Development Company, LP, a wholly owned affiliate of Hewlett-Packard
Company. (Appeal Br. 1.)
Appeal 2012-006212
Application 10/979,014

2
Claims 1, 15, 24 and 38 are the only independent claims. Claim 1 is
representative and is reproduced below:
1. A computer system for spontaneous sharing of a media
asset reference for a sharer device comprising:
a processor; and
memory, wherein said memory comprises
executable instructions stored therein that when executed
by said processor cause the processor to:
receive a media asset from a media service at said
sharer device, wherein said sharer device is a handheld
mobile device;
communicatively couple a communication
interface;
transfer a media asset reference for a media asset,
without the media asset, by said sharer device to a
recipient, wherein said sharer device does not transfer
said media asset to said recipient, wherein said recipient
is a handheld mobile device;
and store the media asset reference at said sharer
device, wherein the media asset reference comprises a
network resolvable identifier for the media service from
which a sharer purchased the media asset, an identifier
for the sharer of the reference and an identifier for the
media asset for tracking by the media service, wherein
said media asset reference enables said recipient to
request said media asset in its entirety directly from said
media service.

Appeal 2012-006212
Application 10/979,014

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REJECTIONS
Claims 1, 3, 4, 7, 9, 15, 16, 19, and 24 are rejected under 35 U.S.C.
§ 103(a)2 as being unpatentable over Logan (US 2002/0120925 A1, pub.
Aug. 29, 2002) and Crouse-Kemp (US 2003/0204592 A1, pub. Oct. 30,
2003).
Claim 38 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Logan and Kupka (US 6,434,535 B1, iss. Aug. 13, 2002).

ANALYSIS
Claim 1 recites “wherein said media asset reference enables said
recipient to request said media asset in its entirety directly from said media
service.”
The Examiner argues (Answer 6) that Logan discloses
wherein said media asset reference (metadata from earlier
viewers, see [0127]) enables said recipient (later user, see
[0127]) to request (selection, see [0127]) said media asset
(programming, see [0127]) in its entirety directly from said
media service (during later broadcast in a new geographic area
or repeated broadcast, see [0127]).

Appellant argues (Reply Br. 2–3) that Logan does not disclose
“enabl[ing] the user at the user location to request a particular program
segment from the broadcast source 100.” Instead, Appellant asserts, “the
broadcast source 100 broadcasts programming for general consumption, and
the user uses the program segment identifying metadata and the program
segment ratings information to selectively store, organize, and/or reproduce

2 Now 35 U.S.C. § 103.
Appeal 2012-006212
Application 10/979,014

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desired portions of the broadcast programming that is stored at the user
location . . . .”
Logan states (¶ 127):
In the same way, any viewer using a personal video recorder
(PVR) or other means for accessing program materials on a
delayed basis could be aided in the selection of that program
which they, as individuals, would be most likely to enjoy by the
availability of rating and review metadata from earlier viewers
having similar interests.

In other words, rather than teach requesting a program “directly from
said media source,” Logan (¶ 127) teaches sharing reviews provided by
earlier viewers and recording programs being broadcast, a difference similar
to that as between, e.g., broadcast programming and video-on-demand.
Therefore, we agree with Appellant that Logan does not disclose
“wherein said media asset reference enables said recipient to request said
media asset in its entirety directly from said media service.” Thus, we
reverse the rejection of claim 1. Each of independent claims 15, 24, and 38
contains an identical or similar limitation. Therefore, for the same reason,
we reverse the rejection of independent claims 15, 24, and 38 and dependent
claims 3, 4, 7, 9, 16, and 19.

DECISION
The Examiner’s rejections of claims 1, 3, 4, 7, 9, 15, 16, 19, 24, and
38 under 35 U.S.C. § 103(a) are reversed.

REVERSED

Ssc