12580630 (P.T.A.B. Aug. 31, 2018)

Ex Parte Ramsay

Patent Trial and Appeal BoardAug 31, 2018

12580630 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/580,630 10/16/2009 34300 7590 09/05/2018 Kilpatrick Townsend and Stockton/Immersion Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 FIRST NAMED INVENTOR Erin Ramsay 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. IMM349 (51851-374311) 1781 EXAMINER FLANDERS, ANDREW C ART UNIT PAPER NUMBER 2656 NOTIFICATION DATE DELIVERY MODE 09/05/2018 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): eofficeaction@appcoll.com kts _imm_ docketing@kilpatricktownsend.com ipefiling@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIN RAMSA Y 1 Appeal2018-000468 Application 12/580,630 Technology Center 2600 Before JOSEPH L. DIXON, JAMES R. HUGHES, and JOHNNY A. KUMAR, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Rejection of claims 1, 2, 7, 8, 10-14, 16, and 21. Claims 3-6, 9, 15, 17-20, and 22-25 have been canceled. Final Act. l; Appeal Br. 2. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellant identifies Immersion Corporation, as the real party in interest. Appeal Br. 1. 2 We refer to Appellant's Specification ("Spec.") filed Oct. 16, 2009; Appeal Brief ("Appeal Br.") filed May 3, 2017; and Reply Brief ("Reply Br.") filed Oct. 17, 2017. We also refer to the Examiner's Final Office Action ("Final Act.") mailed Oct. 27, 2016; and Answer ("Ans.") mailed Aug. 17, 2017. Appeal2018-000468 Application 12/580,630 Appellant's Invention The invention at issue on appeal concerns computer readable media, systems, and methods for selecting content to be output from an audio player based on sensing an environmental factor. The selection process senses a force applied to a sensor in an audio playback system, determines a motion of the sensor from the force as well as a frequency of repetition for the motion, and determines a motion of the audio playback system based on the motion of the sensor and the frequency of repetition for the motion. The process then selects a genre of audio items based on the motion of the audio playback system and selects a subset of audio items available to the audio playback device based on the genre. Spec. ,r,r 3-5; Abstract. Illustrative Claim Independent claim 1, reproduced below with key disputed limitations emphasized, further illustrates the invention: 1. A method, comprising: sensing a force applied to a sensor of an audio playback system, the audio playback system comprising a housing and disposed within the housing, a processor; a memory in communication with the processor; and the sensor, the sensor in communication with the processor, and the force comprising an amplitude; determining a motion of the sensor from the force and determining a frequency of repetition for the motion; determining a motion of the audio playback system based on the motion of the sensor and the frequency of repetition for the motion; selecting a genre of audio items based on the motion of the audio playback system; selecting a subset of audio items available to the audio playback device based on the genre; 2 Appeal2018-000468 Application 12/580,630 selecting by the audio playback system an audio content item from the subset; and playing the selected audio content item. Appeal Br. 10 (Claims Appendix). Rejections on Appeal 1. The Examiner rejects claims 1, 2, 10-14, 16, and 21 under pre- AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Sakai et al. (US 2008/0051919 Al, published Feb. 28, 2008) ("Sakai") and Vergo (US 2007 /0074618 Al, published Apr. 5, 2007). 2. The Examiner rejects claims 7 and 8 under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Sakai, Vergo, and Jochelson et al. (US 2008/0097633 Al, published Apr. 24, 2008) ("Jochelson"). ISSUE Based upon our review of the record, Appellant's contentions, and the Examiner's findings and conclusions, the issue before us follows: Did the Examiner err in finding the combination of Sakai and Vergo would have taught or suggested "selecting a genre of audio items based on the motion of the audio playback system," within the meaning of Appellant's claim 1 and the commensurate limitations of claims 10 and 14? ANALYSIS The Examiner rejects independent claim 1 ( and independent claims 10 and 14) as being obvious in view of Sakai and Vergo. See Final Act. 4--8; Ans. 16-27. Appellant contends that Sakai and Vergo do not teach the disputed limitations of claim 1. See Appeal Br. 5-8; Reply Br. 1--4. Specifically, Appellant contends, inter alia, that neither Sakai nor Vergo describes selecting genre based on motion, but instead the references 3 Appeal2018-000468 Application 12/580,630 describe selecting songs based on tempo or beats per minute and matching songs to criteria such as genre----e.g., "Sakai teaches 'the ability to match songs to user exercise tempo, genre, and playlist compiling/music selection,' .... [b Jut matching songs to genre is not related to how a genre itself is selected" (Appeal Br. 5 (quoting Final Act. 5 (citing Sakai ,r 123)), and "Vergo states that a song may have an associated genre, (Vergo, ,r 48), [but] Vergo does not have any disclosure related to selecting a genre" (Appeal Br. 6). See Appeal Br. 5-8; Reply Br. 1--4. We agree with Appellant that the Examiner-cited portions of Sakai and Vergo (see Sakai ,r 123; Vergo ,r 48) do not clearly describe the disputed limitations of "selecting a genre of audio items based on the motion of the audio playback system" ( claim 1 ), and that the Examiner does not sufficiently explain how the cited portions of Sakai and Vergo teach or suggest this feature. See Reply Br. 1--4. At best Sakai describes matching songs to a genre-a playlist of music of a similar genre (see Sakai ,r 123), and Vergo describes utilizing genre as a filter for selecting songs- categorizing songs for selection based on metadata such as a genre (see Vergo ,r 48). Consequently, we are constrained by the record before us to find that the Examiner erred in finding that the combination of Sakai and Vergo renders obvious Appellant's claim 1. Independent claims 10 and 14 include limitations of commensurate scope. Dependent claims 2, 11-13, 16, and 21 depend on and stand with claims 1, 10, and 14, respectively. The Examiner rejects dependent claims 7 and 8 as being obvious in view of Sakai, Vergo, and Jochelson. See Final Act. 13-16. The Examiner relies on the same reasoning as claim 1 (supra) for rejecting claims 7 and 8. 4 Appeal2018-000468 Application 12/580,630 See id. The Examiner does not suggest, and has not established on this record, that the additionally cited Jochelson reference overcomes the aforementioned deficiencies of Sakai and Vergo. Accordingly, we do not sustain the Examiner's obviousness rejection of claims 7 and 8. CONCLUSION Appellant has persuasively shown the Examiner erred in rejecting claims 1, 2, 7, 8, 10-14, 16, and 21 under 35 U.S.C. Â§ 103(a). DECISION We reverse the Examiner's rejection of claims 1, 2, 7, 8, 10-14, 16, and 21. REVERSED 5