Ex Parte Samadani

Patent Trial and Appeal Board

Feb 5, 2016

12492568 (P.T.A.B. Feb. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/492,568 0612612009
22879 7590 02/09/2016
HP Inc,
3390 E. Harmony Road
Mail Stop 35
FORT COLLINS, CO 80528-9544
FIRST NAMED INVENTOR
Ramin Samadani
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.
82244531 7557
EXAMINER
KIM, PAUL
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
02/09/2016 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):
ipa.mail@hp.com
barbl@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMIN SAMADANI
Appeal2014-002858
Application 12/492,568 1
Technology Center 2100
Before ELENI MANTIS MERCADER, LARRY J. HUME, and
STACY B. MARGOLIES, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
LARRY J. HUME.
Opinion Dissenting-In-Part filed by Administrative Patent Judge STACY B.
MARGOLIES.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is Hewlett-Packard
Development Company, LP. App. Br. 3.
Appeal2014-002858
Application 12/492,568
STATEMENT OF THE CASE2
The Invention
Appellant's claimed invention relates to "[s]ystems and computer
readable medi[a] storing computer executable programs for generating a
media playlist." Abstract.
Exemplary Claims
Claims 1, 2, and 19, reproduced below, are representative of the
subject matter on appeal (emphasis added):
1. A system for generating a media playlist
compnsmg:
a playlist generation module executable by a processing
unit and operable to:
receive a user request to generate a media playlist
associated with a selected period of time,
identify media items that the user accessed for
playback during the selected period of time,
select a first media item for playback from the
identified media items,
make a first determination regarding a number of
times each of a remaining one of the identified media
items was accessed for playback following an access for
playback of the first media item during the selected
period of time,
2 Our Decision relies upon Appellant's Appeal Brief ("App. Br.," filed
May 17, 2013); Examiner's Answer ("Ans.," mailed Oct. 16, 2013); Final
Office Action ("Final Act.," mailed Jan. 17, 2013); and the original
Specification ("Spec.," filed June 26, 2009). We note Appellant did not file
a Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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weight each of the remaznzng identijied media
items such that a probability of stochastically selecting
each of the remaining identified media items as a second
media item for playback following a playback of the first
media item is based on the first determination, and
stochastically select the second media item from
the weighted remaining identified media items for
playback following the first media item.
2. The system of claim 1, wherein the playlist
generation module is operable to:
detect when a media item has been accessed for
playback, and
quantifj; a duration of playback of the detected media
item and generate a play duration parameter for the quantified
duration of playback.
19. A computer readable medium for storing a
computer executable program for relatively ranking popularity
of media items, the computer readable medium comprising:
computer readable code for detecting selection of a
media item for playback;
computer readable code for retrieving a media identifier
associated with the selected media item;
computer readable code for determining a time at which
the selected media item was accessed for playback and
generating an access time parameter representative of the time
at which the selected media item was accessed for playback;
computer readable code for quantifying a duration of
playback of the selected media item and generating a play
duration parameter defining the quantified duration of
playback;
computer readable code for generating an event state
vector associated with the selected media item, the event state
vector including the media identifier, the access time parameter
and the play duration parameter; and
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Application 12/492,568
computer readable code for storing the generated event
state vector in an event database.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Subramanian US 2006/0112143 Al May 25, 2006
Plastina et al. ("Plastina '234") US 7,096,234 B2 Aug. 22, 2006
Plastina et al. ("Plastina '187") US 2006/0218187 Al Sept. 28, 2006
Bret Larget, The Poisson Distribution, 1---6 (Sept. 19, 2003)
(https://www.stat.wisc.edu/courses/st3 7 l-
larget/Fall2003/notes/poisson4up.pdt) (hereinafter "Larget'').
Gordon Reynolds et al., Towards a Personal Automatic Music Playlist
Generation Algorithm: The Need for Contextual Information,
Proceedings of Audio Mostly: Conference on Interaction with Sound,
Fraunhofer Institute, 1---6 (Sept. 2007) (hereinafter "Reynolds").
Rejections on Appeal
RI. Claims 1, 2, 4, 8-11, 13, 17, and 18 stand rejected under 35
U.S.C. § 103(a) as being obvious over the combination of Plastina '187 and
Plastina '234. Ans. 3; Final Act. 2.
R2. Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Plastina '187, Plastina '234, and
Larget. 3 Ans. 3, 6-7; Final Act. 5.
R3. Claims 3 and 12 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Plastina '187, Plastina '234, and
Reynolds. Ans. 3; Final Act. 6.
3 The Examiner acknowledges that claims 19 and 20 were erroneously listed
as part of this rejection. See Ans. 7 and Final Act. 10.
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R4. Claims 6, 7, 15, and 16 stand rejected under 35 U.S.C. § 103(a)
as being obvious over the combination of Plastina 'I 87, Plastina '234, and
Subramanian. Id.
R5. Claims I9 and 20 stand rejected under 35 U.S.C. § I03(a) as
being obvious over the combination of Plastina 'I 87, Plastina '234,
Subramanian, and Larget. Ans. 3; Final Act. 8.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 8-2 I), we decide the
appeal of obviousness Rejection RI of claims I, 4, 8, IO, I3, and I 7 on the
basis of representative claim I; and we decide the appeal of obviousness
Rejection RI of claims 2, 9, I I, and I 8 on the basis of representative
claim 2. We decide the appeal of obviousness Rejection R5 of claims I 9
and 20 on the basis of representative claim I 9.
Remaining claims 3, 5-7, I2, and I4-I6 in rejections R2 through R4,
not argued separately, are addressed, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
which Appellant could have made but chose not to make in the Briefs so that
we deem any such arguments as waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims I-20,
and we incorporate herein and adopt as our own: (I) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
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response to Appellant's arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1, 2,
and 19 for emphases as follows.
1. § 103(a) Rejection RI of Claims 1, 4, 8, 10, 13, and 17
Issue 1
Appellant argues (App. Br. 8-12) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Plastina
'187 and Plastina '234 is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a system comprising "a playlist generation module executable by
a processing unit and operable to," inter alia,
make a first determination regarding a number of times
each of a remaining one of the identified media items was
accessed for playback following an access for playback of the
first media item during the selected period of time,
weight each of the remaining identified media items such
that a probability of stochastically selecting each of the
remaining identified media items as a second media item for
playback following a playback of the first media item is based
on the first determination,
as recited in independent claim 1?
Analysis
Appellant contends Plastina '187 merely "provides for generating an
ordered list of media items from a collection or multiple collections of media
items," and therefore generates ordered lists of media items (i.e., play lists)
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based upon selection and ordering filters associated with the user. App.
Br. 10. Appellant further argues,
Id.
[t]he 'frequency filters' of the Plastina '187 reference (nor the
other filters of the Plastina '187 reference), however, do not
determine a number of times each of a remaining one of
identified media items was accessed for playback following
playback of a first media item during a selected period of time.
From this, Appellant concludes Plastina '187 does not teach or
suggest:
[making] a determination regarding a number of times each of~
remaining one of the identified media items was accessed for
playback following an access for playback of the first media
item during the selected period of time, and submits that the
Plastina '187 reference does not weight each of the remaining
identified media items such that a probability of stochastically
selecting each of the remaining identified media items as a
second media item for playback following a playback of the
first media item is based on the first determination, as recited in
independent claims 1 and 10.
App. Br. 11. Appellant further contends Plastina '234 does not make up for
the purported deficiencies of Plastina '187. Id. Appellant summarizes their
arguments by contending the Examiner has not established a prima facie
case of obviousness of claim 1. App. Br. 12.
With respect to the prima facie case of obviousness, the Federal
Circuit has held, "the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production." Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007). The Federal Circuit stated that this
burden is met by "adequately explain[ing] the shortcomings it perceives so
that the applicant is properly notified and able to respond." Id. at 1370. It is
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only "when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection" that the prima
facie burden has not been met and the rejection violates the minimal
requirements of 35 U.S.C. § 132. Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990). In this Appeal, the Examiner has made findings of fact and
reached conclusions of law sufficient to support the obviousness rejection by
a preponderance of evidence. See Final Act. 2--4. Therefore, on this record,
we find the Examiner has met his burden in a manner sufficient to shift the
burden of production to Appellant. We further find Appellant has not met
their shifted burden in rebuttal.
Because the Examiner rejects claim 1 as obvious over the combined
teachings of Plastina '187 and Plastina '234, the test for obviousness is not
what the references show individually, but what the combined teachings
would have suggested to one of ordinary skill in the art. See In re Merck &
Co.; 800 F.2d 1091; 1097 (Fed. Cir. 1986). Appellant's challenge to the
references individually is not convincing of error in the Examiner's position.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981) ("one cannot show
nonobviousness by attacking references individually where, as here, the
rejections are based on combinations of references" (citations omitted)).
Additionally, "[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Furthermore, the artisan is not compelled to blindly follow the teaching of
one prior art reference over the other without the exercise of independent
judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984).
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In response to Appellant's specific arguments cited above concerning
the purported deficiencies of the combination of Plastina '187 and Plastina
'234, the Examiner finds:
Plastina '187 discloses a set of order filters which are applied to
a subgroup of media items to generate an ordered playlist.
Plastina '234 is directed to the invention of a system for
providing playlist according to a user's metadata. Specifically,
Plastina '234 discloses that smart or intelligent playlists may be
created according to dynamic data such as when a song was last
played. Furthermore, Plastina '234 discloses that a smart
playlist may be created by a playlist engine according to data
found within a LastPlayedTime database. Accordingly, it would
have been obvious to one of ordinary skill in the art to improve
the invention of Plastina '187 with the disclosure of Plastina
'234 for the predictable result of creating an ordered playlist
wherein a period of time (i.e.[,] a LastPlayedTime period) is
used to identify media items previously accessed for playback.
Ans. 4.
We agree with the Examiner that Appellant's invention is simply a
combination of known teachings that realize a predictable result. The
Supreme Court has determined the conclusion of obviousness can be based
on the interrelated teachings of multiple patents, the effects of demands
known to the design community or present in the marketplace, and the
background knowledge possessed by a person having ordinary skill in the
art. KSR, 550 U.S. at 418. The skilled artisan would "be able to fit the
teachings of multiple patents together like pieces of a puzzle" since the
skilled artisan is "a person of ordinary creativity, not an automaton." Id. at
420-21.
Moreover, Appellant has not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
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or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor has Appellant provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Thus, in agreement with the Examiner, we find the combination of
Plastina '187 and Plastina '234 teaches or at least suggests the contested
limitations of claim 1. Further, the Examiner found that the proposed
combination would have resulted in using Plastina '187 in combination with
Plastina '234 "to improve the invention of Plastina '187 with the disclosure
of Plastina '234 for the predictable result of creating an ordered play list
wherein a period of time (i.e.[,] a LastPlayedTime period) is used to identify
media items previously accessed for playback." Ans. 4. We find this
articulated rationale to be sufficient under KSR to justify the combination.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 1, and grouped
claims 4, 8, 10, 13, and 17 which fall therewith. See Claim Grouping, supra.
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2. § 103(a) Rejection RI of Claims 2, 9, 11, and 18
Issue 2
Appellant argues (App. Br. 12-14) the Examiner's rejection of claim 2
under 35 U.S.C. § 103(a) as being obvious over the combination of Plastina
'187 and Plastina '234 is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the system of claim 1, "wherein the playlist generation module is
operable to," inter alia, "quantify a duration of playback of the detected
media item and generate a play duration parameter for the quantified
duration of playback," as recited in claim 2?
Analysis
Appellant contends neither the disclosure in Plastina '187 of a "Not
Recently Played" filter 79 nor the teaching of "frequency filters" act to
"quantify a duration of playback, as recited in each of dependent claims 2
and 11, nor determine a duration of playback for each of the remaining
identified media items accessed for playback following an access for
playback of a first media item, as recited in each of dependent claims 9
and 18." App. Br. 13.
"In the patentability context, claims are to be given their broadest
reasonable interpretations ... limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
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invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998); see also Helmsdeifer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own
lexicographer and assign to a term a unique definition that is different from
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description"). Absent an express intent to
impart a novel meaning to a claim term, the words take on the ordinary and
customary meanings attributed to them by those of ordinary skill in the art.
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (citation omitted).
We note Appellant has not cited to a definition of "a duration of
playback" or "a play duration parameter" in the Specification that would
preclude the Examiner's broader reading. Ans. 6. Nor has Appellant
provided any rebuttal to the Examiner's factual findings and legal
conclusions of obviousness of claims 2; 9; 11; and 18 in the Answer by
filing a Reply Brief. The majority deems arguments not made waived. See
37 C.F.R. § 41.37(c)(l)(iv).
Moreover, as a matter of claim construction, and in further support of
the Examiner's legal conclusion of obviousness, the majority concludes the
features upon which Appellant relies for distinguishing system claims 2
and 9 over the cited prior art combination (App. Br. 12-14), are purely
functional in nature, and thus are not afforded patentable weight in the
context of these system claims. 4
4 Although not before us on Appeal, in the event of further prosecution, we
invite the Examiner's attention to a precedential Board decision to ensure
that "computer readable medium" claims 10-20 are directed to statutory
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"[A] system claim generally covers what the system is, not what the
system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875)
("The inventor of a machine is entitled to the benefit of all the uses to which
it can be put, no matter whether he had conceived the idea of the use or
not."). Thus, it is usually improper to construe non-functional claim terms in
system claims in a way that makes infringement or validity tum on their
function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091
(Fed. Cir. 2009). Further, claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function. In
re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
Claim 1 is directed to a system comprising "a playlist generation
module executable by a processing unit," and claim 2, depending from
claim 1 recites "the playlist generation module is operable to," inter alia,
"quantify a duration of playback of the detected media item and generate a
play duration parameter for the quantified duration of playback." The
majority concludes the contested "quantify a duration of playback"
limitation in claim 2 (and the commensurate limitation argued for claim 9)
subject matter under § 101. Under our jurisprudence, the scope of the
recited "computer readable medium for storing" appears to encompass
transitory media such as signals or carrier waves. See Ex parte Mewherter,
107 USPQ2d 1857 (PTAB 2013) (precedential) (holding recited machine-
readable storage medium ineligible under § 101 since it encompasses
transitory media). Here, the recited "computer readable medium" is not
claimed as non-transitory, and the originally-filed Specification does not
expressly and unambiguously disclaim transitory forms, such as signals, via
a definition. Therefore, the "computer readable medium for storing" of these
claims is not limited to non-transitory forms and appears ineligible under
§ 101.
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does not alter the structure of the claimed system, and thus does not serve to
distinguish over the cited prior art.
Furthermore, we agree with the Examiner's finding that Plastima' 187,
teaches the limitation of "quantify a duration of playback" because
Plastima' 187 teaches scoring the media items "not recently played" more
highly to help avoid their repetition in the playlist via use of a filter (Ans. 6;
i-fi-129, 36). In other words, the duration of playback of not recently played
media items is tantamount to 0% duration quantification allowing the filter
to avoid them. This is consistent with Appellant's example where media
items are quantified as 40% if played 2 out of 5 minutes of duration (see
Spec. 5), and similarly under the broadest reasonable interpretation, one
skilled in the art would readily recognize that the duration of a media item
would be rated 0% and the time would be 0 minutes if the system determines
that the respective media was played 0 out of 5 minutes. An artisan is
presumed to possess both skill and common sense. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a
person of ordinary creativity, not an automaton."). Accordingly, we agree
with the Examiner that Plastima' 187 teaches the disputed limitation of
claim 2.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combined teachings and
suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 2, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 2, and grouped
claims 9, 11, and 18 which fall therewith. See Claim Grouping, supra.
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3. § 103(a) Rejection R5 of Claims 19 and 20
Issue 3
Appellant argues (App. Br. 18-21) the Examiner's rejection of
claim 19 under 35 U.S.C. § 103(a) as being obvious over the combination of
Plastina '187, Plastina '234, Subramanian, and Larget is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a computer readable medium comprising computer readable
code, for, inter alia, "quantifying a duration of playback of the selected
media item and generating a play duration parameter defining the quantified
duration of playback," and "generating an event state vector associated with
the selected media item, the event state vector including the media identifier,
the access time parameter and the play duration parameter," as recited in
independent claim 19?
Analysis
Appellant contends:
The Plastina '234 reference, therefore, does not quantify f!
duration of playback of the selected media item and generate f!
play duration parameter defining the quantified duration of
playback, and does not generate an event state vector associated
with the selected media item, with the event state vector
including the media identifier, the access time parameter and
the play duration parameter, as recited in independent claim 19.
App. Br. 19.
Similar to Rejection RI of claim 2 in Issue 2, supra, we adopt the
Examiner's findings regarding the recitation of "duration of playback" and
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"play duration parameter," and the related teachings and suggestions of
Plastina '187. See Ans. 8.
We note the Examiner relies upon the disclosure of Subramanian, and
not Plastina '234 as argued by Appellant to teach or suggest the recited
"generating an event state vector associated with the selected media item," in
claim 19. We find Appellant has not responded to the Examiner's factual
findings and legal conclusion of obviousness such that we sustain the
rejection of independent claim 19, and grouped claim 20 which falls
therewith. See Claim Grouping, supra.
4. § 103(a) Rejections R2-R4 of Claims 3, 5-7, 12, and 14--16
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R2 through R4 of claims 3, 5-7, 12, and 14--16
under § 103 (see App. Br. 14--18), we sustain the Examiner's rejection of
these claims. Arguments not made are considered waived.
CONCLUSION
The Examiner did not err with respect to obviousness Rejections RI
through R5 of claims 1-20 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2011 ).
AFFIRMED
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17
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMIN SAMADANI
Appeal2014-002858
Application 12/492,568
Technology Center 2100
Before ELENI MANTIS MERCADER, LARRY J. HUME, and
STACY B. MARGOLIES, Administrative Patent Judges.
MARGOLIES, Administrative Patent Judge, dissenting-in-part.
I join the majority in affirming the Examiner's rejections of claims 1,
3-8, 10, and 12-17. Ho\x1ever, I respectfi.1lly dissent from the majority's
opinion affirming the Examiner's rejections of claims 2, 9, 11, and 18-20.
Appellant maintains that Plastina '187 does not disclose quantifying a
duration of playback of the detected media item and generating a play
duration parameter for the quantified duration playback, as recited in
dependent claims 2 and 11, and does not disclose making a second
determination regarding a duration of playback for each of the remaining
identified media items accessed for playback following an access for
playback of the first media item, as recited in dependent claims 9 and 19.
App. Br. 13. Specifically, Appellant argues that neither the Not Recently
Played filter nor the frequency filter of Plastina '187 quantifies 11 a duration of
playback, 11 as recited in claims 2 and 11, or determines 11 a duration of
Appeal2014-002858
Application 12/492,568
playback for each of the remaining identified media items accessed for
playback," as recited in claims 9 and 18. App. Br. 13.
The Examiner maintains in response that the broadest reasonable
interpretation of" a play duration parameter" reads on Plastina '187's
disclosure of generating a Not Recently Played score. Ans. 6. Specifically,
the Examiner finds that the Not Recently Played Filter "determines the
duration of time between the current time and the time the media item was
last played." Ans. 6. The Examiner also finds that "Plastina '187 would
indeed read upon the claimed feature of 'quantify a duration of playback of
the detected media item.'" Ans. 6.
Appellant's contention persuades me of error in the Examiner's
rejections. The Examiner finds that the Not Recently Played filter of
Plastina '187 "determines the duration of time between the current time and
the time the media item was last played." Ans. 6 (emphasis added). The
claims, however, do not use such relative language of the duration of time
between one event and another. Rather, the claims are directed to the
duration of one event: playback. Specifically, claim 2 is directed to a
playlist generation module operable to quantify "a duration of playback of
the detected media item." Claim 11 is similarly directed to computer
readable code for quantifying "a duration of playback of the detected media
item." Claim 9 is likewise directed to a playlist generation module operable
to make a second determination regarding "a duration of playback for each
of the remaining identified media items." And claim 18 is similarly directed
to computer readable code for making a second determination regarding "a
duration of playback for each of the remaining identified media items."
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The Examiner has not shown that Plastina '187 teaches or suggests
determining the duration of time that a particular media item was played
back. See Final Act. 4 and Ans. 6. The passages of Plastina '187 upon
which the Examiner relies-paragraphs 29 and 36---fail to disclose
determining how long a given media file or files were each played. See
Plastina '187 i-f 29 (disclosing "frequency filters" that "determine how often
particular media items should be repeated in the subgroup ... according to
the desired frequency of play"), i-f 36 (disclosing a "Not Recently Played"
filter that "will score those media items not recently played more highly than
those recently played to help avoid undue repetition"). Nor has the
Examiner relied on Plastina '234 for such a disclosure, or on a combination
of Plastina '187 and Plastina '234 for such a teaching. See Final Act. 4 and
Ans. 6.
Accordingly, I respectfully dissent from the majority's decision
affirming the Examiner's obviousness rejections of claims 2, 9, 11, and 18-
20 based on the combination of Plastina '187 and Plastina '234.
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