Ex Parte Svendsen

Patent Trial and Appeal Board

Sep 27, 2013

11609945 (P.T.A.B. Sep. 27, 2013)

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.
11/609,945 12/13/2006 Hugh Svendsen CT-REC-003CIP/US
(P025)
1951
71739 7590 09/27/2013
Concert Technology Corporation
5400 Trinity Road, Suite 303
Raleigh, NC 27607
EXAMINER
BENGZON, GREG C
ART UNIT PAPER NUMBER
2444
MAIL DATE DELIVERY MODE
09/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte HUGH SVENDSEN
____________________

Appeal 2011-005365
Application 11/609,945
Technology Center 2400
____________________

Before TREVOR M. JEFFERSON, JEREMY J. CURCURI, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
20.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Introduction
The claims are directed to maintaining a minimum level of real time
media recommendations in the absence of online friends. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A central server comprising:
a) a communication interface communicatively coupling
the central server to a plurality of peer devices via a network;
and
b) a control system associated with the communication
interface and comprising:
i) a proxy function adapted to:
• receive media recommendations from ones of a
group of peer devices that are active and online as media
presentations identified by the media recommendations
are played by the ones of the group of peer devices, the
group of peer devices comprising at least one of the
plurality of peer devices associated with a first one of the
plurality of peer devices; and
• provide the media recommendations to the first
one of the plurality of peer devices; and
ii) an augmentation function adapted to:
• monitor a media recommendation level for the
first one of the plurality of peer devices;
• determine whether the media recommendation
level for the first one of the plurality of peer devices is
less than a minimum recommendation level; and

1 Throughout the decision, we refer to the Appellant’s Appeal Brief (“App.
Br.,” filed Aug. 18, 2010), and Reply Brief (“Reply Br.,” filed Jan. 5, 2011),
and the Examiner’s Answer (“Ans.,” mailed Nov. 10, 2010).
2 The Real Party in Interest is Napo Enterprises, LLC. App. Br. 1.
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• augment the media recommendations provided to
the first one of the plurality of peer devices if the media
recommendation level is less than the minimum
recommendation level.

References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kreitzer
Martin
Rosenberg
U.S. 2007/0118657 A1
U.S. 2007/0244880 A1
U.S. 2008/0032723 A1
May 24, 2007
Oct. 18, 2007
Feb. 7, 2008

Rejection
The Examiner made the following rejection:
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenberg, Kreitzer, and Martin. Ans. 4-10.

ANALYSIS
Claim 1
Issue: Does the combination of Rosenberg and Kreitzer render the
references unsatisfactory their intended purpose such that their combination
is improper?
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)) (internal quotation
marks omitted). If a proposed modification would render the prior art
invention being modified unsatisfactory for its intended purpose, then there
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is no suggestion or motivation to make the proposed modification. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). An argument that a reference
is rendered “inoperable for its intended purpose” is a “teach away”
argument. Id. The Federal Circuit has held “[a] reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kahn, 441 F.3d at 990 (quoting In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994)) (internal quotation marks omitted).
In the present case, Appellant contends that “the invention of Kreitzer
relies on the ability of the user of a phone to target a recipient, known to the
user, to recommend a media presentation, such as a podcast” (App. Br. 11),
which runs contrary to the purpose of Rosenberg which allows a user to
view feedback for media items played on portable media players in the form
of ratings from unknown patrons (App. Br. 7). Thus, Appellant argues
“Rosenberg discloses sending communications to unknown recipients and
Kreitzer discloses sending communications to previously known recipients”
and the applied references are directed to different forms of communication
that render their combination unsatisfactory for their intended purposes.
App. Br. 13 (emphasis omitted). Such a combination, Appellant avers,
creates “the untenable and wholly improper occurrence of a user of a phone
specifically targeting an individual who is both a recipient known to the user
via a contact list and, conversely, a first patron unknown to the user and
related to the user solely by physical proximity.” App. Br. 9.
We do not agree with Appellant that the proposed modification would
render either Kreitzer or Rosenberg unsatisfactory for its intended purpose.
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First, we find that the Examiner has provided articulated reasoning with
some rational underpinning in finding that
a person of ordinary skill in the networking art would desire to
include both unknown and known recipients when sending
recommendations. The intent of a recommendation is to widen
public awareness of the subject of the recommendation,
regardless of whether the recipients of said recommendation are
known or unknown.
Ans. 12. The test for obviousness is not whether the features of one
reference may be bodily incorporated into a second reference, but rather, “is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted). On the record before us, we agree with the
Examiner that Kreitzer, Rosenberg, and Martin are complimentary
references directed towards sending media recommendations to peer
devices, whether those peers are known or unknown to a particular user. See
Ans. 11-12; see also Rosenberg, Abstract; Kreitzer, ¶¶ [0005], [0023],
[0025]; Martin, ¶¶ [0067], [0138], [0147]. Appellant has not provided
sufficient or persuasive evidence that Rosenberg and Kreitzer teach that their
approaches to media recommendations are exclusive or contrary to other
methods. See Ans. 12.
Appellant has also not presented convincing evidence that the
combination of Kreitzer with Rosenberg is “uniquely challenging or difficult
for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Appellant’s arguments do not provide details about how the combination of
Kreitzer and Rosenberg would destroy the intended purpose of either
reference. App. Br. 7-14. Appellant also does not challenge the Examiner’s
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findings that Kreitzer and Rosenberg in combination teach the limitations of
claim 1. See id. We are not persuaded that the combination of familiar
elements in Rosenberg and Kreitzer according to known methods is not
likely to do more than yield predictable results. See KSR, 550 U.S. at 416.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
claims 2-4 and 10-20 not argued separately (see App. Br. 12 and 15), under
35 U.S.C. § 103(a).

Dependent Claims 5 and 6
Issue: Did the Examiner err in finding that Rosenberg, Kreitzer, and
Martin teach or suggest an augmentation function of a central server that
monitors a media recommendation level of a first peer device by monitoring
a number of media recommendations provided to the first peer device over a
defined period of time, as recited in dependent claim 5?
With respect to claim 5, Appellant contends that Martin, relied upon
by the Examiner, fails to teach monitoring a number of media
recommendations provided to a media player over a defined time period.
Reply Br. 4. Appellant argues that the “‘liveliness’ of a media player [taught
in Martin] is not identical to a number of media recommendations” as
recited in dependent claim 5. Id.
The Examiner answers that Martin, ¶ [0089], teaches or suggests that
the liveliness of a media player is an indication of its presence. Ans. 13.
The Examiner finds that the liveliness measure in Martin, combined with
Martin’s teachings that there are conditions where there are no
recommendations for a time period (Martin, ¶ [0147]), would make it
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obvious to a person of ordinary skill in the art to detect when
recommendations are below a threshold for a given period. Ans. 14.
We agree with Appellant that the Examiner has not shown that Martin
teaches or suggests monitoring a number of media recommendations
provided to a peer device. While Martin, ¶ [0147], does teach that it is not
necessary to have any users logged into the system to generate a playlist, we
are not convinced that the “liveliness” in Martin related to presence among
peers indicates that the number of recommendations from a peer is
monitored (Martin, ¶ [0089]). The Examiner has failed to show that
indicating presence of a peer device is commensurate with monitoring the
number of recommendations for a peer device.
Based on the record before us, the Examiner erred in finding that
Rosenberg, Kreitzer, and Martin teach or suggest an augmentation function
of a central server that monitors a media recommendation level of a first
peer device by monitoring a number of media recommendations provided to
the first peer device over a defined period of time. Because claim 6 depends
from claim 5, we need not reach Appellant’s arguments with respect to claim
6. See App. Br. 18. Accordingly, we cannot sustain the Examiner’s
rejection of dependent claim 5 and 6 under 35 U.S.C. § 103(a).

Dependent Claim 7
Issue: Did the Examiner err in finding that Rosenberg, Kreitzer, and
Martin teach or suggest an augmentation function of a central server that
selects at least one additional peer device that is active and online, receives
additional media recommendations from the at least one peer device as
media presentations identified by the additional media recommendations are
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played by the at least one additional peer device, and augments the media
recommendations provided to the first peer device with the additional media
recommendations, as recited in dependent claim 7?
Appellant contends that “Martin teaches that, when there are no or
few users in the group, media items for the group playlist may be selected
based on ‘preconfigured goals.’” App. Br. 19 (quoting Martin, ¶ [0147]).
Thus, Appellant contends, Martin fails to teach using one additional active
and online peer device to augment the media recommendations provided to
the first peer device. App. Br. 19.
We are not persuaded by Appellant’s arguments that the Examiner
erred. While Martin, ¶ [0147], suggests that preconfigured goals are used
when few or no users are available, we also find that Martin suggests that
media recommendations are obtained from users that would include new
joining users (Martin ¶ [0090]). With respect to the preconfigured goals, we
agree with the Examiner that Martin, ¶ [0133], teaches obtaining pre-
existing media items from a central database that are provided by other
users. See Ans. 16. In addition, Martin teaches monitoring new users as
they join the group. See Ans. 16 (citing Martin ¶ [0090]).
Based on the foregoing, the Examiner did not err in finding that
Rosenberg, Kreitzer, and Martin teach or suggest the “augmentation
function” that “selects at least one additional peer device that is active and
online” limitation of dependent claim 7. Thus, we sustain the Examiner’s
rejection of claim 7 under 35 U.S.C. § 103(a).

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Dependent Claims 8 and 9
Issue: Did the Examiner err in finding that Rosenberg, Kreitzer, and
Martin teach or suggest “at least one of the group of peer devices that is at
least one of a group consisting of: inactive and offline” peer devices as
recited in dependent claims 8 and 9?
With respect to claims 8 and 9, Appellant contends that Martin only
“teaches either replacing or adding additional media items to a group playlist
for a group of users when there are no or few users based on ‘diversifying
criteria’ or ‘reconfigured goals.’” App. Br. 20, 21. Appellant argues the
Martin teaches away from using inactive user content because offline user
recommendations are not used. App. Br. 21 (citing Martin, ¶¶ [0130],
[0131]).
We disagree with Appellant’s arguments. Martin teaches that user
data is not limited to the embodiment the Appellant cites. See App. Br. 21
(citing Martin, ¶¶ [0130], [0131]). As discussed above, Martin teaches
additional embodiments including a database for storing user
recommendation data that includes data from offline and online peer
devices. Martin, ¶ [0133]. Martin teaches that a user’s data may be deleted,
but also suggests maintaining that data for use in recommendations. See
Martin, ¶¶ [0133], [0135]. In addition, Martin teaches that a database may
be maintained for storing user taste data. Martin, ¶ [0135]. Thus, we agree
with the Examiner (Ans. 17-18) that Martin teaches or suggest the use of
inactive or offline peer device data as recited in claims 8 and 9.
Appellant’s arguments for claim 9 rely on the same arguments
presented for claim 8. App. Br. 20-21. Based on the foregoing, we sustain
the Examiner’s rejection of claims 8 and 9 under 35 U.S.C. § 103(a).
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DECISION
For the above reasons, the Examiner’s rejection of:
claims 1-4 and 7-20 is AFFIRMED; and
claims 5 and 6 is REVERSED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED-IN-PART

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