Ex Parte Svendsen

Patent Trial and Appeal Board

Jun 19, 2013

11403597 (P.T.A.B. Jun. 19, 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.
11/403,597 04/13/2006 Hugh Svendsen CT-MED-011/US (P003C) 9961
71739 7590 06/20/2013
Concert Technology Corporation
5400 Trinity Road, Suite 303
Raleigh, NC 27607
EXAMINER
UBER, NATHAN C
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
06/20/2013 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 2013-006925
Application 11/403,597
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-6, 8-13, and 221.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally a system for providing previews, such
as song or video previews, to a portable media player (Spec., para. [0001]).
Independent claim 1, reproduced below, is further illustrative of the
claimed subject matter.
1. A method of operating a central system
communicatively coupled to a user system via a network, the
user system associated with a portable media player of a user,
comprising:
communicating with the user system via a
communication interface connecting the central system to the
network to identify media content of a plurality of media files
forming a user media collection for the user stored at the user
system, the communication interface being one of a wired
communication interface and a wireless communication
interface;
storing information identifying the media content of the
plurality of media files in the user media collection;
receiving, via the communication interface, a play history
of the portable media player and a play history of the user
system, the play histories identifying media files played by the
user where the media files have distinct characteristics;
selecting a plurality of previews for the portable media
player based on the distinct characteristics of the media files in
the play history of the portable media player, the play history of
the user system and the information identifying the media
content of the plurality of media files in the user media
collection, wherein the plurality of previews include the distinct

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 11, 2013) and Reply Brief (“Reply Br.,” filed April 29,
2013), and the Examiner’s Answer (“Ans.,” mailed February 28, 2013).
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Application 11/403,597

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characteristics of the media files and the plurality of previews
are selected from the user's media collection; and
providing, via the communication interface, the plurality
of previews to the user system, wherein the user system
provides the plurality of previews to the portable media player.

THE REJECTIONS2
Claims 1-6 and 8-13 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1-6, 8, 12, 13 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Martin (US 2004/0225519 A1, pub. Nov. 11, 2004) and
Official Notice.
Claims 9-11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Martin, Official Notice, and Yen (US 2005/0038753 A1, pub. Feb. 17,
2005).
We AFFIRM.
ISSUES
Did the Examiner err in asserting that the Specification does not
provide proper written description support for “distinct characteristics,” as
recited in independent claim 1?
Did the Examiner err in asserting that a combination of Martin and
Official Notice discloses or suggests
receiving, via the communication interface, a play history
of the portable media player and a play history of the user

2 The rejection of all claims based on inadequate written description support
for the receiving and selecting steps recited in each independent claim is
withdrawn (Ans. 17).
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system, the play histories identifying media files played by the
user where the media files have distinct characteristics;
selecting a plurality of previews for the portable media
player based on the distinct characteristics of the media files in
the play history of the portable media player, the play history of
the user system and the information identifying the media
content of the plurality of media files in the user media
collection, wherein the plurality of previews include the distinct
characteristics of the media files and the plurality of previews
are selected from the user's media collection;
as recited in independent claim 13?
FINDINGS OF FACT
Specification
1. The Specification does not recite the precise terms “distinct
characteristics.”
Martin
2. Martin discloses enabling a user of an electronic device to
control performance of multimedia works by the electronic device based on
preference information generated based on acquired data (para. [0007]).
3. Martin discloses automated downloads to a user’s local device
of preview portions of works that are determined to be of interest to the user
(para. [0084]).
4. Martin discloses that a given user may indicate preferences
through more than one of the local devices, for example, a portable MP3
player, a home audio system, and a rental car, and that these preferences
may be aggregated and analyzed to derive user preference information (para.

3 As Appellants argue claims 1-6, 8, 12, 13, and 22 together, we choose
independent claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
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[0091]).
Definitions
5. “distinct” is defined as “easily sensed or understood; clear;
precise.” COLLINS ENGLISH DICTIONARY (10th ed. 2009), found at:
http://dictionary.reference.com/browse/distinct (last visited: June 12, 2013).
6. “characteristic” is defined as “a distinguishing quality, attribute,
or trait.” COLLINS ENGLISH DICTIONARY (10th ed. 2009)
http://dictionary.reference.com/browse/characteristic (last visited: June 12,
2013).
ANALYSIS
Written Description
We are not persuaded the Examiner erred in asserting that the
Specification does not provide proper written description support for
“distinct characteristics,” as recited in independent claim 1 (App. Br. 13-14;
Reply Br. 4-5). Appellant asserts that the aggregate disclosure of 80’s music
genre, television programs, and Classic Rock music genre at paragraph
[0036] of the Specification are sufficient species to provide written
description support for the genus of “distinct characteristics.” We disagree.
The Specification does not recite the precise terms “distinct characteristics”
(FF1). Using dictionary definitions, we construe “distinct characteristics” as
“clear and precise qualities, attributes, and traits” (FF5-6). The
aforementioned disclosures at paragraph [0036] of the Specification are
insufficient species to provide written description support for a genus that
would encompass every and all “clear and precise qualities, attributes, and
traits.”
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Obviousness Rejections
We are not persuaded the Examiner erred in asserting that a
combination of Martin and Official Notice discloses or suggests
receiving, via the communication interface, a play history
of the portable media player and a play history of the user
system, the play histories identifying media files played by the
user where the media files have distinct characteristics;
selecting a plurality of previews for the portable media
player based on the distinct characteristics of the media files in
the play history of the portable media player, the play history of
the user system and the information identifying the media
content of the plurality of media files in the user media
collection, wherein the plurality of previews include the distinct
characteristics of the media files and the plurality of previews
are selected from the user's media collection;
as recited in independent claim 1 (App. Br. 16-18; Reply Br. 5-6). Appellant
asserts that Martin only discloses accumulating preference data to generate a
playlist, and not a plurality of previews, as recited in independent claim 1.
We disagree. Martin discloses using user preferences to provide preview
portions of works to a user’s local device (FF3).
Appellant further asserts that Martin only discloses acquiring
preference data from a single user play history that is used by the user across
multiple devices, and not multiple user play histories across multiple user
devices, as recited in independent claim 1. We disagree. Martin discloses
aggregating user preferences from multiple devices (FF4).
Appellant additionally asserts that because Martin only discloses
acquiring preference data from a single user play history, it teaches away
from acquiring preference data from multiple user play histories, as recited
in independent claim 1. We disagree. As an initial matter, we note that the
claim language does not preclude a single user play history used by the user
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across multiple devices. Receiving a play history first used in a portable
media player and then used in the user system would meet the recited
receiving step. Moreover, as set forth above, Martin explicitly discloses
aggregating user preferences from multiple devices (FF4). Furthermore, a
teaching away requires discouragement. U.S. v. Adams, 383 U.S. 39, 52, 86
S.Ct. 708, 714, 15 L.Ed.2d 572 (1966) (“known disadvantages in old devices
which would naturally discourage the search for new inventions may be
taken into account in determining obviousness”). Appellant has not shown
how Martin discourages aggregating user preferences from multiple devices.
DECISION
The decision of the Examiner to reject claims 1-6, 8-13, and 22 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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