Ex Parte Svendsen et al

Patent Trial and Appeal Board

Jun 17, 2013

11837876 (P.T.A.B. Jun. 17, 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.
11/837,876 08/13/2007 Hugh Svendsen CT-REC-021/US (P071B) 5787
71739 7590 06/18/2013
Concert Technology Corporation
5400 Trinity Road, Suite 303
Raleigh, NC 27607
EXAMINER
CHBOUKI, TAREK
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
06/18/2013 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 and WAYMEN J. ASKEY
____________

Appeal 2011-001873
Application 11/837,876
Technology Center 2100
____________

Before CAROLYN D. THOMAS, DENISE M. POTHIER, and
MIRIAM L. QUINN, Administrative Patent Judges.

QUINN, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134(a) (2002) from a rejection of
claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The invention relates to a system and method for reducing and/or
preventing the multiple listing of a media item in a playlist. Spec. ¶ [0002].1
Details of the appealed subject matter, with disputed claim language
emphasized, are recited in illustrative independent claims 1 and 24,
reproduced below from the Claims Appendix of the Appeal Brief:
1. A method for reducing the multiple listing of a media
item in a playlist, comprising the steps of:
receiving a media item recommendation for a media item from
a recommender;
determining whether there is a current listing of the media item
in a playlist; and
based on the determining, providing a resultant listing for the
media item in the playlist to reduce multiple listings of the media item
in the playlist.
10. A system for reducing the multiple listing of a media
item in a playlist, comprising:
a control system, wherein the control system is adapted to:

1 References to Appellants’ Specification (“Spec.”) are directed to the
Specification filed on August 13, 2007.
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receive a media item recommendation for a media item
from a recommender;
determine whether there is a current listing of the media
item in a playlist; and
based on whether there is the current listing, provide a
resultant listing of the media item in the playlist to reduce multiple
listings of the media item in the playlist.
24. A computer readable medium embodied in an article of
manufacture encoded with instructions for directing a processor to:
generate a user interface comprising:
a score multiple media item recommendations screen,
comprising:
a field, wherein the field identifies an algorithm for
computing a merged score; and
a selector associated with the field, wherein
actuating the selector causes the merged score to be computed by the
algorithm identified by the field.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following references at pages 3 to 17 of the Answer:
Koba US 2005/0158028 A1 Jul. 21, 2005
Kim US 2009/0006374 A1 Jan. 1, 2009
Hu US 2009/0129671 A1 May 21, 2009
Chien US 2008/0301118 A1 Dec. 4, 2008
The Examiner provides the following grounds of rejection, of which
Appellants seek review:
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(1) Claims 10-18 stand rejected under 35 U.S.C. § 101 for being directed
to non-statutory subject matter (Ans. 4);
(2) Claims 1-4, 6-13, and 15-22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Koba and Kim (Ans. 5-12);
(3) Claims 5, 14, and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koba, Kim, and Hu (Ans. 13-15); and
(4) Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable Kim and Chien (Ans. 15-16); and
(5) Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable Koba, Chien, and Hu (Ans. 16-17).
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contention. Further, we have reviewed the Examiner’s response to
Appellants’ arguments. Appellants did not argue separate patentability of
independent claims 10 and 19 and of dependent claims 2-5, 7-9, 11-18, 20-
23, and 25. Therefore, except for our ultimate decision, these claims are not
discussed further herein.
SECTION 101 REJECTION: CLAIMS 10-18
Claim 10 is directed to “[a] system for reducing the multiple listing of
a media item in a playlist.” It recites a “control system” adapted to perform
various functions. The Examiner reasons that the elements recited could be
interpreted as including only software. Ans. 4. Appellants argue the
preamble of the claim gives the claims substance and that the Specification
at paragraph 115 states “the central server 12 may be processor or
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microprocessor-based, and may also include a control system 140 having
associated memory 142.” App. Br. 7. The issue before the Board is whether
the Examiner erred in rejecting claims 10-18 for being directed to
non-statutory subject matter.
When interpreting claims we give them the broadest reasonable
interpretation in light of the Specification. Claim 10 recites a single
element: a “control system” that is adapted to perform various functions.
Despite the claim reciting a “control system,” the recited functions are
capable of being performed by any device or component of the
recommendation system 10. Spec. ¶ [0098]. The recited functions are, thus,
implemented using a module or computer program. As broadly as recited,
none of those functions is explicitly performed by a tangible component of
the so called “control system,” and, thus, the system of claim 10
encompasses a software embodiment. As such, we are not persuaded by
Appellants’ argument that the mere recitation of a “control system” (even if
the Specification describes it as being associated with a memory) is
sufficient to make the claims patent-eligible under 35 U.S.C. § 101.
“Regardless of what statutory category . . . a claim’s language is crafted to
literally invoke, we look to the underlying invention for patent-eligibility
purposes.” Cybersource Corp. v. Retail Decision, Inc., 654 F.3d 1366, 1374
(Fed. Cir. 2011). Here, the use of a “control system” does not impart patent-
eligibility as it does not play a significant part in the performance of the
claimed steps. See id. at 1375 (rejecting the argument that a claim drawn to
software instructions is patent-eligible per se). In short, the broadest
reasonable interpretation of the claim language leads us to construe the
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“control system” as being directed to a computer program per se, which, as
drafted, renders the claimed subject matter not patentable under 35 U.S.C.
§ 101. See Gottschalk v. Benson, 409 U.S. 63, 72 (1972).
Accordingly, we do not find error in the Examiner’s determination
that claims 10-18 are directed to non-statutory subject matter.
SECTION 103 REJECTION OVER KIM AND KOBA
First Issue: Determining Limitation
Concerning independent claim 1, Appellants contend that the
combination of Koba and Kim does not teach “determining whether there is
a current listing of the media item in a playlist” [hereinafter the
“determining” limitation]. App. Br. 8-9. Appellants argue that Koba does
not determine the occurrence of anything in a playlist, particularly
something received in a recommendation. App. Br. 8. In light of these
contentions, the issue before us is whether the Examiner erred in finding that
the combination of Koba and Kim teaches the “determining” limitation.
We are not persuaded that the Examiner so erred. First, the Examiner
finds that Koba determines that the current listing of a media item is in a
playlist by checking if there is a duplicate item in the playlist. Ans. 5 and
18. The broadest reasonable interpretation of the claims do not limit that
determination to occur before a media item is added to the playlist or based
on any other criteria. Accordingly, Appellants’ argument – that the
limitation is not met by Koba’s duplication determination because it is not
based on a recommendation received from a recommender – is not
commensurate with the scope of the claim.
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Furthermore, the Examiner’s rejection of independent claim 1 is based
on the combination of Koba’s duplication determination with Kim’s receipt
of the media item recommendation. Ans. 5. Therefore, Appellants’
argument that Koba fails to take into consideration a received
recommendation as claimed does not address the prima facie case of
obviousness established by the Examiner, which relies on Kim, not Koba, to
teach the step of “receiving a media item recommendation from a
recommender.” Accordingly, Appellants have failed to show sufficient
evidence to persuade us that the Examiner erred in finding that Koba teaches
the “determining” limitation.
In reply, Appellants raise a new argument that the combination of
Koba and Kim would not result in the “determining” limitation because
Koba would ignore the recommended media item (taught by Kim) and
remove the duplicate items from the target playlist. Reply 4. This argument
should have been raised in the Appeal Brief and Appellants do not show, nor
do we find, good reason for raising it anew in the Reply. Appellants may
not present arguments in a piecemeal fashion, holding back arguments until
an examiner answers the original brief. This basis for asserting error is
waived. See 37 C.F.R. § 41.37(c)(1)(vii). “Any bases for asserting error,
whether factual or legal, that are not raised in the principal brief are waived.”
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). See
also Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed.
Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief . . . is
waived.”) (citations and quotation marks omitted).

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Second Issue: Receiving Limitation
Next, Appellants contend that the limitation of “receiving a media
item recommendation for a media item from a recommender” (recited in
independent claim 1) is not disclosed in Koba (App. Br. 9). Appellants
argue that “the Patent Office does not even assert, nor does Koba teach, that
the media item received in the playlist is either a media item
recommendation or that the media item is received from a recommender.”
App. Br. 9. The issue is, therefore, whether the Examiner erred in finding
that the combination of Koba and Kim teaches the limitation of “receiving a
media item recommendation for a media item from a recommender”
[hereinafter the “receiving” limitation].
We are not persuaded that the Examiner so erred. The Examiner finds
that Kim teaches the “receiving” limitation. Ans. 5 and 18. Appellants’
argument that Koba does not teach the limitation is therefore unpersuasive as
it does not address the prima facie case of obviousness established by the
Examiner in the rejection of the claim.
Third Issue: Claim 6
Appellants contend that the passages of Kim the Examiner cites in
support of rejecting dependent claim 6 do not teach the limitations of that
claim. App. Br. 9-10. In particular, Appellants argue that paragraph 15 of
Kim states “absolutely nothing . . . [that] teaches or suggests in any manner
selection of an algorithm by anyone, let alone by a recipient of the media
item recommendation.” App. Br. 9. The issue for the Board to decide is
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whether the Examiner’s determination that Kim teaches the limitations of
dependent claim 6 is in error.
We are not persuaded that the Examiner’s conclusions are in error.
The Examiner finds that paragraph 15 of Kim teaches an algorithm selected
by users. Ans. 7. That paragraph states that the users provide
recommendations, not algorithms. However, the Examiner also relies on
Figure 2 as teaching scoring recommendations and selecting candidates
based on a normalized score. Ans. 18-19. The normalization engine of Kim
receives the recommendations and normalizes the scores. Kim, Abstract.
And that normalization involves, among others, an algorithm for combining
scores. Kim, ¶ [0082]. As such, although paragraph 15 of Kim does not
explain what receives the recommendations and selects the algorithm, Figure
2 of Kim, cited by the Examiner, and the Abstract provide additional support
for the Examiner’s determination that Kim teaches the limitation “wherein
the algorithm is selected by a recipient of the media item recommendation,”
as recited in dependent claim 6.
SECTION 103 REJECTION OVER KIM AND CHIEN: CLAIM 24
Appellants contend that the Examiner erred in rejecting independent
claim 24 as being obvious over Kim and Chien because the combination
fails to teach “a score multiple media item recommendations screen,
comprising: a field, wherein the file identifies an algorithm for computing a
merged score.” App. Br. 10-12. Appellants argue that the passages of Kim
the Examiner relies on do not disclose “a field” in the interface illustrated in
Figure 8 of Kim, wherein “the field identifies an algorithm.” App. Br. 11.
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There is no suggestion in Kim, according to Appellants, “that any such
algorithms are identified by a field on a screen as claimed.” Id. The issue
before the Board is whether the Examiner erred in finding that Kim teaches
that “the field identifies an algorithm for computing a merged score.”
We are not persuaded that the Examiner erred. First, the Examiner
finds that Kim discloses a recommendation interface, which is illustrated in
Figure 8 of Kim, and which teaches fields in a user interface. Ans. 15-16
(citing paragraphs 13, 15 and 82 of Kim). The Examiner also finds that Kim
teaches algorithms for computing a merged score. Ans. 16 and 19 (citing
paragraph 92 of Kim). Finally, the Examiner finds that Kim discloses that
the check boxes are used to improve the recommendation process. Ans. 19.
We agree with the Examiner that Kim teaches “a field,” as that term is
understood by a person of ordinary skill in the art. The dispute is thus
centered on whether the disclosed “field” is one that “identifies an algorithm
for computing a merged score.”
We find that Kim teaches or suggests the recited “field.” In the
passages cited by the Examiner we find that Kim teaches providing various
controls and options on the user interface of Figure 8. Kim, ¶ [0092]; Fig.8.
In particular, we note that the refresh option 818, “allows a user to see an
updated list of recommendations, which may be updated when the user
adjusts the controls 812.” Kim, ¶ [0092]. That is, a user may alter the rating
for each recommendation displayed and may activate controls like “not
interested,” both of which would change the resulting recommendations
displayed on the user interface. See Kim, fig.8. We find that the field
displaying the option 818 entitled “Refresh your recommendations” in
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essence identifies that upon its selection, the algorithm disclosed in Kim for
computing normalized scores (i.e. the combined merged score discussed
supra) will be applied. Kim, therefore, suggests that the field displaying the
text “Refresh your recommendations” identifies, to a person of ordinary skill
in the art, an algorithm for computing the recommendation that will be
applied. Claim terms are given their broadest reasonable interpretation as
they would be understood by persons of ordinary skill in the art in the light
of specification. In re Zletz, 893 F.2d 319, 321–22 (Fed.Cir.1989).
Therefore, we are not persuaded that the Examiner erred in finding that the
combination of Kim and Chien teaches or suggests the disputed “field”
limitation.
Furthermore, in giving the claim its broadest reasonable interpretation,
we also conclude that the phrase “identifies an algorithm for computing a
merged score” is non-functional descriptive material. In particular, we note
that the claim is directed to a user interface created by a processor executing
computer program instructions encoded on a medium. Such instructions
provide for “a score multiple media item recommendations screen,” which
comprises the recited “field.” Whether the “field” is labeled “algorithm” or
“refresh recommendation” does not affect the medium itself, the processor,
or the method of generating, by a processor, a screen with a field, but merely
recites what the field represents. And Appellants’ Specification, which
describes the embodiment with the “fields” illustrated in Figure 15, confirms
our interpretation. See Spec. ¶¶ [0113]-[0114].
Therefore, we find that, although Kim fairly teaches or suggests the
“field” limitation, Appellants cannot distinguish claim 24 as drafted from the
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prior art based on the descriptive material. Non-functional descriptive
material refers to the content of data that does not exhibit a functional
interrelationship with a substrate and does not affect the way a computing
process is performed. See MPEP § 2106.01. An expanded panel of the
Board held that descriptive material that does not “functionally affect the
[claimed] process” is non-functional material. Ex parte Nehls, 88 USPQ2d
1883, 1887 (BPAI 2008) (precedential). The Examiner need not give
patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See In re Lowry, 32 F.3d 1579, 1582-1583 (Fed. Cir. 1994); In re Ngai, 367
F.3d 1336, 1338 (Fed. Cir. 2004). See also Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed.Appx. 959 (Fed. Cir. 2006);
Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative), aff’d
No. 06-1003 (Fed. Cir. Jun. 12, 2006) (Rule 36) (“Nonfunctional descriptive
material cannot render nonobvious an invention that would have otherwise
been obvious.” (citing In re Ngai, 367 F.3d at 1339)).

CONCLUSION
We conclude that Appellants have not shown error in the Examiner’s
findings and conclusions that claims 10-18 are directed to non-statutory
subject matter under 35 U.S.C. § 101 and that the subject matter claimed in
claims 1 and 6 is obvious over Koba and Kim. Furthermore, Appellants
have not shown sufficient evidence to persuade us of error in the Examiner’s
findings and conclusions of obviousness of claim 24.
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Therefore, we sustain the rejection of claims 1 and 6 under 35 U.S.C.
§ 103(a), and we group independent claims 10 and 19, and dependent claims
2-5, 7-9, 11-18, and 20-23 with representative claim 1. See 37
C.F.R. § 41.37(c)(1)(vii). Furthermore, we sustain the rejection of
independent claim 24 under 35 U.S.C. § 103(a) over Kim and Chien, and
group therewith dependent claim 25. See 37 C.F.R. § 41.37(c)(1)(vii).
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-25.
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).

AFFIRMED

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