Ex Parte Swix et al

Patent Trial and Appeal Board

May 1, 2015

11212368 (P.T.A.B. May. 1, 2015)

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.
11/212,368 08/26/2005 Scott R. Swix 01378 CIP 7300
38516 7590 07/24/2015
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
SHELEHEDA, JAMES R
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
07/24/2015 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 SCOTT R. SWIX and ROBERT A. KOCH
____________________

Appeal 2012-010882
Application 11/212,368
Technology Center 2400
____________________

Before ROMULO H. DELMENDO, ALLEN R. MacDONALD, and
ROBERT E. NAPPI, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is a decision on Appellants’ Request for Rehearing.1 Appellants’
Request for Rehearing is filed under 37 C.F.R. § 41.50(a)(1) requesting that
we reconsider our Decision of May 1, 2015, wherein we reversed the
Examiner’s rejections of claims 1–5, 7–12, and 14–20, and we rejected

1 “The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52(a)(1).
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Application 11/212,368

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claims 1–5, 7–12, and 14–20 under 35 U.S.C. § 112, first paragraph. We
have reconsidered our Decision in light of Appellants’ comments in the
request, and have found no errors. We, therefore, decline to change the
Decision.
Appellants’ request is denied.

Appellants’ Contentions
1. Appellants contend that as to claims 1–5, 7–12, and 14–20, the
Board erred in rejecting these claims because:
While the new grounds of rejection is not fully understood, the
PTAB’s statement seems to question written support for the
“event timeline,” as the independent claims recite.
A rehearing is respectfully requested. The claimed
features for the “event timeline” are fully supported by U.S.
Application No. 09/496,825 to Grauch, et al., which is
incorporated by reference in paragraphs [0002] and [0039] of
the specification.
Rehearing Request 3. Further:
The Appellant[s] respectfully asserts that the PTAB has
overlooked written support for the “event timeline,” as recited
or incorporated by all pending claims 1–5, 7–12, and 14–20.
Rehearing Request 4.
2. Also, Appellants contend that as to claims 1–5, 7–12, and 14–
20, the Board erred because:
The PTAB, with the greatest of respect, has
misapprehended the Appellant[s]’ arguments on appeal. The
Appellant[s], on appeal, argued that Strietzel with Grauch ‘114
fails to teach or suggest “tailoring a play list to appeal to the
commands described in the event timeline,” as similarly recited
by the independent claims. The Appellant[s], in particular,
showed that Strietzel creates play lists from “favorite” music
and programs selected from a content server. As Grauch ‘114
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“teaches nothing about play lists,” the proposed combination of
Strietzel with Grauch must “logically rely on Strietzel’s
teachings concerning play lists,” which “teaches nothing about
how play lists are related to, or could be derived from,
‘commands entered by a subscriber while viewing content’ that
are ‘described in the event timeline.’”
The PTAB has thus misapprehended the Appellant[s]’
position. Grauch ‘114 and Grauch ‘825, which share the same
specification, contain express support for the “commands
described in the event timeline,” as the above section shows.
But Grauch ‘114 (and thus Grauch ‘825) teach “nothing about
play lists.” The Examiner's proposed combination of Strietzel
with Grauch ‘114 must, therefore, “logically rely on Strietzel’s
teachings concerning play lists,” which have nothing to do with
the “commands described in the event timeline,” as recited by
the pending claims. All pending 1-5, 7-12, and 14-20 thus
cannot be logically obvious.
Rehearing Request 5 (emphasis and footnotes omitted).
3. Further, Appellants contend that as to claims 1–5, 7–12, and
14–20, the Board erred because:
The PTAB has overlooked an important distinction from
In re Chu. The PTAB contends that the pending claims fail the
written description requirement of 35 U.S.C. § 112, first
paragraph, and the PTAB cites to In re Chu.
The analogy to In re Chu is misplaced. In re Chu
describes a continuation-in-part application that was rejected as
being obvious over a prior art combination involving its parent
filing (the “Doyle” patent). See In re Chu, 36 USPQ2d 1089,
1093 (Fed. Cir. 1995). However, it is important to understand
that Chu tried to “remove the Doyle patent as a reference.” See
id. at 1093. That is, Applicant Chu sought to remove the parent
patent as prior art.
The PTAB has thus misapprehended the Appellant[s]’
position. While the present application does claim priority to
U.S. Application No. 08/779,306, which is the parent of
Grauch ‘114 (as a continuation in part of U.S. Application No.
11/524,248 that is a continuation in part to U.S. Patent No.
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7,587,323, that is a continuation of U.S. Patent No. 6,983,478,
that is a continuation of U.S. Application No. 08/779,306), the
Appellant[s] merely looks to the disclosure of Grauch ‘825 to
show that the present application satisfies the written
description requirement. In particular, the Appellant[s] looks
to Grauch ‘825, as incorporated by reference into the present
application, to counter the assertion of the PTAB that the
present application lacks written support for a single feature,
namely the “event timeline,” in the pending claims -- and not
for other purposes. The PTAB has thus overlooked this
important distinction in the Appellant[s]’ position.
Rehearing Request 6 (emphasis added).
4. Further, Appellants contend that as to claims 1–5, 7–12, and
14–20, the Board erred because:
All pending claims 1-5, 7-12, and 14-20 comply with the
written description requirement. The new grounds of rejection
contends that all pending claims 1-5, 7-12, and 14-20 fail to
satisfy the written description requirement of 35 U.S.C. § 112,
first paragraph (pre-AIA). The PTAB, though, has
misapprehended and overlooked key distinctions in the
Appellant[s]’ position. This request for rehearing thus shows
that “tailoring a play list to appeal to the commands described
in the event timeline,” as similarly recited by the independent
claims, is expressly supported by the specification of U.S.
Application No. 11/212,368 filed August 26, 2005. For
example, paragraph [0085] expressly explains:
[0085] Suppose, for example, a subscriber
purchases or downloads digital music files. Those
downloads may be stored and analyzed, for
example, according to artist, genre, or generation
(e.g., 70’s, 80’s, or 90’s “classic hits”). The
content provider 204 and/or the analyzer 131 may
then select an audio file 206 from the same artist,
genre, or generation and then command that audio
file 206 be delivered to the subscriber. The
content provider 204 and/or the analyzer 131 sends
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a message 207 to an audio server 208. The audio
server 208 stores a database 210 of audio files.
As FIG. 7 illustrates, the audio file 206 is retrieved
from the database 210 of audio files and routed to
the subscriber’s communications address. The
subscriber’s communications address may be
associated with the set top box 124, the computer
server 200, or any other destination associated with
any of the subscriber’s communications devices.
The analyzer 131 may additionally or
alternatively tailor a play list 212 that appeals
to the same subscriber. The play list 212
includes music by the same artist or music in the
same genre. The play list 212 is communicated to
the subscriber and offered for purchase or for
evaluation (a “try before you buy” promotion).
Here, then, the subscriber's audio content
selections (such as when downloaded from a
website) may be analyzed to tailor additional audio
content that appeals to that subscriber. The
subscriber’s historical audio selections or
purchases are stored and analyzed. Tailored audio
content is then developed and delivered. See U.S.
Application No. 11/212,368 at [0085] (emphasis
added). Moreover, paragraph [0090] expressly
explains: [0090] FIG. 11 is a flowchart illustrating
a method for providing tailored content, according
to more exemplary embodiments. A subscriber
attribute is analyzed from a subscriber database
comprises a content-access history of said
subscriber (Block 300). A content offering is
developed that complements said subscriber
attribute (Block 302). A product related to the
content offering may also be selected (Block 304).
The product may be a content file (Block 306)
and/or a play list (Block 308). The content
offering may be communicated to a
communications address associated with the
subscriber (Block 310). The product may be
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bundled with the media-content offering (Block
312) and the bundle is communicated to the
communications address (Block 314). The content
offering and/or the product is uniquely identified
by an identification number (Block 316).
According to an exemplary embodiment, the
identification number is assigned by a governing
body and uniquely identifies the content offering
from all other content.
See id. at [0090] (emphasis added). The specification of U.S.
Application No. 11/212,368 filed August 26, 2005 thus
expressly supports “tailoring a play list to appeal to the
commands described in the event timeline,” as similarly recited
by the independent claims.
Rehearing Request 7–8.

ANALYSIS
As to Appellants’ above contention 1, we disagree that the Board has
erred. This panel stated (Decision 5) that the “‘event timeline’ limitation”
(“the ‘tailoring a play list to appeal to the commands described in the event
timeline’ language of claim 1”) (Decision 4) is not supported by written
description. While Appellants are correct that the generic “event timeline”
is supported, this is not sufficient to support the full specific event timeline
limitation of claim 1.
As to Appellants’ above contention 2, we disagree that the Board has
erred. We reach this result because the original Decision reversed the
obvious rejection based in part on this argument by Appellants. Therefore,
the panel could not have overlooked or misapprehended this argument. To
the extent that Appellants might be arguing Grauch ’114 and Grauch ’825,
contain express support for the “commands described in the event timeline,”
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we agree. Again however, this is not sufficient to support the full specific
event timeline limitation of claim 1.
As to Appellants’ above contention 3, first we disagree with
Appellants’ argument that In re Chu is not on point. Appellants are simply
mistaken in their statement that “Appellant[s] [look] to Grauch ‘825, as
incorporated by reference into the present application, to counter the
assertion of the PTAB that the present application lacks written support for a
single feature, namely the “event timeline,” in the pending claims -- and not
for other purposes.” (Emphasis added). Although Appellants incorporate
by reference the Grauch ’825 application (Spec. ¶ 2), Appellants also
explicitly stated that the present application is a continuation-in-part of
11/154,248, which is a continuation of Grauch 09/496,825 (Spec. ¶ 2). In
light of this Appellants clearly relied on Grauch ’825 for other purposes.
Second, the panel did not assert, as argued by Appellants, that the present
application lacks support for the generic “event timeline.” Rather, as we
have already noted above, the more specific full “‘event timeline’ limitation”
(“the ‘tailoring a play list to appeal to the commands described in the event
timeline’ language of claim 1”) (Decision 4) is not supported by written
description.
As to Appellants’ above contention 4, we disagree that the Board has
erred. This panel stated (Decision 5) that the “‘event timeline’ limitation”
(“the ‘tailoring a play list to appeal to the commands described in the event
timeline’ language of claim 1”) (Decision 4) is not supported by written
description. Appellants point to on paragraphs 0085 and 0090, to show
written description of “tailor a play list.” While Appellants are correct that
the generic “tailor a play list” is supported, this is not sufficient to support
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the full specific “tailoring a play list to appeal to the commands described in
the event timeline” limitation of claim 1. Paragraph 0085 expressly states
that “the subscriber’s audio content selections (such as when downloaded
from a website) may be analyzed to tailor additional audio content that
appeals to that subscriber.” (Emphasis added). Paragraph 0085 does not
state that the subscriber’s commands are analyzed (or used in any way) to
tailor additional audio content. Nor do we find any other written description
that supports “tailoring a play list to appeal to the commands described in
the event timeline” as claimed. (Emphasis added)

DECISION
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing to the extent of reconsidering our decision, but we otherwise deny
Appellants’ request.

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)(v).

REQUEST FOR REHEARING DENIED

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