Ex Parte Verosub

Patent Trial and Appeal Board

Jun 10, 2016

11621541 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111621,541 0110912007
77970 7590
Polsinelli -- Apple Inc.
c/o Polsinelli PC
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
06/14/2016
FIRST NAMED INVENTOR
Ellis M. Verosub
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.
8802.372.NPUSOl_P4595USl 1326
EXAMINER
MACKES, KRISE
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
06/14/2016 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):
Apple@Polsinelli.com
cadocket@Polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELLIS M. VEROSUB 1
Appeal2014-005852
Application 11/621,541
Technology Center 2100
Before ROBERT E. NAPPI, CARLL. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1and3-37. Claim 2 has been canceled. App. Br. 3. We have
jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Apple, Inc. as the real party in interest. App. Br. 3.
Appeal2014-005852
Application 11/621,541
STATEMENT OF THE CASE
Introduction
Appellant's invention is directed to the generation, management, and
delivery of personalized podcasts. Abstract, Spec. i-f 8. In a disclosed
embodiment, a user is presented with a graphical user interface to allow the
selection of individual content categories for a plurality of podcast segments.
Spec. i-fi-1 46-4 7, Figs. 4 B, 4C.
Claims 1 and 7 are representative of the subject matter on appeal and
are reproduced below with the disputed limitations emphasized in italics:
1. A computer-implemented method for forming a podcast having
plurality of segments, said method comprising:
presenting a graphical user interface configured to facilitate
entry or selection of a least one content category independently for
each of the plurality of segments of a custom podcast to be formed, the
graphical user interface being presented allows a requestor t[o]
individually select at least one content category for each of the
plurality of segments;
storing podcast characteristics associated with selections
received via the graphical user interface;
subsequently determining whether the custom podcast is to be
formed, the custom podcast to be formed having the plurality of
segments;
retrieving the stored podcast characteristics associated with the
custom podcast to be formed;
retrieving at least a first media content and second media
content from at least one content server, each of the at least first and
second media content having a plurality of distinct portions; and
forming the custom podcast based on at least one of the
plurality of distinct portions of the first media content and at least one
of the distinct portions of the second media content and also based on
the podcast characteristics, the podcast characteristics including at
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least the at least one content category to be included in each of the
segments of the custom podcast,
wherein the segments of the custom podcast are arranged in a
sequence, and through the podcast characteristics including at least the
at least one content category to be included in each of the segments of
the custom podcast, the order of presentation of media content is in
accordance with the sequence of the segments, and
wherein at least one segment of the custom podcast includes
only a portion of media content from one or both of the first media
content and the second media content.
7. A computer-implemented method for forming a podcast, said
method comprising:
acquiring settings for formation of a custom podcast, the
settings being acquired via a graphical user interface configured to
facilitate entry or selection of a frequency indication or a duration
indication, the frequency indication indicating how frequently a
requestor desires to have a custom podcast formed, and the duration
indication indicating over how long such custom podcasts are to be
formed; and
determining whether a custom podcast is to be formed;
retrieving stored podcast characteristics associated with the
custom podcast to be formed;
forming the custom podcast based on the podcast
characteristics,
wherein the custom podcast to be formed has a plurality of
segments,
wherein the podcast characteristics include at least the at least
one content category to be included in each of the segments of the
custom podcast, and
wherein the segments of the custom podcast are arranged in a
sequence, and through the podcast characteristics including at least the
at least one content category to be included in each of the segments of
the custom podcast, the order of presentation of media content is
configured.
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Application 11/621,541
The Examiner's Rejections
1. Claims 1, 3---6, and 9-21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bodin et al. (US 2007/0214485 Al;
Sept. 13, 2007 (filed Mar. 9, 2006)) ("Bodin"), Behringer et al. (US
2007 /0198353 Al; Aug. 23, 2007 (filed Feb. 22, 2007, claiming priority to
Provisional application no. 60/775,914, filed Feb. 22, 2006)) ("Behringer"),
and Khoo et al. (US 2007 /0079327 Al; Apr. 5, 2007 (filed Aug. 2, 2006))
("Khoo"). Final Act. 2-11.
2. Claims 7, 8, and 22-37 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bodin, Bloebaum et al. (US 2007/0150502 Al;
June 28, 2007 (filed Dec. 22, 2005)) ("Bloebaum"), and Hidary et al. (US
2007/0130594 Al; June 7, 2007 (filed Dec. 1, 2005)) ("Hidary"). Final
Act. 11-16.
Issues on Appeal
1. Did the Examiner err in finding Behringer teaches or suggests:
presenting a graphical user interface configured to
facilitate entry or selection of a least one content category
independently for each of the plurality of segments of a
custom podcast to be formed, the graphical user interface
being presented allows a requestor t[ o] individually select
at least one content category for each of the plurality of
segments,
as recited in claim 1?
2. Did the Examiner err in determining the relied-upon portions of
Behringer are supported by the provisional application of Behringer, and are,
therefore, prior art to Appellant's application?
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3. Did the Examiner err in finding the combination of cited
references teaches or suggests:
acquiring settings for formation of a custom podcast, the
settings being acquired via a graphical user interface
configured to facilitate entry or selection of a frequency
indication or a duration indication, the frequency
indication indicating how frequently a requestor desires to
have a custom podcast formed, and the duration indication
indicating over how long such custom podcasts are to be
formed,
as recited in claim 7?
4. Did the Examiner err in relying on Bloebaum and/or Hidary
because they "teach away" from Appellant's invention?
ANALYSIS2
Claims 1, 3-6, and 9-21
Appellant asserts the Examiner erred in finding Behringer teaches or
suggests:
presenting a graphical user interface configured to facilitate entry
or selection of a least one content category independently for
each of the plurality of segments of a custom podcast to be
formed, the graphical user interface being presented allows a
requestor t[ o] individually select at least one content category for
each of the plurality of segments,
as recited in claim 1. App. Br. 7-13; Reply Br. 2-5. In particular, Appellant
argues paragraph 43 of Behringer, as relied upon by the Examiner, fails to
2 Throughout this Decision, we have considered the Appeal Brief filed
October 15, 2013 ("App. Br."); the Reply Brief filed April 14, 2014 ("Reply
Br."); the Examiner's Answer mailed on February 14, 2014 ("Ans."); and
the Final Office Action mailed on May 8, 2013 ("Final Act."), from which
this Appeal is taken.
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Application 11/621,541
teach or suggest a plurality of segments and, therefore, does not teach that a
user can select a content category independently for each of the plurality of
segments. App. Br. 7-9. Appellant additionally contends the Examiner's
statement that "each piece of content, or segment, of the custom podcast will
have a category associated with it that was selected by the user" is not
supported by Behringer. App. Br. 9-10 (citing Final Act. 5). Appellant
asserts, contrary to the Examiner's findings, "Behringer explicitly discloses
a scenario where at least one content category is not selected by the user, but
rather selected by the system based on a user profile or specific key words."
App. Br. 10 (citing Behringer i-f 43) (emphasis added). Further, Appellant
argues that the portion of Behringer relied upon by the Examiner is not prior
art. App. Br. 10-12; Reply Br. 4--5. We address Appellant's arguments
seriatim.
Behringer is directed to creating and distributing an audio newspaper.
Behringer, Title, Abstract. In order to provide only the portion of the audio
newspaper desired by the user, Behringer discloses "[t]he user may then
select content categories or content subcategories that he wishes to receive."
Behringer i-f 43. As the Examiner explains:
Each story selected by the system based on the user[']s selected
content categories is a segment of the greater audio content
delivered to the user. Each of those segments also has a category
associated with it that was selected by the user. In Behringer, a
user selects content categories that they wish to receive
(paragraph 43). Stories that match the selected content
categories are what are delivered to the user. Therefore, each
segment has content category that was selected by the user.
Ans. 3. Thus, under a broad yet reasonable interpretation, the Examiner
finds, and we agree, Behringer provides for the selection of at least one
content category independently for each segment (i.e., story) and teaches
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that the user individually selects a content category for each of the segments.
Ans. 3 (citing Behringer i-f 43); see In re Am. A cad. of Sci. Tech. Ctr., 367
F.3d 1359; 1364 (Fed. Cir. 2004).
Further, we do not find Appellant's assertions or the proffered
scenario of Behringer's system "select[ing] any of the two categories
irrespective of any individual or independent selection by the user" for a
potential third segment (assuming the user independently and individually
selected sports content for a first segment and entertainment for a second
segment) to be inapposite to the Examiner's findings. See Reply Br. 3. As
Behringer teaches, the system may deliver additional stories based on the
user profile or key words if the user has appropriately authorized the system
to do so. Behringer i-f 43. In other words, the user need not authorize the
system to select from any of the two categories for an additional segment.
Thus, when the user has not authorized the system to automatically select
content, as the Examiner finds, Behringer teaches the user independently and
individually selects the desired content for each of a plurality of segments.
As to whether paragraph 43 of Behringer is prior art, we agree with
the Examiner. The Examiner finds, and we agree, Behringer's provisional
application (application no. 60/775,914; filed Feb. 22, 2006) ("Behringer
Provisional") provides sufficient support for the portions of paragraph 43
that were relied upon for the rejection. Ans. 4. In particular, the Examiner
finds, and we agree:
Page 4 [(of Behringer Provisional)] describes a website that
enables a user to sign up for an audio news subscription (under
Subscription Services section). It also discloses that the user can
select content by section (or category) and lists examples. Page
3 describes " ... allow[ing] the end user to select the stories by
subject matter and/or headline ... " also similar to the relevant
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portions of paragraph 43. Finally, Page 5 describes "software
[that] connects to the servers storing the audio newspaper content
and downloads only the content desired based on the subscribers
profile." The provisional application describes a custom audio
newspaper that a user subscribes to and in which they select
categories or stories they want delivered to them.
Ans. 4. In relevant part, paragraph 43 of Behringer discloses "a website is
used to manage a plurality of publications for a plurality of users. . . . The
user may then select content categories or content subcategories that he
wishes to receive (headlines only, by section (such as local news, local
sports, weather)."
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claim 1.
Additionally, we sustain the Examiner's rejection of claims 3---6 and 9-21,
which depend therefrom and were not argued separately. App. Br. 13.
Claims 7, 8, and 22-37
Claim 7 recites, in part, "acquiring settings for formation of a custom
podcast, the settings being acquired via a graphical user interface configured
to facilitate entry or selection of a frequency indication or a duration
indication." (Emphasis added.) Thus, the cited art must teach or reasonably
suggest either acquiring settings to facilitate entry or selection of a
frequency indication or acquiring settings to facilitate entry or selection of a
duration indication. The Examiner relies on, inter alia, Hidary to teach
"allowing a user to specify the duration of time a podcast should be formed."
Final Act. 12 (citing Hidary i-f 18).
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Appellant contends the Examiner erred in finding Hidary teaches or
suggests specifying the duration of time a podcast should be formed. App.
Br. 14--15. In particular, Appellant argues:
Hidary only discloses a subscription for accessing content
already created, without providing any indication as to a duration
of time for forming a podcast (or any content) .... [T]he
subscription in Hidary only specifies the length of access to
content by a user regardless of whether that content has already
been previously formed or is to be formed for any specific period
of time.
App. Br. 15.
We are unpersuaded of Examiner error. As the Examiner explains,
"[t]he Bodin reference was cited for teaching, among other things, the
formation and downloading of a custom podcast [and] [ t ]he Hidary reference
was cited for teaching that a requestor can specify a subscription expiration
date which would be a duration indication." Ans. 6. We find Hidary teaches
acquiring settings from a user to facilitate entry or selection of a duration
indication. See Hidary i-f 18 ("One option may be a time duration/limitation.
That is, the subscriber may be given the right [to] specific content for a
particular length of time.").
Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413, 426
(CCP A 1981 ). Rather, the test for obviousness is whether the combination
of references, taken as a whole, would have suggested the patentee's
invention to a person having ordinary skill in the art. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Further, an obviousness analysis
"need not seek out precise teachings directed to the specific subject matter of
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the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). "A person of ordinary
skill is also a person of ordinary creativity, not an automaton." Id. at 421.
Appellant additionally argues "both Bloebaum and Hidary in fact
teach away from forming a custom podcast, as recited in claim 7, as both
references disclose that the content or podcast in each reference is formed
without any customization by the user." App. Br. 15-16; Reply Br. 7.
"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 Kubin, 561F.3d1351, 1357
(Fed. Cir. 2009) (citation omitted). Appellant points to no explicit teaching
of Hidary or Bloebaum that would discourage or divert a person of ordinary
skill in the art from combining their teachings with those of Bodin.
Particularly with regard to Hidary, Hidary discloses that the "system can
also receive podcasts ... and deliver them to a subscriber in a concatenated
form on demand." Hidary, Abstract. Accordingly, we do not find that a
skilled artisan would be led away from combining the references as
articulated by the Examiner. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) ("The prior art's mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed").
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of claim 7. For
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similar reasons, we also sustain the Examiner's rejection of independent
claims 22 and 36, which recite similar limitations and were not argued
separately. App. Br. 16-17. Additionally, we sustain the Examiner's
rejection of claims 8, 23-35, and 37, which were not argued separately.
App. Br. 17.
DECISION
We affirm the Examiner's decision to reject claims 1 and 3-37.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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