Michael Patrick. Schneider et al.

Patent Trials and Appeals Board

Apr 30, 2020

14051322 - (D) (P.T.A.B. Apr. 30, 2020)

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.
14/051,322 10/10/2013 Michael Patrick Schneider 25832.229 (L0229) 1078
101198 7590 04/30/2020
LOWENSTEIN SANDLER LLP / Google
Patent Docket Administrator
One Lowenstein Drive
Roseland, NJ 07068
EXAMINER
PATEL, DHAIRYA A
ART UNIT PAPER NUMBER
2453
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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):
patents@lowenstein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL PATRICK SCHNEIDER, and
BENOIT DE BOURSETTY

Appeal 2018-008301
Application 14/051,322
Technology Center 2400

Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
JASON V. MORGAN, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 8, 11, 15, 18, 22, and 26–37, which
constitute all of the claims pending in this application.2 Appeal Br. 3.

1 We refer to the Specification, filed Oct. 10, 2013 (“Spec.”); the Non-Final
Office Action, mailed Aug. 11, 2017 (“Non-Final Act.”); the Appeal Brief,
filed Feb. 28, 2018 (“Appeal Br.”); the Examiner’s Answer, mailed Jun. 22,
2018 (“Ans.”); and the Reply Brief, filed Aug. 22, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “[A]pplicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Google LLC as the real party-in-
interest. Appeal Br. 3.
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Claims 2–7, 9, 10, 12–14, 16, 17, 19–21, 23–25 have been canceled. Claims
App. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system for generating a playlist for a first user of a
content sharing platform. Spec. ¶¶ 1, 6. Figure 3, reproduced below,
is useful for understanding the claimed subject matter:

Figure 3 depicts system architecture (300) wherein client devices (310) share
media items (321) on content sharing platform (320). Id. ¶ 42.
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In particular, upon determining that first user (310) has requested to
add second user (310) of content sharing platform (320) to first user’s social
connections on social connection platform (340), a processing device on
content sharing platform (320) updates the playlist hosted thereon to add a
media item of the second user to the first user’s playlist. Id. ¶¶ 24, 28, 48,
58.
Claims 1, 11, and 18 are independent. Claim 1, reproduced below
with disputed limitation emphasized in italics, is illustrative of the claimed
subject matter:
1. A method of generating a playlist for a first user of a content
sharing platform, the method comprising:
identifying a client device associated with the first user;
determining, by a processing device of the content sharing
platform, that the first user has requested to add a second user of the
content sharing platform to a set of social connections of the first user
on a social connection platform that is separate from the content
sharing platform, wherein the first user and the second user are not
socially connected within the content sharing platform;
in response to determining that the first user has requested to
add the second user to the set of social connections of the first user on
the social connection platform:
updating, by the processing device of the content sharing
platform, a play list hosted by the content sharing platform and
associated with the first user, wherein the playlist comprises one or
more media items of the content sharing platform, and wherein the
updating comprises adding, to the play list, a media item of the second
user; and
transmitting to the client device, by the processing device of the
content sharing platform, a signal that causes the client device to
present the updated playlist to the first user and provide the
first user with access to the media item.

Appeal Br. 20 (Claims App.)
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III. REFERENCES
The Examiner relies upon the following references.3
Name Number Published
Baron US 2008/0229215 A1 Sept. 18, 2008
Wheatley US 2011/0314388 A1 Dec. 22, 2011
Shepherd US 2013/0073979 A1 Mar. 21, 2013
Gavade US 2013/0290402 A1 Oct. 31, 2013

IV. REJECTIONS
The Examiner rejects the claims as follows:
1. Claims 1, 11, 18, 28, 29, 32, 33, 36, and 37 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Wheatley and
Baron. Non-Final Act. 3–9.
2. Claims 8, 15, and 22 are rejected under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Wheatley, Baron, and Gavade. Id. at 9–
10.
3. Claims 26, 27, 30, 31, 34, and 35 are rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Wheatley, Baron, and
Shepard. Id. at 10–12.

3 All reference citations are to the first named inventor only.
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V. ANALYSIS
Appellant argues that the Examiner erred in finding that the
combination of Wheatley and Baron teaches or suggests “determining, by a
processing device of the content sharing platform, that the first user has
requested to add a second user of the content sharing platform to a set of
social connections of the first user on a social connection platform that is
separate from the content sharing platform,” as recited in independent claim
1. Appeal Br. 7. In particular, Appellant argues that Baron’s disclosure of a
first user of a virtual social environment inviting a second user of the same
environment to synchronous participation in the social environment does not
teach the disputed limitations. Id. at 8–9 (citing Baron ¶ 38). According to
Appellant, because Baron uses an invitation module within a single platform
(virtual social environment) to perform the noted operations as opposed to
allowing the first user to use a separate platform to invite the second user to
join the virtual social environment, Baron does not teach or suggest the
disputed limitations. Id. Further, Appellant argues that Wheatley’s
disclosure of generating a collaborative playlist is likewise deficient. Id. at
9–10. According to Appellant, Wheatley discloses using a media service
platform receiving a request to notify existing connections of the user’s
collaborative playlist, as opposed to adding new contacts as social
connections of the user on the social platform. Id. at 10–11 (citing Wheatley
¶¶ 23–26). Therefore, Appellant submits that neither Baron nor Wheatley
teaches determining that the first user has requested to add the second user to
a set of social connections of the first user on the social connection platform.
Id. at 11.
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Appellant’s arguments are persuasive of reversible Examiner error.
Wheatley discloses a system for generating a collaborative playlist using
existing social networks. Wheatley ¶ 22. In particular, Wheatley discloses a
media service platform (103) that allows authenticated users (101) of the
platform to initiate of a collaborative playlist with one another via social
platforms (111) connected over a communication network (105). Id. More
particularly, upon receiving a request to create a collaborative playlist with
selected authenticated users of the platform, the media service platform
makes available on its shared medium the collaborators’ data items
(playlists) to facilitate the creation of the collaborative playlist. Id. ¶¶ 23–
27, Fig. 3. As recognized by the Examiner, while Wheatley teaches a media
service platform determining a user requesting another user on the same
platform to collaborate in the creation of the playlist, Wheatley does not
teach that the request includes adding the user to the social connections
platform of the other user. Ans. 5. However, we do not agree with the
Examiner that Baron’s disclosure cures the noted deficiencies of Wheatley.
Id. As persuasively argued by Appellant, Baron simply teaches a first user
inviting another user in a virtual social environment to synchronous
participation. Barron ¶ 38. We agree with Appellant that Baron’s disclosure
of two users in a same virtual social environment participating, upon
receiving a collaboration request, in a synchronous session does not remedy
Wheatley’s failure to teach adding a user to separate social connections of
another user during the creation of a collaborative playlist. At best, the
proposed combination of Wheatley and Baron teaches users of different
social platforms sharing their media items on a commonly-affiliated media
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service platform or virtual social environment to create the collaborative
playlist thereon.
Because Appellant has shown at least one reversible error in the
Examiner’s obviousness rejection of claim 1, we do not reach Appellant’s
remaining arguments.
Accordingly, we do not sustain the Examiner’s obviousness rejection
of independent claims 1, 11, and 18, each of which includes the argued
limitation. Likewise, we do not sustain the rejections of claims 8, 15, 22,
and 26–37, which also recite the disputed limitation.
VI. CONCLUSION
We reverse the Examiner’s obviousness rejections of claims 1, 8, 11,
15, 18, 22, and 26–37 under 35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
1, 11, 18, 28, 29, 32,
33, 36, 37 103 Wheatley, Baron
1, 11, 18, 28, 29,
32, 33, 36, 37
8, 15, 22 103 Wheatley, Baron, Gavade 8, 15, 22
26, 27, 30, 31, 34, 35 103 Wheatley, Baron, Shepard
26, 27, 30, 31,
34, 35
Overall Outcome 1, 8, 11, 15, 18, 22, 26–37

REVERSED