Robb Fujioka et al.

Patent Trials and Appeals Board

Sep 11, 2019

14829393 - (D) (P.T.A.B. Sep. 11, 2019)

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.
14/829,393 08/18/2015 Robb Fujioka 32121(1) 1212
92231 7590 09/11/2019
Edell, Shapiro & Finnan LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
EXAMINER
PENDLETON, BRIAN T
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
09/11/2019 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte ROBB FUJIOKA, DOUGLAS QUON WOO, and
CHIYU HE
____________________

Appeal 2018-003417
Application 14/829,393
Technology Center 2400
____________________

Before JENNIFER S. BISK, JUSTIN BUSCH, and CATHERINE SHIANG,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13, 15–18, and 21–27, which
constitute all the claims pending in this application. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mattel, Inc.
Appeal Br. 3.
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Application 14/829,393
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CLAIMED SUBJECT MATTER
Appellant’s disclosure generally relates “to a system and method for
providing curated content items to users.” Spec. ¶ 2; see Spec. ¶¶ 6, 30. The
claimed invention relates to providing a first user account (e.g., a parent)
content items and an interface via a first portal displayed on a device through
which the first user can provide a “curation instruction”; the curation
instruction then is used to select a subset of the content items that are
provided to a second user account (e.g., a child), which is in the same
subscriber account as the first account, via a second portal displayed on the
device. Spec. ¶ 39. Claims 1 and 13 are independent claims. Claim 1 is
reproduced below:
1. A method, comprising:
selecting a first set of content items from a plurality of
available content items provided by a plurality of content
provider servers;
providing the first set of content items to a second user
account included in a subscriber account, wherein the subscriber
account includes a first user account and the second user account;
providing a curation interface to the second user account
on a second user portal that displays on a user device, wherein
the curation interface displays information on the first set of
content items;
receiving a curation instruction that is configured by the
second user account via the curation interface;
selecting a second set of content items from the first set of
content items based upon the curation instruction; and
providing the second set of content items to the first user
account on a first user portal that displays on the user device.

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REJECTIONS
Claims 1–3, 11, 13, 15, 23, and 25–27 stand rejected under 35 U.S.C.
§ 102 as anticipated by Martin (US 2014/0075583 A1; Mar. 13, 2014). Final
Act. 6–12.
Claims 4–8 and 16–18 stand rejected under 35 U.S.C. § 103 as
obvious in view of Martin and Szeto (US 2005/0262204 A1; Nov. 24, 2005).
Final Act. 12–14.
Claims 9, 10, 12, 21, 22, and 24 stand rejected under 35 U.S.C. § 103
as obvious in view of Martin, Szeto, and Maharajh (US 2011/0225417 A1;
Sept. 15, 2011). Final Act. 14–16.
ANALYSIS
THE 35 U.S.C. § 102 REJECTION
The Examiner finds Martin discloses every limitation recited in
independent claims 1 and 13. Final Act. 6–10; Ans. 14–17. Of particular
relevance to the dispositive issue with respect to this Appeal, the Examiner
finds Martin discloses providing a first set of content items to a second user
account included in a subscriber account; receiving a curation instruction
from the second user account via an interface on a second user portal
displayed on a device; and providing a second set of content items, which
are selected from the first set of content items based on the curation
instruction, to a first user account, which is also included in the subscriber
account, on a first second user portal displayed on the device. Final Act. 6–8
(citing Martin ¶¶ 40, 43, 46–50, 53–54, 60, Figs. 1, 3, 5); Ans. 14–17
(additionally citing Martin ¶¶ 59, 83).
Martin relates to managing media items and, more specifically to
making policy decisions regarding syncing and “addressing the need for
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Application 14/829,393
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solutions relating to how to share media items between overlapping user
accounts.” Martin Abstract. Martin describes the iTunes® store as an
exemplary media distribution system and the iTunes® client as an exemplary
media player that can manage and play media items, establish and manage
user accounts, and coordinate media item transfers between devices
associated with the user accounts, including coordinating transferring media
items to other user devices and cloud-based servers. Martin ¶¶ 32, 38–40,
43, Fig. 1.
Media may be subject to digital rights management (DRM) policies,
which control or limit access to digital media, such as preventing media
from being re-downloaded but allowing transfer to other devices. Martin
¶ 34, 41–43. Certain aspects of Martin, which are less relevant to the present
invention, relate to making policy decisions regarding syncing (i.e., which
content needs to be transferred to another device and which content may
simply be re-downloaded) based on DRM policies. Martin ¶¶ 45–52,
Figs. 2–4. Martin also describes manually transferring media to a device.
Martin ¶¶ 52–53, Figs. 5–6.
Martin describes an exemplary interface used to transfer media items
from a computer to a second device. Martin ¶ 50. The interface includes a
Library frame that presents media items stored in the computer’s media
library “associated with one or more user accounts” and media items stored
in a cloud that are associated with a user’s account. Martin ¶ 50. The
interface also includes a Devices frame that shows devices connected to the
computer and the media items stored on those devices. Martin ¶ 50.
Martin discloses media distribution systems, such as the iTunes®
store, can maintain user accounts and associate those accounts with
computing devices, optionally limiting each user account to a certain number
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of authorized devices. Martin ¶ 54. Martin describes embodiments in which
each user may designate an authorized device as a “home” device, which
effectively is treated as a user’s primary device, whereas other devices
associated with that account are considered “non-home” devices. Martin
¶¶ 54–55. Each computer or device may include media items/libraries
associated with multiple accounts. See Martin ¶ 57.
When a user connects an external device (e.g., an iPod® or an iPad®)
associated with a user account to a non-home device, the user may be asked
whether the user wishes to designate that computer the user account’s “home
device,” erase existing media on the external device, and sync the external
device to the newly-designated home device. Martin ¶ 55. A typical
configuration “does not allow transferring of media items from a non-home
computer to a device.” Martin ¶ 55. However, in some embodiments, media
items may be transferred from a non-home computer to a device already
associated with a home computer in certain circumstances. Martin ¶ 56. For
example, if both the non-home computer and the home computer contain at
least one media library associated with the same user account, Martin allows
transferring media items from the non-home computer to a device associated
with the home computer. Martin ¶ 56; see also Martin ¶¶ 57–59 (describing
Figure 8 and explaining that files can be transferred from a first non-home
computer to an iPad® associated with a home computer having media items
associated with multiple user accounts (i.e., a library having folders of media
items for multiple users) because the first non-home computer and the home
computer have media items associated with a common user account, but a
second non-home computer cannot transfer media items to the iPad®
because the second non-home computer and the home computer do not have
media items associated with a common user account).
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Notably, however, Martin discloses certain embodiments permit
transferring media items associated with a user account on the non-home
computer even if the home computer does not have media items associated
with that same user account, with certain limitations that restrict distribution
of those media items. Martin ¶ 59. For example, Martin may limit the
number “of times a media item from a different user’s media library is
transferred to another device,” prompt the user to purchase the item the first
time it is accessed, or only transfer versions of the items with reduced
features (e.g., demos or free versions). Martin ¶ 59. Martin further explains
that this applies to user accounts as well. Specifically, Martin discloses
connecting a first device associated with a first user account to a second
device associated with a second user account and allowing transfer of media
items from the second device associated with the second account to the first
device (associated with the first account) if the system determines “the user
account associated with the first device has received an authorization to add
any media items in the library associated with the second user account.”
Martin ¶ 61 (emphasis added). Thus, these portions of Martin disclose, or at
least suggest, transferring media items from one user account to another user
account, at least in certain circumstances.
Appellant acknowledges Martin discloses copying content from one
device to another, copied content may be associated with multiple user
accounts, and each device may store content for multiple accounts. Appeal
Br. 21–23; Reply Br. 3–4. Appellant argues Martin fails to disclose every
limitation recited in claim 1, however, because Martin does not disclose
transferring content between user accounts such that content accessible in
one user account is accessible to another user account. Appeal Br. 23–24;
Reply Br. 4. Appellant contends that, simply because content from two
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different user accounts can be transferred from one computer to another does
not make content from one user account accessible to another user account.
Reply Br. 3–4. Appellant also argues Martin does not disclose a first user
portal and second portal displayed on the same device, where the first and
second user portals provide access to first and second user accounts,
respectively. Finally, Appellant argues Martin’s description of selecting
which personal information to share with others does not disclose the ability
to transfer content from one user account to another. Reply Br. 4.
We note Appellant’s arguments are imprecise because Appellant
asserts Martin fails to disclose transferring content from a first user account
to a second user account, but claim 1 does not recite transferring content
from one account to another account. Nevertheless, we understand
Appellant’s argument to assert Martin’s disclosure of transferring content
from one device to another device while maintaining an association between
the content and a user account does not disclose the claimed steps involving
providing content to a second user account then selecting and providing to a
first (different) account a subset of the content based on a curation
instruction configured by the second user account, wherein both user
accounts are included in the same subscriber account.
The Examiner finds Martin discloses a computer having a client
application (e.g., iTunes®) associated with multiple user accounts such that a
user accesses her account using the client application. Final Act. 3 (citing
Martin ¶¶ 12, 28, 32, 40, 54, 57). The Examiner further finds Martin
discloses that a single device may be associated with and maintain multiple
user accounts through the client application, and a single account may be
associated with the client application running on multiple devices. Final
Act. 3 (citing Martin Fig. 8). The Examiner states “the very focus of
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Martin’s disclosure is regarding ‘how to share media items between
overlapping user accounts.’” Final Act. 4 (citing Martin ¶ 32, Abstract).
Given at least Martin’s disclosure of circumstances in which media
items may be transferred from a second device associated with a second user
account to a first device associated with a first user account, upon
determining the first user account is authorized to add media items from the
second user account’s library, e.g., Martin ¶ 61, we disagree with
Appellant’s characterization that Martin fails to disclose, or at least suggest,
transferring media items from one user account to another user account.
Nevertheless, we review the Examiner’s rejection of the recited claim
limitations in light of the issues Appellant raised, and we find the
Examiner’s rejection problematic, at least with respect to the Examiner’s
mapping of Martin’s disclosures to the recited “subscriber account,” which
“includes a first user account and the second user account.”
The Examiner explicitly maps Martin’s client application to the
recited interface and the client application “when tied to one’s account” to
the recited second user portal. Final Act. 5. In other words, the Examiner
finds each of Martin’s user accounts displayed in the client application
discloses a different recited portal and, therefore, Martin’s client application
discloses multiple portals. Final Act. 5. In other words, if user A is viewing
their media library on a computer in Martin’s Library Frame, see Martin Fig.
3 (item 302), Martin’s Library Frame discloses the second user portal. If
user A connects a device associated with user B’s account to the computer
while viewing their media library in the Library Frame, Martin’s Devices
Frame (or portion thereof), see Martin Fig. 3 (item 304), discloses the recited
first user portal. However, this finding seems to contradict the Examiner’s
statements that Martin’s paragraphs 49 and 50 as well as Figures 3 and 5
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show “an interface, where the computer reads on a second user
portal/account” and Martin’s second device, which is used for accessing and
playing back content, discloses the recited “first user portal.” Final Act. 7–8.
However, because a device does not disclose the recited first and second
user portals under any reasonable interpretation, we understand the rejection
to be based on a finding that the client application provides multiple portals,
one portal for each valid user account that can access content on a particular
device.
The Examiner’s findings regarding which of Martin’s elements
disclose the user accounts and subscriber accounts are not clear. The
Examiner finds Martin’s “first and second user device . . . read on a first and
second user account.” Final Act. 7 (citing Martin ¶¶ 54, 60). Therefore, the
Examiner apparently finds Martin’s devices disclose the recited user
accounts. This statement and the statement referenced above that Martin’s
“computer reads on second user portal/account” appear to find a first user
device (e.g., a computer) discloses the recited second user account and a
second user device discloses the first user account. Notably, neither of the
recited user accounts are devices under any reasonable interpretation.
The Examiner also finds Martin’s “first and second user device, which
read on [the recited] first and second user account, are included in a user
account, which reads on [the recited] subscriber account.” Final Act. 7
(citing Martin ¶¶ 54, 60). This statement does not clearly indicate which of
Martin’s elements the Examiner finds disclose the subscriber account, but
our best understanding is that the Examiner finds Martin’s devices (e.g., a
computer and iPad®, see Martin Fig. 8 (804, 806)) disclose the recited first
and second user accounts, and both of Martin’s devices can be associated
with a particular one of Martin’s user accounts (e.g., Joe’s account, see
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Martin Fig. 8 (804, 806, 816)). Thus, the Examiner apparently finds Martin’s
user account is associated with and accessible on both Martin’s first and
second devices and, therefore, discloses the recited “subscriber account” that
“includes a first user account and the second user account.”
It is this lack of clarity regarding the Examiner’s mapping of Martin’s
elements to the first and second user account and the subscriber account that
is problematic. As mentioned above, we agree with the Examiner that Martin
discloses, or at least suggests, transferring media items from one of Martin’s
user accounts to another of Martin’s user accounts, and Martin’s user
accounts seem to disclose the recited “first user account” and “second user
account.” However, as noted, the Examiner appears to find devices disclose
the recited user accounts, which is problematic because that finding requires
an unreasonable interpretation of a “user account.”
To the extent the Examiner’s rejection can be interpreted as finding
Martin’s user accounts teach the recited user accounts, it is unclear which of
Martin’s elements disclose the recited “subscriber account.” Claim 1 recites
the “subscriber account includes a first user account and the second user
account.” We see nothing in the Examiner’s findings and explanations that
sufficiently describes an element in Martin that includes Martin’s user
accounts under any reasonable interpretation of “subscriber account.” To be
sure, Martin’s various user accounts may have some association with each
other, and individual computers or devices may have media libraries that
include media items associated with multiple accounts. However, without
further explanation, the Examiner’s findings are insufficient to establish that
any of Martin’s elements disclose a “subscriber account” that includes
multiple user accounts.
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On this record, for the reasons discussed above, we are constrained to
reverse the Examiner’s rejection under 35 U.S.C. § 102 of representative
claim 1; independent claim 13, which recites commensurate limitations; and
dependent claims 2, 3, 11, 15, 23, and 25–27, which ultimately depend from
one of claims 1 and 13.
THE 35 U.S.C. § 103 REJECTIONS
The Examiner does not find the additionally recited references in the
rejections of claims 4–10, 12 , 16–18, 21, 22, and 24 (i.e., Szeto and
Maharajh) or additional portions of Martin teach or suggest the disputed
limitation above. Therefore, for the same reasons discussed above, we are
also persuaded the Examiner erred in rejecting these claims, which
ultimately depend from either claim 1 or claim 13.
CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–3, 11, 13, 15, 23,
25–27
§ 102 Martin 1–3, 11, 13, 15, 23,
25–27
4–8, 16–18 § 103 Martin,
Szeto
4–8, 16–18
9, 10, 12, 21, 22, 24 § 103 Morrison,
Szeto, Maharajh
9, 10, 12, 21, 22, 24
Overall Outcome 1–13, 15–18, 21–27
REVERSED