IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Application of: Martin Weel
`Serial No. 12X1 14,286
`Filed: 05/02/2008
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`Examiner: Mohamed A. Wasel
`Art Unit: 2454
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`Attorney Docket No. 1 1 16-065B/A033DIV2
`For:
`SYSTEM AND METHOD FOR SHARING PLAYLISTS
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`Mail Stop RCE
`Commissioner for Patents
`PO Box 1450
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`Alexandria, VA 223 13-1450
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`SIT-
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`AMENDMENTS AND REMARKS TO ACCOMPANY
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`REQUEST FOR CONTINUED EXAMINATION
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`Applicant offers the following amendments and remarks to accompany a concurrently
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`filed Request for Continued Examination in response to the Final Office Action mailed June 18,
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`2010. Applicant encloses a payment in the amount of $810.00 to cover the fee associated with
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`this request. If any additional fees are required in association with this response, the Director is
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`hereby authorized to charge them to Deposit Account 50—1732, and consider this a petition
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`therefor.
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`|PR2014-00711 BHM EX. 2016 (previously filed in |PR2014-00733 as EX. 1006)
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`IPR2014-00711 BHM Ex. 2016 (previously filed in IPR2014-00733 as Ex. 1006)
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`Serial No. 12/114,286
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`Attorney Docket No. 1116-06SB/A033DIV2
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`In the Claims:
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`1.
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`(Currently Amended) A method comprising:
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`receiving, at a wireless handheld remote control, a playlist from a remote source; and
`presenting at the wireless handheld remote control the playlist to a first user associated
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`with the wireless handheld remote control such that the first user is enabled to select at least one
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`item from the playlist for playback by a media player device which is associated with QC}
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`separate from the wireless handheld remote control.
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`2.
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`(Original) The method of claim 1 wherein the playlist is further communicated from the
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`remote source to the media player device.
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`3.
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`(Currently Amended) The method of claim 1 further comprising communicating the
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`playlist from the wireless handheld remote control to the media player device.
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`4.
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`(Currently Amended) The method of claim 1 wherein the remote source stores a plurality
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`of playlists including the playlist and the plurality of playlists [[are]] i_s associated with a
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`plurality of users, [[and.]] the method further comprising:
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`comparing each of a plurality of user profiles of the plurality of users with a target user
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`profile of the first user associated with the wireless handheld remote control to select a matching
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`user profile from the plurality of user profiles; and
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`effecting selection of a playlist of a matching user associated with the matching user
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`profile from the plurality of user profiles as the playlist to be communicated to the wireless
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`handheld remote control.
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`5.
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`(Original) The method of claim 4 wherein the matching user profile is one of the plurality
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`of user profiles most similar to the target user profile.
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`6.
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`(Original) The method of claim 1 wherein the remote source is a central server.
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`|PR2014-0071’l BHM EX. 2016 (previously filed in |PR2014-00733 as EX. 1006)
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`2
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`IPR2014-00711 BHM Ex. 2016 (previously filed in IPR2014-00733 as Ex. 1006)
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`Serial No. 12/114,286
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`Attorney Docket No. 1116-065B/A033DIV2
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`7.
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`(Original) The method of claim 1 wherein the remote source is a peer-to-peer network
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`formed by a plurality of user devices, and receiving the playlist comprises receiving the playlist
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`from one of the plurality of user devices.
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`8.
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`(Currently Amended) The method of claim 7 wherein each of the plurality of user devices
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`forming the peer-to-peer network is a user device selected from a group consisting of: [[a]] the
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`media player device and [[a]] the wireless handheld remote control.
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`9.
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`(Original) The method of claim 1 wherein the remote source is the media player device.
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`10.
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`(Currently Amended) A wireless handheld remote control comprising:
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`a communication interface communicatively coupling the wireless handheld remote
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`control to a remote source via a network; and
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`a control system associated with the communication interface and adapted to:
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`receive a playlist from the remote source; and
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`present the playlist to a first user associated with the wireless handheld remote
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`control such that the first user is enabled to select at least one item from the playlist for
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`playback by a media player device which is associated with and separate from the
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`wireless handheld remote control.
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`11.
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`(Currently Amended) A method comprising:
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`receiving, at a media player device, a playlist from a remote source; and
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`communicating the playlist from the media player device to a wireless handheld remote
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`control associated with and separate from the media player device, wherein, at the wireless
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`handheld remote control, the playlist is presented to a first user associated with the Wireless
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`handheld remote control and used by the first user to select at least one item from the playlist for
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`playback by the media player device.
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`12.
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`(Currently Amended) A media player device comprising:
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`a communication interface communicatively coupling the media player device to a
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`remote source via a network; and
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`|PR2014-0071’l BHM EX. 2016 (previously filed in |PR2014-00733 as EX. 1006)
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`3
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`IPR2014-00711 BHM Ex. 2016 (previously filed in IPR2014-00733 as Ex. 1006)
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`Serial No. 12/ 1 14,286
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`Attorney Docket No. 1116-06SBXA033DIV2
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`a control system associated with the communication interface and adapted to:
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`receive a playlist from the remote source; and
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`communicate the playlist from the media player device to a wireless handheld
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`remote control which is associated with and separate from the media player device,
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`wherein, at the wireless handheld remote control, the playlist is presented to a first user
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`associated with the wireless handheld remote control and used by the first user to select at
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`least one item from the playlist for playback by the media player device.
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`|PR2014-00711 BHM EX. 2016 (previously filed in |PR2014-00733 as EX. 1006)
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`4
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`IPR2014-00711 BHM Ex. 2016 (previously filed in IPR2014-00733 as Ex. 1006)
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`Serial No. 12/114,286
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`Attorney Docket No. l 116-065B/A033DIV2
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`REMARKS
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`Applicant has carefully reviewed the Final Office Action mailed June 18, 2010
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`(hereinafter “Final Office Action”) and offers the following remarks to accompany the above
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`amendments. This amendment is filed in conjunction with a Request for Continued
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`Examination.
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`Status ofthe Claims
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`Claims 1-12 were previously pending. No claims have been added or cancelled herein.
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`Claims 1, 10, 11, and 12 have been amended to clarify that the remote control device is a
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`wireless handheld remote control, that the playlist is presented on the remote control, and that the
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`remote control is separate from the media player. Claims 3, 4, and 8 have been amended in view
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`of the amendments to claim 1. Accordingly, claims 1-12 are pending. No new matter has been
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`added.
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`Interview Summary
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`Applicant thanks Examiner Wasel for the courtesies extended during the telephonic
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`interview. The undersigned and the Examiner discussed Hawkins, and the Examiner
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`recommended certain clarifications to the independent claims that the Examiner felt may further
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`clarify Applicant’s invention. No agreement regarding allowability of claims was reached.
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`Discussion ofA mended Claims in View ofthe Prior Art Cited in the Final Oflice Action
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`In the Final Office Action, claims 1-3 and 6-12 were rejected under 35 U.S.C. § 102(e) as
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`being anticipated by US. Patent Application Publication No. 2005f0210507 Al to Hawkins et a1.
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`(hereinafter “Hawkins”).
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`Applicant submits that Hawkins fails to teach or suggest at least three relevant features
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`recited in Applicant’s amended claim 1, specifically: 1) a wireless handheld remote control, 2) a
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`media player device which is associated with and separate from the wireless handheld remote
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`control, and 3) an ability to select an item from the playlist on the wireless handheld remote
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`control for playback on the associated media player device. Although Hawkins discloses that a
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`client device may receive a playlist, Hawkins contains no teachings or suggestions regarding
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`receiving a playlist on a wireless handheld remote control and selecting an item from the playlist
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`|PR2014-00711 BHM EX. 2016 (previously filed in |PR2014-00733 as EX. 1006)
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`5
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`IPR2014-00711 BHM Ex. 2016 (previously filed in IPR2014-00733 as Ex. 1006)
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`Serial No. 12/114,286
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`Attorney Docket No. 1 116-065B/A033DIV2
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`on the wireless handheld remote control, wherein the item is selected for playback on an
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`associated, and separate, media player device.
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`For at least the foregoing reasons, Applicant submits that Hawkins cannot anticipate
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`Applicant’s claim 1. Applicant’s claims 10, 11, and 12 contain substantially similar limitations
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`to those discussed herein with regard to claim 1, and should thus be allowable for at least the
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`same reasons. Claims 2, 3, and 6-9 depend directly or indirectly from claim 1, and are therefore
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`allowable as depending from an allowable independent claim.
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`Rejection Under 35 U.S.C’. § 103(a) — Hawkins and Gang
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`Claims 4 and 5 were rejected under 35 U.S.C. § 103(a) as being unpatentable over
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`Hawkins in View of US. Patent No. 7,075,000 B2 to Gang et a1. (hereinafter “‘Gang”). Applicant
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`respectfully traverses. When determining whether a claim is obvious, an Examiner must make
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`“a searching comparison of the claimed invention—including all its battalions—with the
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`teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis added).
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`Thus, “obviousness requires a suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup
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`Intern. Corp, 349 F.3d, 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985
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`(CCPA 1974)). Moreover, as the Supreme Court recently stated, “there must be some
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`articulated reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” KSR Int’l Co. v. Teleflex, Inc, 550 U.S. 398, 418, 82 U.S.P.Q.2d (BNA) 1385,
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`1396 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis added».
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`Gang discloses a system and method for predicting the musical taste of a user (Gang,
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`Abstract). Gang discloses the generation of a personal profile for a user of the system based on
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`the user’s ratings of songs. For example, Gang discloses:
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`After rating the N songs, the user preferably asks for recommendations for
`new songs, for example by pushing a “Get Recommendations” button 18.
`The system of the present invention (described with regard to FIGS. 15
`and 16 below) then preferably builds a personal profile of the user, on the
`basis of these ratings, and also on the basis of previously determined
`information about the songs as described above. (Gang, column 14, lines
`50-57)
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`Gang discloses to use the personal profile to recommend additional songs to the user. For
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`example, Gang discloses: “After clicking on ‘Get Recommendations’ button 18, the user also
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`preferably receives a list of M new songs based on the personal profile, as shown as a second set
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`|PR2014-OO71’1 BHM EX. 2016 (previously filed in |PR2014-OO733 as EX. 1006)
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`6
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`IPR2014-00711 BHM Ex. 2016 (previously filed in IPR2014-00733 as Ex. 1006)
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`Serial No. l2/l 14,286
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`Attorney Docket No. l 116-06SB/AO33DIV2
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`GUI 20 in FIG. 2” (Gang, column 14, lines 58-61). Nowhere does Gang teach or suggest
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`comparing a user profile of a target user with the user profiles of other users. In fact, Applicant
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`submits that doing so would be inconsistent with Gang’s teachings, since Gang teaches to base
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`musical recommendations to a user on ratings of songs provided by the user, not based on other
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`users’ tastes.
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`The Patent Office asserts that Gang is extensible to other interests of users which involve
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`subjective issues of “taste” (Final Office Action, page 6). Applicant, however, fails to see how
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`this assertion relates to whether or not Gang teaches or suggests the claim language recited in
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`claims 4 and 5. As discussed above, Gang discloses a mechanism for generating
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`recommendations to a user. This mechanism does not appear to relate to comparing each of a
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`plurality of user profiles with a target user profile to select a matching user profile, as recited in
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`Applicant’s claim 4. Additional disclosure from Gang that the invention is extensible to other
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`interests of users which involve subjective issues of “taste” certainly does not constitute
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`disclosure of comparing each of a plurality of user profiles with a target user profile to select a
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`matching user profile. For at least the foregoing reasons, Applicant submits that claims 4 and 5
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`are allowable over the cited references.
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`Conclusion
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`The present application is now in condition for allowance and such action is respectfully
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`requested. The Examiner is encouraged to contact Applicant’s representative regarding any
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`remaining issues in an effort to expedite allowance and issuance of the present application.
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`Respectfully submitted,
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`WITHROW & TERRANOVA, P.L.L.C.
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`By: QC”
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`Eric P. Jensen
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`Registration No. 37,647
`100 Regency Forest Drive, Suite 160
`Cary, NC 27518
`Telephone: (919) 238-2300
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`Date: September 20, 2010
`Attorney Docket: 1116-065B
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`|PR2014-OO711 BHM EX. 2016 (previously filed in |PR2014-OO733 as EX. 1006)
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`7
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`IPR2014-00711 BHM Ex. 2016 (previously filed in IPR2014-00733 as Ex. 1006)
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