IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Application of: Martin Weel
`Serial No. 12/114,286
`Filed: 05/02/2008
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`Examiner: Mohamed A. Wasel
`Art Unit: 2454
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`Attorney Docket No. 1116—065B
`For:
`SYSTEM AND METHOD FOR SHARING PLAYLISTS
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`Mail Stop Amendment
`Commissioner for Patents
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`PO Box 1450
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`Alexandria, VA 22313—1450
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`Sir:
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`RESPONSE TO THE OFFICE ACTION MAILED aIANUARY 22, 2010
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`In response to the Office Action mailed January 22, 2010, Applicant offers the following
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`amendments and remarks. If any fees are required in association with this response, the Director
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`is hereby authorized to charge them to Deposit Account 50—1732, and consider this a petition
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`therefor.
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`Yamaha Corporation of America
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`Exhibit 1004
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`Page 1
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`Yamaha Corporation of America Exhibit 1004 Page 1
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`Attorney Docket No. 1116-065B
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`Serial No. 12/114,286
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`In the Claims:
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`1.
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`(Original) A method comprising:
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`receiving, at a remote control, a playlist from a remote source; and
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`presenting the playlist to a first user associated with the remote control such that the first
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`user is enabled to select at least one item from the playlist for playback by a media player device
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`associated with the 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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`(Original) The method of claim 1 further comprising communicating the playlist from the
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`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 associated with a plurality of
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`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 remote control to select a matching user profile from
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`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 playlist user profiles as the playlist to be communicated to the
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`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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`Yamaha Corporation of America
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`Exhibit 1004
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`Page 2
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`Yamaha Corporation of America Exhibit 1004 Page 2
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`Attorney Docket No. 1116-065B
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`Serial No. 12/114,286
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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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`(Original) The method of claim 7 wherein each of the plurality of user devices forming
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`the peer—to—peer network is a user device selected from a group consisting of: a media player
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`device and a 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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`(Original) A remote control comprising:
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`a communication interface communicatively coupling the remote control to a remote
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`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 remote control such that the
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`first user is enabled to select at least one item from the playlist for playback by a media
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`player device associated with the remote control.
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`11.
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`(Original) 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 remote control associated
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`with the media player device, wherein, at the remote control, the playlist is presented to a first
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`user associated with the remote control and used by the first user to select at least one item from
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`the playlist for playback by the media player device.
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`12.
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`(Original) 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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`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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`Yamaha Corporation of America
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`Exhibit 1004
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`Page 3
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`Yamaha Corporation of America Exhibit 1004 Page 3
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`Attorney Docket No. 1116-065B
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`Serial No. 12/114,286
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`communicate the playlist from the media player device to a remote control
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`associated with the media player device, wherein, at the remote control, the playlist is
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`presented to a first user associated with the remote control and used by the first user to
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`select at least one item from the playlist for playback by the media player device.
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`Yamaha Corporation of America
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`Exhibit 1004
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`Page 4
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`Yamaha Corporation of America Exhibit 1004 Page 4
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`Attorney Docket No. 1116-065B
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`Serial No. 12/114,286
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`REMARKS
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`Applicant has carefully reviewed the Office Action mailed January 22, 2010, and
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`respectfully requests reconsideration of the subject application, particularly in view of the above
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`amendments and the following remarks.
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`Status of the Claims
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`Claims 1— 12 were previously pending. Claim 4 has been amended to correct a
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`typographical error. No claims are added or cancelled herein. Accordingly, claims 1—12 remain
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`pending.
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`Rejection Under 35 U.S.C. § 102(e) — Hawkins
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`Claims 1—3 and 6—12 were rejected under 35 U.S.C. § 102(e) as being anticipated by U.S.
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`Patent Application Publication No. 2005/0210507 A1 to Hawkins et al. (hereinafter “Hawkins”).
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`Applicant respectfully traverses. As discussed in MPEP § 2131, “[a] claim is anticipated only if
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`each and every element as set forth in the claim is found, either expressly or inherently
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`described, in a single prior art reference.” Verdegaal Bros. v. Union Oil C0. of California, 814
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`F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). “The identical invention must be shown
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`in as complete detail as is contained in the...claim.” Richardson v. Suzuki Motor C0., 868 F.2d
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`1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). Because the hallmark of anticipation is
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`prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not
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`only disclose all elements of the claim within the four comers of the document, but must also
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`disclose those elements “arranged as in the claim.” Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d
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`1359, 1369 (Fed. Cir. 2008) citing Connell v. Sears, Roebuck & C0., 722 F.2d 1542, 1548 (Fed.
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`Cir. 1983).
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`Embodiments of Applicant’s invention relate to receiving on a remote control a playlist
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`from a remote source. A user can select an item from the playlist for playback on an associated
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`media player device. None of the references cited by the Patent Office teaches or suggests an
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`ability to select an item on a playlist displayed on one device for playback on another device;
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`thus, Applicant submits that Applicant’s claims are allowable over the cited references.
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`More specifically, Applicant’s claim 1 recites “receiving, at a remote control, a playlist
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`from a remote source.” The Patent Office asserts that this limitation is disclosed at paragraphs
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`Yamaha Corporation of America
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`Exhibit 1004
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`Page 5
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`Yamaha Corporation of America Exhibit 1004 Page 5
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`Attorney Docket No. 1116-065B
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`Serial No. 12/114,286
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`0006 and 0015 of Hawkins. Applicant notes that paragraph 0006 of Hawkins discloses an ability
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`to display a playlist on a client device. Paragraph 0015 of Hawkins discloses different types of
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`client devices, none of which, however, constitutes a “remote control,” as explicitly recited in
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`Applicant’s claim 1.
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`Applicant’s claim 1 further recites, “presenting the playlist to a first user associated with
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`the remote control such that the first user is enabled to select at least one item from the playlist
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`for playback by a media player device associated with the remote control.” The Patent Office
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`asserts that these limitations are disclosed at paragraphs 0007, 0015, and 0031 of Hawkins.
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`Applicant respectfully disagrees. Applicant submits that Hawkins fails to teach or suggest at
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`least three relevant features recited in Applicant’s claim 1, specifically: 1) a remote control, 2) a
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`media player device associated with the remote control, and 3) an ability to select an item from
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`the playlist on the remote control for playback on the associated media player device. Thus,
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`while Hawkins discloses that a client device may receive a playlist, Hawkins contains no
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`teachings or suggestions regarding receiving a playlist on a remote control and selecting an item
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`from the playlist on the remote control, wherein the item is selected for playback on an
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`associated media controller. For at least the foregoing reasons, Applicant submits that Hawkins
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`cannot anticipate Applicant’s claim 1. Applicant’s claim 10 contains substantially similar
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`limitations to those discussed herein with regard to claim 1, and is thus 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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`Applicant’s claim 11 contains substantially similar limitations to those discussed herein
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`with regard to claim 1, except claim 11 recites that the playlist is received by the media player
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`device, and then provided by the media player device to the associated remote control, where the
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`playlist is presented to the user. The user is able to select an item from the playlist for playback
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`by the media player device. Irrespective of whether or not Hawkins discloses an ability for one
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`client device to send a playlist to another client device, Hawkins fails to teach or suggest the
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`recited features wherein a playlist is provided on a remote control such that a user may select an
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`item for playback on an associated media player device, as discussed above.
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`For at least the foregoing reasons, Applicant submits that Hawkins cannot anticipate
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`Applicant’s claim 11. Applicant’s claim 12 contains substantially similar limitations to those
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`Yamaha Corporation of America
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`Exhibit 1004
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`Page 6
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`Yamaha Corporation of America Exhibit 1004 Page 6
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`Attorney Docket No. 1116-065B
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`Serial No. 12/114,286
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`discussed herein with regard to claim 11, and is thus allowable for at least the same reasons.
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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 U.S. Patent No. 7,075,000 B2 to Gang et al. (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 limitations—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. Yieldap
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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 C0. 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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`Applicant’s claim 4 recites a feature wherein the remote source stores a plurality of
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`playlists associated with a plurality of users. The remote source compares each of a plurality of
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`user profiles with a profile of a target user to select a matching user profile from the plurality of
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`user profiles. A playlist of the matching user is selected and communicated to the remote
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`control.
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`The Patent Office asserts that Gang discloses such features. Applicant respectfully
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`disagrees. 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 (emphasis
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`added). For example, Gang discloses “After clicking on ‘Get Recommendations’ button 18, the
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`user also preferably receives a list of M new songs based on the personal profile, as shown as a
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`second set GUI 20 in FIG. 2” (Gang, column 14, lines 58—61). Nowhere does Gang teach or
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`Yamaha Corporation of America
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`Exhibit 1004
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`Page 7
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`Yamaha Corporation of America Exhibit 1004 Page 7
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`Attorney Docket No. 1116-065B
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`Serial No. 12/114,286
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`suggest comparing a user profile of a target user with the user profiles of other users. In fact,
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`Applicant submits that doing so would be inconsistent with Gang’s teachings, since Gang
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`teaches to base musical recommendations to a user on ratings of songs provided by the user, not
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`based on other users’ tastes.
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`Thus, for at least the foregoing reasons, Applicant submits that neither Hawkins nor
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`Gang, either alone or in combination, can render Applicant’s claim 4 obvious, and that claim 4 is
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`thus allowable. Claim 5 depends directly from claim 4, and is therefore allowable as depending
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`from an allowable independent claim.
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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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`WlTHROW & TERRANOVA, P.L.L.C.
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`By:
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`/Eric P. Jensen/
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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: April 22, 2010
`Attorney Docket: 1116—065B
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`Yamaha Corporation of America
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`Exhibit 1004
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`Page 8
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`Yamaha Corporation of America Exhibit 1004 Page 8
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