Appeal 2007-0588
Application 10/202,349
1 Appellants and applying (or layering) those teachings onto a playlist as
2 defined by the Examiner (a group of favorite tracks). Nothing in the
3 Examiner’s analysis provides any reasoning to show that a group of favorite
4 tracks has any relationship to the structure of a standard playlist as taught by
5 Ho Yuen Lok.
6
7 REJECTION OF CLAIMS 1 AND 19 UNDER 37 C.F.R. § 41.50(b)
8 We make the following new grounds of rejection using our authority
9 under 37 C.F.R. § 41.50(b).
10 Claims 1 and 19 rejected under 35 U.S.C. 103(a) as being
11 unpatentable over Ho Yuen Lok in view of Van Ryzin.
12 The Supreme Court in Graham v. John Deere, 383 U.S. 1, 17-18, 148
13 USPQ 459, 467 (1966), stated that three factual inquiries underpin any
14 determination of obviousness:
15 Under § 103, the scope and content of the prior art are to be
16 determined; differences between the prior art and the claims at
17 issue are to be ascertained; and the level of ordinary skill in the
18 pertinent art resolved. Against this background, the obviousness
19 or nonobviousness of the subject matter is determined. Such
20 secondary considerations as commercial success, long felt but
21 unsolved needs, failure of others, etc., might be utilized to give
22 light to the circumstances surrounding the origin of the subject
23 matter sought to be patented. As indicia of obviousness or
24 nonobviousness, these inquiries may have relevancy.
25 The Supreme Court reaffirmed and relied upon the Graham three
26 pronged test in its consideration and determination of obviousness in the fact
27 situation presented in KSR Int’l. v. Teleflex Inc., 127 S. Ct. 1727,
28 82 USPQ2d 1385 (2007). The Court stated:
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