Inre: Gross

Case: 13-1536 Document: 23 Page: 1 Filed: 01/31/2014

NOTE: This order is nonprecedential.

United States Court of Appeals
for the Federal Circuit
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IN RE JOHN N. GROSS

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2013-1536
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Serial No.
11/369,796.
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ON MOTION
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Before RADER, Chief Judge, DYK and WALLACH, Circuit
Judges.
WALLACH, Circuit Judge.
ORDER
The parties jointly move to remand this appeal for
further proceedings before the Patent Trial and Appeal
Board.
John N. Gross appeals from a decision of the Board
sustaining the examiner’s rejection of claims 14 and 18 of
his patent application for methods of allocating priority
for playable media items over an electronic network
between subscribers as obvious over a combination of
prior art references Hastings, Pauliks and Hunt.
Case: 13-1536 Document: 23 Page: 2 Filed: 01/31/2014

2 IN RE GROSS

Gross argues in his opening brief that the obviousness
rejections failed to account for the actual limitations in
claims 14 and 18, including the step “wherein [a] common
playable media item is taken from a limited subset of
playable media items determined to be popular by the
computing system among subscribers.” He states that the
Board’s initial decision misquotes the limitations of that
step, and argues that the Board failed to explain why
these prior art references teach his methods as actually
claimed.
The Director of the United States Patent and Trade-
mark Office states that "it is in the best interest of the
parties and this Court to remand the case back to the
Board to reconsider the pending claims." Because this
court agrees with the parties that it would be best for all
involved to remand this case to the Board for reconsidera-
tion of its obviousness rejections, the parties’ motion to
remand the case for additional proceedings is granted.
Accordingly,
IT IS ORDERED THAT:
(1) The motion is granted. The case is remanded for
additional proceedings consistent with this order.
(2) Each side shall bear its own costs.
FOR THE COURT

/s/ Daniel E. O’Toole
Daniel E. O’Toole
Clerk of Court

s26
ISSUED AS A MANDATE: January 31, 2014