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           NOTE: This order is nonprecedential.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
                  ______________________

                IN RE JOHN N. GROSS

                  ______________________

                        2013-1536
                  ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Serial No.
 11/369,796.
                  ______________________

                      ON MOTION
                  ______________________

   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
