Ex Parte Cronk et al

Patent Trial and Appeal Board

Sep 28, 2018

14304709 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/304,709 06/13/2014
27299 7590 10/01/2018
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
FIRST NAMED INVENTOR
Gary Cronk
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO.
TWAR.120Cl/TWC
09-45Cl
CONFIRMATION NO.
5621
EXAMINER
RABOVIANSKI, JIVKA A
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
10/01/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY CRONK, CRAIG ENGEL,
JUSTIN TIDWELL, LUIS ROBERTO ANAYA,
RAMON HERRERA, CORY KIN, DIP AN PATEL,
JOHNATHAN SAGINAW, and SOHIL SAMI
Appeal2018-002235
Application 14/304,709 1
Technology Center 2400
Before IRVINE. BRANCH, STACEY G. WHITE, and
ADAM J. PYONIN, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 33-37, 70-72, 76, and 77, which are all of the claims on appeal. 2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION UNDER
37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Time W amer Cable
Enterprises, LLC. App. Br. 1.
2 Claims 55-59, 64, 66, and 73-75 are withdrawn from consideration. Final
Act. 1; App. Br. 1.
Appeal2018-002235
Application 14/304,709
Technology
The application relates to collecting and processing data relating to
users of a content-delivery network such as a cable or satellite network.
Spec. Abstract. The Specification describes an "architecture for routinely
harvesting, parsing, ... and storing data relating to the activities of the users
(e.g., subscribers) of the network." Id.
Illustrative Claim
Claim 33 is illustrative and reproduced below with the limitations at
issue emphasized:
33. An apparatus associated with a content delivery network
configured to derive user preference data from a plurality of
customer devices in data communication therewith, said plurality
of customer devices configured to receive non-interactive
content and interactive content from said content delivery
network, said apparatus comprising:
a storage entity configured to store reference data thereon;
a processor apparatus in data communication with the
storage entity;
a first interface in data communication with said processor
apparatus, said processor apparatus configured to receive
information from said plurality of customer devices via said first
interface;
storage apparatus in data communication with the
processor apparatus and comprising a computer program stored
thereon, said computer program comprising a plurality of
instructions which, when executed, cause said processor
apparatus to:
generate a first plurality of data files, said first
plurality of data files configured to utilize said information
received via said first interface to describe particular ones
of said plurality of customer devices associated with a
particular user premises;
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generate a second plurality of data files, said
second plurality of data files configured to utilize said
information received via said first interface to describe
one or more tuning events of said particular ones of said
customer devices with respect to said non-interactive
content and one or more user activities of said particular
ones of said customer devices with respect to said
interactive content; and
generate a third plurality of data files, said third
plurality of data files comprising a correlation of at least
portions of said first plurality of data files, said second
plurality of data files, and said reference data; and
a second interface in data communication with said
processor apparatus, said processor apparatus further configured
to transmit said third plurality of data files to a network entity via
said second interface.
Rejections3' 4
Claim 71 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Ans. 3.
Claims 33, 71, 72, and 76 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter regarded as the invention. Ans. 3--4.
3 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above mentioned Appeal Brief, filed August
14, 2017 ("App. Br."), and Final Office Action, mailed March 3, 2017
("Final Act."), as well as the following documents for their respective
details: the Examiner's Answer, mailed October 25, 2017 ("Ans.") and
Appellants' Reply Brief, filed December 22, 2017 ("Reply Br.").
4 The Examiner has withdrawn a rejection of claims 33-36, 70-72, 76, and
77 under 35 U.S.C. § 101. Ans. 2.
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Application 14/304,709
Claim 33-37, 70, 76, and 77 stand rejected under 35 U.S.C. § I02(b)
as anticipated by Marsh (US 2003/0225777 Al; published Dec. 4, 2003).
Ans. 4--9.
Claims 71 and 72 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Marsh and Howcroft (US 2008/0201731 Al; published
Aug. 21, 2008). Ans. 9-10.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). We have considered in this Decision only those arguments
Appellants actually raised in the Briefs. Any other arguments Appellants
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Rejection of Claim 71 under§ 112, First Paragraph
Claim 71 depends from claim 33 and recites, in relevant part, that
interactive content recited in claim 33 "comprises a bound application
associated with said non-interactive content; said reference data comprises at
least non-interactive content reference data; and said third plurality of data
files comprise at least a correlation of said non-interactive content reference
data" ( emphasis added).
The Examiner rejects claim 71 as failing to satisfy the written
description requirement of§ 112, first paragraph (Ans. 3), which requires
the Specification to describe the claimed invention in sufficient detail that
one skilled in the art can reasonably conclude that the inventor had
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possession of the claimed invention at the time of filing (see LizardTech, Inc.
v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344--45 (Fed. Cir. 2005); Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562---64 (Fed. Cir. 1991)). The
Examiner finds that Appellants' Specification does not explain what non-
interactive content means and does not disclose that "interactive content" is
"a bound application associated with non-interactive content." Ans. 10-11.
Appellants argue the Specification discloses that "content can have
additional functionality by the addition of interactive applications (i.e.,
interactive content)" and that "bound interactive content" is "an interactive
application tied to specific television content and only displayed on the
television or made available for invocation by the customer when explicitly
triggered by the content owner." App. Br. 10 (citing Spec. 145--46); see
Reply Br. 2-3. Appellants argue that "one of ordinary skill in the art would
reasonably conclude that the foregoing 'bound application' clearly describes
'bound interactive content,' while the content to which the bound interactive
content is tied (and to which it gives additional functionality) clearly
describes 'non-interactive content'." App. Br. 10.
We are not persuaded by Appellants' arguments. The cited portion of
Appellants' Specification describes that a "bound application" is one type of
"interactive application." The cited passage provides support for neither
"bound interactive content" nor "non-interactive content." See Spec. 145-
46. The cited passage states that "[i]nteractive applications introduce
additional functionality to television viewers through the use of on-screen
applications" and that "interactive applications" fall into two broad
categories, one of which is "bound applications," which are "tied to
television content and only displayed on the television or made available for
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invocation by the customer when explicitly triggered by the content owner."
Id. ( emphasis added). Contrary to Appellants' argument, we do not find
support for the assertion that "'bound application' clearly describes 'bound
interactive content,' while the content to which the bound interactive content
is tied (and to which it gives additional functionality) clearly describes 'non-
interactive content'." App. Br. 10. Appellants' augment, that "'bound
application' clearly describes 'bound interactive content'," appears to
confuse the application ("bound application") with the result that is
produced by it having been "tied" to content ("bound interactive content");
yet these are not the same. Id. Further, Appellants' argument that "the
content to which the bound interactive content is tied ( and to which it gives
additional functionality) clearly describes 'non-interactive content"' also is
unpersuasive because the passage uses the term content, without specifying
whether the content is "interactive" or "non-interactive." Id.
Even if, however, one of ordinary skill in the art would have known
what "non-interactive content" means generally, understanding of
terminology is not the end of the inquiry, for the written description
requirement of§ 112, first paragraph, requires that the Specification describe
the claimed invention in sufficient detail that one skilled in the art can
reasonably conclude that the inventor had possession of the claimed
invention at the time of filing. See, e.g., LizardTech, 424 F.3d at 1344--45.
Here, there is no indication from reading the Specification that the inventor
had possession of the recited use of non-interactive content, when "non-
interactive" content appears nowhere in the Specification and "content" is
only by itself and in combination with "interactive." See generally Spec.
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Appellants also argue that the Specification discloses "electronic
program guide (EPG) reference data correspond[ing] to reference data for
non-interactive content" and "analysis of interactive application events
based on customer usage of the interactive content," which Appellants assert
disclose claim 71 's "reference data comprises at least non-interactive
content reference data; and said third plurality of data files comprise at least
a correlation of said non-interactive content reference data" ( emphasis
added). App. Br. 10-12 (citing Spec. 21, 107-110 and Fig. 8). As discussed
above with respect to the "bound application associated with said non-
interactive content" ( emphasis added) limitation, the specification is not
specific with respect to whether the referenced "content" is "non-interactive"
or "interactive." Id.
In view of the foregoing, on this record, we are unpersuaded the
Examiner erred in rejecting claim 71 as failing to meet the written
description requirement of§ 112, first paragraph.
New Ground of Rejection of Claims 33-37, 70, 72, 76, and 77
under§ 112, First Paragraph (37 C.F.R. § 41.50(b))
For the reasons discussed above with respect to claim 71, we enter a
new ground of rejection of claims 33-37, 70, 72, 76, and 77 under 35 U.S.C.
§ 112, first paragraph. Independent claims 33 and 76 each recite "non-
interactive content," which is nowhere mentioned in the Specification.
Independent claim 33 recites "generate a second plurality of data files,
said second plurality of data files configured to utilize said information
received via said first interface to describe one or more tuning events of said
particular ones of said customer devices with respect to said non-interactive
content" ( emphasis added). Appellants' Specification does not disclose
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"tuning events" of the "customer devices" with respect to "non-interactive
content" specifically. Accordingly, we find one skilled in the art would not
reasonably conclude that the inventor had possession of the claimed
invention at the time of filing."
Independent claim 7 6 recites "customer devices configured to receive
... non-interactive content and interactive content bound to said non-
interactive content." Here in particular, we are unable to identify any
disclosure of two different types of content (interactive and non-interactive)
being bound.
Because claims 34--37, 70, and 72 depend from claim 33 and claim 77
depends from claim 76, we reject claims 33-37, 70, 72, 76, and 77 as
inheriting by dependency the noted deficiencies discussed above.
LizardTech, 424 F.3d at 1344--45.
The Rejection of Claims 33-37, 70, and 76 under 35 U.S.C. § 102(b)
Appellants argue error in the Examiner's rejection of claim 33
because "Marsh is silent as to any received information which describes one
or more user activities of customer devices with respect to interactive
content." App. Br. 18. Appellants also argue
the generated viewing log of Marsh includes only user activity
data at a viewing device related to non-interactive content, and
the reference is silent to the log describing one or more user
activities at a viewing device with respect to interactive content,
as would be required to anticipate the features of Claim 3 3.
Reply Br. 7.
The Examiner finds Marsh describes the argued limitation. Ans. 6,
12-13 (citing Marsh Figs. 1, 5 and ,r,r 7, 36, 78). Specifically, Marsh
describes
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The system monitors the user's viewing habits to determine what
kinds of programs the user watches, the attribute values of the
programs, how long the user watches each program, etc., and
builds a user viewing log. At certain intervals the user viewing
log is utilized to update the user's UPP [(User Preference File)],
thereby enriching the user's UPP with additional information
over time ....
. . . . At predetermined intervals, a preference inference engine
134 builds up the UPP 126 using information contained in the
user viewing log 132 .
. . . . In addition to determining new user preferences by the
preference inference engine 134, the user may, from time to time,
request a questionnaire to update the user's UPP 126. If the user
makes such a request ("Yes" branch block 516), then the user is
provided with a questionnaire at block 518 and answers to the
questionnaire are received at block 520. If the user does not
request a questionnaire ("No" branch block 516), then block 518
and block 520 are omitted.
Marsh ,r,r 7, 36, 78. The Examiner finds claim 33's use of received
information "to describe ... one or more user activities of said particular
ones of said customer devices with respect to said interactive content" reads
on Marsh's receipt, completion, and subsequent use of the questionnaire to
update the UPP. Ans. 13 ("the user receives content and interact with it via
user interface," referring to the questionnaire).
We are not persuaded of error. Appellants' argument that Marsh "is
silent to the log describing one or more user activities at a viewing device
with respect to interactive content, as would be required to anticipate the
features of Claim 33" (Reply Br. 7) is unpersuasive because Appellants
overlook that the Examiner maps "interactive content" to the questionnaire
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itself, the received information from which the user's UPP is updated.
Appellants do not challenge the Examiner's construction of "interactive
content" to include the questionnaire. To the extent Appellants argue that
the UPP is not the log and the log must describe "activities at a viewing
device with respect to [both non-interactive content and] interactive content"
(id.), Appellants do not persuasively challenge the Examiner's mapping of
the argued limitation to two different data files, the UPP and the log (Ans.
13). The limitation recites a second "plurality" of data files, which does not
preclude two different files.
Accordingly, we sustain the Examiner's rejection of claim 33 and of
claims 34--37 and 70, argued therewith.
Additional Issues
Because the issues we have addressed above are dispositive, we
exercise our discretion and do not reach the remaining issues. Cf In re
Basel! Poliolefine, 547 F.3d 1371, 1379 (Fed. Cir. 2008) ("Having
concluded that the Board properly affirmed the rejection of claims 1-52 of
the '687 patent based on obviousness-type double patenting in view of the
'987 patent, we need not address the remaining issues raised."); Ex parte
Gutta, No. 2008--4366, 93 USPQ2d 1025, 1036 (BPAI 2009) (precedential)
( declining to reach prior art rejections because the decision regarding
patentability under §§101 and 112 was dispositive).
DECISION
We affirm the Examiner's decision rejecting claims 33-37, 70, 71, 72,
76, and 77 and we newly reject claims 33-37, 70, 72, 76, and 77 under 35
U.S.C. § 112.
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TIME TO RESPOND
This decision contains a new ground of rejection pursuant to 3 7
C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MANUAL OF PA TENT EXAMINING PROCEDURE § 1214.01 (9th
Ed., Rev. 08.2017, Jan. 2018).
AFFIRMED;
37 C.F.R. § 4I.50(b)
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