Ex Parte Hafez et al

Patent Trial and Appeal Board

Oct 11, 2016

13335600 (P.T.A.B. Oct. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/335,600 12/22/2011 Basil Hafez
30636 7590 10/12/2016
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
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. CONFIRMATION NO.
40205/02902 4921
EXAMINER
VELEZ-LOPEZ, MARIO M
ART UNIT PAPER NUMBER
2144
MAILDATE DELIVERY MODE
10/12/2016 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 BASIL HAFEZ, ANTONY PETERSEN, DAVID CHUNHA,
A. MICHAEL CURTES, and MATTHEW MAHONY
Appeal2015-005568
Application 13/335,600
Technology Center 2100
Before ROBERT E. NAPPI, SCOTT E. BAIN, and
STEVEN M. AMUNDSON Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1and3 through 21, which constitute
all the claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal2015-005568
Application 13/335,600
Il'.JVENTI ON
The invention is directed to a method for use on a mobile device such
that consumers can view advertisements interspersed with other applications.
The method makes use of a recommendation engine that compares keywords
associated with a content application to keywords associated with a
customer profile. See Abstract of Appellants' Specification.
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the invention and reproduced below:
1. A method, executed on a computer, for providing
content to a mobile device based on a customer profile, the
method comprising:
accessing a server, by a computer, for a master list
of content applications, each content application:
being associated with a displayable graphic,
representing at least one of a mobile device
application and an advertisement, and
including at least one application keyword;
accessing a database, by the computer, for
customer profiles, each customer profile including at
least one customer keyword;
generating, by the computer, a production list
comprising select ones of the content applications of the
master list, the select content applications in the
production list including at least one application keyword
that matches the at least one customer keyword of the
one or more customer profiles; and
transmitting, by a transceiver associated with the
server, the production list to a mobile device, wherein the
mobile device presents a graphical presentation that uses
the displayable graphics associated with the one or more
content applications in the production list.
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Appeal2015-005568
Application 13/335,600
REFERENCES AND REJECTIONS AT ISSUE
The Examiner rejected claims 1, 4, 6 through 8, 11 through 19, and 21
under 35 U.S.C. § 103(a) as being unpatentable over Brown (US
2010/00088367 Al, Apr. 8, 2010), Clare (US 7,409,208 Bl, Aug. 5, 2008),
Daley (US 2009/0011744 Al, Jan. 8, 2009) and Rajpure (US 2010/0076841
Al, Mar. 25, 2010). 1 Final Act. 2-8.2
The Examiner rejected claims 3 and 9 under 35 U.S.C. § 103(a) as
being unpatentable over Brown, Clare, Daley, Rajpure, and Bongiovanni
(WO 00/051050 Al, Aug. 31, 2000). Final Act. 8-9.
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Brown, Clare, Daley, Rajpure, and Wasko (US
2011/0061010 Al, Mar. 10, 2011). Final Act. 9-10.
The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Brown, Clare, Daley, Rajpure, and Wood (US
2005/0132331 Al, June 16, 2005). Final Act. 10-11.
The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Brown, Clare, Daley, Rajpure, and Thorkelsson (US
2011/0208801 Al, Aug. 25, 2011). Final Act. 11-12.
1 Page 8 of the Final Office Action identifies claim 8 as included in the
rejection.
2 Throughout this Opinion we refer to the Appeal Brief filed October 21,
2014, Reply Brief filed May 7, 2015, Final Office Action mailed April 21,
2014, and the Examiner's Answer mailed on March 12, 2015.
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Appeal2015-005568
Application 13/335,600
ISSUES
Appellants argue, on pages 4 through 8 of the Appeal Brief and pages
2 through 4 of the Reply Brief, that the Examiner's rejection of independent
claims 1 and 21 is in error. These arguments present us with the following
issues:
1) Did the Examiner err in finding that Brown, Clare, Daley, and
Rajpure teaches a content application including a keyword and a
matching between that keyword and a keyword in a customer
profile?
2) Did the Examiner err in concluding the skilled artisan would
combine the teachings of Brown, Clare, Daley, and Rajpure?
Appellants' arguments with respect to the rejections of claims 3, 5, 9,
10, and 20 present us with the same issues as presented with respect to claim
1.
ANALYSIS
We have reviewed Appellants' arguments in the Brief, the Examiner's
rejections and the Examiner's response to the Appellants' arguments.
Appellants' arguments have not persuaded us of error in the Examiner's
rejections of claims 1 and 3 through 21. With respect to the first issue,
Appellants argue that claim 1 recites the customer profile and the content
application includes at least one keyword and that a match of the keywords
is used to generate the production list. App. Br. 5. Appellants argue that
Rajpure does not teach using keywords from a customer profile in a match,
rather the only keyword match is based upon a search term. App. Br. 5.
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Appeal2015-005568
Application 13/335,600
Appellants further argue that "there is no indication that the references
disclose that the content application includes keywords particularly for the
purpose of the matching process with customer profile keywords." App Br.
6. With respect to the teachings of Clare, Appellants argue that Clare does
not teach that content applications (programs) have keywords associated
with them and that even if the category types for the programs were
considered keywords, "the matching process in Clare does not utilize any
program keyword relative to customer keywords." App. Br. 6.
The Examiner provides a detailed point-by-point response to
Appellants' arguments on pages 2 through 9 of the Answer. The Examiner
identifies that it is the combination of the references which teaches the
disputed limitations. Specifically, the Examiner finds that Clare teaches that
each of the applications is associated with a category (the category being
considered a keyword) and that Clare uses this category to filter applications
using the user profile. Ans. 3. Further, the Examiner finds that Daley
teaches filtering using keywords. Ans. 3. Finally, the Examiner states
"Rajpure is incorporated in the combination for further affirmation of the
concept matching results using content information and profile information."
Ans. 4. We have reviewed the Examiners' findings in the Answer and Final
Action as well as the underlying teachings in the references, and we concur
with the Examiner.
Appellants' arguments directed to Raj pure not teaching the claimed
matching between keywords of a customer profile and content application
are not persuasive as the Examiner has relied upon the combination of the
references to teach this feature. Further, Appellants' arguments directed to
Clare not teaching that content applications have keywords is not persuasive.
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Appeal2015-005568
Application 13/335,600
\Ve note that Appellants' Specification does not define a keyword. For
example, paragraph 29 provides several examples of keywords, all of which
are descriptors of the underlying application or customer, but includes no
specific definition which precludes the category designators taught by Clare.
Thus, we consider the Examiner's equating of categories to be reasonable
and concur with the Examiner that the filtering of applications using
category and user preferences to suggest the claimed matching (see, e.g.,
Clare col. 13, 11. 41---62, col. 9, 11. 21-32, 42---62, which discusses categories
of applications being used to create catalogs and that a user profile includes
catalog preferences). Accordingly, Appellants' arguments directed to the
first issue have not persuaded us of error in the Examiner's rejection.
Appellants' arguments directed to the second issue assert, as discussed
above, that Rajpure does not teach using keywords from a customer profile
in a match. Further, Appellants argue that even if the combination of the
other references teaches use of keywords, none of the references teaches the
matching a keyword of a customer profile to a keyword of a content
application. App. Br. 7. Thus, Appellants conclude the Examiner has used a
piecemeal analysis which is based upon hindsight and speculation. App. Br.
7-8.
The Examiner has responded finding that Clare, Daley, and Brown
together teach filtering content based upon user preference (identifying that
the filtering process has to match data). Ans. 10. Further, the Examiner
provides a reasoned rationale as why the skilled artisan would combine
Rajpure with the other references. Ans. 10.
We concur with the Examiner and are not persuaded of error by
Appellants' arguments. Appellants' arguments address the teaching of
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Application 13/335,600
Rajpure and not the combination of the other references. Further, as
discussed above, the filtering process of Clare suggests the claimed
matching.
As Appellants' arguments directed to claim 1 only present us with
these two issues, we are not persuaded of error and sustain the Examiner's
rejection of claim 1. Appellants have grouped independent claim 21, and
dependent claims 4, 6 through 8, and 11 through 19, with claim 1.
Accordingly, we similarly sustain the Examiner's rejection of these claims.
The Rejections of Claims 3, 5, 9, 10, and 20.
Appellants' arguments directed to the Examiner's rejections of claims
3, 5, 9, 10, and 20 assert that the additional references used in the rejections,
do not cure the deficiencies in the rejection of claim 1. As Appellants'
arguments directed to the rejection of claim 1 have not persuaded us of
deficiencies in the rejection, we sustain the Examiner's rejection of claims 3,
5, 9, 10, and 20, for the same reasons as discussed with respect to claim 1.
DECISION
We sustain the Examiner's rejections of claims 1 and 3 through 21
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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