Ex Parte Pestoni et al

Board of Patent Appeals and Interferences

May 15, 2007

09928347 (B.P.A.I. May. 15, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FLORIAN PESTONI and JOEL L. WOLF
____________

Appeal 2007-0962
Application 09/928,347
Technology Center 2100
____________

Decided: May 15, 2007
____________

Before LEE E. BARRETT, JAY P. LUCAS, and JOHN A. JEFFERY,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2007-0962
Application 09/928,347

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
STATEMENT OF THE CASE
Appellants invented a method of enabling a content provider to
maximize bandwidth allocation while also enabling the audience to gain
more control over the content they receive. Specifically, the invention
involves collaborative content programming in which users express their
preferences by voting on the content they receive. These votes are then used
to determine what content to deliver at any point in time. Bandwidth is
dynamically allocated to multiple channels and users are assigned to the
channel(s) that best match their preferences.1 Claim 1 is illustrative:
1. A method of optimizing bandwidth allocation based on selective
filtering, distribution of content and allocation of users to said distributed
content, one or more steps of said method performed over a network, said
method comprising:

dynamically allocating said bandwidth to a plurality of
communication channels, each of said channels retaining one or more
instances of content;

recursively receiving user preferences of content information from
multiple users, said preferences comprising one or more of: selection
requests for specific content, evaluations of existing content, and evaluations
of potential content;

dynamically retaining within a selected channel a collection of
specific instances of content based on a collation of said preferences, said
collection placed on an allocated communication channel over a period of
time; and

1 See generally Specification page 6, line 16 through page 8, line 4.
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dynamically allocating user access to said channels based on a best
match with said preferences.

The Examiner relies on the following prior art references to show
unpatentability:
Noll US 2002/0054087 A1 May 9, 2002
(filed Apr. 17, 2001)
Hosken US 6,438,579 B1 Aug. 20, 2002
(filed Jul. 14, 2000)

The Examiner’s rejection2 is as follows:
Claims 1-23 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Noll in view of Hosken.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Brief 3 and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants could have made but chose not to
make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii).

2 The Examiner withdrew a previous rejection of claims 9 and 22 under 35
U.S.C. § 112 (Answer 3).
3 An Appeal Brief was first filed on Nov. 9, 2005 and a first Examiner’s
Answer filed Jan. 27, 2006. A second Appeal Brief was filed on Aug. 23,
2006 to correct various defects identified by the Examiner. On Sept. 18,
2006, a third Brief was filed. In response, the Examiner filed an Examiner’s
Answer on Oct. 6, 2006. However, a third Examiner’s Answer was filed on
Nov. 15, 2006 to include a missing signature. See Appeal Center
Communication filed Oct. 26, 2006 (notifying Examiner of missing
signature). In this decision, we refer to the third Brief (filed Sept. 18, 2006)
and the Answer filed Nov. 15, 2006.
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OPINION
It is our view, after consideration of the record before us, that the
evidence relied upon and the level of skill in the particular art would have
suggested to one of ordinary skill in the art the invention set forth in the
claims on appeal. Accordingly, we affirm.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17,
148 USPQ 459, 467 (1966). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . . [H]owever, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding independent claim 1, the Examiner's rejection essentially
finds that Noll teaches every claimed feature except for receiving user
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content preferences from multiple users. The Examiner cites Hosken as
teaching this feature and concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify Noll to collate
preferences from multiple users to increase efficiency, provide consistency
with users’ personal interests, and enable a wider variety of content
recommendations to users (Answer 5-6, 23).
Appellants argue that the prior art does not disclose the claimed
dynamic allocation and collation elements as claimed (Br. 10). Additionally,
Appellants argue that it is improper to combine Hosken with Noll since both
references disclose different content delivery methods: Noll provides
channels, while Hosken provides a static list or table of content information
(Br. 10-11). Appellants add that even if the combination was proper, the
combination at best teaches comparing one user’s profile against other
users—not collating preferences as claimed (Br. 11).
Appellants argue that Noll’s content is not dynamically allocated or
retained, but rather merely classified and filtered before it is sent to the user
(Br. 11). Appellants further argue that Noll is silent regarding collating
preferences from multiple users, but rather merely collects content based on
single user preferences (Br. 12-13).
Regarding the secondary reference to Hosken, Appellants contend that
Hosken does not disclose dynamically allocating bandwidth in multiple
channels to which users are allocated access. According to Appellants,
Hosken merely discloses a content referral system tailored to the
personalized interests of a single user (Br. 13-14). Appellants also contend
that Hosken does not disclose collating preferences by multiple users, but
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merely compares one user’s profile to another user’s profile so that
suggestions are presented to an individual user (Br. 14).
The Examiner argues that Noll dynamically allocates bandwidth to
multiple channels as claimed. In this regard, the Examiner notes that Noll’s
“virtual channels” have varying bandwidth requirements depending on
particular types of content allocated to a particular channel. Therefore, the
bandwidth is dynamically allocated to each channel in Noll based on the
content assigned to the channel (Answer 20-21).
The Examiner also argues that although Noll collates preferences
from a single user to tailor content delivered via virtual channels, Hosken
teaches tailoring content for a user based on collating preferences of multiple
users. According to the Examiner, modifying Noll with Hosken’s
collaborative approach would, among other things, expand the types of
content that are available to the user (Answer 21-23).
We will sustain the Examiner’s rejection of independent claim 1. At
the outset, we agree with the Examiner that Noll discloses essentially every
feature of claim 1 except for receiving user content information preferences
from multiple users.
Noll’s personalized content delivery system transmits content 122 on
“virtual channels” 124 over a broadband connection to user machine 18
based, at least in part, on user feedback (Noll, ¶ 0039; Fig. 1). To this end,
Noll’s system targets or filters content for users based on user personal
profiles, feedback, or other criteria. Not only does the user’s personal
profile include descriptive data about the user and the user’s content
preferences, but the user’s profile can be dynamically updated to reflect
changes in the user’s preferences (Noll, ¶ 0063).
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In operation, POP client server 80 receives virtual channels 124
broadcast from the network operations center (NOC) 18. The POP client
server, in turn, propagates those virtual channels that have actually been
requested by at least one client 20 to user machine 18 (Noll, ¶¶ 0076, 0044;
Fig. 11).
Significantly, the POP client server in Noll also determines the
bandwidth capacity of the user machine 18. Based on this determination,
only those virtual channels that do not exceed the available bandwidth are
propagated to the user machine (Noll, ¶¶ 0077-78; Fig. 12).4 In our view,
such a selective allocation of bandwidth to accommodate transmitted virtual
channels in Noll fully meets the dynamic bandwidth allocation and user
access allocation limitations of claim 1. Appellants’ arguments to the
contrary are simply not commensurate with the scope of the claim language.
Although Noll indicates that content is targeted based on a single
user’s profile, we see no reason why the skilled artisan would not have
combined the teachings of Hosken – a system that recommends content
based on multiple users’ preferences – with Noll essentially for the reasons
stated by the Examiner.
Hosken delivers content recommendations to a user based on
combined profiling data collected from multiple users. Specifically,
Hosken’s system utilizes (1) explicit profiling data provided by the user, and
(2) implicit profiling data derived by the referral system 20 to provide
customized recommendations for particular users. Such profiling data is

4 See also Noll, ¶ 0066 (noting that content scheduler 138 may schedule
content based on the bandwidth necessary to receive the content (e.g.,
scheduling high-bandwidth content together)).
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combined to form a collaboratively-developed basis for modifying and
expanding on the individualized recommendations that might be otherwise
produced by the referral system (Hosken, col. 4, ll. 44-55).
In a preferred embodiment, Hosken utilizes collected group behaviors
along with user information to ultimately recommend content to the user.
Such group behaviors not only reflect the collective consideration and
review of different content items, the behaviors also are derived from
external polls, rankings, and ratings of different media items (Hosken, col. 9,
ll. 23-52; Fig. 2). In essence, this collaborative function reflects the values
and interests of the user community that ultimately desirably affects the
specific content recommendations (Hosken, col. 9, ll. 33-38). Moreover,
such a function effectively dynamically collates preferences as claimed
giving the term “collation” its broadest reasonable interpretation – an
interpretation that fully comports with Appellants’ definition of the term.5
In view of the stated advantages of utilizing the collective preferences
of multiple users as noted by Hosken above, the skilled artisan would have
ample reason to collate preferences from multiple users in lieu of a single
user’s preferences in Noll when targeting content to the user. By accounting
for preferences across the user community in Noll’s system in lieu of only a
single user, the range of content recommendations would, at a minimum, be
expanded and enhanced.
Although Appellants argue that Noll and Hosken provide different
methods of content delivery (Br. 10-11), the exact method of content
delivery employed in Hosken is not germane to the reason the Examiner

5 See Brief, page 11.
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cited the reference -- namely to show the advantages of using multiple users’
preferences to recommend content to a user. Indeed, Noll amply teaches
delivering content to users over virtual channels.
In short, we find ample reasons on this record why the skilled artisan
would have combined the teachings of Hosken with Noll. Although
Appellants contend that “[t]he teaching to modify the references must come
from the references themselves” (Br. 11; emphasis added), we note that the
reason to combine references need not be found in the references
themselves, but rather may be found in the knowledge of the skilled artisan
or from the nature of the problem to be solved. DyStar Textilfarben GmbH
& Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1366,
80 USPQ2d 1641, 1649 (Fed. Cir. 2006); see also In re Kahn, 441 F.3d 977,
987-88, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); KSR Int’l Co. v. Teleflex
Inc., 127 S. Ct. at 1741, 82 USPQ2d at 1396.
For at least these reasons, we will sustain the Examiner’s rejection of
independent claim 1. Since Appellants have not separately argued the
patentability of dependent claims 2-8 and 10, these claims fall with
independent claim 1. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d
1525, 1528 (Fed. Cir. 1987); see also 37 C.F.R. § 41.37(c)(1)(vii).
Regarding claim 9, Appellants argue that Hosken does not disclose
dynamically allocating user access based on a user’s preferences with that of
the collaborative preferences of the one or more dynamically allocated
communication channels as claimed (Br. 16). The Examiner responds that
Noll discloses a single user content system, and Hosken enables content
recommendations based on multiple user preferences (Answer 23-24).
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We will sustain the Examiner’s rejection of claim 9. We agree with
the Examiner that the collective teachings of Noll and Hosken reasonably
suggest dynamically allocating user access to the dynamically-allocated
channels as claimed giving the limitations their broadest reasonable
interpretation. First, Noll’s targeting content based on the user’s preferences
and limiting user access to only those virtual channels based on the available
bandwidth in effect allocates user access to dynamically-allocated channels.
Our previous discussion of Noll applies equally here and we incorporate that
discussion by reference.6 Although Noll does not disclose matching
collaborative preferences as claimed, Hosken amply discloses
recommending content based on collaborative preferences.7 In our view, the
collective teachings of Noll and Hosken reasonably would have suggested to
the skilled artisan allocating user access based on matching collaborative
preferences as claimed. The Examiner’s rejection of claim 9 is therefore
sustained.
Regarding independent claim 11, Appellants argue, among other
things, that the prior art does not disclose a content engine aggregating the
specific content requests and requestor evaluations of specific content as
claimed. According to Appellants, Noll provides content to a single user
based on their individual preferences, and Hosken compares one user’s
profile to another user’s profile such that suggestions are made to one
individual user (Br. 17-18). The Examiner argues that Hosken discloses a
content engine that aggregates actions and behaviors of multiple users and

6 See pages 6-7, supra, of this opinion.
7 See id. at 7-8.
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utilizes specific content requests in conjunction with other users’ collected
evaluations (ratings) and that such a teaching would have been reasonably
combinable with Noll’s system (Answer 14-15, 24-25).
We will sustain the Examiner’s rejection of claim 11 essentially for
the reasons stated by the Examiner. As the Examiner indicates, Hosken
teaches aggregating both content requests and evaluations of specific
content. In our view, such a teaching would have been reasonably
combinable with the content delivery system of Noll – a system that
effectively connects content requestors to available channels – for the
reasons previously discussed.8
For at least these reasons, the Examiner’s rejection of independent
claim 11 is sustained. Since Appellants have not separately argued the
patentability of dependent claims 12-21, these claims fall with independent
claim 11. See 37 C.F.R. § 41.37(c)(1)(vii).
Regarding claims 22 and 23, Appellants argue that Hosken does not
disclose (1) using channels; (2) group or joint decision making regarding
provided content; and (3) collating preferences. Appellants also reiterate
that there is no suggestion or motivation to combine the references as the
teaching must come from the references themselves (Br. 17-18). The
Examiner argues, among other things, that Appellants’ arguments with
respect to the “group or joint decision making” function are not
commensurate with the claim language. The Examiner also argues that
collating preferences merely requires collecting preferences – a feature
disclosed in the prior art (Answer 25).

8 See id.
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We will sustain the Examiner’s rejection of claims 22 and 23. As we
discussed previously, Noll amply discloses providing user access to certain
virtual channels based on the user’s preferences and available bandwidth.
Our previous discussion of Noll applies equally here and we incorporate that
discussion by reference.9 Second, as we noted previously, Hosken utilizes
collected group behaviors along with user information to ultimately
recommend content to the user – a feature that would have been reasonably
combinable with Noll for the reasons previously discussed.10
Lastly, we note that neither claim 22 nor claim 23 recites a “collation
of preferences” – a limitation argued by Appellants on the line bridging
pages 18 and 19 of the Brief. Accordingly, Appellants’ argument in this
regard is simply not commensurate with the claim language. In any event,
we agree with the Examiner that Hosken amply suggests collecting users’
preferences: a teaching reasonably combinable with Noll for the reasons
previously discussed.11 For at least these reasons, the Examiner’s rejection
of claims 22 and 2312 is therefore sustained.

9 See id.
10 See id. at 6-7.
11 See id.
12 We note in passing that an apparent typographical error exists in claim 23.
In line 2, the term “selective” should be changed to “selectively” for clarity.
Because the parties did not raise this issue on appeal, it is not before us. In
an ex parte appeal, the Board is basically a board of review. That is, we
review rejections made by patent examiners. Ex parte Gambogi, 62
USPQ2d 1209, 1211 (B.P.A.I. 2001). Accordingly, we leave resolution of
this issue to the Examiner and the Appellants.

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DECISION
We have sustained the Examiner's rejection with respect to all claims
on appeal. Therefore, the Examiner’s decision rejecting claims 1-23 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tdl/ce

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