Ex Parte Doganaksoy et al

Patent Trial and Appeal Board

Jun 28, 2016

12233705 (P.T.A.B. Jun. 28, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/233,705 09/19/2008 Necip Doganaksoy 229093-2 (NBCU:0061) 2587
12640 7590 06/28/2016
NBCUniversal Media, LLC
c/o Fletcher Yoder, P.C.
PO Box 692289
Houston, TX 77269-2289
EXAMINER
SHANKER, JULIE MEYERS
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
06/28/2016 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 NECIP DOGANAKSOY, ANGSHUMAN SAHA,
JOSEPH CATES, AARON SHAW MARKHAM,
JAYANTH KALLE MARASANAPALLE,
and MICHELLE MY-LY HUYNH
____________

Appeal 2014-000738
Application 12/233,705
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 3–16, 18 and 19. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
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BACKGROUND
Appellants’ invention is directed to a method and system for statistical
tracing of digital asset infringements and infringers on peer-to-peer networks
(Spec. 1).
Claim 1 is illustrative:
1. A method for reporting information regarding
unauthorized distributors of protected content on a peer-to-peer
network, comprising:
processing data relating to the peer-to-peer network, via a
computer, to identify an individual unauthorized distributor of
digital content owned by a content owner;
characterizing, via the computer, the data based upon one
or more variables relating to a sent notice action to produce
characterized data;
segmenting, via the computer, the characterized data into
groupings according to the one or more variables relating at
least to one of a behavior, characteristic, or trait of the notice
action; and
reporting the groupings, via the computer.

The Examiner relies on the following prior art reference as evidence
of unpatentability:
Schmidt
Garland
US 2002/0069098 A1
US 2005/0198020 A1
June 6, 2002
Sept. 8, 2005

Bhattacharjee et al., Impact of Legal Threats on Online Music Sharing
Activity: An Analysis of Music Industry Legal Actions, JOURNAL OF LAW AND
ECONOMICS, vol. XLIX (April 2006) (hereinafter “Bhattacharjee”).

Appellants appeal the following rejections:
Claims 1, 3, 5–11, 13–16, 18, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Bhattacharjee and Schmidt.
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Claims 4 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Bhattacharjee, Schmidt, and Garland.

ISSUES
Did the Examiner err in rejecting the claims because Bhattacharjee
does not disclose characterizing data based upon one or more variables
relating to a sent notice action?
Did the Examiner err in rejecting the claims because Bhattacharjee
does not disclose segmenting characterized data into groupings according to
one or more variables relating to at least one of a behavior, characteristics or
trait of the notice action?
Did the Examiner err in rejecting the claims because Schmidt does not
relate to reporting data based upon sent notice actions?

FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. Final Act. 3–4.
Additional findings of fact may appear in the Analysis that follows.

ANALYSIS
Rejection of claims 1, 3, 5–11, 13–16, 18 and 19
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Bhattacharjee does not disclose characterizing
data based upon one or more variables relating to a sent notice action.
Appellants specifically argue that Bhattacharjee characterizes data based on
sharer data, not based on a sent notice (App. Br. 10). In explaining this
argument, Appellants state that characterizing data based on a sent notice
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action, as disclosed in their Specification, relates to characterizing data
based on variables related to sending rate, statistical summary of how
promptly notices are sent after infringement, and statistical summary of
infringers stopping after notice.
We agree with the Examiner’s response at page 3 of the Answer that
although the Specification provides examples of what a variable relating to a
sent notice action may include it does not limit what a variable may be. We
note that paragraph 81 of Appellants’ disclosure states that other attributes or
ways of characterizing data are within the scope of the invention. We agree
with the finding by the Examiner that the teaching in Bhattacharjee that
characterization of infringers according to the sharing activity of infringers
in response to events 1–3, which the Examiner found to be sent notices, is a
teaching of characterizing data based on variables related to a sent notice.
Ans. 3 (citing Bhattacharjee 103–104). We are not convinced that events 1–
3 of Bhattacharjee are not sent notices because they are not sent directly to
individual infringers because the claims do not require individual notice be
sent to individuals. Therefore, we find that the events of Bhattacharjee of a
general announcement of intent to pursue infringers, the filing of lawsuits
against infringers, and court rulings against infringers are notice actions, and
serve to give notice to infringers of action that may be pursued.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Bhattacharjee does not disclose segmenting
characterized data into groupings according to one or more variables relating
to at least one of a behavior, characteristic, or trait of the notice action. The
Appellants argue that the claim requires that the variables relate to at least
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one of a behavior of the notice action, characteristic of the notice action, or
trait of the notice action. The Examiner interprets the claim to be broad
enough to cover segmenting the characterized data according to variables
related to behavior or characteristics not related to the sent notice. This
interpretation is consistent with the disclosure in paragraph 82 of
Appellants’ Specification which states that data is segmented according to
infringer type and that the infringer types include one-time infringers, casual
infringers, and recidivist infringers. As such, we agree with the Examiner
that the teaching in Bhattacharjee of dividing the total population of illegal
file sharers into smaller groups according to their behaviors is a teaching of
segmenting in accordance with claim 1 and in view of the Specification.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Schmidt does not relate to reporting data based
upon sent notice actions. We agree with the Examiner’s response to this
argument found on pages 5–6 of the Answer. In addition, we note that it is
generally obvious to automate a known manual procedure or mechanical
device. See Leapfrog Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157,
1161 (Fed. Cir. 2007).
In view of the foregoing, we sustain the Examiner’s rejection of claim
1. We also sustain the rejection as it is directed to claims 3–10 because the
Appellants have not argued the patentability of these claims.
We also are not persuaded of error on the part of the Examiner in
rejecting claims 11 and 16 by Appellants’ argument that Bhattacharjee does
not disclose segmenting into groups based on behavior, characteristics, or
traits of unauthorized distributors that were issued notice actions because
Bhattacharjee does not disclose issuing notices to some of the unauthorized
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distributors. In making this argument, Appellants once again state that
Bhattacharjee does not disclose notice actions. As we found above,
Bhattacharjee does disclose issuing notice actions. In addition, the
Examiner relies on Schmidt, not Bhattacharjee, for teaching sending notice
actions to some of the unauthorized distributors (Final Act. 8).
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We also agree with the Examiner that Schmidt discloses sending
notices to some but not all of the unauthorized distributors by disclosing in
paragraph 53 that an investigator searches through a list of offenders to
determine who should have action taken against them.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the cited references do not measure notice
effectiveness, because Bhattacharjee discloses that the amount of sharing is
compared before and after the notice actions or events, and thus, can
reasonably be construed as measuring notice effectiveness. We also are not
persuaded by Appellants’ argument that Bhattacharjee does not disclose
determining the effectiveness of each notice action because claim 11 does
not recite that the effectiveness of each notice action is assessed. Thus
Appellants’ argument is not commensurate with the scope of the claim and
is broadly recited to include assessing the effectiveness of multiple notice
actions.
In view of the foregoing, we sustain this Examiner’s rejection.
Rejection of claims 4 and 12
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We also sustain the rejection of claims 4 and 12 because the
Appellants rely on the arguments made in the previous rejection to address
this rejection (App. Br. 16).

DECISION
The decision of the Examiner 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). See 37 C.F.R.
§ 1.136(a)(1) (2009).

AFFIRMED