Ex Parte Flanagan et al

Patent Trial and Appeal Board

Sep 7, 2017

11643360 (P.T.A.B. Sep. 7, 2017)

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.
11/643,360 12/20/2006 Eugene L. Flanagan III 20271/ARB 158US 01 3663
81905 7590 09/11/2017
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/11/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
j flight @ hfzlaw. com
mhanley@hfzlaw.com
docketing@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EUGENE L. FLANAGAN III,
JACK C. CRYSTAL,
and ALAN R. NEUHAUSER
Appeal 2015-006307
Application 11/643,360
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
TARA L. HUTCHINGS, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Eugene L. Flanagan III, Jack C. Crystal, and Alan R. Neuhauser
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims
33—53, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 16, 2014) and Reply Brief (“Reply Br.,” filed June 11,
2015), and the Examiner’s Answer (“Ans.,” mailed April 22, 2015), and
Final Action (“Final Act.,” mailed June 16, 2014).
Appeal 2015-006307
Application 11/643,360
The Appellants invented a way of conducting research operations.
Specification 1: Title; para. 48.
An understanding of the invention can be derived from a reading of
exemplary claim 33, which is reproduced below (bracketed matter and some
paragraphing added).
33. A method for producing research data, comprising:
[1] producing media exposure data in a research data monitor,
wherein the media exposure data is produced by the
research data monitor from acoustic audio associated
with a media presentation;
[2] producing media data usage information in a portable user
appliance (PUA),
wherein the media data usage information is produced by
the PUA from non—acoustic data associated with the
media presentation;
[3] transmitting the media exposure data from the research data
monitor to the PUA
while the research data monitor and the PUA are both
simultaneously carried on a person of a user,
the research data monitor provided to the user in
connection with a research study, the PUA being owned
by the user independent of the research study;
[4] generating the research data in the PUA by associating the
media exposure data with the media data usage;
and
[5] transmitting the research data from the PUA to a research
data processing facility
for combination with data from a plurality of other
PUAs.
2
Appeal 2015-006307
Application 11/643,360
The Examiner relies upon the following prior art:
Neuhauser et al.
Dupree
Kelly
Headley et al.
US 2004/0064319 Al
US 2005/0234774 Al
US 2006/0218034 Al
US 2009/0007169 Al
Apr. 1, 2004
Oct. 20, 2005
Sept. 28, 2006
Jan. 1, 2009
Claims 33—36, 38-43, 45, and 46 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dupree and Neuhauser.
Claims 37 and 44 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dupree, Neuhauser, and Kelly.
Claims 47—53 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Dupree, Neuhauser, and Headley.2
ISSUES
The issues of obviousness turn primarily on whether Dupree and
Neuhauser describe transmitting media exposure data from a research data
monitor to a PUA while the research data monitor and the PUA are both
simultaneously carried on a person of a user. The issues of added new
matter and indefiniteness are newly raised with regard to the limitation of
ownership.
2 Although the statutory statement of rejection excludes claim 53 (Final Act.
15), the analysis includes this claim. Final Act. 16.
3
Appeal 2015-006307
Application 11/643,360
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants ’ Disclosure
01. The sole reference regarding ownership in the originally filed
disclosure is “the identities of the owners and/or users of the
PUA’s to be employed are not ascertainable and thus are obtained
from the users themselves.” Spec. para. 88.
Facts Related to the Prior Art
Dupree
02. Dupree is directed to gathering data on the usage of
publications, along with exposure to products and/or presence in a
commercial establishment. Dupree para. 2.
03. Dupree describes gathering data concerning exposure of an
individual to predetermined products and usage of a publication
thereby. Dupree’s system comprises a portable monitor capable
of being carried on the person of the individual, the portable
monitor comprising a product exposure monitor and a publication
usage monitor. Dupree para. 23.
Neuhauser
04. Neuhauser is directed to gathering data reflecting receipt of,
and/or exposure to, audio data by detecting a code in, and
extracting a signature from, audio data. Neuhauser para. 1.
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Appeal 2015-006307
Application 11/643,360
05. After Neuhauser receives the audio data, Neuhauser reproduces
the audio data as acoustic audio data, and a separate monitoring
device detects this acoustic audio data. Neuhauser para. 62.
06. Neuhauser’s audio reproducing system may be any device
capable of reproducing audio data from, for example, a cell phone,
a personal computer, a web appliance, a gaming console, a pager,
or any other device for reproducing prerecorded media.
Neuhauser para. 74.
07. Neuhauser’s monitoring device is a portable monitoring device,
such as, for example, a portable people meter. In these
embodiments, the portable device is carried by an audience
member in order to detect audio data to which the audience
member is exposed. Neuhauser para. 77.
08. Neuhauser’s monitoring device is later coupled with a
communications device, such as a cell phone, in order to
communicate data to, or receive data from, at least one remotely
located communications device. Neuhauser paras. 77—78.
Headley
09. Headley is directed to collecting media consumption data based
on usage information of a media delivery device. Headley 2.
5
Appeal 2015-006307
Application 11/643,360
ANALYSIS
Claims 33—36, 38—43, 45, and 46 rejected under 35 U.S.C. § 103(a) as
unpatentable over Dupree and Neuhauser
Claims 37 and 44 rejected under 35 U.S.C. § 103(a) as unpatentable over
Dupree, Neuhauser, and Kelly
Claim 33 recites “the PUA being owned by the user independent of the
research study” and claim 40 recites “the PUA comprising a cellular
telephone owned by the user.” Neither the claims nor the Specification
clarify what is meant by “owned.” Thus, we enter a new ground of
rejection, infra, of claims 33^44 under 35 U.S.C. § 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
what Appellants’ intend as their invention.
As a procedural matter, we reverse the rejection of claims 33 44 under
§103. A rejection of a claim, which is so indefinite that “considerable
speculation as to meaning of the terms employed and assumptions as to the
scope of such claims” is needed, is likely imprudent. See In re Steele, 305
F.2d 859, 862 (CCPA 1962) (holding that the examiner and the board were
wrong in relying on what, at best, were speculative assumptions as to the
meaning of the claims and basing a rejection under 35 U.S.C. § 103
thereon.) We find it imprudent to speculate as to the scope of claims 33 44
in order to reach a decision on the obviousness of the claimed subject matter
under § 103. It should be understood, however, that our reversal is based on
the indefmiteness of the claimed subject matter and does not reflect on the
merits of the underlying rejection.
6
Appeal 2015-006307
Application 11/643,360
Claims 47—53 rejected under 35 U.S.C. § 103(a) as unpatentable over
Dupree, Neuhauser, and Headley
We are not persuaded by Appellants’ argument that the Dupree-
Neuhauser combination does not teach or suggest transmitting media
exposure data from a research data monitor to a PUA while the research data
monitor and the PUA are both simultaneously carried on a person of a user.
App. Br. 36—37 referring back to pages 16—31. Media exposure data in the
context of the claims is audio, such as entertainment. The recited portable
user appliance (PUA) receives data, either original entertainment content, of
other derivative data, from the audio device and produces data related to
usage. Neuhauser explicitly transmits the audio from the player (recited
research data monitor) to its separate monitoring device (recited PUA)
carried on the same person. FF 05-08. Appellants argue primarily that
Dupree does not describe this, but the Examiner applies Neuhauser.
CONCLUSIONS OF LAW
The rejection of claims 33—36, 38—43, 45, and 46 under 35 U.S.C.
§ 103(a) as unpatentable over Dupree and Neuhauser is improper.
The rejection of claims 37 and 44 under 35 U.S.C. § 103(a) as
unpatentable over Dupree, Neuhauser, and Kelly is improper.
The rejection of claims 47—53 under 35 U.S.C. § 103(a) as unpatentable
over Dupree, Neuhauser, and Headley is proper.
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Appeal 2015-006307
Application 11/643,360
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 33—46 are rejected under 35 U.S.C. § 112,
first paragraph, as lacking a supporting written description within the
original disclosure.
Claim 33 recites “the PUA being owned by the user independent of the
research study” and claim 40 recites “the PUA comprising a cellular
telephone owned by the user.” Neither claim was in the originally filed
application, and both of these limitations were added by amendment filed
May 27, 2014.
The sole reference regarding ownership in the originally filed disclosure
is “the identities of the owners and/or users of the PUA's to be employed are
not ascertainable and thus are obtained from the users themselves.” Spec,
para. 88. Although Appellants cite Specification paragraphs 23, 71, 72, 85,
86, 89—93, 103, 110, 111, 132 as support for this claim limitation (App. Br.
8), only paragraph 88 supports the ownership recital. This paragraph itself
only refers to the identities of owners and/or users not being ascertainable,
so the users provide the identities of themselves and/or the owners. This
paragraph does not recite or even imply that the users are the owners of the
PUA, and makes no mention of ownership being independent of the research
study.
Therefore there is no written description support for these limitations in
the four comers of the originally filed application.
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Appeal 2015-006307
Application 11/643,360
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 33—46 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
invention. Claim 33 recites “the PUA being owned by the user independent
of the research study,” and claim 40 recites “the PUA comprising a cellular
telephone owned by the user.” Neither the claims nor the Specification
clarify what is meant by “owned.” Ownership does not have a plain
meaning such that its metes and bounds are understood by that term alone.
Dictionary definitions are circular, defining “own” in terms of ownership, or
its close companion property possession.3 Law students spend a minimum
of two Property Law semesters learning how slippery this word is. One of
ordinary skill in the technical arts would not have legal training in any event.
Therefore, one of ordinary skill would not understand the metes and bounds
of this limitation in these claims.
DECISION
The rejection of claims 33—46 is reversed.
The rejection of claims 47—53 is affirmed.
The following new grounds of rejection are entered pursuant to
37 C.F.R. §41.50(b).
3 “[T]o have or hold as property : possess”
https://www.merriam-webster.com/dictionary/own (last viewed Sept. 5,
2017). “To have or possess as property”
https://www.ahdictionary.com/word/search.html?q=own (last viewed Sept.
5,2017).
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Appeal 2015-006307
Application 11/643,360
Claims 33—46 are rejected under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure.
Claims 33—46 are rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention.
Our decision is not a final agency action.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(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
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Appeal 2015-006307
Application 11/643,360
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 Patent Examining Procedure § 1214.01.
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)(l)(iv) (2011).
AFFIRMED-IN—PART
41.500?)
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