Ex Parte Flinn et al

Patent Trial and Appeal Board

May 12, 2016

13270019 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/270,019 10/10/2011
53928 7590 05/13/2016
MANYWORLDS, INC
IP DEPARTMENT
5476 BRIDLE CREEK LANE
BRENHAM, TX 77833
FIRST NAMED INVENTOR
Steven Dennis Flinn
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.
Many-09A4 5775
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
MAILDATE DELIVERY MODE
05/13/2016 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 STEVEN DENNIS FLINN and
NAOMI FELINA MONEYPENNY
Appeal2014-004591
Application 13/270,019 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellants' claimed "invention relates to extending the business
process paradigm so as to make processes more explicitly adaptive over
time." (Spec. 1, 11. 8-9.)
1 According to Appellants, the real party in interest is ManyWorlds, Inc.
(Appeal Br. 3.)
Appeal2014-004591
Application 13/270,019
Claims 1, 9, and 18 are the independent claims on appeal. Claim 1 is
representative of the subject matter on appeal and is reproduced below:
1. A method, comprising:
contributing a plurality of usage behaviors to a usage
function through use of a mobile processor-based device; and
interacting with a media instance executed on the mobile
processor-based device, wherein the media instance comprises a
plurality of video elements, wherein the plurality of video
elements are automatically selected for inclusion in, and
arranged in a storyline sequence in, the media instance in
accordance with an inference of a preference based, at least in
part, on the plurality of usage behaviors.
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Postrel (US 2003/0216960 Al, pub. Nov. 20, 2003) and
Robarts (US 7,073,129 Bl, iss. July 4, 2006).
ANALYSIS
Claims 1 and 9
Appellants argue that "Postrel paragraph 31 fail [sic] to teach or
suggest arrangement of elements in a media instance wherein the
arrangement is based on user preferences." (Appeal Br. 11.) Appellants
further argue that Robarts' teaching of TV and radio broadcast messages
received by a system and then filtered "is functionally different than
assembling and arranging elements into media." (Id. at 12.)
Postrel relates to "[a] system and method of obtaining geocentric or
location-specific information over a cellular telephone connection" to
provide a user with "information related to a merchant offering [an]
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incentive for a product of interest to the user that is located in a vicinity of
the remote device." (Postrel, Abstract.) Robarts relates to "[a] system [that]
filters received messages (e.g., unsolicited advertisements) to determine if
they are appropriate for a user based on the non-static, constantly evolving,
context of the user." (Robarts, Abstract.)
We agree with the Examiner's finding that Postrel discloses a
user database [that] may also store a user profile that will be used
by the processor to generate the incentive record 36, for example
by determining what types of restaurants that user generally
prefers and only returning information about such types . . . ,
i-f 0031 ); and interacting with a media instance executed on the
mobile processor-based device (i.e., the user profile could also
contain information about the remote device 1 ... that the
processor will be able to ascertain the type of data to return to the
remote device 1 (e.g. display data, voice data, etc.), i-f 0031 ).
Moreover, Postrel et al disclose data elements are automatically
selected for inclusion in, and arranged in, the media instance in
accordance with an inference of a preference based, at least in
part, on the plurality of usage behaviors ( ... for example by
determining what types of restaurants that user generally prefers
and only returning information about such types ... , i-f 0031 ).
(Final Action 2-3.) Additionally, Robarts discloses receiving broadcast
messages, such as TV and radio, that are then filtered to determine if they
should be presented to the user (Robarts, col. 9, 11. 15-20), and if so, to then
determine "whether the acceptable message(s) should be stored [for later] or
presented immediately to the user." (Id., col. 10, 11. 13-17, col. 13, 11. 16-
19; see Answer 5---6). In other words, Robarts and Postrel disclose filtering
out certain messages and Robarts discloses storing certain filtered messages
for later presentation to the user. For example, in a media instance with
elements 1, 2, 3, and 4, Postrel and Robarts teach filtering out, e.g.,
element 2, and Robarts teaches storing for later presentation, e.g., element 3.
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This would present to the user elements 1, 4, and later, 3 in a media instance.
Thus, the video elements are automatically selected for inclusion in, and
arranged in a sequence.
To the extent Appellants argue that the sequence must be a "storyline
sequence," Appellants provide no special definition of "storyline." (See, e.g.,
Appeal Br. 10-13.) The term "storyline" includes "the events in a book,
movie, etc."
(http://www.macmilliandictionary.com/us/dictionary/american/storyline, last
visited April 25, 2016.) Therefore, under a broadest reasonable
interpretation, the term "storyline sequence" includes a sequence of events in
a book, movie, etc. Further to the above example, elements 1, 2, 3, and 4, in
that order, represent a sequence of events in a book, movie, etc., and thus
represent a storyline sequence. Elements 1, 4, and 3, in that order, represent
a different sequence of events in the book, movie, etc. and, thus, also
represent a storyline sequence.
For the above reasons, Appellants have not persuaded us that the
Examiner erred in concluding that
[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to include wherein the media
instance comprises a plurality of video elements, wherein the
plurality of video elements are automatically selected for
inclusion in, and arranged in a storyline sequence in, the media
instance in accordance with an inference of a preference based,
at least in part, on the plurality of usage behaviors in Postrel, as
seen in Robarts et al, since the claimed invention is merely a
combination of old elements, and in the combination each
element merely would have performed the same function as it
did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable.
(Final Action 4--5.)
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Therefore, we atlirm the rejection of claim 1. Claim 9 is a system
claim with similar limitations to those in claim 1. Therefore, for the same
reasons, we affirm the rejection of claim 9.
Claims 2 and 10
Appellants argue that claim 2 is patentable for the same reasons as
claim 1 and that claim 10 is patentable for the same reasons as claim 9.
(Appeal Br. 13-14, 26-27.) For the reasons discussed above, we are not
persuaded that the Examiner erred in rejecting claims 2 and 10.
Claims 3 and 12
Claim 3 recites:
3. The method of claim 1, further comprising:
interacting with the media instance, wherein the media
instance includes a soundtrack that is selected in accordance with
at least one video element of the plurality of video elements.
The Examiner finds that Robarts discloses that a media instance may
be presented "in the form of displaying a text message, rendering a graphical
or video message, playing an audio message, releasing an aroma of a
olfactory-enabled message, and the like (column 15, lines 55---64)." (Final
Action 6.) The Examiner determines that
[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to include the media instance
includes [sic] a soundtrack that is selected in accordance with at
least one video element of the plurality of video elements in
Postrel, as seen in Robarts et al, since the claimed invention is
merely a combination of old elements, and in the combination
each element merely would have performed the same function as
it did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable.
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(Id.) In other words, the Examiner concludes that it would have been
obvious, e.g., to select an appropriate soundtrack to accompany a video
message. We agree. Moreover, claim 3 does not indicate who or what
makes the soundtrack selection or when the selection is made.
Appellants argue that the Examiner's interpretation of Robarts is
unreasonable because
[ m ]erely disclosing that a message is presented to a user basis
[sic] an evaluation of a user context does not teach or suggest
selecting a soundtrack that is in accordance with a video element
of a plurality of video elements that are arranged in a storyline
sequence, since the selection of the soundtrack in the claimed
invention is based on the context of a video-based object.
(Appeal Br. 15.)
But Appellants do not persuasively argue why the Examiner erred in
concluding that it would have been obvious, in view of the combination of
Postrel and Robarts, for the media instance to include "a soundtrack that is
selected in accordance with at least one video element of the plurality of
video elements." (See Final Action 6.) Therefore, we are not persuaded that
the Examiner erred in rejecting claim 3. Claim 12 is a system claim with
similar limitations to those in claim 3. Therefore, for the same reasons, we
are not persuaded that the Examiner erred in rejecting claim 12.
Claims 4 and 13
Claim 4 recites:
4. The method of claim 1, further comprising:
interacting with the media instance, wherein the plurality
of video elements are selected for inclusion in the media instance
in accordance with an automatically determined location.
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Appellants argue that the Examiner's citation to and discussion of
paragraph 29 of Postrel is insufficient. "Merely disclosing that the location
of a person can be automatically determined is insufficient to teach or even
suggest the selection of video elements for inclusion in a media instance in
accordance with an automatically determined location." (Appeal Br. 17.)
But Appellants do not address the Examiner's discussion with regard
to claim 1, from which claim 4 depends, that Robarts discloses
communicating to the user "local vicinity status" (Final Action 3) and that
"Postrel discloses the processor 26 may refer to the ad database 28 to
determine if advertisements 42 relevant to the user and/or his location
should be transmitted" (Answer 4, emphasis added). The Examiner's
citation to paragraph 29 of Postrel simply adds that Postrel further discloses
that the GPS receiver communicates with a GPS satellite "to provide
location data that indicates with specificity the location of the person
carrying the remote device 1, i-f 0029)." (Final Action 6.) In other words,
the citation to paragraph 29 explains how the system knows the device
location so that the appropriate video elements may be selected.
For the above reasons, Appellants have not persuaded us that the
Examiner erred in rejecting claim 4. Claim 13 is a system claim with similar
limitations to those in claim 4. Therefore, for the same reasons, we are not
persuaded that the Examiner erred in rejecting claim 13.
Claims 5 and 14
Claim 5 recites:
5. The method of claim 1, further comprising:
interacting with the media instance, wherein the plurality
of video elements are selected for inclusion in the media instance
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in accordance with the inference of the preference, wherein the
inference of the preference is based, at least in part, on usage
behaviors associated with a plurality of users.
The Examiner finds that "Postrel discloses the inference of the
preference is based, at least in part, on usage behaviors associated with a
plurality of users (user database 30, figure 2)." (Id.)
Appellants argue that "the cited disclosure of Postrel merely discloses
that user profiles associated with multiple users may be stored in a user
database." (Appeal Br. 18.)
The Examiner does not point to anything in Postrel indicating that the
inference of a preference is associated with the behaviors of a plurality of
users as opposed to the behavior of the individual user. Therefore, we
reverse the rejection of claim 5. Claim 14 is a system claim with similar
limitations to those in claim 5. Therefore, for the same reasons, we reverse
the rejection of claim 14.
Claims 6 and 15
Claim 6 recites:
6. The method of claim 1, further comprising:
interacting with the media instance, wherein the plurality
of video elements are selected for inclusion in the media instance
in accordance with the inference of the preference, wherein the
inference of the preference is based, at least in part, on the
contents of at least one video element of the plurality of video
elements.
The Examiner finds that Robarts discloses, based on an "evaluation of
the user's context, whether to currently present the message. If the user
context indicates that it is appropriate to present the message to the user
(e.g., the user an [sic] agreeable state to review the messages), the
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Application 13/270,019
characterization module 3 10 forwards the message( s) for immediate
presentation." (Final Action 7.) The Examiner then determines that
[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to include [sic] the inference of
the preference is based, at least in part, on the contents of at least
one video element of the plurality of video elements in Postrel,
as seen in Robarts et al, since the claimed invention is merely a
combination of old elements, and in the combination each
element merely would have performed the same function as it
did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable.
(Id.)
Appellants argue that "Robarts fails to support Examiner's
contention." (Appeal Br. 19.) Specifically, Appellants argue that "merely
disclosing that a message is presented to a user basis [sic] an evaluation of a
user context does not teach or suggest inferring a preference based on the
contents of one or more video elements." (Id.)
But ii~ppellants do not persuasively argue \'l1hy the Examiner erred in
concluding that it would have been obvious, in view of the combination of
Postrel and Robarts, for the "the inference of the preference [to be] based, at
least in part, on the contents of at least one video element of the plurality of
video elements." (See Final Action 7.) Therefore, we are not persuaded that
the Examiner erred in rejecting claim 6. Claim 15 is a system claim with
similar limitations to those in claim 6. Therefore, for the same reasons, we
are not persuaded that the Examiner erred in rejecting claim 15.
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Claim 7
Claim 7 recites:
7. The method of claim 1, further comprising:
viewing the plurality of video elements, wherein the
plurality of video elements are arranged in a sequence that is
adjustable by a user.
The Examiner finds that Postrel discloses video elements arranged in
a sequence that is adjustable by the user. (Id.) Specifically, the Examiner
finds that the processor interprets a request for information, e.g., a list of
nearby restaurants, and that "[ s ]earch criteria may also be variable and
change in real-time as indicated by the caller." (Id., citing Postrel i-f 31.)
The Examiner also finds that Postrel discloses displaying
various information as well as options, such as checkboxes 50 to
select the desired meal type (breakfast, lunch or dinner). The
user would then indicate his response by pressing the screen
accordingly, and that information would cue up additional
information to be displayed on the screen (such as specific meal
choices), ,-r 0033).
(Final Action 8.)
Appellants argue that
[ m ]erely disclosing the capability for providing a list of
restaurants based on a user's location would not have been
interpreted as teaching or suggesting the capability for a user to
adjust a provided sequence of video elements by one of ordinary
skill in the art at the time of the invention.
(Appeal Br. 21.) But the Examiner specifically finds that Postrel discloses
providing a list of nearby restaurants and providing various selection options
to the user that "would cue up additional information to be displayed." (See
Final Action 8.) Appellants do not explain why providing the user with the
disclosed various selection options "would not have been interpreted as
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teaching or suggesting the capability for a user to adjust a provided sequence
of video elements by one of ordinary skill in the art at the time of the
invention." (See Appeal Br. 21.)
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 7.
Claims 8 and 16
Claim 8 recites:
8. The method of claim 1, further comprising:
receiving an explanation as to why at least one video
element of the plurality of video elements was included in the
media instance.
The Examiner finds that
Postrel discloses receiving an explanation as to why at least one
video element of the plurality of video elements was included in
the media instance (i.e., [a]s shown in FIG. 3, this display may
include various information as well as options, such as
checkboxes 50 to select the desired meal type (breakfast, lunch
or dinner).
(Final Action 8.) The Examiner further finds that the selected information is
used to cue up additional information to be displayed. (Id.)
Appellants argue that
[r]eceiving options that solicit user input is functionally distinct
from receiving an explanation as to why one or more video
elements are included in a media instance. Merely disclosing a
user receiving options to be selected would not have been
interpreted as teaching or suggesting the capability for a user
receiving an explanation.
(Appeal Br. 22.) But Postrel teaches more than merely receiving options
soliciting user input. As the Examiner finds, the information received by the
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user that is used to make the selection is also used to cue up additional
information to be displayed. (See Final Action 8.) In other words, the
information received (and selected) by the user explains the additional
information displayed. Therefore, we are not persuaded that the Examiner
erred in rejecting claim 8. Claim 16 is a system claim with similar
limitations to those in claim 8. Therefore, for the same reasons, we are not
persuaded that the Examiner erred in rejecting claim 16.
Claim 11
Claim 11 recites:
11. The system of claim 10, further comprising:
the computer-implemented function that monitors the
physiological response, wherein the physiological response is a
gesture.
The Examiner finds that Robarts discloses that "computer 106 may
also be equipped with one or more various body-worn user sensor devices."
(Id., citing Robarts, col. 6, 11. 43-54.)
Appellants argue that "merely detecting user motion does not imply
monitoring gestures, as a gesture would be interpreted by one of ordinary
skill in the art at the time of the invention as a specifically defined
movement that is motivated by a specific intention of the performer."
(Appeal Br. 28.) But Robarts discloses, among other body-worn sensors,
"eyelid blink sensors." (Robarts, col. 6, 1. 49.) Eyelid blinking can be
performed by a specific intention of the person. Therefore, Appellants have
not persuaded us that the Examiner erred in rejecting claim 11.
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Claim 17
Claim 17 recites:
17. The system of claim 9, further comprising:
an advertising delivery function that selects a video-based
advertisement for inclusion in the second media instance.
The Examiner finds that Postrel discloses "an advertising delivery
function that selects a video-based advertisement for inclusion in the second
media instance." (Final Action 9, citing Postrel i-f 32.)2
Appellants argue that "[ m ]erely disclosing the transmitting of an
advertisement with an incentive record does not teach, and is not
functionally equivalent to, selecting an advertisement for inclusion in a
media instance that comprises a plurality of video elements arranged in a
storyline sequence." (Appeal Br. 37.)
Claim 17 does not require the inclusion of the advertisement in any
particular sequence in the second media instance. Postrel discloses that "the
processor 26 may refer to the ad database 28 to determine if advertisements
42 relevant to the user and/or his location should be transmitted." (Postrel
i-f 32.) In other words, Postrel teaches a processor that selects an ad from the
ad database for transmission to the user. Additionally, and as discussed
above with regard to claims 1 and 9, the combination of Postrel and Robarts
teaches a media instance comprising a plurality of video elements where the
video elements are arranged in a storyline sequence. In view of the above,
Appellants have not persuaded us that the Examiner erred in rejecting
claim 17.
2 Claim 9 recites "a media instance-generating function executed on a
processor-based device that selects and arranges in a storyline sequence a
second plurality of video elements for inclusion in a second media instance."
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Claim 18
Claim 18 recites:
18. A computer-implemented system, comprising:
a media instance-generating function executed on a
processor-based device that selects a plurality of video elements
and arranges the plurality of video elements in a sequential
storyline arrangement in a media instance, wherein the selection
is in accordance with an inference of a preference that is based,
at least in part, on a plurality of usage behaviors; and
a computer-implemented explanatory function that
provides a reason to the recipient of the media instance for the
selection of at least one video element of the plurality of video
elements for inclusion in the media instance.
Appellants' arguments are similar to the arguments that Appellants
presented with regard to claims 1 and 9, and 8 and 16. (See Appeal Br. 37-
41.) For the reasons discussed above with regard to claims 1 and 9, and 8
and 16, we are not persuaded that the Examiner erred in rejecting claim 18.
Claim 19
Claim 19 recites:
19. The system of claim 18, further comprising
the media instance-generating function that selects the
plurality of video elements for inclusion in the media instance,
wherein the selection is in accordance with the contents of at
least one video element of the plurality of video elements.
Appellants' arguments are similar to the arguments that Appellants
presented with regard to claims 6 and 15. (See id. 41--43.) For the reasons
discussed above with regard to claims 6 and 15, we are not persuaded that
the Examiner erred in rejecting claim 19.
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Claim 20
Claim 20 recites:
20. The system of claim 18, further comprising
a computer-implemented explanatory function that
provides a reason to the recipient of the media instance for the
sequential arrangement of at least two video elements of the
plurality of video elements.
The Examiner finds that Postrel discloses "a computer-implemented
explanatory function that provides a reason to the recipient of the media
instance for the sequential arrangement of at least two video elements."
(Final Action 12-13, citing Postrel i-f 52.) In particular, the Examiner cites to
Postrel' s teaching that a user may request restaurant choices and the Postrel
system may return four choices. Postrel discloses "that the order of the
establishments provided may be random, alphabetical, by distance or price,
or a pay-for-placement order." (Postrel i-f 52.) But the Examiner does not
point to any teaching in Postrel that the reason for the ordering of the
establishments is provided to the user, as opposed to simply being internal to
the Postrel system.
Appellants argue that "[ m ]erely disclosing that a list of objects
provided to a user can be ordered in different ways does not teach or suggest
providing a reason for the ordering to the user." (Appeal Br. 44.)
For the above reason, we are persuaded that the Examiner erred in
rejecting claim 20.
Appellants' other arguments have been considered and are not
deemed persuasive of error.
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DECISION
The Examiner's rejection of claims 1--4, 6-13, and 15-19 under
35 U.S.C. § 103(a) is affirmed.
The Examiner's rejection of claims 5, 14, and 20 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv)(2015).
AFFIRMED-IN-PART
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