Ex Parte Karaoguz et al

Board of Patent Appeals and Interferences

Jan 23, 2012

10672251 (B.P.A.I. Jan. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEYHAN KARAOGUZ and JAMES D. BENNETT
____________

Appeal 2009-008018
Application 10/672,251
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, DEBRA K. STEPHENS, and
JAMES R. HUGHES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-53. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

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STATEMENT OF THE CASE
Invention
Appellants’ invention is directed to systems and methods supporting
automatic selection of media according to a user profile. (Abstract).

Representative Claim 1

A system supporting the automatic selection of media
according to a user profile, the system comprising:

a television display to support the consumption of media;

a user interface accessible via the television display, the user
interface displaying at least one media channel comprising media
available for consumption;

a storage that stores media, the storage communicatively
coupled to the television display, the storage having an associated
network address; and

server software that receives a request identifying one or both
of the associated network address and/or a user identifier, and
responds by automatically selecting media according to a user-
defined profile, the user-defined profile corresponding to one or both
of the associated network address and/or a user identifier, and
delivering to the storage, via a communication network, information
identifying the selected media, the information for incorporation into
the user interface.

(emphasis added regarding disputed limitations).

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Rejection
1. Claims 1-53 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Nash (PG Publication US
2001/0021994 A1) in view of Cristofalo et al (US 2002/0152117 A1).

GROUPING OF CLAIMS
Based upon Appellants’ arguments, we select representative claim 1
to decide this appeal for the group consisting of claims 1-17, 19-26, 28-44,
and 46. (See App. Br. 8-13). See 37 C.F.R. § 41.37(c)(1)(vii).
Based upon Appellants’ arguments, we select representative claim 18
to decide this appeal for the group consisting of claims 18, 27, 45, and 53.
(See App. Br. 13-14).
Based upon Appellants’ arguments, we select representative claim 47
to decide this appeal for the group consisting of claims 47-52. (See App. Br.
13).
FINDINGS OF FACT
We adopt the Examiner’s factual findings as set forth in the Answer.
(Ans. 3, et seq.).
ISSUES
Based upon our review of the administrative record, we have
determined that the following issues are dispositive in this appeal:
1. Under §103, did the Examiner err in finding that the
combination of Nash and Cristofalo would have taught or
suggested “automatically selecting media according to a
user-defined profile,” as recited in representative claim 1?

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2. Under §103, did the Examiner err in finding that the
combination of Nash and Cristofalo would have taught or
suggested “wherein the server software supports anonymous
media exchange,” as recited in representative claim 18?

3. Under §103, did the Examiner err in finding that the
combination of Nash and Cristofalo would have taught or
suggested “sending by a user a user-defined profile,” as
recited in representative claim 47?

ANALYSIS
Issue 1
Regarding Issue 1, Appellants contend that “the user profile is
determined and generated by the system, but not defined by the user.” (App.
Br. 9, referring to Nash, paras. [0031-0036]). However, we note that
Appellants acknowledge that Nash teaches direct user input of preference
information: “Nash is clear that any direct user input of preference
information is merely used for programme selection in conjunction with the
ratings.” (App. Br. 10, ll. 4-6, emphasis added).
As pointed out by the Examiner (App. Br. 9, 19), Nash teaches that
the user may enter “initial information as to his or her interest” (e.g., using a
remote control1) as an “initial profile” that “is continuously updated by

1 Nash teaches the user may create the initial profile using a menu and
selection scheme by entering choices with a remote control device.” (para.
[0040]). Cf. Spec. para. [37]: “The MES platform 107 also provides the
functional capability for a user of the MPS 101 to generate a user profile
111 using, for example, a remote control that interacts with the MPS 101.”
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monitoring those programmes watched or recorded.” (para. [0040]). Thus,
we agree with the Examiner’s finding that Nash’s user-created “initial
profile” would have taught or suggested the claimed user-defined profile,
within the meaning of representative claim 1.
We find Appellants’ arguments are premised upon an overly narrow
reading of the language of claim 1 which recites in pertinent part:
“automatically selecting media according to a user-defined profile . . . .”
(emphasis added).
Since Nash teaches an embodiment where the program selection is
performed according to both a user-defined profile and stored ratings data
(paras. [0033-0036]), Appellants appear to be contending that the automatic
selection is not performed “according to [only] a user-defined profile . . . .”
(Claim 1; see also App. Br. 10). In particular, Appellants contend:
[T]he "system" of Nash is the ultimate determining factor
regarding selection. That system, as detailed above, can change
and override user preferences. As such, Nash does not describe,
teach, or suggest that media is selected "according to," or "in
accordance with" a user-defined profile.
(App. Br. 10).

However, we conclude that the open-ended “comprising:” language
recited in the preamble of representative claim 1 does not limit the automatic
selection to being performed according to only a user-defined profile.
Moreover, the word “only” is not recited in the claim so as to limit the
selection in this manner. Nor does Nash’s disclosure of an alternative
embodiment (that overrides user preferences) negate the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness.
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“The transitional term ‘comprising’ . . . is inclusive or open-ended and
does not exclude additional, unrecited elements or method steps.” Georgia-
Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327 (Fed.Cir. 1999)
(citing M.P.E.P. § 2111.03 (6th ed.1997)). “A drafter uses the term
‘comprising’ to mean ‘I claim at least what follows and potentially
more.’” Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377,
1383 (Fed.Cir. 2000); see also Genentech, Inc. v. Chiron Corp., 112 F.3d
495, 501 (Fed. Cir. 1997) (“Comprising” is a term of art used in claim
language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim.)(emphasis added).
This reasoning is applicable here. Therefore, we do not agree with
Appellants that the Examiner’s claim construction is overly broad,
unreasonable, or inconsistent with the Specification. We find unavailing
Appellants’ attempt to impute an overly narrow construction via argument.
Moreover, it is well settled that merely providing an automatic means to
replace a manual activity that accomplishes the same result is an obvious
improvement. See In re Venner, 262 F.2d 91, 95 (CCPA 1958).
For these reasons, we find Appellants’ arguments unpersuasive of
Examiner error. Therefore, we sustain the Examiner’s obviousness rejection
of representative claim 1 and claims 2-17, 19-26, 28-44, and 46 which fall
therewith. See 37 C.F.R. § 41.37(c)(1)(vii).

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Issue 2
Regarding Issue 2, we agree with the Examiner’s finding that
the combination of Nash and Cristofalo would have taught or
suggested “wherein the server software supports anonymous media
exchange,” as recited in representative claim 18.
In particular, we agree with the Examiner’s responsive argument
bridging pages 20-21 of the Answer referring to an embodiment of
Cristofalo where regional information is used to target advertising on a per-
region basis, as opposed to targeting ads based on user-specific information.
(See Cristofalo, paras. [0034-0036], e.g., “a receiving system 104 may be
configured to respond to a regional, demographic, or other generic (non-user
specific) indicator.” (para. [0036]). We also observe that the Appellants’
Reply Brief fails to specifically address the Examiner’s findings and
explanations.
For these reasons, we sustain the Examiner’s obviousness rejection of
representative claim 18 and claims 27, 45, and 53 which fall therewith.2 See
37 C.F.R. § 41.37(c)(1)(vii).

Issue 3
Regarding Issue 3, we agree with the Examiner’s finding that
the combination of Nash and Cristofalo would have taught or
suggested “sending by a user a user-defined profile,” as recited in
representative claim 47:

2 As argued by Appellants, claims 27 and 53 recite similar language: “the
user is unknown to the source.” (See App. Br. 13, last paragraph).
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Nash teaches two methods of creating a user-defined profile.
The user can use a menu selection for defin[ing] the user
profile, thereby sending information to the system for which
media to retrieve to match the user's interest. Additionally the
profile is sent by the user through selection by a remote control
by the user of media of interest that creates profiled information
for accessing additional media of interest.
(Ans. 20; see also Nash para. [0040].
We also conclude that method claim 47 does not specify who or what
the user-defined profile is sent to. Therefore, we do not agree with
Appellants that the Examiner’s claim construction is overly broad,
unreasonable, or inconsistent with the Specification.
For these reasons, and for the reasons previously addressed regarding
claim 1, we sustain the Examiner’s obviousness rejection of representative
claim 47 and claims 48-52 which fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s § 103 rejection of claims 1-53.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED

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