Ex Parte Nelson

Patent Trial and Appeal Board

Nov 24, 2014

11553131 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOAKIM NELSON
____________

Appeal 2012-005402
Application 11/553,131
Technology Center 2600
____________

Before STANLEY M. WEINBERG, JOHNNY A. KUMAR,
and MICHELLE N. WORMMEESTER, Administrative Patent Judges.

WORMMEESTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4–15, and 17–22, which constitute all the claims
pending in this application. Claims 3 and 16 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to portable communication devices with
user profile tracking capabilities. (See Specification 1:¶ 2.) Exemplary
independent claim 1 reads as follows:
1. A method of generating a profile for a user of a portable
communication device, the method comprising:
tracking user activities and user preferences based on the
user’s use of the portable communication device, wherein
tracking user activities includes determining a location of an
activity using a position detection device coupled to the
portable communication device and determining a date or time
of an activity;
indexing the tracked user activities and user preferences;
and
creating a user profile based on the indexing of the
tracked user activities and user preferences.
Rejections
Claims 1, 2, 4–15, and 17–22 stand rejected under 35 U.S.C. § 102(e)
as being anticipated by Schigel (US 2008/0097822 A1, published Apr. 24,
2008). (See Ans. 4–11.)

ANALYSIS
Claims 1, 2, 4–7, 10, 11, 13–15, and 18–22
Appellant argues the Examiner erred in rejecting independent claim 1
because Schigel fails to disclose the feature “wherein tracking user activities
includes determining a location of an activity using a position detection
device coupled to the portable communication device and determining a date
or time of an activity.” (See App. Br. 10–17; Reply Br. 1–6.) We disagree
with Appellant.
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The Examiner relies on Schigel for teaching a connectivity system
that monitors user actions to construct user profile data. (See Ans. 9; Schigel
¶ 59.) As the Examiner points out, the user profile data includes proximity
data and attention data. (See Ans. 10; Schigel ¶¶ 57, 83; see also Schigel
¶ 16.) The proximity data indicates the user’s physical location based on
global positioning system (GPS) data, while the attention data indicates the
user’s current interests based on the user’s monitored actions in the
computer network. (See Schigel ¶¶ 56, 86; Ans. 4, 9–10; see also Schigel
¶ 74 (discussing “current, short-term interests” based on recent search
results, click behavior, and other monitored actions).) The Examiner finds
Schigel discloses determining a location of an activity and determining a
date or time of an activity. (See Ans. 4, 9–10.) Given the cited portions in
Schigel, we consider the Examiner’s findings to be reasonable.
Appellant contends Schigel does not use proximity data to track user
activities for the creation of a user profile. (See App. Br. 14–17; Reply Br.
2, 5–6.) As discussed above, however, the user profile data in Schigel
includes proximity (or location) data. (See Schigel ¶¶ 16, 83, 86; Ans. 4, 9–
10.) Cited portions of Schigel provide an example of how proximity data
comes into play: If a user of a mobile device is searching the internet for in-
line skating information (performing a user activity), and the proximity data
indicates there is an in-line skating vendor nearby (determining the location
of the activity), then the connectivity system provides the vendor
information to the user. (See Schigel ¶ 87; Ans. 9.) Given this example, we
agree with the Examiner that Schigel teaches determining a location of user
action in the network (or user activity) for generating a user profile (which
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includes proximity or location data). (See Ans. 9–10.) Accordingly, we find
Appellant’s argument unpersuasive.
Appellant further contends Schigel focuses on a user’s behavior in
terms of the content of the user’s click history or the order of the user’s
clicks, neither of which involves determining a date or time of an activity.
(See App. Br. 14.) We find Appellant’s argument unpersuasive. As
discussed above, the user profile data in Schigel includes attention data,
which indicates the user’s current interests based on the user’s monitored
actions. (See Schigel ¶¶ 56–57, 59; Ans. 10.) The term “current” means
“[b]elonging to the present time.” THE AMERICAN HERITAGE DICTIONARY
350 (2d ed. 1982). Under this meaning, identifying the user’s current
interests requires determining the time at which the user’s actions occur. We
therefore agree with the Examiner that Schigel teaches determining a date or
time of user action (or user activity). (See Ans. 4, 10.)
In view of the foregoing, we are unpersuaded of error in the
Examiner’s findings as to independent claim 1. Independent claims 15 and
21 recite similar features. (See App. Br. 22, 25–26, 31–33.) Appellant does
not argue separately any feature recited in dependent claims 2, 4–7, 10, 11,
13, 14, 18–20, and 22. We therefore sustain the Examiner’s § 102 rejection
of claims 1, 2, 4–7, 10, 11, 13–15, and 18–22.

Dependent Claims 8 and 9
Appellant argues the Examiner erred in rejecting claim 8 because
Schigel fails to disclose organizing tracked user activities based on date.
(See App. Br. 17–19; Reply Br. 6–7.) Appellant also argues the Examiner
erred in rejecting claim 9 because Schigel fails to disclose organizing
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tracked user activities based on location. (See App. Br. 19–21.) We
disagree with Appellant.
As the Examiner points out, the user profile data includes attention
data, which indicates the user’s current interests. (See Ans. 10; Schigel
¶¶ 56–57.) The Examiner further points out that the user profile data also
includes proximity data, which indicates the user’s location. (See Ans. 4, 6,
9; Schigel ¶¶ 83, 86.) The Examiner finds Schigel teaches organizing
tracked user activities based on date and location. (See Ans. 6.) Given the
cited portions in Schigel, we are unpersuaded of error in the Examiner’s
findings, and we therefore sustain the Examiner’s § 102 rejection of claims 8
and 9.

Dependent Claims 12 and 17
Appellant argues the Examiner erred in rejecting claim 12 because
Schigel fails to disclose receiving a profile-access request from a remote
portable communication device and transmitting the user profile to the
remote portable communication device. (See App. Br. 21–22.) We disagree
with Appellant.
In rejecting claim 12, the Examiner cites paragraphs 5 and 37 of
Schigel. (See Ans. 7; see also Schigel ¶ 50 (“the user profile data may be
stored in a data store 70 directly accessible by the user clients 40”); 37
(“user clients 40 may comprise . . . a mobile device”).) We note Appellant’s
arguments in the Brief (pages 21–22) amount to no more than reciting the
claim features and generally alleging that Schigel is deficient. Merely
pointing out certain claim features recited in claim 12 and asserting that
Schigel fails to disclose such features does not amount to a separate
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patentability argument. See 37 C.F.R. § 41.37(c)(vii) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”). On
this record, we find Appellant has failed to present substantive arguments
and supporting evidence persuasive of Examiner error regarding the
aforementioned disputed elements in claim 12. Accordingly, we sustain the
Examiner’s § 102 rejection of claim 12 and claim 17, which recites similar
features (see App. Br. 24–25, 32).

DECISION1
The Examiner’s decision rejecting claims 1, 2, 4–15, and 17–22 under
35 U.S.C. § 102(e) is affirmed.

1 We note that claim 15 recites “a machine readable medium.” Should there
be further prosecution of this application (including any review for
allowance), the Examiner may wish to review the claims for compliance
under 35 U.S.C. § 101 in light of the recently issued preliminary
examination instructions on patent eligible subject matter. See “Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to
the Examining Corps, June 25, 2014.
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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

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