Ex Parte Sandoval et al

Patent Trial and Appeal Board

Aug 1, 2016

12392908 (P.T.A.B. Aug. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/392,908 0212512009
34395 7590 08/03/2016
OLYMPIC PA TENT WORKS PLLC
P.O. BOX 4277
SEATTLE, WA 98104
FIRST NAMED INVENTOR
Michael Sandoval
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.
Pl91069.US 9711
EXAMINER
NG, JONATHAN K
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
08/03/2016 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):
joanne@olympicpatentworks.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SANDOVAL and OLIVER BRUCE DOWNS
Appeal2014-001351
Application 12/392,908
Technology Center 3600
Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-38 and 40-46 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM-IN-PART.
Appeal2014-001351
Application 12/392,908
THE INVENTION
The Appellants' claimed invention is directed to providing content to
users (Spec., 0003). Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A system for providing selected content from a provider to an
entity, the system comprising:
a user system having a user interface, a display, a memory, and
a processor coupled to the user interface, display and memory, the
memory having computer readable instructions that, when executed
cause the processor to receive information identifying the entity and
search criteria for content entered by the entity through the user
interface and to display selected content on the display;
a provider system configured to be in communication with the
user system, the provider system having content storage, a memory,
and a processor coupled to the content storage and the memory, the
memory having computer readable instructions that, when executed,
cause the processor to analyze scoring results for content stored in the
content storage, access the content storage, and provide selected
content to the user system in accordance with the scoring results; and
a profiling system configured to be in communication with the
user system and the provider system, the profiling system having a
profile storage configured to store electronic profiles, the profiles
associated with respective entities and including profile attributes for
the respective entities, the profile attributes including preferences for
the respective entities, the profiling system further having a memory,
and a processor coupled to the profile storage and memory, the
memory encoded with computer readable instructions that, when
executed, cause the processor to:
receive the information identifying at least one of the entity, an
abstracted entity index, or combinations thereof and the search criteria
from the user system,
access selected preferences of the electronic profile associated
with the entity, wherein the electronic profile associated with the
entity is not directly accessible to the provider system, and wherein
the selected preferences are based, at least in part, on a context
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Application 12/392,908
of the receipt of search criteria;
compute a degree of at least one of relevance, irrelevance, or
combinations thereof of each content item according to the search
criteria and the selected preferences of the entity to
provide scoring results, and
provide the scoring results for the content to the provider
system.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Revashetti US 6,453,347 Bl Sept. 17, 2002
Perge US 2003/0229507 Al Dec. 11, 2003
Dunn US 2007 /0038765 Al Feb. 15,2007
Liu US 2007/0162443 Al July 12, 2007
Kim US 2008/0040219 A 1 Feb. 14,2008
Kostorizos US 2008/0263022 Al Oct. 23, 2008
D'Angelo US 2009/0070412 Al March 12, 2009
Glauser US 2009/0171697 Al July 2, 2009
Smith US 2009/0327259 Al Dec. 31, 2009
Roclrigllez TJS 7_769_611 Rl AllQ"_ 'i_ 2010 --- ----o---- -- .,.--,----- - ---o- - ' - - - -
Walsh US 7,779,004 Bl Aug. 17, 2010
Lawrence US 2010/0228715 Al Sept. 9, 2010
Donaldson US 2010/0328312 Al Dec. 30, 2010
The following rejections are before us for review:
1. Claims 1, 7-14, 27, 29-31, and 35-37 are rejected under 35
U.S.C. § 103(a) as unpatentable over Lawrence and Walsh.
2. Claims 2-5 and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lawrence, Walsh, and Revashetti.
3. Claims 6, 16, 20, 24--26, and 34 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lawrence, Walsh, and Perge.
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Application 12/392,908
4. Claims 15, 32, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lawrence, Walsh, and Glauser.
5. Claims 17 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lawrence, Walsh, Perge, and Revashetti.
6. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lawrence, Walsh, Perge, and Rodriguez.
7. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lawrence, Walsh, Perge, and D' Angelo.
8. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lawrence, Walsh, Perge, and Glauser.
9. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lawrence, Walsh, Perge, Glauser, and Kim.
10. Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lawrence and Kostorizos.
11. Claim 40 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lawrence, Kostorizos, and Donaldson.
12. Claim 41 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lawrence, Kostorizos, and Smith.
13. Claims 42--44 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lawrence, Kostorizos, and Liu.
14. Claims 45 and 46 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lawrence, Walsh, and Dunn.
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FTI'-JDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
elements of the claimed "user system", "provider system" that provides
"selected content to the user", a "profiling system", and providing "scoring
results" to the "provider system" have not been disclosed (App. Br. 11, see
also App. Br. 9-18, Reply Br. 2-12). The Appellants argue that claim 1
requires that "the user systems directly communicate both with a content
provider as well as profiling system" and that Lawrence fails to disclose this
(App. Br. 11 ). The Appellants have also argued that the combination of
references would not have been obvious (App. Br. 18, 19).
In contrast, the Examiner has determined that the cited combination of
references is proper (Ans. 2---6, 38--47).
We agree with the Appellants. Here, claim 1 not only requires "a user
system", "a provider system" that "provide[ s] selected content to the user
system", "a profiling system" and for the system to "provide the scoring
results for the content to the provider system", but also that the various
systems are structured in a certain manner in relation to each other as
outlined in the claim. For example, claim 1 requires that the "profiling
system [is] configured to be in communication with the user system and the
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 12/392,908
provider system" and the rejection of record fails to establish beyond
possibilities and probabilities that the system of Lawrence operates in this
manner. Further, the rejection lacks a proper rationale to show that such a
modification in Lawrence would have been obvious. Here, the rejection of
record as a whole lacks articulated reasoning and rational underpinnings
without impermissible hindsight to sustain the rejection. For these reasons
the rejection of claim 1 and its dependent claims are not sustained.
Independent claim 16 contains similar limitations and the rejection of
this claim and its dependent claims are not sustained for the same reasons
given above.
With regards to claim 27, the Appellants have provided the same
arguments as provided for claim 1 (Br. 9-18). However, in contrast to claim
1 (drawn to a system), claim 27 is a method claim and does not contain the
specific argued limitations for "a user system" and "a provider system" that
"provide[s] selected content to the user system". The Appellants' arguments
do not address the specific limitations of the claim or persuasively argue
why those limitations would not have been obvious and the rejection of
claim 27 is therefore sustained. The Appellants' arguments for dependent
claims 28-37 also fail to address the specific claim limitations at issue and
the rejection of these claims is therefore sustained as well.
With regards to claim 38, a different base rejection has been applied
and the Appellants only argue that Lawrence fails to disclose a "user device"
(App. Br. 22).
In contrast, the rejection has identified the "user device" as being
disclosed in Lawrence at paragraphs 30, 31, 82-84, and Fig. 1 (items 102,
104-106, 108) (Ans. 38, 39, 50).
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Application 12/392,908
We agree with the Examiner. Here, the argued claim limitation for
the "user device' is in the preamble and not considered a limitation to the
claim. Regardless, as cited in the rejection, Lawrence discloses a "search
engine" as well as terminals for accessing it in Fig. 1 and under a broadest
reasonable interpretation this would serve as a "user device" to the extent
argued. For this reason the rejection of claim 3 8 is sustained. The
Appellants have provided the same arguments for claims 40-46 and the
rejection of the claims is sustained for these same reasons.
CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-26 as listed in the Rejections section above.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 27-38 and 40-46 as listed in the Rejections section
above.
DECISION
The Examiner's rejection of claims 1-26 is reversed. The Examiner's
rejection of claims 27-38 and 40-46 is sustained.
AFFIRMED-IN-PART
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