Ex Parte Segel

Patent Trial and Appeal Board

Aug 29, 2016

12112358 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/112,358 04/30/2008
46363 7590 08/31/2016
Tong, Rea, Bentley & Kim, LLC
ALCATEL-LUCENT USA INC.
12 Christopher Way
Suite 105
Eatontown, NJ 07724
FIRST NAMED INVENTOR
Jonathan Segel
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.
LCNT/801764 9076
EXAMINER
WONG, WILLIAM
ART UNIT PAPER NUMBER
2141
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
docketing@trbklaw.com
ipsnarocp@nokia.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN SEGEL
Appeal2015-002588
Application 12/112,358
Technology Center 2100
Before JOHN A. JEFFERY, JOHNNY A. KUMAR, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 24, 26-43, and 45--49. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant's invention searches, selects, delivers, and presents content
to a user. In one aspect, a set of candidate content items is determined by
selecting available content items using selection criteria, such as rule sets,
and certain candidate items are presented to the user. See generally
Abstract. Claim 1 is illustrative with our emphasis:
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Application 12/112,358
1. An apparatus, comprising:
a processor and a memory communicatively connected to
the processor, the processor configured to:
receive content selection criteria, the content selection
criteria being received from a rich user interface operable to
control entry of the content selection criteria, the content
selection criteria comprising a personal agent rule set associated
with a user and configured to be applied against a set of available
content items available for the user, wherein the personal agent
rule set is defined based on an agent rule set subscribed to by the
user;
determine a set of candidate content items for the user by
selecting one or more available content items of the set of
available content items using the content selection criteria;
propagate an indication of the set of candidate content
items toward a user device configured to be controlled from a
simple user interface;
receive an indication of one or more commands entered
via the simple user interface, the one or more commands related
to one or more candidate content items of the set of candidate
content items; and
control, based on the one or more commands, propagation
of the one or more candidate content items of the set of candidate
content items toward the user device for presentation to the user.
THE REJECTIONS
The Examiner rejected claims 28-30 under 35 U.S.C. § 112(b) as
indefinite. Ans. 2-3. 1
1 Throughout this opinion, we refer to (1) the Appeal Brief filed September
9, 2014 ("App. Br."); (2) the Examiner's Answer mailed November 18, 2014
("Ans."); and (3) the Reply Brief filed December 9, 2014 ("Reply Br.").
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Application 12/112,358
The Examiner rejected claims 1, 24, 26, 27, 31-33, 36-39, 41, 43, and
45--49 under 35 U.S.C. § 102(b) as anticipated by Rosenberg (US 7,028,082
Bl; iss. Apr. 11, 2006), or, alternatively, under 35 U.S.C. § 103(a) as
unpatentable over Rosenberg and Khedouri (US 2006/0008256 Al; pub. Jan.
12, 2006). Ans. 3-10.
The Examiner rejected claim 28 under 35 U.S.C. § 103(a) as
unpatentable over Rosenberg and Ranasinghe (US 2006/0265421 Al; pub.
Nov. 23, 2006), or, alternatively, Rosenberg, Khedouri, and Ranasinghe.
Ans. 10.
The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Rosenberg and May (US 2008/0207263 Al; pub. Aug. 28,
2008), or, alternatively, Rosenberg, Khedouri, and May. Ans. 10-11.
The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as
unpatentable over Rosenberg, May and Ranasinghe, or, alternatively,
Rosenberg, Khedouri, May and Ranasinghe. Ans. 11.
The Examiner rejected claims 31-35 under 35 U.S.C. § 103(a) as
unpatentable over Rosenberg and Beaupre (US 2006/0195790 Al; pub. Aug.
31, 2006), or, alternatively, Rosenberg, Khedouri, and Beaupre. Ans. 12-13.
The Examiner rejected claim 40 under 35 U.S.C. § 103(a) as
unpatentable over Rosenberg and Gardner (US 2006/0053382 Al; pub. Mar.
9, 2006), or, alternatively, Rosenberg, Khedouri, and Gardner. Ans. 14.
The Examiner rejected claim 42 under 35 U.S.C. § 103(a) as
unpatentable over Rosenberg and Jobs (US 2006/0156239; pub. July 13,
2006), or, alternatively, Rosenberg, Khedouri, and Jobs. Ans. 14--15.
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Application 12/112,358
The Examiner rejected claim 47 under 35 U.S.C. § 103(a) as
unpatentable over Rosenberg and Dorai (US 2005/0193335 Al; pub. Sept. 1,
2005), or, alternatively, Rosenberg, Khedouri, and Dorai. Ans. 16.
The Examiner rejected claim 48 under 35 U.S.C. § 103(a) as
unpatentable over Rosenberg and Plastina (US 2007/0016599 Al; pub. Jan.
18, 2007), or, alternatively, Rosenberg, Khedouri, and Plastina. Ans. 16.
The Examiner rejected claim 49 under 35 U.S.C. § 103(a) as
unpatentable over Rosenberg, Plastina, and Dorai, or, alternatively,
Rosenberg, Khedouri, Plastina and Dorai. Ans. 17.
THE INDEFINITENESS REJECTION
The Examiner finds that the scope of the relative terms "persistent
rule set" and "temporary rule set" in claims 28 and 29 cannot be reasonably
ascertained because it is unclear what length of time is required to
distinguish the respective rule sets given the associated description on page
12 of the Specification. Ans. 2-3, 18.
Appellant argues that the lengths of time associated with each rule set
are irrelevant and, in light of the Specification, skilled artisans would
understand that a temporary rule set has a defined expiration time, and a
persistent rule set persists until the user indicates that it is no longer to be
used. App. Br. 16-17.
ISSUE
Has the Examiner erred in rejecting claims 28-30 by finding that the
recited persistent and temporary rule sets render the claims indefinite?
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ANALYSIS
On this record, we find the recited persistent and temporary rule sets
are reasonably clear in the context of claims 28 and 29 when interpreted in
light of the Specification. The Specification explains that a persistent rule
set may continuously operate to detect relevant content items over an
extended time period, and cites an example of this continuous operation as
one where matching content items are detected as they become available.
Spec. 12:12-15. Notably, this exemplary persistent rule set based on content
item availability is recited in claim 28. A temporary rule set, however, is
transient and can expire after a certain length of time-an expiration
expressly recited in claim 29. Spec. 12: 17-21.
Therefore, persistent and temporary rule sets are distinct in that a
temporary rule set expires after a specified time period, but a persistent rule
set does not because it continuously operates. That this continuous operation
is over an extended time period does not obscure this distinction as the
Examiner seems to suggest. See Ans. 18. Notably, this extended time
period is unspecified, unlike the certain time period for a temporary rule set.
In any event, there is no expiration time for a persistent rule set: it persists
until it is no longer used. Accord App. Br. 16 (noting this point). The very
labels "persistent" and "temporary" associated with the respective rule sets
in claims 28 and 29 effectively articulate this distinction.
Therefore, we are persuaded that the Examiner erred in rejecting
claims 28-30 as indefinite.
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Application 12/112,358
THE ANTICIPATION REJECTION
The Examiner finds that Rosenberg discloses every recited element of
claim 1 including, among other things, a personal agent rule set defined
based on an agent rule set subscribed to by the user. Ans. 3-5, 18-20.
According to the Examiner, Rosenberg's system defines a personalized
audio profile ("personal agent rule set") based on a user "subscribing" to--
namely choosing or agreeing to---particular genres of delivered content or
certain percentages of such content ("agent rule sets"). Ans. 4, 18-20.
Appellant argues that the Examiner correctly notes a distinction
between creating or defining an agent rule set and subscribing to that set,
and, as such, Rosenberg does not teach or suggest that the relied-upon user
selections to create a profile are subscribed to by the user as claimed. Reply
Br. 2--4. According to Appellant, Rosenberg's interface merely allows a
user to create or define a profile and control playout of audio content. App.
Br. 17-19; Reply Br. 2--4. Appellant argues other recited limitations
summarized below.
ISSUES
Under § 102, has the Examiner erred by finding that Rosenberg
defines a personal agent rule set based on:
(1) an agent rule set subscribed to by the user as recited in claim 1?
(2) a merge operation executed on the two recited agent rule sets
subscribed to by the user or a user-defined rule set as recited in claim 47?
(3) a shuffle operation executed on the two recited agent rule sets
subscribed to by the user as recited in claim 48?
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( 4) a combination of merge and shuffle operations as recited in claim
49?
ANALYSIS
Claims 1, 24, 26, 27, 31-33, 36--39, 41, 43, 45, and 46
As noted above, the key disputed limitation of claim 1 recites, in
pertinent part, defining a personal agent rule set based on an agent rule set
subscribed to by the user. In particular, this dispute turns on the Examiner's
interpreting the term "subscribed to" as "choosing or agreeing to"- an
interpretation that the Examiner supports with various dictionary definitions
of "subscribe." See Ans. 4, 18-20.
The Specification does not define the term "subscribe," but does note
that a user may subscribe to an existing rule set in place of, or in addition to,
defining a new rule set. Spec. 13: 14--16. This description, then, suggests
that subscribing to a rule set differs from defining that set. This distinction
is highlighted in various other passages of the Specification. See Spec.
4:23-24 (noting that the user creates and/or subscribes to content selection
criteria); Id. 7:9-10 (noting that the user defines and/or subscribes to content
selection criteria).
The Examiner recognizes this distinction, and finds that Rosenberg's
system defines a personalized audio profile ("personal agent rule set") based
on a user subscribing to---namely choosing-particular genres of delivered
content or certain percentages of such content ("agent rule sets"). Ans. 4,
18-20 (citing Rosenberg, col. 20, 1. 20 - col. 21, 1. 31; col. 17, 1. 55 - col.
19, 1. 26; Figs. 15-17). Our emphasis underscores that by choosing various
pre-existing genre and style options by selecting them using the interfaces in
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Rosenberg's Figures 15 to 17, the user effectively subscribes to associated
genre- or style-based agent rule sets via this selection. See Ans. 19-20.
Rosenberg' system then defines a personal agent rule set based on the user's
subscription.
We see no error in this position based on the Examiner's broad, but
reasonable, interpretation of "subscribed to." Appellant's contention that the
user creates or defines a profile (App. Br. 19; Reply Br. 3) ignores the fact
that Rosenberg's system performs these functions based on the user's
selecting existing desired genre- or style-based agent rule sets-a choice that
comports reasonably with the plain meaning of "subscribe" as the Examiner
indicates. Ans. 18-20. In short, Appellant's arguments (App. Br. 17-19;
Reply Br. 2--4) are not commensurate with the scope of the claim that does
not preclude the Examiner's interpretation.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 as anticipated by Rosenberg, and claims 24, 26, 27, 31-33, 36-39,
41, 43, 45, and 46 not argued separately with particularity.2
Claim 47
We also sustain the Examiner's rejection of claim 47 reciting that the
personal agent rule set is defined based on a merge operation executed on
the two recited agent rule sets subscribed to by the user. Ans. 9, 22-23
(citing Rosenberg, col. 20, 1. 20-col. 21, 1. 33; Figs. 15-17). The
2 Although Appellant nominally argues claims 45 and 46 separately (App.
Br. 21-22), Appellant reiterates arguments made for claim 1. We, therefore,
group these claims accordingly. We treat other nominally-argued claims
similarly, and group those claims accordingly.
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Application 12/112,358
Specification does not define the term "merge operation," but does describe
such an operation where either (1) an available content item must meet the
criteria of two particular agent rule sets, or (2) a candidate content item must
meet that criteria for delivery to the user. Spec. 20:20-25. Although this
description informs our understanding of the recited merge operation, it does
not so limit its interpretation.
Therefore, despite Appellant's arguments to the contrary (App. Br.
22-23; Reply Br. 6), we see no error in the Examiner's reliance on
Rosenberg's interfaces in Figures 15 to 17 whose checkboxes and equalizers
allow merging various selected genre- or style-based agent rule sets that are
subscribed to by the user in defining a personal agent rule set. Appellant's
arguments that Rosenberg does not teach or suggest a merge operation
executed on the equalizer are unavailing, for they are not commensurate
with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 4 7 as anticipated by Rosenberg.
Claim 48
We also sustain the Examiner's rejection of claim 48 reciting that the
personal agent rule set is defined based on a shuffle operation executed on
the two recited agent rule sets subscribed to by the user or a user-defined
rule set. Ans. 9, 22-23 (citing Rosenberg, col. 20, 1. 20-col. 21, 1. 33). The
Specification does not define the term "shuffle operation," but does describe
such an operation where a particular percentage (e.g., 30%) of candidate
content items are ( 1) selected based on a certain agent rule set ("Oprah's
Romantic Comedies"), and (2) alternate randomly with the other 70%
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candidate items selected based on the merged combination of the "Roger
Ebert" and "SciFi Lovers" agent rule sets. Spec. 20:26-31. Although this
description informs our understanding of the recited shuffle operation, it
does not so limit its interpretation.
The term "shuffle" is defined, in pertinent part, as "rearrange or
intermingle (playing cards, papers, etc.)." THE OXFORD AMERICAN DESK
DICTIONARY 556 (Frank Abate ed. 1998). Therefore, despite Appellant's
arguments to the contrary (App. Br. 23-24; Reply Br. 6), we see no error in
the Examiner's reliance on the functionality of Rosenberg's interfaces in
Figures 15 to 17 whose checkboxes and equalizers allow selecting, merging,
and specifying percentages of various selected genre- or style-based agent
rule sets that are subscribed to by the user in defining a personal agent rule
set (Ans. 9, 22-23). This functionality fully meets the recited shuffle
operation, for the rule sets would be effectively rearranged based on the
selected percentages. Accordingly, we see no error in the Examiner's
findings, given the scope and breadth of the term "shuffle operation," as well
as the percentage-based functionality of such an operation described in the
Specification noted above. Appellant's arguments that Rosenberg does not
teach or suggest a shuffle operation executed on the equalizer are unavailing,
for they are not commensurate with the scope of the claim.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 48 as anticipated by Rosenberg.
Claim 49
We also sustain the Examiner's rejection of claim 49 reciting that the
personal agent rule set is defined based on a combination of merge and
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shuffle operations. For the reasons noted above and by the Examiner (Ans.
9-10, 22-23), we see no error in the Examiner's reliance on Rosenberg's
interfaces in Figures 15 to 17 for teaching the recited merge and shuffle
operations. Appellant's arguments rely on the arguments presented with
respect to claims 47 and 48 (App. Br. 24--25; Reply Br. 6-7) and are
unavailing, for the reasons discussed previously.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 49 as anticipated by Rosenberg.
THE OBVIOUSNESS REJECTION OVER ROSENBERG AND DORAI
We also sustain the Examiner's obviousness rejection of claim 47
over Rosenberg and Dorai. Ans. 16. Although we find no error in the
Examiner's position that Rosenberg discloses the recited merge operation for
the reasons noted previously in connection with the anticipation rejection of
claim 4 7, we nonetheless see no error in the Examiner's additional reliance
on Dorai for at least suggesting a merge operation in light of the "AND"
function applied to two criteria ("agent rule sets"), and that applying such a
merge technique in Rosenberg would have been obvious. Ans. 16, 23 (citing
Dorai Abstract; i-f 63).
Appellant's arguments regarding Dorai' s alleged shortcomings,
including Dorai' s purported general statements on parameter combinability
and lacking the recited user-subscribed agent rule sets (App. Br. 28-29), do
not show nonobviousness where, as here, the rejection is based on
Rosenberg's and Dorai's collective teachings. See In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Accord Ans. 23 (noting this point).
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 4 7 as obvious over Rosenberg and Dorai.
THE REJECTION OVER ROSENBERG AND PLASTINA
We also sustain the Examiner's obviousness rejection of claim 48
over Rosenberg and Plastina. Ans. 16. Although we find no error in the
Examiner's position that Rosenberg discloses the recited shuffle operation
for the reasons noted previously in connection with the anticipation rejection
of claim 48, we nonetheless see no error in the Examiner's additional
reliance on Plastina for teaching executing a shuffle operation on agent rule
sets, and that applying such a technique in Rosenberg would have been
obvious. Ans. 16, 23-24 (citing Plastina i-fi-f 17, 20; Fig. 3).
Appellant's arguments regarding Plastina' s alleged shortcomings,
including lacking the recited user-subscribed agent rule sets (App. Br. 29-
30) do not show nonobviousness where, as here, the rejection is based on
Rosenberg's and Plastina's collective teachings. See Merck, 800 F.2d at
1097.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 48 as obvious over Rosenberg and Plastina.
THE REJECTION OVER ROSENBERG, PLASTINA, AND DORAI
We also sustain the Examiner's obviousness rejection of claim 49
over Rosenberg, Plastina, and Dorai. Ans. 1 7. Although we find no error in
the Examiner's position that Rosenberg discloses the recited merge and
shuffle operations for the reasons noted previously in connection with the
anticipation rejection of claim 49, we nonetheless see no error in the
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Examiner's additional reliance on Dorai and Plastina for respectively
teaching executing these operations on agent rule sets, and that applying
these techniques in Rosenberg would have been obvious. Ans. 17, 23-24.
Appellant's arguments regarding the alleged shortcomings of Dorai and
Plastina (App. Br. 30-31) are unpersuasive for the reasons noted above and
by the Examiner.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 49 as obvious over Rosenberg, Plastina, and Dorai.
THE OTHER OBVIOUSNESS REJECTIONS BASED ON ROSENBERG
We also sustain the Examiner's obviousness rejections of claims 28-
35, 40, and 42 based on Rosenberg combined with various secondary
references (except Khedouri). 3 Ans. 10-15. Despite nominally arguing
these claims separately, Appellant reiterates arguments similar to those made
in connection with claim 1, and alleges that the additional cited references
fail to cure those purported deficiencies. See App. Br. 25-28. We are not
persuaded by these arguments for the reasons previously discussed.
THE ALTERNATIVE REJECTIONS CITING KHEDOURI
Because our decision is dispositive regarding the Examiner's decision
to reject the appealed claims, we need not address the merits of the
Examiner's alternative obviousness rejections of these claims over (1)
Rosenberg and Khedouri, or (2) Rosenberg and Khedouri combined with
other references. See Ans. 3-17.
3 As noted below, we do not reach the Examiner's alternative rejections
based on Khedouri.
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CONCLUSION
The Examiner erred in rejecting claims 28-30 under§ 112(b ).
Under § 102, the Examiner did not err in rejecting claims 1, 24, 26,
27, 31-33, 36-39, 41, 43, and 45--49 as anticipated by Rosenberg.
Under§ 103, the Examiner did not err in rejecting (1) claim 28
Rosenberg and Ranasinghe; (2) claim 29 over Rosenberg and May; (3) claim
30 over Rosenberg, May and Ranasinghe; (4) claims 31-35 over Rosenberg
and Beaupre; (5) claim 40 over Rosenberg and Gardner; (6) claim 42 over
Rosenberg and Jobs; (7) claim 47 over Rosenberg and Dorai; (8) claim 48
over Rosenberg and Plastina; and (9) claim 49 over Rosenberg, Plastina, and
Dorai.
We do not reach the Examiner's alternative rejections of these claims
based on Khedouri combined with various references.
DECISION
The Examiner's decision rejecting claims 1, 24, 26--43, and 45--49 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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