2019004083 (P.T.A.B. Sep. 29, 2020)

VIACCESS

Patent Trials and Appeals BoardSep 29, 2020

2019004083 (P.T.A.B. Sep. 29, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/911,079 02/09/2016 Mathieu Boivin 3C105-017US1 9599 69713 7590 09/29/2020 OCCHIUTI & ROHLICEK LLP 50 Congress Street Suite 1000 Boston, MA 02109 EXAMINER ULLAH, SHARIF E ART UNIT PAPER NUMBER 2495 NOTIFICATION DATE DELIVERY MODE 09/29/2020 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): INFO@ORPATENT.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MATHIEU BOIVIN ________________ Appeal 2019-004083 Application 14/911,079 Technology Center 2400 ________________ Before JASON V. MORGAN, IRVIN E. BRANCH, and DAVID J. CUTITTA II, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 requests rehearing of the Decision entered July 24, 2020. In the Decision, we affirmed the Examiner’s rejection of claims 8–11 and 13–18 as obvious. Appellant files this request pursuant to 37 C.F.R. § 41.52(a)(1) (“Appellant may file a single request for rehearing within two months of the date of the original decision of the Board”). We have reconsidered the Decision in light of Appellant’s contentions in the Request for Rehearing. Appellant’s request is DENIED. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as VIACCESS. Appeal Br. 1 (Sept. 7, 2018). Appeal 2019-004083 Application 14/911,079 2 DISCUSSION Appellant requests rehearing because “step (e) of claim 8 must occur at the license server.” Req. Reh’g 1. Specifically, Appellant argues that “because step (e) is recited as being a sub-set of step (b), i.e., ‘computing a license,’” and because “step (b) is carried out ‘at the server,’ step (e) must also be ‘at the server.’” Id. Appellant argues that the limitation of step (e) occurring at the license server is important for leveraging the recommendation list “to benefit the content-delivery system.” Id. at 3. Appellant submits “this important detail of the claim may have been overlooked” (id.) because “[t]he Decision relies on ¶61 of Horvitz as disclosing a recommendation list in which entries are ranked according to the probability of being viewed” (id. at 1). Appellant argues that “recommendation list 126 [in Horvitz] is generated and consumed locally, at the user’s terminal.” Id. Appellant does not cite to a single page in either the Appeal Brief or the Reply Brief showing where Appellant argued that the prior art fails to teach or suggest step (e) of claim 8 occurring at the license server. We have reviewed these briefs and we are unable to identify where such an argument was previously made. “Arguments not raised . . . are not permitted in [a] request for rehearing,” with limited exceptions that are not applicable here. 37 C.F.R. § 41.52(a)(1). Appellant also does not cite to a single page in the Decision as evidence that an argument Appellant made was misapprehended or overlooked even though a “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” Id. We noted that Horvitz paragraph 61 teaches “ranking selections Appeal 2019-004083 Application 14/911,079 3 ‘that the user is most likely to be interested in viewing’” and that the Examiner cites to Horvitz paragraph 61 as teaching a “user interface . . . ‘that allows a user to review available selections quickly without unduly search’ by providing the user with a ‘plurality of recommendations . . . ranked according to selections that the user is most likely to be interested in viewing.’” Dec. 4, 5. But Appellant fails to show how these citations to Horvitz paragraph 61 shows that we misapprehended or overlooked issues raised by during the appeal. Furthermore, we did not rely exclusively on Horvitz paragraph 61 in affirming the Examiner rejection. In particular, in the Decision we noted that “Horvitz specifically teaches that inference system 18, which is ‘used to infer the likelihood of a user’s preferences for content’ . . . can ‘reside . . . remotely at a remote server.’” Id. at 10 (quoting Horvitz ¶ 30). Thus, contrary to Appellant’s argument that Horvitz merely teaches generating a recommendation list locally (Req. Reh’g 1), Horvitz also teaches generating such recommendations (i.e., inferred user preferences for content) remotely (Horvitz ¶ 30). Appellant fails to address this cited teaching of Horvitz or contest our reliance on it affirming the Examiner’s rejection. Req. Reh’g 1–3. For these reasons, Appellant does not show that the Board misapprehended or overlooked any issues raised by Appellant with respect to the Examiner’s 35 U.S.C. § 103 rejections. Appellant’s Request for Rehearing is DENIED. Appeal 2019-004083 Application 14/911,079 4 SUMMARY Outcome of Decision on Request for Rehearing: Claims Rejected 35 U.S.C. § References Denied Granted 8–10, 13–16 103 Inoue, Horvitz 8–10, 13–16 11 103 Inoue, Horvitz, Leighton 11 17, 18 103 Inoue, Horvitz, Relan 17, 18 Overall Outcome 8–11, 13–18 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § References Affirmed Reversed 8–10, 13–16 103 Inoue, Horvitz 8–10, 13–16 11 103 Inoue, Horvitz, Leighton 11 17, 18 103 Inoue, Horvitz, Relan 17, 18 Overall Outcome 8–11, 13–18 DENIED