Ex Parte Bardsley

Patent Trial and Appeal Board

Apr 28, 2016

13483560 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/483,560 05/30/2012 Jeffrey S. Bardsley
52354 7590 04/28/2016
SCENERA RESEARCH, LLC
5400 Trinity Road
Suite 303
Raleigh, NC 27607
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.
I416DC2/US 1087
EXAMINER
DENNISON, JERRY B
ART UNIT PAPER NUMBER
2443
MAILDATE DELIVERY MODE
04/28/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY S. BARDSLEY
Appeal2014-007546
Application 13/483,560
Technology Center 2400
Before MICHAEL J. STRAUSS, JOHN F. HORVATH, and
AMBER L. HAGY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-007546
Application 13/483,560
STATE~v1ENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
24--44. Claims 1-23 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
THE INVENTION
The claims are directed to managing electronic subscriptions. Spec.,
Title. Claim 24, reproduced below, is representative of the claimed subject
matter:
24. A method for managing electronic subscriptions, the method
compnsmg:
determining a frequency of requesting, by a user of an
electronic subscription client, presentation of one or more
subscription messages for an electronic subscription; and
presenting, based on the determined requesting frequency,
a prompt with a control configured for unsubscribing the user
from receiving a future subscription message associated with the
1 • t... • • eiectromc suuscnpt1on.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
F ellenstein
Jones
US 2004/0186766 Al
US 7,686,215 B2
REJECTION
Sept. 23, 2004
Mar. 30, 2010
The Examiner rejected claims 22--44 under 35 U.S.C. § 103(a) as
being unpatentable over Jones and Fellenstein. Final Act. 2-7.
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Application 13/483,560
APPELLANT'S CONTENTION
The term "presentation" requires more than mere downloading such
that Jones's deactivation of subscriptions based on an "episode download
count" does not teach the disputed limitation of "determining a frequency of
requesting, by a user of an electronic subscription client, presentation of one
or more subscription messages for an electronic subscription," as required by
claim 24. App. Br. 8.
ISSUE ON APPEAL
Based on Appellant's arguments in the Appeal Brief (App. Br. 8-11)
and Reply Brief (Reply Br. 5-8), the issues presented on appeal are whether
the Examiner erred in finding the prior art teaches or suggests the disputed
limitation.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments the Examiner has erred. We disagree with Appellant's
conclusions. We adopt as our own (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken (Final Act. 2-9,
Ans. 3-8) and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellant's Appeal Brief (Ans. 8-12) and concur with
the conclusions reached by the Examiner. We highlight the following for
emphasis.
Appellant argues Jones does not teach "determining a frequency of
requesting, by a user of an electronic subscription client, presentation of one
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Application 13/483,560
or more subscription messages for an electronic subscription" because Jones
fails to request a presentation of messages and, instead, merely determines
whether an item is active or inactive based on the download count. App. Br.
9-10. The Examiner responds by finding users in the process described by
Jones express their level of "interest" by "playing" downloaded episodes of
a podcast, which is equivalent to "determining a frequency of requesting
presentation" of an item. Ans. 9-11. As the Examiner further finds, Jones
"determines whether a user's interest is substantial enough to consider the
user's activity level as active enough to maintain the subscription .... "
Ans. 10-11.
In response to the Examiner's Answer, Appellant further argues (i) the
Examiner erred by, in the Answer, changing or recharacterizing the previous
rejections that relied on downloads and client activity; (ii) Jones does not
teach the disputed limitation because, according to Jones, a user's interest in
the podcast is a byproduct of whether the podcast has been downloaded; and
(iii) a frequency of playing an episode cannot be determined according to
Jones because the variables for tracking activity are reset every time an
episode is played. Reply Br. 5-8.
Appellant's arguments are unpersuasive. According to Jones "[i]n the
event that user interest in a podcast becomes inadequate, downloading of
further updates can be restricted." Jones, Abstract. Thus, under a broad but
reasonable interpretation, the Examiner construes determining if the user's
activity level is sufficient to maintain a subscription teaches or suggests
determining a "frequency" (i.e. the frequency of activity of the podcast
subscription). Ans. 10. The Examiner further finds, and we agree, Jones's
user expresses interest by playing an episode of the podcast and, as such, is
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"requesting presentation" of the subscription messages. Ans. 11, Jones, col.
22, 11. 35--40. Thus, Jones's user expresses "interest" by "playing" an
episode, thereby teaching "determining a frequency of requesting
presentation." In contrast, Appellant fails to provide sufficient evidence or
line of reasoning explaining why the Examiner's interpretation is improper
and/or fails to teach or suggest the disputed limitation.
In addition, Appellant's contention (i) that the Examiner erred by
changing or recharacterizing the previous rejection that relied on downloads
and client activity (Reply Br. 5) is untimely. To the extent Appellant believe
the Examiner had introduced new grounds of rejection, such is a petitionable
matter, and is therefore not a matter before the Board. See MPEP § 1207.03
(IV). 1 In reviewing the prosecution history, any such issue appears to be
moot because Appellant has not timely filed a petition under 3 7 C.F.R.
§ 1.181(a).
Appellant's argument (ii) that Jones's user interest in the podcast is a
byproduct of whether the podcast has been downloaded (Reply Br. 6) is also
untimely. Because this issue was first raised in a Reply Brief and Appellant
1 Appellant cannot request to reopen prosecution pursuant to 37 C.F.R.
§ 41.39(b) ifthe Examiner's answer does not have a new ground of rejection
under 37 C.F.R. § 41.39. If an Appellant believes that an Examiner's
answer contains a new ground of rejection not identified as such, the
appellant may file a petition under 3 7 C.F .R. § 1.181 (a) within two months
from the mailing of the Examiner's answer requesting that a ground of
rejection set forth in the answer be designated as a new ground of rejection.
Any such petition must set forth a detailed explanation as to why the ground
of rejection set forth in the answer constitutes a new ground of rejection.
Any allegation that an Examiner's answer contains a new ground of
rejection not identified as such is waived if not timely raised (i.e., by filing
the petition within two months of the answer) by way of a petition under 37
C.F.R. § 1.181(a). MPEP § 1207.03 (IV).
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Application 13/483,560
has not shown sufficient cause as to why this issue was first raised in the
Reply Brief, it is waived. See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (Informative) ("[T]he reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner's rejections, but were not.") Therefore, this basis for
asserting error is waived. See 3 7 C.F.R. § 41.3 7 ( c )( 1 )(iv). Furthermore,
even if timely presented, such argument is not persuasive of error because
Jones teaches that a user's interest is determined by the download activity of
the podcast rather than the status of the client. Specifically, according to
Jones, when decision 1302 determines that the episode download count is
not greater than N, the podcast is rendered 1310 active (fig. 13, numeral
1302, col. 21, 1. 58---65) thereby teaching the disputed limitation of
determining a frequency of requesting presentation.
Appellant's contention (iii) arguing Jones's frequency of playing an
episode can never be determined if every time an episode is played the
variables for tracking activity are reset (App. Br. 7) is also untimely because
this issue was also raised for the first time in the Reply Brief. Furthermore,
even if timely presented, such argument is not persuasive of error. Claim 24
requires the determination of a frequency, e.g., a level of user's interest in
the podcast, ranging from active to inactive. However, contrary to
Appellant's argument, resetting count values to zero does stop Jones's device
from operating in the fashion defined by claim 24. In determining whether
a client has been active, Jones's process determines whether a sufficient
number of downloads have occurred over a particular period of time before
the user's lack of activity will trigger "inactive" status.
The podcast activity process 1300 begins with a decision 1302
that determines whether an episode download count is greater
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than an integer N. \Vhen the decision 1302 determines that the
episode download count is greater then [sic] N, a decision 1304
determines whether more than M days have passed since the
date of initial episode download, where Mis an integer. For
example, the integers Mand N can equal five (5). When the
decision 1304 determines that more than M days have passed
since the date of the initial episode download, a decision 1306
determines whether the client has been active since the date of
initial episode download. When the decision 1306 determines
that the client has been active since the date of initial episode
download, the podcast is rendered 1308 inactive.
Jones col. 21, 11. 37-50. Thus, Jones's activity determination calculates a
frequency of downloads (N downloads over M days) that satisfies a
threshold value. Therefore Appellant's argument is unpersuasive of
Examiner error.
Appellant further argues Fellenstein does not teach "determining a
frequency of requesting, by a user of an electronic subscription client,
presentation of one or more subscription messages for an electronic
subscription." App. Br. 9-10. However, this argument is unpersuasive
because Appellant fails to address the Examiner's findings and, instead,
argues the references individually. In particular, the Examiner relies on
Jones, not Fellenstein, for teaching the disputed limitation. See Ans. 8-12,
Jones, fig. 13, col. 20, 11. 37-51, col. 21, 11. 25---63, col. 22, 11. 9-39. The
Examiner is not required to find all features (determining a frequency of
requesting, by a user of an electronic subscription client, presentation of one
or more subscription messages for an electronic subscription) within a single
reference (i.e. Fellenstein) when, as here, the rejection is based on a
combination of references (i.e. Jones and Fellenstein). The test for
obviousness is not whether the claimed invention must be expressly
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suggested in any one or all of the references. In re lvferck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant further argues Jones does not teach the subject matter of
claims 26, 27, 36, and 37. App. Br. 10. This argument is unpersuasive
because it amounts to little more than naked assertions the disputed claim
element is not found in the prior art. See 37 C.F.R. § 41.37(c)(l)(iv) ("A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."); In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.3 7 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.")
For the reasons supra, Appellant's arguments are unpersuasive of
Examiner error. Accordingly, we sustain the rejection of claims 22--44 under
35 U.S.C. § 103(a) over Jones and Fellenstein.
DECISION
The Examiner's decision to reject claims 24--44 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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