Ex Parte Brown et al

Patent Trial and Appeal BoardDec 27, 2016

14013104 (P.T.A.B. Dec. 27, 2016)

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. 14/013,104 08/29/2013 Scott K. Brown 10587.0168-02000 2452 100692 7590 AOL Inc./Finnegan 901 New York Ave., NW Washington, DC 20001 12/29/2016 EXAMINER LEE, CHUN KUAN ART UNIT PAPER NUMBER 2181 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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): regional-desk @ finnegan. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT K. BROWN and ALLEN TOM Appeal 2016-000706 Application 14/013,10^ Technology Center 2100 Before THU A. DANG, STEPHEN C. SIU, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 31-39 and 41-52, which are all the claims pending in this application.1 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is AOL Inc. App. Br. 3. 2 Claims 1-30 and 40 have been canceled. Claims App’x 1,3. Appeal 2016-000706 Application 14/013,104 STATEMENT OF THE CASE Introduction Appellants’ application relates to using user preferences to generate a request to access content residing on a host. Spec. 1. Claim 41 is illustrative of the appealed subject matter and reads as follows: 41. A system for predicting user interest in content, comprising: a memory device that stores a program; and at least one processor that executes the program to perform operations comprising: receiving a request to access content residing on a host system from a user; accessing a rule set associated with the user that includes one or more rules configured to identify content responsive to a predicted interest of the user; identify, using the accessed rule set, content selections from a library of content selections available on the host system; generating a playlist of identified content selections; receiving one or more instructions associated with the playlist adjusting an order to present the identified content selections; and updating the rule set based on the one or more instructions. The Examiner’s Rejections Claim 31 stands rejected under nonstatutory double patenting as being unpatentable over claim 1 of Brown et al. (US 8,544,050 B2; Sept. 24, 2013), Warmus et al. (US 2004/0001087 Al; Jan. 1, 2004), and Crow (US 2004/0158860 Al; Aug. 12, 2004). Final Act. 7-9. 2 Appeal 2016-000706 Application 14/013,104 Claims 31-39 and 41-52 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Monteiro et al. (US 6,119,163; Sept. 12, 2000), Warmus, and Crow. Final Act. 9-16. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ contentions that the Examiner has erred. We disagree with Appellants’ contentions. Except as noted below, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. We highlight the following additional points. Obviousness Appellants argue the Examiner erred in rejecting independent claim 41 as obvious over Monteiro, Warmus, and Crow. See App. Br. 11-15, Reply Br. 2-8. In particular, Appellants argue the Examiner erred in finding an ordinarily skilled artisan would have been motivated to combine the cited references. App. Br. 11-13. Appellants argue Warmus is directed to delivering electronic publications, Monteiro is directed to delivering real time information, and Crow is directed to a personalized music jukebox. App. Br. 11-12. Appellants argue these are three different technical fields and combining the references would “change the principle of operation of the cited references.” App. Br. 11. We disagree. The Examiner finds, and we agree, an ordinarily skilled artisan would have been motivated to combine Warmus and Crow’s 3 Appeal 2016-000706 Application 14/013,104 customization and personalization of content delivery into Monteiro’s delivery system to improve the quality of the content delivered to the user. See Final Act. 11-12. Appellants have not provided persuasive evidence or argument that combining Crow’s generation of a playlist of content selections, Monteiro’s content selection system, and Warmus’s personalization based on user interest would change the principle of operation of any of the references. Accordingly, we adopt the Examiner’s findings regarding an ordinarily skilled artisan’s motivation to combine the references. Appellants also argue the Examiner erred in finding Warmus teaches or suggests “adjusting an order to present the identified content selections.” App. Br. 14-15. In particular, Appellants argue Warmus teaches providing access to all of its content at once and, therefore, does not teach adjusting an order, as claimed. App. Br. 14. Appellants also argue Warmus’s personalization only applies to subsequent publications, not the current publication as required by claim 41. Id. Appellants have not persuaded us of Examiner error. The Examiner finds, and we agree, Warmus teaches the order of the publication’s content may be adjusted based on user preferences. Ans. 10 (citing Warmus 1 64). In particular, Warmus teaches monitoring the user’s reading habits to establish the user’s preferences, which may be used to “automatically adjust[] publications including those publications that have already been customized or received by the end user.” Warmus 1 64. Appellants’ argument that Warmus does not teach adjusting a current publication based on the user’s reading habits is unpersuasive for two reasons. First, the broadest reasonable interpretation of claim 41 does not 4 Appeal 2016-000706 Application 14/013,104 require updating a playlist after it is presented to the user. Instead, claim 41 recites generating a playlist of identified content selections, receiving instructions associated with the playlist adjusting an order to present the identified content selections, and updating the rule set based on the instructions. In other words, the user’s existing preferences may be used to initially modify the order of the playlist (“receiving one or more instructions associated with the playlist adjusting an order to present the identified content selections”) and additional monitoring may reveal updates to the preferences that may be saved for future playlists (“updating the rule set based on the one or more instructions.”). Second, Appellants’ argument is contradicted by the teachings of Warmus. Warmus teaches the user’s preferences may allow for automatically adjusting publications that “have already been customized or received by the end user.” Warmus 1 64 (emphasis added). Warmus, therefore, teaches adjusting the order of content selections that have already been presented to the user. Finally, Appellants also argue the Examiner “improperly parsed” claim 41 by finding Warmus teaches “receiving one or more instructions associated with the content and adjusting an order to present the identified content selections” and Crow teaches “receiving one or more instructions associated with the playlist.” App. Br. 14-15 (citing Final Act. 11). Appellants argue the claim language is different than either of these recitations and, therefore, Warmus and Crow fail to teach or suggest the recited “receiving one or more instructions associated with the playlist adjusting an order to present the identified content selections.” Id. 5 Appeal 2016-000706 Application 14/013,104 Appellants have not persuaded us of Examiner error. The Examiner finds the combination of Warmus and Crow, not either reference alone, teaches “receiving one or more instructions associated with the playlist adjusting an order to present the identified content selections.” See Final Act. 11-12, Ans. 11-12. Appellants’ argument focuses on the individual teachings of the references instead of the proposed combination. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981). For these reasons, we sustain the rejection of independent claim 41. Appellants argue the patentability of independent claims 31 and 50 for the same reasons as claim 41. See App. Br. 15-16. We, therefore, also sustain the obviousness rejections of claims 31 and 50. We also sustain the rejections of dependent claims 32-39, 42^49, 51, and 52, which were not argued separately from their respective independent claims. See App. Br. 16. Double Patenting In the Final Action, the Examiner rejected claim 31 under nonstatutory double patenting as being unpatentable over claim 1 of Brown, Warmus, and Crow. Final Act. 7-9. Appellants have not presented argument that the Examiner erred in rejecting claim 31 under nonstatutory double patenting. Arguments not made are deemed waived. See 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, we summarily affirm the nonstatutory double patenting rejection of claim 31. 6 Appeal 2016-000706 Application 14/013,104 DECISION We affirm the decision of the Examiner to reject claims 31-39 and 41-52. 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 7