Ex Parte Conklin

Patent Trial and Appeal BoardAug 18, 2017

12144915 (P.T.A.B. Aug. 18, 2017)

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. 12/144,915 06/24/2008 Charles Clinton Conklin 20004/106US02 2425 81905 7590 08/22/2017 Hanley, Flight & Zimmerman, LLC (Nielsen) 150 S. Wacker Dr. Suite 2200 Chicago, IL 60606 EXAMINER ADAMS, EILEEN M ART UNIT PAPER NUMBER 2481 NOTIFICATION DATE DELIVERY MODE 08/22/2017 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): j flight @ hfzlaw. com mhanley@hfzlaw.com docketing@hfzlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES CLINTON CONKLIN Appeal 2015-003876 Application 12/144,9151 Technology Center 2400 Before JOHN A. JEFFERY, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—8, 10-21, and 23—37, which are all of the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is The Nielsen Company (US), LLC. App. Br. 2. 2 Claims 9 and 22 have been canceled. App. Br. 22, 25. Appeal 2015-003876 Application 12/144,915 INVENTION Appellant’s application relates to apparatus and methods for tracking and analyzing digital recording device event sequences. Abstract. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. A method for identifying viewing information associated with a digital media device comprising: monitoring a data bus communicatively coupled to a processor and to a data storage device associated with the digital media device; identifying, on the data bus, write commands to be processed by the data storage device to write to the data storage device, and read commands to be processed by the data storage device to read from the data storage device; and based on the write commands and the read commands, identifying occurrences of live viewing of media, recording of media, and playback of previously recorded media stored on the data storage device. REJECTIONS Claims 26—30 stand rejected under 35U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Claims 1—6, 8, 11—19, 21, and 23—353 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Ludtke (US 6,202,210 Bl, issued Mar. 13, 2001), Fakharzadeh (US 7,363,647 Bl, issued Apr. 22, 2008), and Ismail et al. (US 9,351,765 B2, issued Jan.8, 2013) (“Ismail”). 3 The Examiner erroneously included claim 10 in the rejection over Ludtke, Fakharzadeh, and Ismail. Final Act. 4. Claim 10 is not discussed in the body of the rejection and is separately rejected over Ludtke, Fakharzadeh, Ismail, and Fukuda. Id. at 8. We presume the Examiner intended to reject claim 10 over Ludtke, Fakharzadeh, Ismail, and Fukuda, and we present the correct claim listing here for clarity. 2 Appeal 2015-003876 Application 12/144,915 Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Ludtke, Fakharzadeh, Ismail, and Fukuda (US 2002/0154158 Al, published Oct. 24, 2002). Claims 7 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Ludtke, Fakharzadeh, Ismail, and Okujima et al. (US 2003/0072556 Al, published Apr. 17, 2003) (“Okujima”). Claims 36 and 37 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Ludtke, Fakharzadeh, Ismail, and Kimura (US 2003/0088871 Al, published May 8, 2003).4 ANALYSIS Rejection of Claims 26—30 under 35 U.S.C. § 101 The Examiner rejected claim 26 because, under the broadest reasonable interpretation, the limitation “computer-readable storage device or storage disk” reads on a transitory propagating signal. Final Act. 3. We agree with Appellant that the Examiner erred because the “computer-readable storage device or storage disk” recited in claim 26 cannot reasonably be interpreted as a propagating signal. See App. Br. 8; Reply Br. 3. Generally, the term “computer readable storage medium” encompasses transitory media and is, therefore, ineligible under § 101. See Ex parte Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (holding recited machine-readable storage medium ineligible under § 101 because it encompassed transitory media). But here, claim 26 recites the limitation “computer-readable storage device or storage disk.” App. Br. 25. 4 The Examiner incorrectly identified the Kimura patent publication as 2003/00888871. Final Act. 3 Appeal 2015-003876 Application 12/144,915 Appellant’s Specification describes storage hardware for storing machine- readable instructions to be executed by, for example, a machine, and are limited to examples of physical media. App. Br. 9 (citing Spec. 26, 50). Appellant also has persuaded us that the plain and ordinary meaning of the limitation “storage device or storage disk” is an object, machine or piece of equipment, none of which could reasonably be interpreted as a propagating signal. Id. In light of the claim language, the Specification, and the plain and ordinary meaning of “storage device or storage disk,” we conclude that the broadest reasonable interpretation of “computer-readable storage device or storage disk” excludes propagated signals, and limits the storage medium to non-transitory forms. Accordingly, on the record before us, we do not sustain the 35 U.S.C. §101 rejection of claim 26, or of claims 27—30, dependent thereon. Rejection of Claims 1, 4—6), 8, 10—15, 17—19, 21, 23—27, 29, 30—32, 34, and 35 under 35 U.S.C. § 103 Appellant contends the Examiner erred in rejecting claim 1 as obvious because Ismail does not teach or suggest the limitation “based on the write commands and the read commands, identifying occurrences of live viewing of media, recording of media, and playback of previously recorded media stored on the data storage device,” as recited in claim 1. App. Br. 10. Appellant argues the Examiner “completely disregards that the identifying of occurrences of live viewing of media, recording of media, and playback of previously recorded media stored on a data storage device is based on the write commands and the read commands.” Id. at 11. We are not persuaded by Appellant’s arguments. Appellant attacks the prior art references individually even though the Examiner relies on the combination of Ludtke, Fakharzadeh and Ismail as teaching or suggesting 4 Appeal 2015-003876 Application 12/144,915 the disputed features. Final Act. 4—6. In reMouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)) (“The test for obviousness ... is what the combined teachings of the references would have suggested to those having ordinary skill in the art.”). Moreover, the Examiner relied on Fakharzadeh, not Ismail, as teaching the detection and identification based on the write commands and the read commands. Ans. 14; Final Act. 5. Appellant further argues that the Examiner engaged in impermissible hindsight in combining the prior art references. App. Br. 14—15. We disagree. The relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). We find the Examiner did so. See Final Act. 5—6. Appellant has provided no persuasive evidence that combining the cited teachings would have been “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor has Appellant presented evidence that this incorporation yielded more than expected results. Further, Appellant has not provided objective evidence of secondary considerations which our reviewing court guides “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). 5 Appeal 2015-003876 Application 12/144,915 For these reasons, we are not persuaded that the Examiner erred in finding that the combination of Ludtke, Fakharzadeh, and Ismail teaches or suggests the disputed limitations of claim 1. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of independent claims 14, 26, and 31, which Appellant argues are patentable for similar reasons. App. Br. 15—17. We also sustain the Examiner’s rejection of dependent claims 2, 4—6, 8, 10-13, 15, 17—19, 21, 23—25, 27, 29, 30, and 32, 34, and 35, for which Appellant makes no separate, substantive arguments for patentability. Id. at 12, 15—17. Rejection of Claims 3, 16, 28, and 33 under 35 U.S.C. § 103 Appellant contends the Examiner erred in rejecting dependent claim 3 because Ludtke does not teach or suggest the limitation “monitoring for a data packet size” on a data bus. App. Br. 18. Appellant argues the history file of Ludtke is a storage structure used to create a record of the viewing habits of a user, and is not a “data packet.” Id. We are not persuaded of Examiner error. Appellant again attacks the references individually even though the Examiner relied on a combination of references in rejecting claim 3. See Mouttet, 686 F.3d at 1332. The Examiner relied on Fakharzadeh, not Ludtke, as teaching or suggesting the recited “data bus.” Final Act. 5. Moreover, the Examiner concluded the claim term “data packet” could be reasonably and broadly interpreted as a packet (file) containing data (historical data) and reads on the history file taught in Ludtke. Ans. 16. Appellant has not persuasively shown the Examiner’s interpretation is overly broad, unreasonable, or inconsistent with the Specification. See Reply Br. 12—13. We find the Examiner’s 6 Appeal 2015-003876 Application 12/144,915 interpretation reasonable and consistent with at least paragraph 40 of the Specification, which describes “the size of the packet of information that is to [sic] written to the disk drive,” and that “audio, video and/or image information is written in relatively large sets or packets.” Spec. 140. For these reasons, we are not persuaded the Examiner erred in finding that the combination of Ludtke, Fakharzadeh, and Ismail teaches or suggests the disputed limitations of claim 3. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of dependent claim 3, as well as the 35 U.S.C. § 103(a) rejection of dependent claims 16, 28, and 33, which Appellant argues are patentable for similar reasons. App. Br. 19. DECISION We reverse the decision of the Examiner rejecting claims 26—30 under 35 U.S.C. § 101. We affirm the decision of the Examiner rejecting claims 1—8, 10—21, and 23—37 under 35 U.S.C. § 103(a). Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner's decision rejecting claims 1—8, 10-21, and 23—37 is affirmed. See 37 C.F.R. § 41.50(a)(1). 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). See 37 C.F.R. §41.50(f). AFFIRMED 7