Ex Parte Feldman et al

Patent Trial and Appeal Board

Mar 16, 2015

12144532 (P.T.A.B. Mar. 16, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EVAN FELDMAN and JONATHAN NELSON
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Appeal 2012-010686
Application 12/144,532
Technology Center 2400
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Before MAHSHID D. SAADAT, ROBERT E. NAPPI, and
JESSICA C. KAISER, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants
1
appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–25. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Independent claim 1 is illustrative of the invention and reads as
follows with the disputed limitation in italics:
1. A method comprising:

1
According to Appellants, the real party in interest is Varia Holdings LLC.
(App. Br. 3).
Appeal 2012-010686
Application 12/144,532

2
retrieving, by a server, a plurality of media stored on or
accessed using a portable media player device, or information
about said plurality of media;
inferring, by the server, based at least in part on the
retrieved plurality of media or the retrieved information about
said plurality of media, one or more entertainment preferences
of a user of the portable media player device;
accessing, by the server, one or more sources of
information about venues or events proximal to a current
location of the user;
identifying, by the server, at least one of said venues or
events as being of interest to the user based at least in part on
the one or more entertainment preferences inferred by the
server and the current location of the user;
generating, by the server, a recommendation indicating
the identified venue or event as a venue or event of interest to
the user; and
communicating, by the server, the recommendation to the
user.

Claims 1–25 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Ng (US 2007/0155307 A1; July 5, 2007) and Moon (US
2004/0023666 A1; Feb. 5, 2004). (Ans. 4–13).
2

ANALYSIS
In rejecting claim 1, the Examiner finds Ng teaches the claimed steps
of “retrieving” and “inferring” and further relies on Moon for teaching the
remaining recited steps (Ans. 5–6). The Examiner specifically finds
paragraph 100 of Ng discloses the recited step of “inferring, by the server,
based at least in part on the retrieved plurality of media or the retrieved

2
We refer to the second Examiner’s Answer mailed June 6, 2012.
Appeal 2012-010686
Application 12/144,532

3
information about said plurality of media, one or more entertainment
preferences of a user of the portable media player device” (Ans. 5).
Appellants argue paragraph 100 of Ng describes inferring a user
preference based on a “location of [a] venue and/or [a] media device,” which
is different from the claimed inferring user preferences based on “media” or
“information about . . . media” (App. Br. 14). Appellants also contend other
parts of Ng related to user preferences in paragraphs 95 and 99 do not
disclose the disputed limitation of claim 1 (App. Br. 15–16).
The Examiner explains:
In addition, the claimed limitation “inferring, by the server,
based at least in part on one or more entertainment preferences
of a user of the portable media player device” has been
interpreted as: inference based on user’s entertainment
preferences; in this case, Examiner’s interpretation is that: the
server has made decision based on “specific information” which
is user’s entertainment preferences. Therefore, NG clearly
discloses the above limitation in paragraphs [0093 and 0100]
[inferring the interest or preferences of the users].
(Ans. 15). The Examiner further explains this interpretation on page 17 of
the Answer by stating:
Examiner respectfully submits that to address this
limitation several choices can be made, because of use of “or”
between descriptive elements in the limitation. In this case,
Examiner has the option to address either: “inferring, by the
server, based at least in part on “the retrieved plurality of
media” or “the retrieved information about said plurality of
media”, or “one or more entertainment preferences of a
user of the portable media player device”. Therefore, the
rejection of “inferring, by the server, based at least in part on”
one or more entertainment preferences of a user of the portable
media player device is proper. (see NG pa. [0093 and
0100][Inferring the interest or preferences of the users]).
Appeal 2012-010686
Application 12/144,532

4
Appellants contend the Examiner’s position is based on improper
interpretation of the disputed claim limitation as “inferring, based at least in
part on one or more entertainment preferences” (Reply Br. 2). Appellants
further challenge the Examiner’s claim interpretation and assert one of ordinary
skill in the art would not interpret the language of claim 1 as the Examiner did
(Reply Br. 3).
We agree with Appellants. The recited step of “inferring, by the server,
based at least in part on the retrieved plurality of media or the retrieved
information about said plurality of media, one or more entertainment
preferences of a user of the portable media player device” infers the user
preferences based on the retrieved media or the retrieved information about the
retrieved media. In other words, “entertainment preferences of a user” are not
the recited basis for the “inferring”; instead, those preferences are themselves
inferred. Considering the proper interpretation of the disputed claim limitation,
the Examiner has not identified any teachings in Ng that would meet the
claimed step of inferring. As argued by Appellants (App. Br. 14), inferring the
interest or preferences of the users based on the location of the venue or the
device, as disclosed in paragraph 100 of Ng, does not teach or suggest the
disputed limitation of claim 1.
Therefore, we do not sustain the rejection of claim 1, independent claims
11, 16, and 21, which recite similar features, or the remaining claims dependent
therefrom.

DECISION
The decision of the Examiner to reject claims 1–25 is reversed.

REVERSED