Ex Parte Feldman et alDownload PDFPatent Trial and Appeal BoardMar 16, 201512144532 (P.T.A.B. Mar. 16, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EVAN FELDMAN and JONATHAN NELSON ____________ Appeal 2012-010686 Application 12/144,532 Technology Center 2400 ____________ 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 Copy with citationCopy as parenthetical citation