Ex Parte Flinn et al

Patent Trial and Appeal Board

Apr 28, 2016

13315198 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/315, 198 12/08/2011
53928 7590 04/29/2016
MANYWORLDS, INC
IP DEPARTMENT
5476 BRIDLE CREEK LANE
BRENHAM, TX 77833
FIRST NAMED INVENTOR
Steven Dennis Flinn
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.
Many-09A8A 8337
EXAMINER
SWARTZ, STEPHENS
ART UNIT PAPER NUMBER
3623
MAILDATE DELIVERY MODE
04/29/2016 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 STEVEN DENNIS FLINN and
NAOMI FELINA MONEYPENNY
Appeal2013-008894
Application 13/315, 198 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellants' claimed "invention relates to extending the business
process paradigm so as to make processes more explicitly adaptive over
time." (Spec. 1, 11. 9-10.)
1 According to Appellants, the real party in interest is ManyWorlds, Inc.
(Appeal Br. 3.)
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Application 13/315, 198
Claims 1 and 9 are the independent claims on appeal. Claim 1 is
representative of the subject matter on appeal and is reproduced below:
1. A method, comprising:
accessing through execution of a computer-implemented
function on a processor-based device a plurality of usage
behaviors that are performed through a first user's use of a
portable processor-based device;
identifying a physical location of a second user; and
delivering to the first user through execution of a
computer-implemented function on a processor-based device a
plurality of objects that are arranged in a temporal sequence,
wherein at least two of the plurality of objects comprise user
activities, wherein one of the at least two user activities
comprises a reference to the physical location of the second user,
and wherein the plurality of objects are selected for delivery to
the first user in accordance with an inference of a preference
based, at least in part, on the plurality of usage behaviors.
REJECTIONS
Claims 1-5, 7, 11, 13, and 14 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Dupray (US 2007/0287473 Al, pub. Dec. 13, 2007).
Claims 6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dupray and Herz (US 7 ,630,986 B 1, iss. Dec. 8, 2009).
Claims 10 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dupray and Hayes-Roth (US 2003/0028498 Al,
pub. Feb. 6, 2003).
ANALYSIS
Claims 1 and 9
Appellants argue that Dupray does "not teach identifying a physical
location of a second user" because Dupray only teaches "utilizing data from
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a second mobile radio terminal [which] is not the same as identifying the
physical location of a second user as there need not be a user associated with
the mobile radio terminal described by Dupray." (Appeal Br. 10.)
In answering, the Examiner states that "Dupray teaches a second
mobile radio terminal to determine a location of an entity" and that "Dupray
does identify the location of a second user (i.e. target)." (Answer 4--5, citing
Dupray i-f 391.) Dupray teaches:
The Service Node calculates the pos1t10n of the target MS
[mobile station] 140 using the TOA [time of arrival] information
(supplemented by the DOA [direction of arrival] information
when available). Note, that the TCSO [terrestrial communication
station offset] model may utilize data from a second mobile radio
terminal [that] is co located [sic] on a mobile platform (auto,
emergency vehicle, etc.) with one of the radio base stations (e.g.,
MBS 148), which can be moved into relatively close proximity
with the target MS 140. Consequently, by moving one of the
radio base stations (MBSs) close to the region of interest (near
the target MS 140), the position determination accuracy is
significantly improved.
(Dupray i-f 3 91.) Dupray was filed on August 13, 2007. In 2007, moving an
auto or an emergency vehicle would inherently include a driver, i.e., a
second user. Thus, Dupray discloses a second mobile radio and user.
Appellants next argue that Dupray does not teach delivering to a user
"a plurality of objects that are arranged in a temporal sequence." (Appeal
Br. 10.) Specifically, Appellants argue, "[a] set of preferences and needs
may be categorized and listed within the category without necessarily being
temporally sequenced." (Id. at 11.) Appellants further argue that "Dupray
does not teach delivering to a user a plurality of objects that are arranged in a
temporal sequence." (Id.)
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The Examiner answers that "Dupray teaches an ordering of items (i.e.
advertisements) based on temporal importance (i.e. arranged in temporal
sequence)." (Answer 5, citing Dupray i-f 608.)
Dupray discloses that
there may be different collections of advertisements for MS users
that are believed to have different demographic profiles and/or
purposes for being in the area. Accordingly, an MS whose
location is being determined periodically may be monitored by
an advertisement wizard such that this wizard may maintain a
collection [of] the MS user's preferences, and needs so that when
the MS user comes near a business that can satisfy such a
preference or need, then an advertisement relating to the
fulfillment of the preference or need may be presented to the MS
user. However, it is an aspect of the disclosure that such
potential advertising presentations be intelligently selected
using as much information about the user as is available. In
particular, in one embodiment of the disclosure MS user
preferences and needs may be ordered according to importance.
Moreover, such user preferences and needs may be categorized
by temporal importance (i.e., must be satisfied within a particular
time frame, e.g., immediately, today, or next month) and by
situational importance wherein user preferences and needs in this
category are less time critical (e.g., do not have to [be] satisfied
immediately, and/or within a specified time period), but if certain
criteria are meet [sic] the user will consider satisfying such a
preference or need. Thus, finding a Chinese restaurant for dinner
may be in the temporal importance category while purchasing a
bicycle and a new pair of athletic shoes may be ordered as listed
here in the situational category.
(Dupray i-f 608, emphasis added.) Dupray further discloses that "items in the
temporal category are ordered according [to] how urgent[ly] ... a preference
or need must be satisfied, while items in the situational category may be
substantially unordered and/or ordered according to desirableness." (Id. at
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il 610.) In other words, Dupray teaches arranging the items (i.e., advertising
presentations) in a temporal sequence for presentation to the user.
Appellants next argue that Dupray does not teach "wherein at least
two of the plurality of objects comprise user activities, wherein one of the at
least two user activities comprises a reference to the physical location of the
second user." (Appeal Br. 11.) Specifically, Appellants argue that "merely
knowing the locations of a first and a second person, and knowing that they
are in a described area, is not sufficient." (Id.) In particular, "[d]elivering
an object to a first user comprising a user activity that references the
physical location of a second user is functionally and technically
distinguished from merely knowing two people are both within an area."
(Id.)
For the disclosure of this portion of the claim limitation, the Examiner
again relies on paragraph 391 of Dupray. (Answer 5---6.) The Examiner
finds that Dupray "teaches a user that has a base station that is being used to
determine the location of a target (i.e. second user), this would be considered
the first user activity." (Answer 5.) The Examiner further finds that
paragraph 608 of Dupray provides the example of providing to a user an
advertisement of a Chinese restaurant "that is selected by the program from
a list and providing the nearby location to the user (i.e. first object). After
providing this information to a user the program then provides other
available product inventories and/ or services that are withing [sic] a
predetermined distance (i.e. second object)." (Id. at 6.) In other words,
Dupray teaches delivering to a first user an advertisement that is based on
the determined location of a second user, e.g., the determined location of the
second mobile radio terminal collocated on the auto or emergency vehicle
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that is identified and referenced when the location of the first user is
determined. Thus, through the selection of the advertisement, what is
delivered to the first user includes a reference to the physical location of the
second user. (See Dupray i-fi-1391, 608.)
Appellants next argue that "Dupray does not teach the claim element:
'wherein the plurality of objects are selected for delivery to the first user in
accordance with an inference of a preference based, at least in part, on the
plurality of usage behaviors."' (Appeal Br. 12.) Specifically, Appellants
argue that Dupray does "not teach 'an inference of a preference."' (Id.)
The Examiner finds, and we agree, that Dupray "goes into details as to
how user preference is determined (i.e. infered) [sic] based on time frame
and situational criteria gathered from the user." (Answer 6.) Dupray
teaches that "for MS user preferences and needs, the [advertising] wizard
will attempt to present information (e.g., advertisements, coupons, discounts,
product price and quality comparisons) related to products and/or services
that may satisfy the user's corresponding preference or need." (Dupray
i1610; see Answer 6.)
Therefore, Appellants have not persuaded us that the Examiner erred
in rejecting claim 1. Independent claim 9 contains similar limitations and
Appellants present similar arguments. (See Appeal Br. 21-25.) Therefore,
for the same reasons, Appellants have not persuaded us that the Examiner
erred in rejecting claim 9.
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Claim 2
Claim 2 recites:
2. The method of claim 1, further comprising:
accessing the plurality of usage behaviors, wherein one
behavior of the plurality of behaviors is a subscription.
Appellants argue that claim 2 is not anticipated by Dupray.
Specifically, Appellants argue that "Dupray only uses the term subscriber in
the context of a subscriber to a carrier network-that is, merely gaining
access to a carrier network. Dupray does not expressly or inherently teach
inferring a preference from a plurality of behaviors that include a
subscription behavior, as is required by claim 2." (Appeal Br. 14.)
The Examiner finds, and we agree, that Dupray teaches "a system that
is accessed by a subscriber to the system. Once in the system, data is
gathered on the user in the form of a user profile (i.e. preferences)."
(Answer 7, citing Dupray i-f 556.) The Examiner also finds that Dupray
teaches using the user profile "to determine based on actions \~1hether a
service request can be fulfilled," i.e., whether the user profile, preferences,
and the status of the user's subscription, "allow or prohibit access,
activation, or fulfillment of a network service by the user." (Id., citing
Dupray i-f 557.)
In view of the Examiner's findings and, in particular, the teachings of
paragraphs 556 and 557 of Dupray, Appellants have not persuaded us that
the Examiner erred in finding claim 2 anticipated by Dupray.
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Claim 3
Claim 3 recites:
3. The method of claim 1, further comprising:
delivering to the first user the plurality of objects, wherein
the plurality of objects are selected for delivery to the first user
in accordance with at least one direct feedback behavior that is
associated with at least one object of the plurality of objects.
In finding claim 3 anticipated by Dupray, the Examiner finds that
Dupray teaches "an advertisement program that collects user feedback with
respect to appropriateness and statisfaction [sic] of the user with respect to
multiple advertisements. This information is then incorporated into the user
profile." (Answer 7, citing Dupray i-fi-1623-25.) Appellants argue that
Dupray
suggests in the cited disclosure that this feedback is used in
selecting an advertisement to deliver to the user who provides the
feedback. Importantly, the delivered advertisement of Dupray
would necessarily be different from an advertisement or object
for \'l1hich feedback is previously provided, since the user has
already seen it and provided feedback associated with it. This
teaching is therefore distinguished from claim 3 in that the
delivered objects of claim 3 are selected in accordance with a
feedback behavior associated with at least one of the delivered
objects, not with respect to other-than-the-delivered objects for
which the user previously provided feedback, as in the case of
the teachings of Dupray.
(Appeal Br. 15-16.) In other words, Appellants argue that the delivered
objects of claim 3 are selected according to feedback associated with an
object before the object is delivered. It is unclear how a user could give
feedback to an advertisement before the user is shown the advertisement.
Appellants' argument is not persuasive of error.
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Moreover, Appellants appear to be attempting to apply a narrow
definition to the claim term "associated with." But Appellants point to no
definition or special meaning in the Specification for the term. Applying
plain meaning, we determine that, under a broadest reasonable
interpretation, a first advertisement is "associated with" a second
advertisement when both advertisements are for the same product or
service. 2 Thus, direct feedback given for a previously delivered
advertisement would be "associated with" a second advertisement for the
same product or service. (See Answer 7 .) For the above reasons, Appellants
have not persuaded us that the Examiner erred in finding claim 3 anticipated
by Dupray.
Claim 4
Claim 4 recites:
4. The method of claim 3, further comprising:
delivering to the first user the plurality of objects, wherein
the plurality of objects are selected for delivery to the first user
in accordance with the at least one direct feedback behavior that
is associated with the at least one object of the plurality of
temporally sequenced objects, wherein the at least one direct
feedback behavior is a user comment.
The Examiner rejects claim 4 as anticipated by Dupray. (Final
Action 5, citing Dupray i-fi-1608, 623.) Dupray teaches obtaining feedback
from a user. (Dupray i1 623.) Appellants argue that in those portions of
2 The Oxford Dictionaries define "associate" as "connect (someone or
something) with something else in one's mind."
(http://www. oxforddictionaries. com/us/definition/ american_ english/ associat
e, def. 1, last visited April 18, 2016.) Thus, two advertisements for the same
product or service would be "associated."
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Dupray relied on by the Examiner, "Dupray does not even mention users
leaving a comment with respect to specific objects. Dupray does teach,
'obtaining feedback'; but obtaining feedback does not imply that the
feedback is in the form of a user comment." (Appeal Br. 17.)
Appellants point to no definition or special meaning of either
"feedback" or "comment" in the Specification. Applying plain meaning, we
determine that, under a broadest reasonable interpretation: a) "feedback"
includes "the transmission of evaluative ... information about an action,
event, or process to the original or controlling source."
(http://www.merriam-webster.com/dictionary/feedback, def. 2b., last visited
April 18, 2016), and b) a "comment" includes "an observation or remark
expressing an opinion." (http://www.merriam-
webster.com/dictionary/feedback, def. 3a., last visited April 18, 2016.) In
other words, feedback provides some evaluative information to the source.
A comment provides some evaluative information. Thus, we are not
persuaded that Dupray's teaching of "obtaining feedback" from a user
(Dupray i-f 623) does not teach obtaining a comment from a user. Therefore,
Appellants have not persuaded us that the Examiner erred in finding claim 4
anticipated by Dupray.
Claim 5
Claim 5 recites:
5. The method of claim 1, further comprising:
delivering to the first user the plurality of objects, wherein
the plurality of objects are selected for delivery to the first user
in accordance with the inference of the preference, wherein the
inference of the preference is based, at least in part, on usage
behaviors associated with a plurality of users.
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In finding claim 5 anticipated by Dupray, the Examiner finds that
Figure 7 of Dupray teaches an evaluator that
takes into account an MS status repository which is used to store
previous activity of the user as well as context and states Figure
8(3) (i.e. usage behavior). This usage behavior is gathered
together with location data to provide the user with advertisments
[sic] that are applicable to them (i.e. based on user activity or
perferences [sic] determined from a repository).
(Answer 8.) Appellants argue that "Dupray does not teach an inference of a
preference from usage behaviors associated with a plurality of users."
(Appeal Br. 19.) The Examiner explains that Dupray teaches inferring a
user's preference based on that user's behavior. The Examiner does not,
however, explain how Dupray teaches inferring the preference based on
usage behaviors associated with a plurality of users. Therefore, we reverse
the rejection of claim 5 as anticipated by Dupray.
Claim 7
Claim 7 recites:
7. The method of claim 1, further comprising:
delivering to the first user the plurality of objects, wherein
at least one object of the plurality of objects comprises an activity
performed by a processor-based device.
In finding claim 7 anticipated by Dupray, the Examiner finds that
"Dupray teaches the targeting and sending of a [sic] signals (i.e. objects) by
a signal processor (i.e. processor based device) to a user. Therefore Dupray
teaches delivering to a user multiple objects to a user utilzing [sic] a
processor-based device." (Answer 8, citing Dupray i-f 408.)
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Appellants argue that "Dupray merely teaches sending and receiving
signals from one device to another for the purposes of determining location"
and that, unlike Dupray, "[t]he plurality of objects delivered to a user
pursuant to claim 7 are based on an inference of a preference from a
plurality of usage behaviors." (Appeal Br. 21.)
Claim 1 recites "delivering to the first user through execution of a
computer-implemented function on a processor-based device a plurality of
objects." Claim 7 adds that "at least one object of the plurality of objects
comprises an activity performed by a processor-based device." Claim 7
does not refer to "said processor-based device" but rather refers to "a
processor-based device." Applying a broadest reasonable interpretation, we
construe the term "a processor-based device" added by claim 7 to refer to a
different "processor-based device" than that referred to in claim 1. The only
portion of Dupray relied on by the Examiner as disclosing the additional
limitation of claim 7 discloses that "[ s ]ignals originating from the target MS
140 at an unknown location are received at a base station 122. A signal
processor, e.g., at the base station 122, then determines the signal signature"
for the purpose of selecting likely locations of the target MS. (Dupray
i-f 408.) In other words, the portion of Dupray relied on by the Examiner,
paragraph 408, teaches signals coming from a first user to a processor rather
than signals delivered to a first user. Therefore, on the record before us, we
reverse the Examiner's rejection of claim 7 as anticipated by Dupray.
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Claim 11
Claim 11 recites:
11. The device of claim 9, further comprising:
the processor configured to enable the first user to interact
with the plurality of objects, wherein the interaction comprises
an audio-based communication.
The Examiner finds claim 11 anticipated by Dupray. (Answer 10,
citing Dupray i-f 56.) Dupray teaches that the mobile station "refers to a
wireless device ... such as a portable radio telephony handset," e.g., a
cellular device. (Dupray i-fi-156-57.)
Appellants argue that "merely disclosing a cell phone that enables
audio-based communication does not teach the claim limitation, 'the
processor configured to enable the first user to interact with the plurality of
objects, wherein the interaction comprises an audio-based communication."'
(Appeal Br. 26.)
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). The portion of Dupray relied on by the Examiner does
not expressly or inherently describe a user interacting with the plurality of
objects where the interaction includes an audio-based communication.
Therefore, we reverse the Examiner's rejection of claim 11 as anticipated by
Dupray.
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Claims 13 and 14
Claims 13 and 14 recite:
13. The device of claim 9, further comprising:
logic circuitry configured to determine a physical
location.
14. The device of claim 13, further comprising:
a global positioning system receiver.
The Examiner finds claims 13 and 14 anticipated by Dupray.
(Answer 10-11, citing Dupray i-f 234.) Specifically, the Examiner finds that
"Dupray teaches the use of a GPS device which is well settled in the art to
be a logical circuitry configured to determine a physical location."
(Answer 10.)
In arguing the patentability of claims 13 and 14, Appellants repeat the
arguments found unpersuasive with regard to the patentability of claim 9.
With regard to the added limitations of claims 13 and 14, Appellants merely
recite that "the cited disclosures of Dupray paragraph 0234 are not arranged
as" recited in claims 13 and 14. (Appeal Br. 27, 29.)
Appellants have the burden to rebut the Examiner's prima facie case
by distinctly and specifically pointing out the supposed errors in the
Examiner's action, as well as the specific distinctions believed to render the
claims patentable over the applied references. See 3 7 C.F .R. § 41.3 7 ( c )(iv)
(2013) ("A statement which merely points out what a claim recites will not
be considered an argument for separate patentability of the claim."); see also
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 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
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prior art."). With regard to the added limitations of claims 13 and 14,
Appellants have not met their burden. With regard to the limitations of
claim 9, for the reasons discussed above, Appellants' arguments are not
persuasive of error. Therefore, we affirm the rejection of claims 13 and 14.
Claim 6
Claim 6 recites:
6. The method of claim 1, further comprising:
delivering to the first user the plurality of objects, wherein
the plurality of objects are selected for delivery to the first user
in accordance with the inference of the preference, wherein the
inference of the preference is based, at least in part, on the
contents of at least one object of the plurality of objects.
The Examiner rejects claim 6 as obvious over Dupray and Herz.
Appellants argue that Herz "only teaches clustering user profiles and using
the clusters as a basis for delivering recommendations" and that Herz does
not teach or suggest "an inference of a preference that is based on the
contents of at least one of a plurality of delivered objects." (Appeal Br. 30-
31.)
Herz discloses that "[ v ]endors are assured that all enabled users ...
will receive highly personalized recommendation for their products." (Herz,
col. 99, 11. 55-57.) Herz explains that "iamworthit provides the unique
advantage of being able to utilize the user's web-wide profile." Id. at col.
99, 11. 63---65. From this, the Examiner determines that
[i]t would have been obvious to one of ordinary skill in the art to
include in the determining the usage behavior and providing
information relevant to the previous history of Dupray the
delivering to the first user the plurality of objects, wherein the
plurality of objects are selected for delivery to the first user in
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accordance with the inference of the preference, wherein the
inference of the preference is based, at least in part, on the
contents of at least one object of the plurality of objects as taught
by Herz since the claimed invention is merely a combination of
old elements, and in the combination each element merely would
have performed the same function as it did separately, and one
of ordinary skill in the art would have recognized that the result
of the combination were [sic] predictable.
(Final Action 7-8.)
Nonobviousness is not established by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). A reference
"must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole." Id. Appellants read Herz in isolation and do
not persuasively argue error with respect to the Examiner's proposed
combination. Therefore, we are not persuaded that the Examiner erred in
rejecting claim 6.
Claim 8
Claim 8 recites:
8. The method of claim 1, further comprising:
delivering to the first user an explanation as to why at least
one object of the plurality of objects was selected for delivery to
the first user.
The Examiner rejects claim 8 as obvious over Dupray and Herz.
Appellants argue that
the Examiner's interpretation of the cited teachings as [sic]
follows: "Herz teaches that a user may accept or adjust reasons
for provided information" (Final Office Action, page 8 paragraph
2). However, it is an unreasonable interpretation that merely
disclosing the capability for a user to accept or adjust "rules" or
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"thresholds" teaches or suggests the functionally distinct process
... of delivering an explanation to a user as to why an object was
delivered to the user.
(Appeal Br. 32.) Herz, however, teaches more. Herz teaches that "[a]n
intelligent interface system might also suggest refinements to the rules, to
automatically cover 'patches' where the user currently controls interactions."
(Herz, col. 178, 11. 41--43.) Moreover, the Examiner specifically notes that
Herz teaches that "[ t ]he system may suggest refinements to rules (i.e.
explanations) as to why the information from the system is being provided to
a cluster of users." (Answer 12.)
Appellants further argue that "[ o ]ne of ordinary skill in the art at the
time of the invention would not have interpreted accepting or adjusting rules
to be functionally or technically equivalent to delivering an explanation as to
why an object was delivered to the user." (Appeal Br. 32.) But this
argument is not supported by any persuasive evidence. (See id.)
Therefore, i~ .. ppellants have not persuaded us that the Examiner erred
in rejecting claim 8.
Claim 10
Claim 10 recites:
10. The device of claim 9, further comprising:
the processor configured to enable the first user to interact
with the plurality of objects, wherein the interaction comprises a
performance of a gesture.
The Examiner rejects claim 10 as obvious in view of Dupray and
Hayes-Roth. The Examiner finds that "Hayes-Roth teaches an expert system
that takes inputs from gestures." (Final Action 9, citing Hayes-Roth i-f 15.)
Specifically, the Examiner finds that "the system is in fact capable of taking
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the inputs from gestures as provided by the coach." (Answer 12, citing
Hayes-Roth i-f 184.) Appellants disagree and argue that "Hayes-Roth only
teaches outputting gestures to users via animated characters." (Appeal
Br. 34.)
Hayes-Roth discloses "a human-like customizable expert agent
capable of having personalized conversational interactions with human
users." (Hayes-Roth, Abstract.) Specifically, the customizable expert agent
of Hayes-Roth "combines natural language conversation, animated gestures,
subject expertise, and access to various electronic resources to create
enjoyable and effective online experiences in a variety of contexts." (Hayes-
Roth i-f 15.) The expert agent can act as a coach to the user. "The Coach
interacts with the student in a mixed-initiative conversation and human-like
manner." (Hayes-Roth i-f 53.) The interaction between the user and the
system includes "gestures or actions displayed or performed by the Coach."
(Hayes-Roth ,-r 184.)
We are persuaded that the Examiner erred in finding that Hayes-Roth
takes "inputs from gestures provided by the coach" because those portions of
Hayes-Roth cited by the Examiner indicate that the "coach" is part of the
output of the Hayes-Roth system. Therefore, the Examiner's reasoning that
follows from the erroneous fact-finding, e.g., that combining Dupray and
Hayes-Roth would have been obvious because "one of ordinary skill would
have recognized the benefit because adding the analysis based on gestures
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increases the how [sic] data can be inputted and therefore makes the analysis
more robust," is not supported by Hayes-Roth. 3
Claim 12
Claim 12 depends from claim 9. Appellants argue that "since
dependent claim 12 further limits patentably distinct claim 9, claim 12 is
believed to be allowable over cited references." (Appeal Br. 35.) For the
reasons discussed above with regard to claims 1 and 9, Appellants' argument
is not persuasive.
Appellants' other arguments have been considered and are not
deemed persuasive of error.
DECISION
The Examiner's rejection of claims 1--4, 13, and 14 under 35 U.S.C.
§ 102( e) is affirmed.
The Examiner's rejection of claims 5, 7, and 11 under 35 U.S.C.
§ 102( e) is reversed.
The Examiner's rejections of claims 6, 8, 9, and 12 under 35 U.S.C.
§ 103(a) are affirmed.
The Examiner's rejection of claim 10 under 35 U.S.C. § 103(a) is
reversed.
3 We note that if the Examiner was arguing that user input in response to
gestures from the coach is an interaction that "comprises a performance of a
gesture," the Examiner did not make that clear and we decline to infer such
an argument.
19
Appeal2013-008894
Application 13/315, 198
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv)(2015).
AFFIRMED-IN-PART
20