Ex Parte Papillon et al

Patent Trial and Appeal BoardMar 24, 2014

11516575 (P.T.A.B. Mar. 24, 2014)

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. 11/516,575 09/07/2006 Serge Papillon LUTZ 200674 9759 48116 7590 03/25/2014 FAY SHARPE/LUCENT 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115-1843 EXAMINER THOMAS, JASON M ART UNIT PAPER NUMBER 2423 MAIL DATE DELIVERY MODE 03/25/2014 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 SERGE PAPILLON and SYLVAIN SQUEDIN ____________ Appeal 2011-012243 Application 11/516,575 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012243 Application 11/516,575 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3-15, 17-20, and 29. Claims 2, 16, and 21-28 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION This invention relates to providing broadcasters with information relating to the audiences achieved by their various programs or content (Spec. 1). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method of determining data relating to access to programs or content that are transmitted by at least one communication network to communication terminals that are attached to it, the method comprising: causing each terminal that has just accessed a program or content to transmit to an analyzer device a first message including at least first data representative of the program or content accessed; storing in the analyzer device said first data in corresponding relationship to second data from the first message that is representative of the access time and third data representative of the terminal that accessed the program or content; causing each terminal that has just ceased to access a program or content to transmit to the analyzer device a second message including at least the first data representative of the program or content; storing the first data from the second in the analyzer device message in corresponding relationship to fourth data representative of the time at which access ended and third data representative of the terminal that has ceased to access the program or content; and Appeal 2011-012243 Application 11/516,575 3 analyzing at least some of the data stored in the analyzer device in real time to determine at least information representative of the audiences of at least some of the programs or content. REJECTIONS A. Claims 1, 3-10, 13-15, 17-20, and 29 stand rejected under 35 U.S.C. § 103(a) over the combined teachings and suggestions of U.S. Publication No. 2002/0078441 A1 (Drake), U.S. Publication No. 2004/0143661 A1 (Higashi), and U.S. Patent No. 6,530,082 B1 (Del Sesto). B. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) over the combined teachings and suggestions of Drake, Higashi, and Del Sesto, and U.S. Publication No. 2002/0069100 A1 (Arberman). GROUPING OF CLAIMS Based on Appellants’ arguments (App. Br. 8-13), we decide the appeal of rejection A of claims 1, 3-10, 13-15, 17-20, and 29 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).1 We address rejection B of claims 11 and 12 separately, infra. 1 Appellants filed a Notice of Appeal on December 1, 2010. The date of filing the Notice of Appeal determines which set of rules applies to an ex parte appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. See also MPEP (rev. 8, July 2010). Appeal 2011-012243 Application 11/516,575 4 ISSUE Under § 103, did the Examiner err in combining Drake and Higashi in light of the claim 1 limitation “causing each terminal that has just accessed a program or content to transmit to an analyzer device a first message including at least first data representative of the program or content accessed” (Final Office Action 7-8 [hereinafter FOA])? ANALYSIS We disagree with Appellants’ contentions as set forth in the Briefs regarding the Examiner’s §103 rejections of the claims. We adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (FOA 2-8), and (2) the reasons set forth by the Examiner in the Answer in response to arguments made in Appellants’ Appeal Brief. (Ans. 16-19). We highlight and address specific findings and arguments below: Rejection A of claims 1, 3-10, 13-15, 17-20, and 29 under § 103 Regarding the combination of Drake and Higashi, Appellants contend that additional teachings of Higashi would conflict with the method of Drake, thus changing the principle of operation of Drake and rendering the combination unsatisfactory for Drake’s intended purpose. Specifically, Appellants contend: as part of a license for the use of the content, the content ID of Higashi would not be operable in the system of Drake where Set-Top Boxes (STBs) allow viewers to receive various types of content (e.g., video broadcasts such as television programming, audio broadcasts, etc.) that has already been subscribed to. Appeal 2011-012243 Application 11/516,575 5 (Reply Br. 9). “The policies and conditions surrounding the history logs taught by Higashi are not independent and further provide evidence that the proposed combination would render the system of Drake unsatisfactory for its intended purpose” (Reply Br. 10). However, the Examiner does not rely on these additional teachings of Higashi in the rejection. Instead, the Examiner’s rejection is based on Higashi’s initial collection of data to compile the content history log (Higashi, Fig. 7; ¶ 16; FOA 8; Ans. 19). We agree with the Examiner that the additional teachings of Higashi, relating to security features and to additional data processing subsequent to the data collection, do not prevent the combination of Higashi’s transmission of a content identifier from a terminal device, with the event collection system of Drake (Ans. 17; Drake, ¶ 29). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Furthermore, the artisan is not compelled to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Appellants further contend: “[T]he Examiner uses improper hindsight, as detailed in the Appeal Brief, and as demonstrated by the Examiner conceding that both systems of Drake and Higashi disclose different means of collecting event records as well as different means for capturing viewing activity.” (Reply Br. 8). Appeal 2011-012243 Application 11/516,575 6 Regarding Appellants’ allegation of impermissible hindsight reconstruction (id.; App. Br. 9-10), the Supreme Court guides that the conclusion of obviousness can be based on the interrelated teachings of multiple patents and the background knowledge possessed by a person having ordinary skill in the art and that an obviousness “analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). While we are fully aware that hindsight bias often plagues determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36 (1966), the Supreme Court provided clear guidance that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” KSR, 550 U.S. at 401. The Supreme Court also qualified the issue of hindsight by stating “[r]igid preventative rules that deny fact finders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” KSR, 550 U.S. at 421. This reasoning is applicable here. In reviewing the record, we find the Examiner’s proffered modification of Drake’s system for capturing end user content viewing events, and related event information (Drake, ¶ 29 (e.g., “viewing . . . a channel,” “viewing a preview of a video or audio selection”)), with the additional event information of a content identifier (Higashi, ¶¶ 16, 23) would have yielded the predictable result of improving the efficiency of analysis of user behavior and improve content management decisions (Ans. 17-18; FOA 8). Appeal 2011-012243 Application 11/516,575 7 Therefore, based on the totality of the record before us, we find unavailing Appellants’ contentions that the Examiner improperly combined the references by: (1) changing Drake’s principle of operation, (2) rendering the system of Drake unsatisfactory for its intended purpose, or (3) relying on impermissible hindsight reconstruction. Accordingly, we are not persuaded the Examiner erred. We sustain the Examiner’s § 103 rejection A of representative claim 1, and grouped claims 3-10, 13-15, 17-20, and 29 (not argued separately), which fall therewith. See 37 C.F.R. § 41.37(c)(1)(vii) (2004). Rejection B of claims 11 and 12 under § 103 Appellants argue dependent claims 11 and 12 are allowable by virtue of their dependency from claim 1, which Appellants contend is allowable (App. Br. 13). However, we do not agree the Examiner erred in rejecting claim 1, for the reasons discussed supra. Appellants have not provided any further argument regarding dependent claims 11 and 12. Therefore, we sustain the Examiner’s rejection B of claims 11 and 12 under § 103 for the same reasons discussed above regarding claim 1. Appeal 2011-012243 Application 11/516,575 8 DECISION We affirm the Examiner’s rejection of claims 1, 3-15, 17-20, and 29 under § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 41.50(f). AFFIRMED bab