Ex Parte Svendsen et al

Patent Trial and Appeal BoardJul 14, 2014

12101194 (P.T.A.B. Jul. 14, 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. 12/101,194 04/11/2008 Hugh Svendsen CT-REC-030/US (P188) 7701 71739 7590 07/15/2014 Concert Technology Corporation 5400 Trinity Road, Suite 303 Raleigh, NC 27607 EXAMINER DAVANLOU, SOHEILA ART UNIT PAPER NUMBER 2159 MAIL DATE DELIVERY MODE 07/15/2014 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 HUGH SVENDSEN and SEAN PURDY ____________ Appeal 2012-003747 Application 12/101,194 Technology Center 2100 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003747 Application 12/101,194 2 STATEMENT OF THE CASE The Examiner finally rejected claims 1-34. Appellants appeal from the final rejection under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION This invention relates to “sending recommendations for media items from a recommending user to one or more recipients.” (Spec. ¶ 1). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method comprising: [a] receiving user input selecting a media item from a recommending user; [b] obtaining expected desirability information for the media item for each potential recommendation recipient of one or more potential recommendation recipients; and [c] presenting the expected desirability information to the recommending user. (Contested limitation emphasized, steps lettered). REJECTIONS R1. Claims 1, 2, 11, 19, 20, 22-27, and 31-34 stand rejected under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent Application Publication No. 2007/0288546 Al (Dec. 13, 2007) to Rosenberg (“Rosenberg”). R2. Claims 3, 5-7, and 28-30 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rosenberg and U.S. Patent Application Appeal 2012-003747 Application 12/101,194 3 Publication No. 2004/0254911 Al (Dec. 16, 2004) to Grasso et al. (“Grasso”). R3. Claims 4 and 8-10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rosenberg, Grasso, and U.S. Patent Application Publication No. 2008/0134039 Al (June 5, 2008) to Fischer et al. (“Fischer”). R4. Claims 12-18 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rosenberg and Fischer. GROUPING OF CLAIMS Based on Appellants’ arguments, we decide the appeal of rejection R1 of claims 1, 2, 11, 19, 20, 22-27, and 31-34 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).1 We address the rejections R2–R4 separately, infra. ANALYSIS R1. CLAIM 1 A. As an initial matter of claim construction, we conclude the contested claim 1 limitation “expected desirability information” is directed to non- 1 Appellants filed a Notice of Appeal on May 5, 2011. 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 Manual of Patent Examining Procedure (MPEP) 8th ed., Rev. 8, July 2010. Appeal 2012-003747 Application 12/101,194 4 functional descriptive material. Specifically, the informational content of the recited “expected desirability information” is not positively recited as actually being used to change or affect any machine or computer function.2 Thus, claim 1 is directed to a method of manipulating non-functional descriptive material, i.e., the “expected desirability information” obtained from some unspecified source and presented “to the recommending user.” Thus, we conclude the claim as a whole is directed to conveying a message or meaning to a human viewer or reader independent of any machine or computer system.3 The “expected desirability information” of claim 1 is not executable code, nor is it a data structure that is positively recited as imparting functionality to a machine or computer.4 Thus, method claim 1 merely manipulates data that is not actually used to perform any function. Moreover, the scope of the “expected desirability information” presented to 2 See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative), aff’d, No. 2006-1003 (Fed. Cir. June 12, 2006) (Rule 36); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 F. App’x. 959 (Fed. Cir. 2006). 3 See MPEP § 2111.05 8th ed., Rev. 9, Aug. 2012 (“[W]here the claim as a whole is directed conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists.”). 4 Functional descriptive material consists of data structures and computer programs which impart functionality when employed as a computer component. See Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat. Office 142 (Nov. 22, 2005), especially pages 151-152. (The Manual of Patent Examining Procedure includes substantively the same guidance. See MPEP, 8th edition (revised Aug. 2006), § 2106.01.) Appeal 2012-003747 Application 12/101,194 5 the recommending user depends solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention. (Claim 1; see note 6 infra). For these reasons, a question arises as to how much patentable weight, if any, should be given to the contested “expected desirability information” of claim 1. Assuming arguendo the claimed non-functional descriptive material may be accorded patentable weight by our reviewing court, we find the weight of the evidence supports the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for the reasons discussed below. B. Regarding the claim 1 limitation, [b] “obtaining expected desirability information for the media item for each potential recommendation recipient . . .” (emphasis added), Appellants contend: Likewise, the scaled response is not “expected desirability information” after the suggestion has been made. Rather, once the suggestion has been made and the member of the group rates the suggestion, the scaled response constitutes how much the suggestion is actually desired. (App. Br. 11 (emphasis added)). Appellants’ contention that Rosenberg’s user’s (“potential recommendation recipient”) response to a suggestion is actual “desirability information” but not “expected desirability information” is unpersuasive because the contention is not commensurate with the broadest reasonable interpretation of “expected desirability information.” (Id.). Specifically, the user’s response indicates “expected desirability information” of the user’s future actual desire (Cf. with actual or present “desirability information”), Appeal 2012-003747 Application 12/101,194 6 because in the future the user’s desire may change. For example, the user’s response is “expected desirability information” of her future actual desirability where in the future the user will learn of the responses/tally of the other group members and may change her desire. (Rosenberg ¶¶ 26-27). Moreover, Appellants fail to cite a more narrow definition of “expected desirability information” in the Specification.5 Therefore, on this record, we are not persuaded the Examiner erred. Accordingly, we sustain rejection R1 of claim 1, and of the claims that fall with claim 1. (See claim grouping supra).6, 7 5 Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description.”). 6 In the event of further prosecution, we leave it to the Examiner to consider whether all claims which recite “expected desirability information,” either directly or by virtue of their dependency, meet the requirements of § 112, second paragraph. Specifically, the scope of “expected desirability information” depends solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention. See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“The scope of claim language cannot depend solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention. See Application of Musgrave, 57 C.C.P.A. 1352, 431 F.2d 882, 893 (1970) (noting ‘[a] step requiring the exercise of subjective judgment without restriction might be objectionable as rendering a claim indefinite’). Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention.” (emphasis added)), Appeal 2012-003747 Application 12/101,194 7 R2-R4 Regarding the rejections R2 - R4, Appellants contend these claims are patentable for essentially the same reasons previously advanced regarding claim 1. (App. Br. 12-13). However, we find these arguments unpersuasive for the same reasons discussed above regarding claim 1. Accordingly, we sustain the rejections R2-R4 of all rejected claims. (See Grounds of Rejection supra). DECISION We affirm the Examiner’s rejection R1 of claims 1, 2, 11, 19, 20, 22-27, and 31-34 under § 102. We affirm the Examiner’s rejection R2 of claims 3, 5-7, and 28-30 under § 103. We affirm the Examiner’s rejection R3 of claims 4 and 8-10 under § 103. We affirm the Examiner’s rejection R4 of claims 12-18 and 21 under § 103. abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). 7 In the event of further prosecution, we leave it to the Examiner to consider a § 101 rejection of computer readable medium claims 24, 25, 33, and 34. Specifically, Appellants do not cite to a definition or disclaimer of “computer readable medium . . .” in the Specification that excludes transitory signals. We particularly refer to the February 23, 2010 “Subject Matter Eligibility of Computer Readable Media” policy statement by former USPTO Director David J. Kappos, as published in the Official Gazette of the United States Patent and Trademark Office (USPTO). 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010), available at http://www.uspto.gov/web/offices/ com/sol/og/2010/week08/TOC.htm#ref20 Appeal 2012-003747 Application 12/101,194 8 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 msc