Ex Parte Yoakum et al

Patent Trial and Appeal Board

Sep 27, 2012

11610878 (P.T.A.B. Sep. 27, 2012)

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.
11/610,878 12/14/2006 Graham C. Yoakum 7000-569 3466
27820 7590 09/27/2012
WITHROW & TERRANOVA, P.L.L.C.
100 REGENCY FOREST DRIVE
SUITE 160
CARY, NC 27518
EXAMINER
KIM, PAUL
ART UNIT PAPER NUMBER
2169
MAIL DATE DELIVERY MODE
09/27/2012 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 GRAHAM C. YOAKUM and JOHN H. YOAKUM
____________________
Appeal 2010-006026
Application 11/610,878
Technology Center 2100
____________________

Before MAHSHID D. SAADAT, DAVID M. KOHUT, and HUNG H. BUI,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-24.
2
We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1
Appellants state that the real party in interest is Nortel Networks Ltd.
Appeal Brief filed October 13, 2009 (“App. Br.”).
2
App. Br. 4; Final Office Action mailed on April 13, 2009; Examiner’s
Answer mailed December 23, 2009 (“Ans.”) at 2.
Appeal 2010-006026
Application 11/610,878

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I. STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ claims are generally directed to a presence application
installed at a subscriber terminal to allow a subscriber to receive access, via
a presence system, media content that is currently being accessed by a
monitored user, as well as to navigate and track actions of the monitored
user with regarding to the media content. See generally Spec. ¶ [0008],
Abstract.
Claims on Appeal
Claims 1 and 17 are independent and claims 2-16 and 18-24 depend
upon independent claims 1 and 17 respectively. Independent claim 1 is
illustrative of the claimed subject matter, and is reproduced below with
disputed limitations emphasized:

1. A method of operating a subscriber terminal
associated with a subscriber comprising:

receiving from a presence system media context
information indicative of a monitored user accessing media
content, the presence system adapted to generate the media
context information from media state information received from
at least one monitored entity associated with the monitored
user; and

providing at the subscriber terminal an action related to
that taken by the at least one monitored entity with regard to
the media content based on the media context information.
Appeal 2010-006026
Application 11/610,878

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Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Linden U.S. 2002/0198882 A1 Dec. 26, 2002
Headings U.S. 6,925,469 B2 Aug. 2, 2005
Alves de Moura U.S. 2006/0080592 A1 Apr. 13, 2006

Examiner’s Rejections
(1) Claims 1-4, 9-11, 17, and 18 stand rejected under 35 U.S.C.
§102(b) as being anticipated by Headings. Ans. 3-5.
(2) Claims 5-7, 12-14, 16, 19, 20, and 22-24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Headings in view of Linden.
Ans. 5-9.
(3) Claims 8, 15, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Headings and Linden, and further in view of Alves
de Moura. Ans. 10-11.

II. ISSUES
1. Under §102, has the Examiner erred in rejecting claims 1-4, 9-
11, 17, and 18 by finding that Headings discloses:
a) a “presence system,” as recited in claim 1?

b) “media context information indicative of a monitored user
accessing media content,” as recited in claim 1?

c) “media state information received from at least one monitored
entity associated with the monitored user,” as recited in claim
1?
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Application 11/610,878

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d) “an action related to that taken by the at least one monitored
entity with regard to the media content based on the media
context information,” as recited in claim 1?

2. Under § 103, has the Examiner erred in rejecting claims 5-7,
12-14, 16, 19, 20, and 22-24 by finding that the combination of Headings
and Linden fails to teach or suggest all limitations as recited therein?
3. Under § 103, has the Examiner erred in rejecting claims 8, 15,
and 21 by finding that the combination of Headings, Linden, and Alves de
Moura fails to teach or suggest all limitations as recited therein?

II. PRINCIPLES OF LAW
Claim Construction
"[T]he PTO gives claims their 'broadest reasonable interpretation.'" In
re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read
into the claims from the specification." In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989)).

III. ANALYSIS
35 U.S.C. §102(b) Rejection of Claims 1-4, 9-11, 17, and 18
1. Presence System
Appellants contend that the Examiner fails to demonstrate that
Headings discloses a “‘presence system’” (App. Br. 10). Appellants
acknowledge that Headings discloses a subscriber management system 130
Appeal 2010-006026
Application 11/610,878

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as part of a service platform 108 to provide media content information (see
FIG. 1, col. 5, ll. 11-40; col. 7, ll. 25-34 of Headings), but contend that
Headings does not teach anything about presence and the Examiner’s
interpretation of “‘presence system’” ignores the word “‘presence’” (App.
Br. 11).
Referring to the Specification, Appellants indicate that the “presence
system[s]” is used to provide “information sufficient to help facilitate
communications between subscribers and monitored people” (¶ 0006). In
the context of both the Specification and claim 1, the ordinary meaning of
the term “presence system[s]” is any system that is capable of generating
“media context information indicative of a monitored user accessing media
content”.
In addition, according to Appellants’ Specification:
[T]he media content may include, but is not limited to, data,
pictures, audio, video, and voice content. The media content may be
stored and accessed in any electronic form by an appropriate software
application. As such, the media content may represent a word
processing document, spreadsheet, slide presentation, audio file, video
file, image file, web page, or any compilation thereof. (¶ 0026) (also
see claims 10 and 11 on appeal).

As noted by the Examiner, Headings describes a service platform 108
to provide a variety of functions such as receiving, storing, and preparing
media assets 102 for distribution to consumers (FIG. 1, col. 5, ll. 11-40) and:
“media assets may include, for example, movies, music videos,
television programs, video games, online books, live events, games,
educational content, audio programs, or any other category of media
assets. Related data may include, for example, content usage
databases, merchandising databases, and content metadata.” (col. 2, ll.
55-60).
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Headings further describes a subscriber management system 130 as
software-based application that administers consumer or subscriber
information, including accessing “information . . . relating to . . . media
assets and other associated materials,” (col. 5, ll. 11-30; col. 8, ll. 31-32) and
tracking “[m]edia content usage” (col. 7, ll. 27-28) information from a
consumer in order to capture, for example:
“the type of content a consumer views or listens to, what
hard goods the consumer buys, the number and type of
advertisements the consumer has viewed or listened to, and
how long the consumer uses the entertainment service per day
or week.” (col. 7, ll. 28-34; also see col. 8, ll. 32-38).

As reasonably and broadly interpreted, “information collected by
service platform 108 relating to its media assets and other associate
materials” (col. 8, ll. 30-33 of Headings) meets the limitation of “media
context information indicative of a monitored user accessing media content”
as recited in Appellants’ claim 1 (Ans. 11-12). Likewise, as reasonably and
broadly interpreted by the Examiner, Headings’ “subscriber management
system 130” also meets the “presence system” as recited in Appellants’
claim 1, because such a subscriber management system 130 generates
“information . . . relating to its media assets and other associate materials”
(col. 8, ll. 30-33) including media content usage information (Ans. 11-12).
As such, we find the Examiner’s interpretation reasonable and, likewise, find
that the Examiner demonstrates that Headings discloses the “presence
system” as recited in Appellants’ claim 1.

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2. Media context information indicative of a monitored user
accessing media content
Appellants contend that the Examiner fails to demonstrate that
Headings discloses “media context information indicative of a monitored
user accessing media content . . .” (App. Br. 11; Reply Br. 5-6).
As discussed supra, “information relating to media assets and other
associate materials” as described by Headings meets “media context
information indicative of a monitored user accessing media content,” as
recited in Appellants’ claim 1 (Ans. 12). Thus, we agree with the Examiner
that Headings discloses the disputed limitation.

3. Media state information received from at least one monitored
entity associated with the monitored user
Appellants contend that the Examiner fails to demonstrate that
Headings discloses “media state information received from at least one
monitored entity associated with the monitored user” (App. Br. 12-13).
Appellants acknowledge that Headings discloses:
“content usage information, which includes the number
of times a consumer has viewed its media assets or purchased
its product, as well as content distribution and royalty reports.”
(Headings col. 8, lines 23-36; App. Br. 12).

Nevertheless, Appellants further contend that:
[T]he consumer usage information collected in Headings
is not media state information since it has nothing to do with
the state of media. Headings does not disclose how recently or
frequently the media assets have been used. Moreover, the
consumer usage information in Headings does not indicate
whether the media is in a “‘state’” of having been accessed or
not. (Rep. Br. 5, 6) (emphasis added).
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However, Appellants’ contentions are not persuasive. As described
by Headings,
[M]edia content usage may be tracked by subscriber
management system 130 to capture, for example, the type of
content a consumer views or listens to, what hard goods the
consumer buys, the number and type of advertisements the
consumer has viewed or listened to, and how long the consumer
uses the entertainment service per day or week. (col. 7, ll. 27-
33)

Specifically, content usage information includes information
regarding “the amount of time the media content was viewed or listened to,
consumer viewing or listening habits, and consumer preferences for different
types or genres of media content . . .” (col. 8, ll. 1-4 of Headings).
In view of such a disclosure, we agree with the Examiner’s
interpretation that the media content usage information of Headings meets
“media state information received from at least one monitored entity
associated with the monitored user,” as recited in claim 1. We also find the
Examiner’s interpretation reasonable in view of Appellants’ Specification.

4. Providing at the subscriber terminal an action related to that
taken by the at least one monitored entity with regard to the
media content based on the media context information
Appellants contend that the Examiner fails to demonstrate that
Headings discloses “providing at the subscriber terminal an action related to
that taken by the at least one monitored entity with regard to the media
content based on the media context information,” (App. Br. 13). Appellants
acknowledge that Headings discloses that consumers can be grouped
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Application 11/610,878

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together such that targeted media content can be offered to the different
groups and the targeted marketing can be based on consumer-related
information such as demographics or the amount of time the media content
was viewed, and consumer habits or preferences (col. 7, ll. 54-67; col. 8, ll.
1-4). Nevertheless, Appellants contend that such a disclosure does not
correspond to “providing at the subscriber terminal an action related to that
taken by the at least one monitored entity with regard to the media content
based on the media context information,” as recited in claim 1.
However, we agree with the Examiner’s finding that a consumer
having been grouped into a group with another monitored entity would be
given an action as to whether the consumer (i.e., providing at the subscriber
terminal) would like to review or listen as to what the other monitored entity
has recently viewed (i.e., an action related to that taken by the at least one
monitored entity) (col. 7, ll. 54-67; col. 8, ll. 1-4).
For the reasons set forth above, Appellants have not persuaded us of
error in the Examiner’s anticipation rejection of the representative claim 1.
Accordingly, we sustain the Examiner’s anticipation rejection of claim 1.
With respect to claims 2 and 18, Appellants argue that Headings fail
to disclose that “the media context information identifies the media content
being accessed by the monitored user, and the action provided at the
subscriber terminal is accessing media content for the subscriber”.
However, we agree with the Examiner’s interpretation for the same reasons
discussed above.

Appeal 2010-006026
Application 11/610,878

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35 U.S.C. §103(a) Rejection of Claims 5-7, 12-14, 16, 19, 20, and 22-24
Appellants provide no separate patentability arguments directed to the
additional disclosure of Linden. Instead, Appellants merely repeat the
arguments that are set forth in relation to independent claim 1 regarding the
alleged deficiencies of Headings, and allege that Linden does not cure those
deficiencies. (App. Br. 14-15; Reply Br. 10.) See 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”); 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
prior art.”). Accordingly, for the reasons discussed above, we also sustain
the rejections of claims 5-7, 12-14, 16, 19-20, and 22-24.

35 U.S.C. §103(a) Rejection of Claims 8, 15, and 21
Appellants provide no separate patentability arguments directed to the
additional disclosure of Alves de Moura. Instead, Appellants merely repeat
the arguments that are set forth in relation to independent claim 1 regarding
the alleged deficiencies of Headings, and allege that Linden and Alves de
Moura do not cure those deficiencies. (App. Br. 14-15; Reply Br. 10.) As
noted above, these conclusory statements will not be considered arguments
for separate patentability of the claim. See 37 C.F.R. § 41.37(c)(1)(vii).
Accordingly, for the reasons discussed above, we also sustain the rejections
of claims 8, 15, and 21.
Appeal 2010-006026
Application 11/610,878

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IV. CONCLUSIONS
On the record before us, we conclude that the Examiner has not erred
in rejecting (1) claims 1-4, 9-11, 17, and 18 under 35 U.S.C. §102(b) as
being anticipated by Headings; (2) claims 5-7, 12-14, 16, 19, 20, and 22-24
under 35 U.S.C. § 103(a) as being unpatentable over Headings in view of
Linden; and (3) claims 8, 15, and 21 under 35 U.S.C. § 103(a) as being
unpatentable over Headings and Linden, and further in view of Alves de
Moura.

V. DECISION
As such, we affirm the Examiner’s decisions to reject claims 1-24
under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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