Microsoft Corporation

Patent Trials and Appeals Board

Mar 2, 2021

2019006131 (P.T.A.B. Mar. 2, 2021)

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.
13/918,898 06/14/2013 Elad Ziklik 338966-US-NP 8595
69316 7590 03/02/2021
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
AHMED, SABA
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
03/02/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELAD ZIKLIK and ROYI RONEN
Appeal 2019-006131
Application 13/918,989
Technology Center 2100
Before ST. JOHN COURTENAY III, MARC S. HOFF, and
MICHAEL T. CYGAN, Administrative Patent Judges.
CYGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12, 14–17, and 19–22. Claims 13
and 18 are cancelled. Appeal Br. (Claims App. A5). We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 1.
Appeal 2019-006131
Application 13/918,898
2
CLAIMED SUBJECT MATTER
The claims are directed to monitoring user actions on an e-reader
application to generate a personalized user profile for the user. Appeal Br.
1. The claims relate to monitoring user actions as they consume content
displayed on a device, and using the consumption information to determine
what content the user enjoys and finds interesting. Spec. ¶4. This
information is used to create the user’s profile, which is then given to a
recommendation system to provide items in a marketplace that the user may
find interesting. Id. ¶¶ 23–24. Claim 1, reproduced below, is illustrative of
the subject matter of claims 1–11 and 21, with disputed language
emphasized in italics:
1. A method for generating a profile for a user in a recommender
system comprising:
detecting that the user has opened an electronic book
inane-reader application on a device;
determining a set of characteristics for a portion of the
electronic book viewed by the user in the e-reader application;
automatically identifying, via a monitoring application on
the device, actions performed by the user on the portion of the
electronic book through the e-reader application, the actions
including:
navigating within the electronic book or changing a
magnification of a page;
leaving the e-reader application; and
performing an action outside of the e-reader
application;
determining a reason the user left the e-reader application
based on the action performed outside of the e-reader
application; and
updating the profile for the user based on the way the user
views the portion of the electronic book as indicated by the
automatically identified actions, the determined reason the user
left the e-reader application, and the set of characteristics.
Appeal 2019-006131
Application 13/918,898
3
Appeal Br. (Claims App. A1). Claim 12, reproduced below, is illustrative of
the subject matter of claims 12, 14–17, and 22, with disputed language
emphasized in italics:
12. A device comprising:
at least one processor;
a memory configured to store one or more electronic
books;
an e-reader application configured to provide the user with
an electronic book of the one or more electronic books;
a monitoring application configured to:
determine a set of characteristics for a portion of
the electronic book viewed by the user in the e-reader
application; and
automatically monitor actions of the user related to
a portion of the electronic book viewed by the user in the
e-reader application, the automatically monitored actions
including at least one of navigating within the electronic
book or changing a magnification of a page; and
a user profile database including at least one personalized
profile for the user and configured be updated by the monitoring
application with information related to how the user views the
portion of the electronic book as indicated by the automatically
monitored actions and a time of day associated with the
determined set of characteristics.
Claim 19, reproduced below, is illustrative of the subject matter of
claims 19–20, with disputed language emphasized in italics:
19. A system for providing recommendations to a user
comprising:
a device having an e-reader application configured to
present an electronic book to the user;
a monitoring application configured to automatically
monitor actions performed by the user with respect to a portion
of the electronic book through the e-reader application and to
associate the monitored action with a set of characteristics for the
portion of the electronic book, the automatically monitored
Appeal 2019-006131
Application 13/918,898
4
actions including at least one of navigating within the electronic
book or changing a magnification of a page;
a user profile including personalized user profile
information related to how the user views the portion of the
electronic book as indicated by the automatically monitored
actions;
a marketplace configured to provide the user with
additional consumable content; and
a recommender system configured to receive the user
profile and to analyze the user profile to determine additional
consumable content to recommend to the user based on the
personalized user profile and vectors representing the additional
consumable content.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Pierce US 2010/0057743 A1 Mar. 4, 2010
Barnhoefer US 2011/0163977 A1 July 7, 2011

REJECTION
Claims 1–12, 14–17, and 19–22 are rejected under 35 U.S.C. § 103 as
being unpatentable over the combined teachings and suggestions of
Barnhoefer and Pierce. Ans. 2.
OPINION
1. Claim 1
Appellant argues that the combination of Barnhoefer and Pierce does
not teach or suggest all of the limitations of claim 1. Appeal Br. 9.
Appellant argues that Barnhoefer does not teach certain limitations that the
Examiner finds it to teach; i.e.,
Appeal 2019-006131
Application 13/918,898
5
automatically identifying, via a monitoring application on the
device, actions performed by the user on the portion of the
electronic book through the e-reader application, the actions
including . . .
leaving the e-reader application; and
performing an action outside of the e-reader application;
determining a reason the user left the e-reader application based
on the action performed outside of the e-reader application.
Appeal Br. 10. Appellant disagrees that the Examiner’s cited section of
Barnhoefer teaches these limitations, arguing that Barnhoefer merely
determines when an e-reader application is being executed on a device, and
modifies a mode of the device based on that determination. Id. at 11 (citing
Barnhoefer ¶ 24).
We are persuaded by Appellant’s argument. The Examiner finds
Barnhoefer teaches “e-reader monitoring [that] determines whether the user
is actively using the e-reader application or has left the application to do
other actions on the portable mobile electronic device.” Ans. 5. We agree
with Appellant that “simply determining whether an e-reader application is
executing as taught by Barnhoefer is very different from monitoring various
actions performed on a device to determine a reason that a user has left the
e-reader application.” Reply Br. 4. We further agree with Appellant that the
Examiner nowhere points to any teaching or suggestion in Barnhoefer of
“monitoring actions outside of an e-reader application, let alone determining
a reason that a user left an e-reader application.” Id. Nor does the Examiner
rely upon Pierce to teach or suggest these limitations, either by itself or in
combination with Barnhoefer. See Final Act. 3–6 (instead relying on Pierce
for the user updating a profile with the user’s likes and dislikes).
Consequently, we agree with Appellant that the Examiner has erred
by not showing that the disputed limitations of claim 1 are taught or
Appeal 2019-006131
Application 13/918,898
6
suggested by the combination of Barnhoefer and Pierce, and we reverse the
Examiner’s rejection of claim 1. The Examiner’s rejection of claims 2–11
and 21 are grounded in the same erroneous findings, thus we also reverse the
rejection of claims 2–11 and 21.
2. Claim 12
Appellant argues that the Examiner has not shown the combination of
Barnhoefer and Pierce to teach or suggest each limitation of claim 12.
Specifically, Appellant argues that the Examiner has not shown Pierce
teaches or suggests:
a user profile database including at least one personalized profile
for the user and configured be updated by the monitoring
application with information related to how the user views the
portion of the electronic book as indicated by the automatically
monitored actions and a time of day associated with the
determined set of characteristics.
Appeal Br. 19–20. Appellant disagrees that the Examiner’s cited section of
Pierce teaches these limitations, arguing that Pierce merely “explains how a
user may set up a user profile with their likes or dislikes, along with user
demographic information.” Reply Br. 8–9 (citing Ans. 7, Pierce ¶ 27).
We are persuaded by Appellant’s argument. The Examiner finds
Pierce teaches updating profiles with the following information: a list of
friends for a particular user, a plurality of details on a user, different versions
of a user’s profile, and likes and dislikes of the user. Ans. 7. The Examiner
does not specifically explain how Pierce teaches updating the profile with
information on the time of day associated with the determined set of
characteristics. Nor does the Examiner specifically explain how Pierce
teaches updating the profile with information, indicated by the automatically
monitored actions, related to how the user views the portion of the electronic
Appeal 2019-006131
Application 13/918,898
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book. At best, the Examiner has shown Pierce teaches the ability of the user
to update their profile with some information, but not the specifically recited
information obtained by the monitoring application. Further, the Examiner
finds that these limitations are not taught by Barnhoefer. Final Act. 13–14.
Consequently, we agree with Appellant that the Examiner has erred
by neglecting to show the disputed limitation of claim 12 as being taught or
suggested by the combination of Barnhoefer and Pierce, and we reverse the
Examiner’s rejection of claim 12. Because the Examiner’s rejection of
claims 14–17 and 22 is grounded in the same erroneous findings, we also
reverse the rejection of claims 14–17 and 22.
3. Claim 19
Appellant argues that the Examiner has not shown the combination of
Barnhoefer and Pierce teaches or suggests “a recommender system that
receives a user profile and recommends to the user additional consumable
content based on the personalized user profile and vectors representing the
additional consumable content.” Appeal Br. 22 (citing Ans. 19, Pierce ¶ 27).
We are persuaded by Appellant’s argument. The Examiner finds
Pierce teaches updating profiles with the following information: a list of
friends for a particular user, a plurality of details on a user, different versions
of a user’s profile, and likes and dislikes of the user. Ans. 19–20. The
Examiner does not specifically explain how the profile information of Pierce
amounts to a recommender system that recommends additional consumable
content and vectors representing the additional consumable content. At best,
the Examiner has shown Pierce teaches maintaining a list of friends and
managing user details, but not vectors representing additional content or
recommendations of additional content. Further, the Examiner finds that
these limitations are not taught by Barnhoefer. Final Act. 19.
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Application 13/918,898
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Consequently, we agree with Appellant that the Examiner has erred
by neglecting to show the disputed limitation of claim 19 as being taught or
suggested by the combination of Barnhoefer and Pierce, and we reverse the
Examiner’s rejection of claim 19. Because the Examiner’s rejection of
claim 20 is grounded on the same erroneous findings, we also reverse the
rejection of claim 20.
CONCLUSION
The Examiner’s obviousness rejections of claims 1–12, 14–17, and
19–22 over the combination of Barnhoefer and Pierce are reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–12, 14–17
19–22
103 Barnhoefer, Pierce 1–12, 14–
17, 19–22

REVERSED