Microsoft CorporationDownload PDFPatent Trials and Appeals BoardMar 2, 20212019006131 (P.T.A.B. Mar. 2, 2021) Copy Citation 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 7 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. Appeal 2019-006131 Application 13/918,898 8 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 Copy with citationCopy as parenthetical citation