Ex Parte Adjali et al

Patent Trial and Appeal Board

Oct 29, 2012

11284297 (P.T.A.B. Oct. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IQBAL ADJALI, OGI BATAVELJIC, MARCO DE BONI,
MALCOLM BENJAMIN DIAS, and ROBERT HURLING
____________

Appeal 2010-004913
Application 11/284,297
Technology Center 2400
____________

Before SCOTT R. BOALICK, BRUCE R. WINSOR, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WINSOR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-16, 18, 19, and 22, which constitute all the claims pending in this
application. Claims 17, 20, and 21 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

Appeal 2010-004913
Application 11/284,297

2
STATEMENT OF THE CASE
Appellants’ invention “relates to behaviour[1] monitoring and adaptive
user profiling, and in particular relates to . . . monitoring behavioural
changes of users and optimising user profile storage requirements on mobile
computing devices.” (Spec. 1:4-8). Claim 1, which is illustrative of the
invention, reads as follows:
Claim 1. A method of operating a mobile computing device for
interacting with a user and detecting changes in the behaviour
of the user, comprising:
monitoring a behaviour of the user by interpreting one or
more interactions between the mobile device and the user;
wherein said behavior is an activity selected from the group
consisting of physical exercise, shopping, internet
browsing/surfing, and biometric evaluations of the user,
wherein said mobile device is selected from the group
consisting of a mobile phone, a laptop, a PDA and a tablet PC;
storing on the mobile device information relating to the
behaviour of the user in at least a partially parameterised form
wherein individual raw data values received by interpreting said
one or more interactions have been aggregated or accumulated
to provide compound data values providing a representative
measure of the individual raw data values from which they are
derived; and
determining whether the user is exhibiting any changes in
behaviour as a function of a variation in one or more parameters
within the stored information.
The Examiner relies on the following prior art in rejecting the claims:
Bentolila US 2003/0101449 A1 May 29, 2003
Moran US 6,757,543 B2 June 29, 2004
Opdycke US 2005/0039206 A1 Feb. 17, 2005

1 For consistency, we use Appellants’ spelling rather than standard US
spelling.
Appeal 2010-004913
Application 11/284,297

3
Tao US 2006/0155764 A1 July 13, 2006
(filed Aug. 29, 2005)
Claims 1, 2, 6-8, 10, 11, 14-16, and 18 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Tao. (Ans. 3-8).
Claims 3-5, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
obvious over Tao and Bentolila. (Ans. 8-10).
Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as obvious
over Tao and Opdycke. (Ans. 11).
Claim 22 stands rejected under 35 U.S.C. § 103(a) as obvious over
Tao and Moran. (Ans. 11-12).
Rather than repeat the arguments here, we refer to the Brief and the
Answer for the respective positions of Appellants and the Examiner.

ISSUE
The dispositive issue raised by Appellants’ contentions2 is as follows:
Does Tao disclose:
storing on [a] mobile device information relating to the
behaviour of [a] user in at least a partially parameterised form
wherein individual raw data values received by interpreting . . .
one or more interactions have been aggregated or accumulated
to provide compound data values providing a representative
measure of the individual raw data values from which they are
derived
(hereinafter the “storing step”), as recited in claim 1?

2 Appellants’ contentions raise additional issues. Because we are persuaded
of error with regard to this dispositive issue, we do not reach Appellants’
additional issues.
Appeal 2010-004913
Application 11/284,297

4
ANALYSIS
Appellants contend that:
Tao does not teach a method of or apparatus for operating a
mobile computing device . . . that includes the step of storing
on the mobile device information relating to the behaviour of
the user in at least a partially parameterised form wherein
individual raw data values received by interpreting said one or
more interactions have been aggregated or accumulated to
provide compound data values providing a representative
measure of the individual raw data values from which they are
derived.
(Br. 11-12). The Examiner finds that Tao discloses storing information in
parameterised form (Ans. 4, 12-13; see Tao Figs. 11-13, 16; ¶¶ [0045]-
[0048], [0051]) and discloses storing data related to user behaviour on a
mobile device (Ans. 4, 12; see Tao ¶¶ [0043], [0061]).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). “These elements must be arranged as in the claim
under review . . . .” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990)
(citations omitted).
We agree with the Examiner that the cited passages of Tao teach
storing information about user behaviour in parameterised form (Ans. 13)
(e.g., “interest likelihood scores” (Tao Fig. 13, ref. 1312; ¶ [0055])). We
also agree that Tao teaches storing information about user behaviour on a
mobile device (Ans. 12) (see Tao ¶ [0061]). However, we do not agree, and
the Examiner has not expressly found (Ans. 13), that Tao discloses storing
user behaviour information in parameterised form on the mobile device as
recited in claim 1. In particular, the cited passages of Tao (see Tao ¶¶
Appeal 2010-004913
Application 11/284,297

5
[0043], [0061]) are silent as to whether the information stored on the mobile
device (Tao’s “client side”) is “individual raw data values” or “compound
data values providing a representative measure” of the individual raw data
values. As pointed out by Appellants (Br. 13), all mentions of analysis of
user behaviour in Tao relate to Tao’s “server side” rather than Tao’s” client
side.” (See Tao Figs. 5, 11-13, 16; ¶¶ [0043]-[0048], [0051], [0061]).
Therefore, the cited passages of Tao do not explicitly disclose the
storing step. Nor do the cited passages of Tao inherently disclose the storing
step. Although Tao discloses data stored on the mobile device (Tao ¶
[0061]), the data does not necessarily include parameterised information.
See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999); see also Ex parte
Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (Inherency requires that “the
allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art.”).
We find that the Examiner has not established that Tao anticipates
claim 1.3 Accordingly we will not sustain the rejections of (1) claim 1; (2)
claims 16 and 18, which include substantially the same limitation we find
not disclosed by Tao; (3) claims 2-15 and 22, which depend from claim 1;
and (4) claim 19, which depends from claim 18.

ORDER
The decision of the Examiner to reject claims 1-16, 18, 19, and 22 is
reversed.

3 Our finding is based on the record and rejection before us. We express no
opinion as to whether claim 1 would have been obvious over Tao alone or in
combination with other references.
Appeal 2010-004913
Application 11/284,297

6

REVERSED

babc