Ex Parte Barbir et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201310013678 (P.T.A.B. Feb. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/013,678 12/13/2001 Abdulkadev Barbir 7000-717 9541 27820 7590 02/28/2013 WITHROW & TERRANOVA, P.L.L.C. 100 REGENCY FOREST DRIVE SUITE 160 CARY, NC 27518 EXAMINER PATEL, DHAIRYA A ART UNIT PAPER NUMBER 2451 MAIL DATE DELIVERY MODE 02/28/2013 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 ABDULKADEV BARBIR, NICHOLAS C. BENNET, and NALIN N. MISTRY ____________ Appeal 2010-004177 Application 10/013,678 Technology Center 2400 ____________ Before DENISE M. POTHIER, BARBARA A. BENOIT, and LYNNE E. PETTIGREW, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-18.1 Claim 19 has been canceled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Throughout this opinion, we refer to the Appeal Brief (App. Br.) filed April 22, 2009; (2) the Examiner’s Answer (Ans.) mailed October 15, 2009 and (3) the Reply Brief (Reply Br.) filed December 14, 2009. Appeal 2010-004177 Application 10/013,678 2 Invention Appellants’ invention relates to a process for service and content personalization. See generally Spec. 1:3-4. Claim 1 is reproduced below with bracketing and emphasis added: 1. A method of providing service personalization to a user device comprising the steps of: beginning a session by having a user agent identifying itself to a personalization engine as being service personalization enabled; assigning, by the personalization engine, a unique identifier to the user agent for tagging subsequent traffic from that user agent to be personalized during the session; [a] receiving, by the personalization engine, all communications directed from the user agent to a content source entity such that the user device and the entity are never in direct communication; routing, by the personalization engine, an incoming subscriber request to an appropriate entity for processing; obtaining, by the personalization engine from the user agent, information on the location of the subscriber profile at a content source; deriving, by the personalization engine, personalization rules to form a personalization rule module that encodes criteria for performing personalization functions on user traffic; and invoking the personalization rules of the personalization rule module for application to content requested by the user device; and [b] receiving, by the personalization engine, all communications directed from the content source entity to the user agent such that the user device and the entity are never in direct communication; and [c] deleting, from the personalization engine at the end of the session, the derived personalization rule module, wherein all communications between the user device and the entity during the session are made via the personalization engine, never by direct communications between the user device and the entity. The Examiner relies on the following as evidence of unpatentability: Morgan US 2002/0165967 A1 Nov. 7, 2002 (filed May 2, 2001) Appeal 2010-004177 Application 10/013,678 3 Qian US 2003/0061206 A1 Mar. 27, 2003 (filed Sept. 27, 2001) Reinaldo Penno, User Profile Information Protocol 1-22 (Mar. 2, 2001), available at http:// www.imc.org/lietf-openproxy/mail- archive/msg00259.html (“Reinaldo”). The Rejections Claims 1, 3-6, and 8-18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Morgan and Qian. Ans. 3-12. Claims 2 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Morgan, Qian, and Reinaldo. Ans. 12-13. THE OBVIOUSNESS REJECTION OVER MORGAN AND QIAN Regarding illustrative claim 1, the Examiner finds Morgan teaches all the limitations, except for steps [a] and [b], for which Qian is cited. Ans. 3- 7. The Examiner cites to paragraphs 37, 40, and 41 in Morgan to teach step [c] (Ans. 6) and finds that by deleting the user information from a profile globally, a personalization rule module is also being deleted from the personalization engine (Ans. 13-14 (citing additionally to ¶¶ 0051-52, 0059, 0062)). Appellants argue Morgan fails to teach step [c]. App. Br. 6. Appellants admit that Morgan’s discussion permits a user to delete personal information from the system (App. Br. 6) but argues this fails to teach deleting “the derived personalization rule module,” which should be understood to be “a set of rules derived from a subscriber profile” (App. 2 Two printed pages of this reference were provided, and these page numbers correspond sequentially to the pages provided. Appeal 2010-004177 Application 10/013,678 4 Br. 7) that is capable of being invoked. Id.; see also Reply Br. 7-8. Appellants also contend that Morgan teaches away from the combination with Qian and thus teaches away from recited steps [a] and [b], which isolate the subscriber device from the content source. App. Br. 7-8; Reply Br. 11. ISSUES (1) Under § 103, has the Examiner erred in rejecting claim 1 by finding that Morgan and Qian collectively would have taught or suggested deleting the derived personalization rule module from the personalization engine? (2) Does Morgan teach away from or discourage an ordinary artisan from combining Qian’s teaching of an engine receiving all communications directed from the user agent to the content source entity or vice versa, such that the user device and the content source entity are never in direct communication? ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of illustrative claim 1. We begin by construing a key disputed phrase of claim 1, “the derived personalization rule module,” recited in step [c]. The disclosure does not define this phrase but describes a server parsing a subscriber’s profile to “derive the appropriate personalization rules to form a personalization rule module 20” (Spec. 6:5-6) and later describes that the rules associated with the subscriber are deleted (Spec. 7:4-8). Appellants further describe that the rules can be invoked during different events. Spec. 7:19-27. We, however, decline to read these specific invoking events into Appeal 2010-004177 Application 10/013,678 5 claim 1 given that the claim language merely recites “deriving, by the personalization engine, personalization rules to form a personalization rule module” and is broader in scope than the disclosed embodiments, only reciting invoking the rules. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Thus, while we agree with Appellants that the derived personalization rule module is formed from derived personalization rules (App. Br. 7), just as claim 1 requires in its deriving step, we do not agree that the personalization rule module must be invoked as argued. See id. Next, we turn to the specific disputed language in claim 1, step [c], which recites deleting the derived personalization rule module. App. Br. 6-7; Reply Br. 7-8. Appellants do not assert that Morgan fails to teach the steps of deriving or invoking the personalization rules but rather focuses on the step of deleting the derived personalization rule module. See App. Br. 6-7. However, underlying this argument, Appellants are also asserting that Morgan fails to teach a derived personalization rule module, which involves the deriving step. See id. Specifically, Appellants allege that no personalization rules exist in Morgan and the Examiner is using impermissible hindsight in finding that deleting information globally from the system also deletes personalized rules. Reply Br. 7-8. We do not agree. To be sure, Morgan does not explicitly state rules are derived, such that the derived personalization rule module, which is formed from the personalization rules, exists. Yet, identity of terminology is not required between Morgan and step [c] to teach the recited module. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). Morgan teaches a welcome screen of web page 300 that is personalized to a specific registered user in accordance Appeal 2010-004177 Application 10/013,678 6 with the user’s personal profile (e.g., drives a BMW, has some interest or relationship with Charles Schwab). Ans. 5, 14 (citing ¶ 0062, 0073; Fig. 3A); Figs. 2A, 4B. In order to generate this web page, some type of code must be executed and the personal information from the personal profile applied to the code to display the related information on the web page. See Ans. 14. For example, web page 300 displays information in section 310 about automobiles that is customized to the user (e.g., includes information about BMWs) and section 315 has finance information that is customized to a user by including a Charles Schwab advertisement. ¶ 0062; Fig. 3A. In essence, and as the Examiner finds (see Ans. 14), these portions or sections of the web page create personalization rules (e.g., instructions with customized information for each section) to form a personalization rule module (e.g., the customized web page) and invoking such rules (e.g., displaying the sections on the web page). See ¶ 0062. Morgan also teaches and suggests using a rules engine to send specific information to a selected method of contact. See Ans. 14 (citing ¶ 0059). These teachings collectively illustrate deriving and invoking customized or personalization rules to form a personalization module. Additionally, as the Examiner notes, Morgan teaches that this personal information can be deleted by the user on a global basis. See Ans. 6, 13 (citing ¶¶ 0037, 41). Based on our previous discussion, we agree with the Examiner that removing such information from a source would result in such information no longer being available for customizing the web page. See ¶¶ 0037, 0041, 0062. In effect, deleting the information from the profile would delete any previously derived personalization rules that form a Appeal 2010-004177 Application 10/013,678 7 personalization rule module (e.g., a web page containing instructions customized with the personal information for the sections). Any subsequent web page would contain no customized content. Appellants also contend that Morgan teaches away from combining with Qian or teaches away from the recited receiving steps (i.e., element [a] and [b]) which isolate the subscriber device from the content source. App. Br. 7-8. Appellants further assert that “separate” and “isolated” are not equivalent terms and are understood to have different meanings in art. Reply Br. 11. Yet, the words, “separate” or “isolated” are not in claim 1, which recites only “the user device and the entity are never in direct communication.” The Examiner also does not propose including Qian’s teaching with Morgan to teach this purported isolation (Ans. 7) but rather combines these references to teach a user device and entity that are never in direct communication by using an intermediate edge server between a user device and entity to store personal information. Ans. 6-7 (citing ¶¶ 0017, 0018, 0021). Thus, while Morgan discloses some direct communication between user device and entity, we fail to see how this contradicts Qian’s teachings of introducing an intermediate device. Appellants have not provided adequate evidence concerning Morgan that discredits or discourages an ordinary artisan from using indirect communications, as taught by Qian, with Morgan to achieve the same results. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of independent claim 1 and claims 3-6 and 8-18 not separately argued with particularity. Appeal 2010-004177 Application 10/013,678 8 THE REMAINING REJECTION The Examiner rejects claims 2 and 7 under 35 U.S.C. § 103(a) as unpatentable over Morgan, Qian, and Reinaldo. Ans. 12-13. Appellants present no arguments regarding the Examiner’s rejection of these claims. App. Br. 9; Reply Br. 12. We, therefore, summarily sustain this rejection. See, e.g., Manual of Patent Examining Procedure (MPEP) § 1205.02, 8th ed., Rev. 9, August 2012 (“If a ground of rejection stated by the examiner is not addressed in the appellant's brief, that ground of rejection will be summarily sustained by the Board.”). CONCLUSION The Examiner did not err in rejecting claims 1-18 under § 103. DECISION The Examiner’s decision rejecting claims 1-18 is affirmed. 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). AFFIRMED rwk Copy with citationCopy as parenthetical citation