Ex Parte Beadle et alDownload PDFPatent Trial and Appeal BoardDec 30, 201611812781 (P.T.A.B. Dec. 30, 2016) 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. 11/812,781 06/21/2007 Edward R. Beadle GA-022426 US PRI 4355 89023 7590 Tarolli, Sundheim, Co veil & Tummino LLP/Imagine Corporation 1300 East Ninth Street Suite 1700 Cleveland, OH 44114 EXAMINER CORBO, NICHOLAS T ART UNIT PAPER NUMBER 2427 NOTIFICATION DATE DELIVERY MODE 01/04/2017 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): rkline @ tarolli. com docketing@tarolli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EDWARD R. BEADLE and JOHN L. DELAY Appeal 2016-004241 Application 11/812,781 Technology Center 2400 Before THU A. DANG, ELENI MANTIS MERCADER, and JEFFREY S. SMITH, and Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-004241 Application 11/812,781 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—7, 9—11, 14—32, 36-43, and 80-82, which constitute all the claims pending in this application. Claims 8, 12, 13, and 33—35 have been canceled. Claims 44—79 have been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION Appellants’ claimed invention is directed to an actuator operable by the viewer for interacting with the content presentation system via the portable device, wherein the actuator and/or the portable device includes circuitry and/or software for obtaining biometric information from the viewer. Spec. para. 87. CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for identifying a viewer of a content presentation system, comprising: providing a portable device to interact with at least one content presentation system that is operatively connected to a given and another content provider, wherein said device includes an actuator which is operable by the viewer for interacting with the at least one content presentation system via the portable device, and wherein said actuator includes circuitry for obtaining biometric information from the viewer; operating said actuator by the viewer; obtaining biometric information from the viewer via said actuator, wherein the biometric information characterizes at least one of a physiological characteristic and a behavioral characteristic of the viewer; and 2 Appeal 2016-004241 Application 11/812,781 providing the obtained biometric information to the given content provider and the other content provider to enable each of the given and the other content provider to detect the identity [sic] of said viewer based on the provided biometric information. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Relan et al. (“Relan”) Davidson Dunton Cordray et al. (“Cordray”) Thomas et al. (“Thomas”) US 2005/0229222 Al US 2005/0246739 Al US 2006/0107281 Al US 2007/0157220 Al US 2007/0162502 Al Oct. 13, 2005 Nov. 3, 2005 May 18,2006 July 5, 2007 July 12, 2007 REJECTIONS The Examiner made the following rejections: Claims 1—7, 9-11, 14—32, 36-43, and 80-82 stand rejected under 35 U.S.C §103(a) as being unpatentable over Dunton in view of Cordray, Thomas, Relan, and further in view of Davidson. ISSUE The pivotal issue is whether the Examiner erred in finding that the combination of Dunton, Cordray, Thomas, Relan, and Davidson teaches or suggests the limitation of “providing the obtained biometric information to the given content provider and the other content provider to enable each of the given and the other content provider to detect the identity[sic] of said viewer based on the provided biometric information”, as recited in claim 1. 3 Appeal 2016-004241 Application 11/812,781 ANALYSIS We adopt the Examiner’s findings in the Answer and Final Action and we add the following for emphasis. Regarding claim 1, Appellants argue that Dunton, Cordray, Thomas and Relan are all silent as to a portable device that includes an actuator to obtain biometric information and to provide the obtained biometric information to a given and another content providers through a presentation system to enable each of the content provider to detect the identity of the viewer based on the biometric information that is provided, as recited in claim 1 (App. Br. 9). Appellants further argue that Davidson fails to teach or suggest providing common biometric information to multiple content providers (App. Br. 10). In particular, Appellants argue that the Examiner cites to paragraphs 5 and 6 of Davidson for a description of “a single communications protocol for joining many devices to many content providers, allowing video/audio device companies to realize their desire to connect with more than one content provider, releasing them and individuals (viewers) from the constraint of only accessing content from a single Provider” (App. Br. 11, citing Final Act., pg. 5). However, according to Appellants, Davidson fails to describe an actuator by which a user can provide the obtained biometric information to the given content provider and the other content provider to enable each of the given and the other content provider to detect the identity of the viewer based on the provided biometric information, as recited in claim 1 (App. Br. 11). We are not persuaded by Appellants’ arguments. The Examiner finds, and we agree, Dunton teaches a portable device to interact with a content 4 Appeal 2016-004241 Application 11/812,781 presentation system that includes an actuator to obtain biometric information and provides that obtained biometric information data to the digital TV to identify the user of the portable device and determine what privileges within the system the user is able to access (Fig. 1 and paras. 8—13 and 32—33; Ans. 2). In particular, we agree that Dunton teaches that the biometric information is used to identify the user and subsequently enable the user access to the system and certain privileges (Ans. 2). Further, the Examiner relies on Thomas for teaching and suggesting an alternative method of identifying the user by disclosing identifying information of the user in that of a username and password, similar to that of the biometric information, to a content provider, rather than a digital TV as seen in Dunton (para. 58; Ans. 2—3). We agree with the Examiner that the input of a password is consistent with Appellants’ Specification, as seen in paragraph 87 describing biometric information including “input of a password or unique code” along with other methods such as identifying a user via voice recognition, and eye scan (Ans. 3). Thus, we agree that the combination of Dunton in view of Thomas teaches and suggests submission of biometric information obtained from an actuator of a portable device and providing the obtained biometric information to a given content provider through a presentation system to enable the given content provider to detect the identity of the user based on the biometric information provided (Ans. 3). Dunton in view of Thomas only lack the explicit teaching of enabling both the given content provider (disclosed by Dunton in view of Thomas) and another content provider to detect the identity of the user (Ans. 3). However, the Examiner relies on Davidson for the teaching and suggestion 5 Appeal 2016-004241 Application 11/812,781 of a multiple server-to-client structure wherein multiple content providers can detect the identity of viewer of their respective content in order to properly identify each user and authorize the provided identity (para. 7; Ans. 3—4). Davidson does specify that users can enter provider-specific membership credentials to access the content from the specific provider (para. 7, additionally noting that para. 38 discloses the credentials can simply be passwords), and allows for access to multiple content providers (Ans. 4). We note that claim 1 does not require that the same biometric information is provided to all the content providers. In other words, the claim does not preclude that the “obtained biometric information” includes different biometric information that can each be used to gain access to individual content providers. Nonetheless, the Examiner relies on Cordray for the teaching and suggestion of a single portable device to enable a viewer to control multiple content presentation systems (Ans. 7). We agree with the Examiner’s finding that Cordray teaches multiple user equipment devices/content presentation systems (para. 56) and the ability to control all of them via a media guidance application implemented on a remote device in paragraph 79, further noting paragraph 115 specifies the remote control can have a fingerprint scanner located on it in order to identify the user via biometric information (Ans. 7). In essence, Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and is therefore ineffective to rebut the Examiner’s prima facie case of obviousness. 6 Appeal 2016-004241 Application 11/812,781 The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. (Citations omitted). In re Keller, 642 F.2d 413, 425 (CCPA 1981). Accordingly, the combination of the references teaches and suggests the disputed limitation of providing the obtained biometric information to the given content provider and the other content provider to enable each of the given and the other content provider to identify the viewer based on the provided biometric information, as recited in claim 1. We further note, as one skilled in the art would recognize at the time of the invention that the reason for multiple passwords for plural content providers is to provide a secure recognition of a user for the requested content. It would have been obvious to one skilled in the art at the time of the invention that if a biometric information is used as a fingerprint or a user’s retina then that would be the most secure information as is so unique to identity the user that this biometric information can be safely used for access to all content providers (see also Cordray para. 115). In an obviousness analysis, it is not necessary to find precise teachings directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Mat421. 7 Appeal 2016-004241 Application 11/812,781 Appellants repeat similar arguments with respect to claim 1 for claim 11 (App. Br. 13—14). Appellants also rely on the same arguments for claims 2—7, 9-11, 14—32, 36-43, and 80-82. Accordingly, we also affirm the Examiner’s rejections for these claims for the same reasons as stated above. CONCLUSION The Examiner did not err in finding that the combination of Dunton, Cordray, Thomas, Relan, and Davidson teaches or suggests the limitation of “providing the obtained biometric information to the given content provider and the other content provider to enable each of the given and the other content provider to detect the identify of said viewer based on the provided biometric information”, as recited in claim 1. DECISION For the above reasons, the Examiner’s rejection of claims 1—7, 9—11, 14—32, 36-43, and 80-82 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)(l)(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation