Ex Parte Brown

Patent Trial and Appeal Board

Jun 24, 2015

12001229 (P.T.A.B. Jun. 24, 2015)

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.
12/001,229 12/10/2007 Stephen J. Brown 9748.00104 2777
82328 7590 06/24/2015
Christopher P. Maiorana, P.C.
24840 Harper Ave.
Suite 100
St Clair Shores, MI 48080
EXAMINER
KINSAUL, DANIEL W
ART UNIT PAPER NUMBER
2165
MAIL DATE DELIVERY MODE
06/24/2015 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 STEPHEN J. BROWN
____________________

Appeal 2013-004979
Application 12/001,229
Technology Center 2100
____________________

Before CAROLYN D. THOMAS, ROBERT L. KINDER, and
WILLIAM M. FINK, Administrative Patent Judges.

FINK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 and 10. We have jurisdiction under
35 U.S.C. § 6(b). Claims 4, 5, 8, 9, 13, 14, 17, and 18 have been withdrawn.
We AFFIRM.

STATEMENT OF THE CASE

1 The real party in interest is identified as the inventor, Stephen J. Brown.
Br. 1.
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Appellant’s invention relates to tagging content based on user
attributes in a social network. Abstract.2
Independent Claims 1 and 10 are the sole claims on appeal. Claim 1
is illustrative of Appellant’s invention and is reproduced below:
1. A method for recommending content for behavioral
change in a social network, the method comprising:
(a) implementing by a computer a social network of a
plurality of users, wherein said computer implemented social
network is for a personal behavioral change, wherein each of
said plurality of users has a user profile, and wherein said user
profile comprises one or more user attributes;
wherein said one or more user attributes comprises at
least one behavioral action and at least one emotional state;
wherein said at least one behavioral action comprises physical
exercise;
wherein said physical exercise and said emotional state
are updatable by its user;
(b) implementing by the computer a plurality of content
modules, wherein said plurality of content modules are
accessible by said plurality of users of said social network,
wherein at least one of said plurality of content modules
comprises coaching content for said personal behavioral
change;
(c) providing by the computer a rating function for
allowing said plurality of users of said social network to rate at
least one of said plurality of content modules, wherein said
rating is related to said physical exercise and said emotional
state;

2 Our decision refers to Appellant’s Appeal Brief filed September 26, 2012
(“Br.”); the Examiner’s Answer mailed December 5, 2012 (“Ans.”); the
Final Office Action mailed March 9, 2012 (“Final Act.”); and the original
Specification filed December 10, 2007 (“Spec.”).
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(d) accumulating by the computer ratings by multiple
users of each of said plurality of content modules and assigning
by the computer a tag based on said accumulated ratings to the
same of said plurality of content modules, wherein said
assigned tag is related to said physical exercise and said
emotional state; and
(e) recommending by the computer one of said plurality
of content modules to one of said plurality of users of said
social network, wherein said recommendation is based on said
tag of each of said plurality of content modules and said
physical exercise and said emotional state of the same of said
plurality of users, wherein said recommending changes based
on an update of said physical exercise and said emotional state,
wherein said recommending is dynamic in time, and wherein
said one of said plurality of content modules recommended
depends on a current physical exercise and emotional state of
said one of said plurality of users.

Br. 9–10.
Claims 1 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gerace (US 2007/0118802 A1; May 24, 2007), Bill (US
2006/0170945 A1; August 3, 2006), Gilley (US 2008/0086318 A1; April 10,
2008), and Fitster (Ali-Hasan, Fitster: Social Fitness Information Visualizer,
1795–1800, School of Information, University of Michigan, Student Design
Competition, CHI 2006 (Canada)).3

ANALYSIS
Issue 1: Based on Appellant’s argument, the first issue on appeal is
whether the combination of Gerace, Bill, Gilley, and Fitster teaches or

3 Appellant groups the rejection of claims 1 and 10 together for purposes of
argument. Therefore, based on Appellant’s arguments, we decide the appeal
of claims 1 and 10 based on claim 1 alone. See 37 C.F.R. § 41.37(c)(1)(iv).
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suggests the limitations of claim 1 including “accumulating by the computer
ratings . . . and assigning by the computer a tag based on said accumulated
[user] ratings” (hereinafter, “the accumulating limitation”).
In rejecting claim 1, the Examiner finds the combination of Gerace,
Bill, Gilley, and Fitster teach or suggest the accumulating limitation. Ans.
3–7; Final Act. 3–8. Specifically, the Examiner finds Gerace teaches
“accumulating by the computer ratings by multiple users of each of said
plurality of content modules and assigning by the computer a tag based on
said accumulated ratings to the same of said plurality of content modules”
(Ans. 3), as claim 1 requires, while Bill teaches accumulating ratings and
assigning tags based on “emotional state” (id. at 4); Gilley teaches
accumulating tags based on “physical exercise” (id. at 6); and Fitster teaches
assigning tags based on “physical activity” (id. at 6–7).
In disputing the Examiner’s rejection of claim 1, Appellant contends:
Regarding the claim limitation of a step of accumulating
ratings of content and assigning a tag to the content modules,
the Examiner argues that Gerace teaches these limitations at
paragraph [0006], [0007], [0094]. Gerace, however, teaches
that the “system enables a user to categorize content, when
posted, using key words/phrases [tags].” Gerace does not
address ratings in the cited paragraphs, only categorization.
Elsewhere, in paragraph [0011], Gerace teaches that “the
system provides a rating system, where readers of an authored
work rate that work . . . for quality and the average rating is
applied to the work.” Note that Gerace teaches categorization
(tagging) separately from rating, and that the categorization
tags are assigned by users.

Br. 5 (emphases added).
We are not persuaded by this argument. As an initial matter, we give
claim terms the broadest reasonable interpretation consistent with the
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specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). Here, as the Examiner notes, “Appellant’s specification
demonstrates that a user rating may be a type of categorization (i.e. happy)
that is subsequently used to apply a tag (happy).” Ans. 9; see also Final Act.
11 (citing Fig. 4 (“happy” rating is assigned as “happy” tag)). Appellant
does not address this finding or direct us to an interpretation of rating that
would necessarily exclude the Examiner’s finding that a rating may be a
categorization used to apply a tag. Thus, we agree the broadest reasonable
interpretation of “rating” consistent with the specification encompasses the
“tag” that may be applied.
Consequently, we disagree with Appellant’s contention that Gerace
does not teach the step of accumulating content ratings and assigning tags.
As the Examiner finds, Gerace teaches that the computer accumulates user
ratings, which after a threshold number of times, may result in the system
tagging an article. Ans. 8 (citing Gerace ¶ 94 and claims 2–3). Except as
discussed supra, Appellant does not persuasively rebut this finding, which is
supported by the cited portions of Gerace.
Appellant further contends “Fitster teaches that the user assigns the
tags related to a physical exercise. In contrast, the claim limitation recites
that the computer, not the user, assigns tags related to a user’s physical
exercise.” Br. 5.
We are not persuaded by this argument, because the Examiner relied
on the combination of Gerace, Bill, Gilley, and Fitster, not Fitster alone, as
teaching the disputed limitation. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) (“The test for obviousness is not . . . that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
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what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”). As discussed supra, we agree Gerace
teaches that the computer accumulates user ratings, which after a threshold
number of times, may result in the system tagging an article. Consequently,
we also agree that this teaching combined with Fitster’s teaching of tagging
based on physical activity, would have suggested to a person of ordinary
skill in the art “assigning by the computer a tag . . . related to said physical
exercise,” as the accumulating limitation recites.
Appellant also contends the references fail to teach or suggest that the
recited “social network is for a personal behavioral change.” Br. 6.
Specifically, Appellant contends Bill’s description of enhancing the user’s
mood does not disclose the recited “[social network is for] behavioral
change. A behavior is an externally observable action, while a mood is an
internal emotional state.” Br. 6 (citing Bill ¶ 48). Thus, Appellant contends,
“Bill does not teach a social network for personal behavior change.” Id.
We are not persuaded. Initially, we agree with the Examiner that the
recited “for behavioral change” is a statement of purpose or intended use
and, as such, is not entitled to patentable weight. Ans. 10. Regardless, as
the Examiner also finds, Bill describes “internal emotional states” that are
“‘externally observable’ through actions,” such as “brow structure, mouth
wrinkles, eyelid position,” etc. Id. at 11 (citing, e.g., Bill ¶ 128).
Accordingly, even if we agreed with Appellant’s position that behavior
required externally observable action, we agree with the Examiner that this
is taught or suggested by Bill’s description of externally observable mood.
In addition, Appellant contends that “[w]hile Bill teaches tags related
to emotional state, Bill does not teach in [0047] rating related to emotional
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state.” Br. 6. However, as discussed supra, we disagree that the recited
ratings must necessarily be different from the recited tags. Moreover, by
focusing on Bill, Appellant’s contention does not address what the
combination would teach a person of ordinary skill in the art. The Examiner
finds, and we agree, when Bill is combined with Gerace’s teaching of
accumulating ratings and assigning tags, the combination teaches users
assigning ratings based on emotional state. Ans. 12.
Accordingly, Appellant has not persuaded us that the cited
combination fails to teach or suggest the limitations of claim 1.

Issue 2: Based on Appellant’s argument, the second issue on appeal
is whether Gerace, Bill, Gilley, and Fitster are properly combined.
Appellant contends Gerace’s “content publishing system” and Bill’s
“system for customizing audio playlists based on user mood” are different
from each other and Appellant’s social network for behavioral change. Br.
6–7. Thus, Appellant argues, the combination “would not have been
reasonable or obvious” and a person of ordinary skill in the art would not
have a “reasonable expectation of success by combining techniques from
[such] non-analogous systems.” Id.
We are not persuaded. First, we disagree Gerace and Bill are non-
analogous. As the Examiner finds, both Gerace and Bill are related to
tagging and rating content in a social network. Ans. 12; see also Gerace ¶
50, Bill ¶ 50. As such, we agree Gerace and Bill are from the same field of
endeavor as Appellant’s invention. See In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011). Second, Appellant does not direct us to evidence that a
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person of ordinary skill would not have a reasonable expectation of success
when combining these related references.
Similarly, Appellant contends Gilley and Fitster have no “common
purpose” with Gerace and Bill. Br. 7. However, even if we agreed Gilley
and Fitster, which also relate to social networking, did not share a common
purpose with Gerace and Bill, that is not persuasive of non-obviousness. See
KSR Intern. Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (“Common sense
teaches, however, that familiar items may have obvious uses beyond their
primary purposes, and in many cases a person of ordinary skill will be able
to fit the teachings of multiple patents together like pieces of a puzzle.”).
Appellant also contends the subject matter of claim 1 is not obvious
because there are “surprising and unexpected results of the claimed
invention,” which “provides advantages that are neither suggested nor taught
by the combination of[] references.” Br. 7. However, other than restating
the claim requirements and the purported deficiencies of the prior art, with
which we disagree, Appellant does not direct us to evidence of surprising or
unexpected results. See Ans. 13. Consequently, Appellant’s unsupported
assertion of surprising and unexpected results is not persuasive. See In re
Mayne, 104 F.3d 1339, 1343–44 (Fed. Cir. 1997).
Accordingly, Appellant has not persuaded us that the cited
combination is improper.

DECISION
We affirm the Examiner’s final rejection of claims 1 and 10.
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).
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AFFIRMED

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