Ex Parte Dureau

Board of Patent Appeals and Interferences

Aug 23, 2010

10271801 (B.P.A.I. Aug. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte VINCENT DUREAU
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Appeal 2009-007211
Application 10/271,801
Technology Center 2400
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Before ROBERT E. NAPPI, KENNETH W. HAIRSTON, and
MAHSHID D. SAADAT, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007211
Application 10/271,801

2
DECISION ON APPEAL
This is an appeal under 35 U.S.C. §§ 6(b) and 134 from the final
rejection of claims 1 to 32. We will reverse.
The disclosed invention relates to a method and system for using a
user profile in an interactive television system. During a first user activity, a
first device is used to update a user profile. A second user activity is
initiated via a second device that is different from the first device. The user
profile is accessed in response to the second user activity, and the first user
activity affects a content of data transmitted to a user responsive to the
second user activity (Figs. 1-3; Spec. 3-5, 13, 14, 21, 22, 24; Abstract).
Claim 1 is representative of the claims on appeal, and it reads as
follows:
1. A method for utilizing a user profile in an interactive television
system, the method comprising:
updating a user profile responsive to a first user activity, the
first user activity being initiated via a first device;
initiating a second user activity, the second user activity being
initiated via a second device which is different from the first device,
wherein either
(i) the first user activity is related to television viewing
and the second user activity is unrelated to television viewing,
or
(ii) the first user activity is unrelated to television
viewing and the second user activity is related to television
viewing;
accessing the user profile in response to the second user
activity; and
transmitting data to a user responsive to the second user
activity, wherein the transmitted data is based at least in part on the
user profile, and wherein the first user activity affects a content of said
data transmitted to the user responsive to the second user activity.
Appeal 2009-007211
Application 10/271,801

3
The prior art2 relied upon by the Examiner in rejecting the claims on
appeal is:
Herz US 6,571,279 B1 May 27, 2003
Ellis US 2005/0028208 A1 Feb. 3, 2005
The Examiner rejected claims 26 to 32 under 35 U.S.C. § 101 for non-
statutory subject matter.
The Examiner rejected claims 1, 3, 4, 8, 12 to 14, 16, 20, 24 to 27, 29,
31, and 32 under 35 U.S.C. § 102(e) based upon the teachings of Ellis.
The Examiner rejected claims 2, 5 to 7, 9, 15, 17 to 19, 21, and 28
under 35 U.S.C. § 103(a) based upon the teachings of Ellis.
The Examiner rejected claims 10, 11, 22, 23, and 30 under 35 U.S.C.
§ 103(a) based upon the teachings of Ellis and Herz.
Turning first to the non-statutory subject matter rejection, the
Examiner contends (Final Rej. 6) that the claimed subject matter is directed
to a signal which is neither a process, machine, manufacture, nor
composition of matter. Appellant argues (App. Br. 12) that the amended
claim recites a “computer readable storage medium,” and that “a signal is
not a storage medium.” We agree with Appellant that the amended claim is
statutory because it is now directed to a tangible computer readable storage
medium, and not to an intangible signal. Thus, the non-statutory subject
matter rejection of claims 26 to 32 is reversed.
Turning next to the anticipation rejection, the Examiner contends
(Final Rej. 7-9) that Ellis describes a first user activity (e.g., updating a user
profile) that is initiated by a first device, and a second user activity (e.g.,

2 The filing dates of the applied references are prior to the filing date of the
subject application.
Appeal 2009-007211
Application 10/271,801

4
participating in a chat application) that is initiated by a second device,
whereas, Appellant argues inter alia that
The interaction between the disparate activities is clear
from the claims – the first activity affects the content received
by the user in response to the second activity. Ellis nowhere
discloses such a common profile and interaction between these
two different types of activities as recited.
(App. Br. 12).
Thus, we have to determine whether Ellis describes any interaction
between the first user activity and the second user activity.
Although Ellis describes updating a user profile responsive to a first
user activity related to television viewing via a first device (e.g., a remote)
(¶¶ 0024, 0123-0126, 0160, 0161), and initiating a second user activity
unrelated to television viewing by participating in a chat application via a
second device (e.g., a set top box) that differs from the first device (¶¶ 0020,
0179), Ellis is completely silent as to accessing “the user profile in response
to the second user activity” (i.e., chat application) as required by all of the
claims on appeal. Ellis is equally silent as to whether the first user activity
of updating a user profile “affects a content of” data transmitted to a user
“responsive to the second user activity” (i.e., chat application) as required by
all of the claims on appeal. Thus, Appellant correctly argued that Ellis lacks
a description of any interaction between the first user activity and the second
user activity.
In summary, the anticipation rejection is reversed because each and
every limitation in claims 1, 3, 4, 8, 12 to 14, 16, 20, 24 to 27, 29, 31, and 32
is not found either expressly or inherently in the cited reference to Ellis. In
re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
Appeal 2009-007211
Application 10/271,801

5
The obviousness rejections are reversed because Ellis and Herz,
whether considered individually or in combination, neither teach nor suggest
the inventions set forth in claims 2, 5 to 7, 9 to 11, 15, 17 to 19, 21 to 23, 28,
and 30.
The decision of the Examiner is reversed.

REVERSED

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