Ex Parte Errico et al

Patent Trial and Appeal Board

Jun 30, 2014

11152546 (P.T.A.B. Jun. 30, 2014)

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.
11/152,546 06/13/2005 James H. Errico SLA1859 (7146.0340) 7707
152 7590 07/01/2014
CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
601 SW Second Avenue
Suite 1600
PORTLAND, OR 97204-3157
EXAMINER
SCHNURR, JOHN R
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
07/01/2014 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 JAMES H. ERRICO, M. IBRAHIM SEZAN,
GEORGE R. BORDEN, GARY A. FEATHER,
and MICK G. GROVER
_____________

Appeal 2012-001210
Application 11/152,546
Technology Center 2400
______________

Before, BRADLEY W. BAUMEISTER, DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-18 and 22-39.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part the Examiner’s rejections of these claims.

1 Claims 19-21 and 40-44 were previously cancelled.
Appeal 2012-001210
Application 11/152,546

2
INVENTION
The claims are directed to a system in which a first display device
provides a recommendation of programming content to a viewer of a second
display device. Abstract. Independent claims 1 and 22, reproduced below,
are illustrative of the claimed subject matter:
1. A system comprising:
(a) a first display device receiving first data descriptive of
audiovisual content consumed by a viewer of said first
display device wherein said first data includes at least
two of the following categories of information:
(1) automatically extracted content characteristics of
currently viewed audiovisual content;
(2) automatically extracted content characteristics of
previously viewed audiovisual content;
(3) manual selections of content that said viewer
almost selected for current viewing;
(4) data extracted from a usage history profile of
viewed audiovisual content not belonging to content
categorized in (1) and not belonging to content
categorized in (2);
(5) automatically extracted content characteristics of
audiovisual content described in (3) to (4);
(6) keywords used when selecting audiovisual content
described in at least (1) or (2);
(7) search parameters identified during an interval
prior to selection of audiovisual content described in at
least one of (1) or (2); and
(8) from among a plurality of different available
options for browsing a selected instance of audiovisual
content described in at least one of (1) or (2), the said
options selected by said user; and
(b) processing said first data to provide a recommendation of
audiovisual content to a viewer of a second display
Appeal 2012-001210
Application 11/152,546

3
device, where said processing assigns different nonzero
weights to respectively different ones of said at least two
categories of said information to provide said
recommendation.

22. A system comprising:
(a) a first audiovisual device capable of at least one of
displaying, selecting, and consuming audiovisual content;
(b) a second audiovisual device capable of at least one of
displaying, selecting, and consuming audiovisual content;
(c) said first audiovisual device providing information to
said second audiovisual device indicating current content
that is currently being displayed on said first audiovisual
device;
(d) said second audiovisual device automatically using said
information to recommend said current content to a user
of said second audiovisual device based on a
contemporaneous comparison of program attributes of
said current content to preferences in a preference profile
of said user, said preferences respectively indicative of
preferred semantic content attributes of audiovisual
content.

REFERENCES
Gutta et al. US 2003/0066068 A1 Apr. 3, 2003

Karaoguz et al. US 2004/0117837 A1 June 17, 2004

Cooper et al. US 6,754,904 B1 June 22, 2004

Finseth et al. US 6,813,775 B1 Nov. 2, 2004

Shin US 7,343,381 B2 Mar. 11, 2008

Appeal 2012-001210
Application 11/152,546

4
REJECTIONS AT ISSUE
Claims 1-5, 7, 9-17, and 32-38 are rejected under 35 U.S.C. § 103(a)
as obvious over the combination of Finseth and Gutta. Ans. 4-8.
Claims 6, 8, 18, and 39 are rejected under 35 U.S.C. § 103(a) as
obvious over the combination of Finseth, Gutta, and Shin. Ans. 8.
Claims 22-31 are rejected under 35 U.S.C. § 103(a) as obvious over
the combination of Cooper and Karaoguz. Ans. 8-11.

ISSUES
Did the Examiner err in finding the combination of Finseth and Gutta
teaches or suggests assigning “different nonzero weights to respectively
different ones of said at least two categories of said information to provide
said recommendation,” as recited by independent claim 1, and similarly by
independent claim 32?
Did the Examiner err in finding the combination of Cooper and
Karaoguz teaches or suggests “said second audiovisual device automatically
using said information to recommend said current content to a user of said
second audiovisual device based on a contemporaneous comparison of
program attributes of said current content to preferences in a preference
profile of said user,” as recited by independent claim 22, and similarly by
independent claim 29?

ANALYSIS
Claims 1-18 and 32-39
Claim 1 requires at least two categories of information from a list that
includes currently viewed audiovisual content and previously viewed
Appeal 2012-001210
Application 11/152,546

5
audiovisual content and wherein different nonzero weights are assigned to
the different categories in order to provide a recommendation. Claim 32
recites similar limitations. Claims 2-18 and 33-39 are dependent upon
claims 1 and 32 (respectively).
The Examiner finds that Finseth teaches in column 10, lines 8-24, the
claimed categories listed above. Ans. 5. The Examiner additionally finds
that Gutta teaches assigning different weights to data in order to provide a
recommendation, in paragraphs 7 and 52-55. Ans. 5. Thus, the Examiner
finds that the combination of the references teaches the disputed limitation.
Ans. 5-6. Appellants argue that Gutta, at best, merely teaches weighting
data within different categories differently, but makes no mention of
weighting data of one category differently from data of a second category
(e.g., weighting previously viewed content and currently viewed content
differently). App. Br. 9.
Appellant’s arguments are persuasive. The Examiner has not
sufficiently shown how the combination of Finseth and Gutta teaches
weighting the “previously viewed content” differently from the “currently
viewed content” when making a recommendation. As such, we reverse the
Examiner’s rejection of independent claims 1 and 32, and dependent claims
2-18 and 33-39.2

2 We note that independent claim 1 essentially recites “a system” comprising
two limitations: (a) a device receiving data; and (b) processing the data.
Independent claim 32 is directed to a system that comprises a first display
device receiving data and a second display device processing the data. In
the event of further prosecution, the Examiner should confirm whether these
claims are, in fact, method claims (compare claim 22, which alternatively
sets forth apparatus limitations in the format of “a device capable of
[displaying, selecting, and consuming content]”) (emphasis added), or
Appeal 2012-001210
Application 11/152,546

6
Claims 22-31
We select claim 22 as representative of the group comprising claims
22-31 as Appellants have not argued any of the other claims with
particularity. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 22 recites
said first audiovisual device providing information to said
second audiovisual device indicating current content that is
currently being displayed on said first audiovisual device;
said second audiovisual device automatically using said
information to recommend said current content to a user of said
second audiovisual device based on a contemporaneous
comparison of program attributes of said current content to
preferences in a preference profile of said user. 3

otherwise determine if an indefiniteness rejection under 35 U.S.C. §112,
second paragraph, is appropriate for independent claims 1 and 32 and their
dependent claims 2-18 and 33-39. See IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (noting that when a
claim recites both a system and a method for using that system, it is unclear
whether infringement occurs when (1) one creates a system that allows a
user to perform the recited method, or (2) the recited method actually
occurs).
3 We note that limitations (a) and (b) of system claim 22 set forth devices
“capable of [displaying, selecting, and consuming content]”) (emphasis
added), while limitations (c) and (d) alternatively recite devices “providing”
and “using” information. Should prosecution be continued, the Examiner
should consider whether claims 22 and 29 are indefinite. See MPEP
§ 2173.05(p)(II) and IPXL Holdings, L.L.C. v. Amazon .com, Inc., 430 F.3d
1377, 1384 (Fed. Cir. 2005) (“[R]eciting both an apparatus and a method of
using that apparatus renders a claim indefinite under section 112, paragraph
2.” (citing Ex parte Lyell, 17 USPQ2d 1548 (BPAI 1990))). In Lyell, the
Board further noted “the statutory class of invention is important in
determining patentability and infringement.” 17 USPQ2d at 1550 (citing In
re Kuehl, 475 F.2d 658, 665 (CCPA 1973); Providence Rubber Co. v.
Goodyear, 76 U.S. 788, 796 (1869)).
Appeal 2012-001210
Application 11/152,546

7
The Examiner finds that Cooper teaches first and second audiovisual
devices, whereby the first audiovisual device provides information to the
second audiovisual device indicating current content displayed on the first
audiovisual device. Ans. 8-9. Additionally, the Examiner finds that
Karaoguz teaches using program attributes and user preferences to
recommend content to a user. Ans. 9. Thus, the Examiner finds that the
combination teaches the disputed limitation. Ans. 8-9.
Appellants argue that “Karaoguz teaches the opposite of what is
claimed.” App. Br. 11. According to Appellants, instead of the second
device making a comparison before the recommendation, Karaoguz teaches
the first device comparing the program to its user before making a
recommendation. App. Br. 11; Reply Br. 7.
We agree with the Examiner (Ans. 13), that the claim does not require
the comparison be performed by the second device. Rather, claim 22 only
requires that the second audiovisual device make a recommendation based
upon the comparison. As such, since Karaoguz teaches that the second
audiovisual device recommends a current program to a user based upon the
comparison, as shown in paragraph 47, we agree with the Examiner that the
combination of references teaches the disputed limitation.
We therefore sustain the Examiner’s rejection of claims 22-31.

CONCLUSION
The Examiner erred in finding the combination of Finseth and Gutta
teaches or suggests assigning “different nonzero weights to respectively
different ones of said at least two categories of said information to provide
Appeal 2012-001210
Application 11/152,546

8
said recommendation,” as recited by independent claim 1, and similarly by
independent claim 32.
The Examiner did not err in finding the combination of Cooper and
Karaoguz teaches or suggests “said second audiovisual device automatically
using said information to recommend said current content to a user of said
second audiovisual device based on a contemporaneous comparison of
program attributes of said current content to preferences in a preference
profile of said user,” as recited by independent claim 22, and similarly by
independent claim 29.

SUMMARY
We reverse the Examiner’s decision to reject claims 1-18 and 32-39.
We affirm the Examiner’s decision to reject claims 22-31.
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-IN-PART

msc