Ex Parte Fishman et al

Patent Trial and Appeal Board

Dec 29, 2016

12877034 (P.T.A.B. Dec. 29, 2016)

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.
12/877,034 09/07/2010 Alex Fishman 2050.171US1 2435
44367 7590 01/03/2017
SCHWEGMAN LUNDBERG & WOESSNER/OPEN TV
P.O. BOX 2938
MINNEAPOLIS, MN 55402-0938
EXAMINER
TRINH, TUNG THANH
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
01/03/2017 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEX FISHMAN and CRX K. CHAI1
Appeal 2016-001868
Application 12/877,034
Technology Center 2400
Before ALLEN R. MacDONALD, MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3—11, 13—20, 22, and 23, which constitute all the
claims pending in this application. Claims 2 and 12 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as OpenTV, Inc. (App. Br. 2.)
Appeal 2016-001868
Application 12/877,034
Introduction
Appellants state their “application relates to the fields of media and
entertainment and specifically to a smart playlist system.” (Spec. 1.)
CLAIMED SUBJECT MATTER
Claim 1 is illustrative:
1. A computer-implemented method comprising:
obtaining content utilization data from a plurality of
client devices associated with a respective plurality of viewers,
wherein the content utilization data for a viewer from the
plurality of viewers is indicative of the viewer’s interest in
respective content items, and wherein the plurality of viewers
comprises other viewers who are not identified as social
connections of the viewer;
automatically generating, at a server computer system, a
list of popular content items that are currently popular among
the plurality of viewers based on the obtained content
utilization data;
for a target viewer from the plurality of viewers,
customizing the list of popular content items to generate a
customized playlist, the customizing based on a viewing history
of the target viewer and on a viewing history of viewers who
are identified as social connections of the target viewer; and
communicating the customized play list to a client device
of the target viewer.
(App. Br. 17 (Claims App’x).)
References and Rejections
Claims 1, 3—5, 7—11, 13—15, 17—20, 22, and 23 stand rejected under
35 U.S.C. § 103(a) as obvious over Conradt et al. (US 2009/0100469 Al;
Apr. 16, 2009) (“Conradt”) and Dunk et al. (US 2011/0060649 Al; Mar. 10,
2011) (“Dunk”). (Final Act. U-9.)
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Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as obvious
over Conradt, Dunk, and Logan et al. (US 2003/0093790 Al; May 15, 2003)
(“Logan”). (Final Act. 10.)
ANALYSIS
Based on Appellants’ arguments, the issues before us are whether the
Examiner errs in rejecting claims 1,3, and 4 under 35 U.S.C. § 103(a). (See
App. Br. 9-16.)
Claim 1
Appellants argue the Examiner errs by finding Conradt and Dunk
teach or suggest claim 1 ’s requirement of collecting “viewing history of
viewers who are identified as social connections of the target viewer.”
(App. Br. 10—11.) Appellants contend that while Dunk states its “media
service provider 16 may be configured to collect subscriber information (e.g.
statistics about the viewing habits of each user or a group of users) for use in
determining the relevance between particular media content and particular
users” (139), “Dunk does not explicitly indicate that a group includes
‘viewers who are identified as social connections of the target viewer,’ as
recited.” (App. Br. 10.)
We find this unpersuasive. “A reference must be considered for
everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect. On the issue
of obviousness, the combined teachings of the prior art as a whole must be
considered.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907
(Fed. Cir. 1985) (emphasis omitted). Here, the Examiner’s rejection
specifically identifies it is the combination of Conradt and Dunk that teach
“the customizing based on a viewing history of the target viewer and on a
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viewing history of viewers who are identified as social connections of the
target viewer.” (See Final Act 6 (citing Conradt Fig. 2,150; Dunk Abstract,
Figs. 1-3,1139, 47-48, 189-190, and 193).)
The Examiner finds, and we agree, that “Conradt teaches generating a
media content recommendation for a user based on the compiled media
content data for associated users in a social network” and “Dunk teaches
providing media content based on relevance between content and [a] user in
a social network.” (Ans. 2—3 (citing Conradt Fig. 2, Abstract, H 37, 46—50;
Dunk Fig. 3, Abstract, 120).) Dunk’s Figure 3 (described in H 52—60)
illustrates a relevance engine 50 coupled to a database 52 that contains
metadata such as “preferences indicated by the users” and information to
define “clusters or groups of users” (1 58). Figure 3 further shows a social
network integrator 54 coupled to database 52 for obtaining information such
as user profiles, friends, expressed likes and dislikes, etc. from social
networking applications 56 (Facebook, MySpace, etc.), which it can use “to
generate additional user metadata” (159). In view of these teachings, we
find Appellants’ characterization of groups in Dunk as “having nothing to do
with social connections” (App. Br. 11) unpersuasive. An ordinarily skilled
artisan would have understood to the contrary in view of Figure 3 and its
associated description.
Appellants also argue the Examiner errs by finding Conradt and Dunk
teach or suggest claim 1 ’s requirement of compiling data for a plurality of
viewers “wherein the plurality of viewers comprises other viewers who are
not identified as social connections of the viewer.” (App. Br. 11—12.)
Appellants contend “Conradt appears to only take into consideration data
regarding other viewers within a viewer’s social network.” (Id. at 11.)
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This is unpersuasive. The Examiner finds, and we agree, that Conradt
teaches collecting content utilization data from multiple device users, not all
of which may be in a social network of a particular viewer. (Final Act. 4—5
(citing Conradt Fig. 1, || 20, 33—34, and 49-50); Ans. 3^4 (additionally
citing Conradt Fig. 2, || 37, 41—43).) For example, Conradt states “[t]he
service manager 132 can . . . form social networks based on the
communications data collected from various client devices” (134). In an
embodiment for doing so, “the users can be associated based on a threshold”
(id.). Because some users may not reach the threshold, this teaches
collecting the content utilization data from multiple users, with only a subset
of them being in the same social network.2 Accordingly, we agree that
Conradt teaches claim 1 ’s “obtaining content utilization data from ... a
plurality of viewers . . . comprising] other viewers who are not identified as
social connections of the viewer,” as recited by claim 1. (See Ans. 3^4.)
Appellants further argue the Examiner errs in rejecting claim 1
because:
Neither Conradt, nor Dunk, nor any combination thereof
discloses generating a list of popular contents items based on
viewers that are not associated via a social network, and then
customizing that list for a target viewer based on the viewing
history of the target viewer and the viewing history of the
viewers identified as social connections of the target viewer
(App. Br. 12.)
We find this argument unpersuasive because the claim only requires
that the plurality of users for which utilization data is obtained “comprises”
2 We also note, as discussed below, the claim does not require that the data
from the non-social network users be used in generating the list of popular
content items.
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viewers who are not identified as social connections of the viewer, not that it
is limited to such users. We agree with the Examiner that Conradt generates
a list of items (those popular in a social network), that are popular among a
plurality of viewers (among a plurality that includes both those in the social
network and those who did not meet the threshold), where the list is “based
on” the social network data, which is part of the obtained content utilization
data.
Appellants also argue in reply that the Examiner errs by finding there
would have been motivation to combine Conradt and Dunk, contending that
“stating that all references are in the same field of endeavor is not a
motivation to combine.” (Reply Br. 7.) We do not consider this argument,
which Appellants could have raised in the Appeal Brief, allowing the
Examiner to respond. See 37 C.F.R. § 41.41(b)(2). We note that although
Appellants’ reply argument responds to a statement in the Answer, the
rejection includes a similar statement to explain the combination of Dunk
with Conradt. (See Final Act. 6 (“However, in the same field of endeavor,
Dunk discloses . . . .”).)
Accordingly, we sustain the rejection of claim 1. We also sustain the
rejection of claims 5—11, 15—20, 22, and 23, for which Appellants present no
substantive3 arguments separate from claim 1.
3 Although Appellants do additionally assert that claims 5—11, 15—20, 22,
and 23 “are allowable for the particular limitations recited therein” (App. Br.
13), such a contention, without more, fails to constitute an argument on the
merits. See 37 C.F.R. 41.37(c)(iv) (2012) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”).
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Claim 3
Claim 3 depends from claim 1 and requires, inter alia, “wherein the
customizing comprises selecting at least one of the popular content items for
the customized playlist based on the viewing history of the viewers who are
identified as social connections of the target viewer.” (App. Br. 17 (Claims
App’x).)
In arguing the Examiner errs, Appellants state “[t]he Final Office
Action asserts that ‘Dunk discloses the relevance engine 50 determining
relevance content for user based on ranking in social network (Fig. 3 p. 4
para[0058]: p. 8 para [0126]-[0129]).” (App. Br. 13—14 (citing Final Act. 7
(emphasis added by Appellants)).) Our review of the record does not find
Appellant’s quoted assertion in the Final Rejection from which this appeal is
taken; instead, we find the rejection relies on the combination of Conradt
and Dunk for teaching the requirements of claim 3. (See Final Act. 6—7
(citing Conradt Fig. 2, || 46—50; Dunk Figs. 1—3, 8, 17, 39, 58—59, 126—
27, and 132).)
Because Appellants do not address the merits of the pending rejection
based on the Examiner’s findings that the combination of Conradt and Dunk
teach the added requirements of claim 3 (see App. Br. 13—14), we sustain its
rejection. We also sustain the rejection of claim 13, which Appellants argue
together with claim 3.
Claim 4
Claim 4 depends from claim 1 and recites, inter alia, “generating a
score for each item from the list of popular content items based on the
viewing history of the target viewer and on the viewing history of the
viewers who are identified as social connections of the target viewer.”
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(App. Br. 17 (Claims App’x).) The Examiner finds the combination of
Conradt’s “number of communications between particular users as score and
priority based on the number to display content in social network
recommendation [sic]” and Dunk’s “ranking or ratings . . . based on user
feedbacks and engagements or viewing history” teaches claim 4’s
requirements. (Final Act. 7—8 (citing Conradt || 35, 37; Dunk || 126—32).)
Appellants argue the Examiner errs because neither Conradt’s number
of communications between users nor Dunk’s rankings or ratings teach
generating a score based on viewing history, as recited. (App. Br. 14—15.)
The Examiner responds by finding “Dunk discloses the relevant content for
[a] user [is] based on ranking in the social network; the Tike’ or ‘bad’ is
based on a particular user viewing history about that type of media content
even if the ranking content is not viewed by the particular user.” (Ans. 5.)
Appellants reply that Examiner has failed to show the cited references teach
or suggest the recited “viewing history of a particular user” (i.e., the recited
“target viewer”) used for generating a score. (Reply Br. 10-11.)
We agree with Appellants. Accordingly, we do not sustain the
rejection of claim 4. For the same reasons, we also do not sustain the
rejection of claim 14, which includes similar limitations and stands rejected
on the same basis as claim 4, and which Appellants argue together with
claim 4.
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DECISION
For the above reasons, we affirm the rejection of claims 1,3, 5—11,
13, 15—20, 22, and 23, and reverse the rejection of claims 4 and 14.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED-IN-PART
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