Ex Parte Forbes et alDownload PDFPatent Trial and Appeal BoardFeb 26, 201611656894 (P.T.A.B. Feb. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111656,894 01122/2007 52427 7590 02/26/2016 MUIRHEAD AND SATURNELLI, LLC 200 FRIBERG PARKWAY, SUITE 1001 WESTBOROUGH, MA 01581 FIRST NAMED INVENTOR John B. Forbes 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 ATTORNEY DOCKET NO. CONFIRMATION NO. EMS-264US 1908 EXAMINER ROLAND, GRISELLE CORBO ART UNIT PAPER NUMBER 2158 MAILDATE DELIVERY MODE 02/26/2016 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 JOHN B. FORBES, PAUL MARITZ, JONATHAN L. HERLOCKER, and THOMAS G. DLETTERICH Appeal2013-010930 Application 11/656,894 Technology Center 2100 Before JOSEPH L. DIXON, ERIC S. FRAHM, and JOHN P. PINKERTON, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal2013-010930 Application 11/656,894 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-10, 12-22, and 24--37. Claims 11 and 23 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. We have reviewed Appellants' arguments in the Appeal Brief (App. Br. 7-13) and the Reply Brief (Reply Br. 3-8) that the Examiner's rejection of claims 1-10, 12-22, and 24--37 under 35 U.S.C. § 102 as being anticipated by Hertz (US 2003/0037041 Al; published Feb. 20, 2003) (Final Act. 2--42) is in error, and the Examiner's response to Appellants' arguments in the Appeal Brief (Ans. 3-5). Exemplary Independent Claims 1and271 Exemplary independent claims 1 and 27, with disputed portions emphasized, read as follows: 1. A computer-implemented method for automatically presenting digital content to a user of a computer, the method compr1s1ng: the computer receiving input from a user corresponding to a current task being performed by the user; the computer computing task-related metadata from: i) the current task being performed by the user, 1 Separate patentability is not argued for dependent claims 2-10, 12-22, 24-- 26, and 28-37. Appellants argue these claims for the same reasons as independent claims 1 and 27. See App. Br. 7-13 and Reply Br. 3-8. Accordingly, our analysis herein will primarily address independent claims 1 and 27. 2 Appeal2013-010930 Application 11/656,894 ii) past event records stored in a database of a task- oriented user activity system, and (iii) credential data associated with the user, wherein computing the task-related metadata includes predicting a predicted task of the user, wherein predicting the predicted task includes determining that performing the current task indicates a probability of subsequently performing the predicted task and includes using the past event records, and wherein the task-related metadata includes information that is relevant to the predicted task and that includes information corresponding to the credential data associated with the user; the computer communicating the task-related metadata to a digital content service provider via a data network; the digital content service provider extracting the information from the task-related metadata and determining, using the extracted information, digital content relevant to a profile of the user, wherein the profile of the user is specified according to the predicted task and the credential data associated with the user, and wherein the information relevant to the predicted task and the information corresponding to the credential data that are included in the task-related metadata determine the digital content that is selected by the digital content provider after extracting the information from the task- related metadata; the digital content service provider communicating the digital content to the computer; and the computer presenting the digital content to the user of the computer. 27. A computer-implemented method for automatically presenting digital content to a user of a computer, the method compnsmg: 3 Appeal2013-010930 Application 11/656,894 the computer receiving input from a user corresponding to a current task being performed by the user; the computer computing task-related metadata from: i) the current task being performed by the user, ii) past event records stored in a database of a task- oriented user activity system, and (iii) credential data associated with the user, wherein computing the task-related metadata includes predicting a predicted task of the user, wherein predicting the predicted task includes determining that performing the current task indicates a probability of subsequently performing the predicted task and includes using the past event records, and wherein the task-related metadata includes information that is extractable by a digital content service provider and that is relevant to the predicted task and that further includes information corresponding to the credential data associated with the user; the computer communicating the task-related metadata to the digital content service provider via a data network; the computer receiving, from the digital content service provider, digital content relevant to the a profile of the user, wherein the profile of the user is specified according to the predicted task and the credential data associated with the user, and wherein the information relevant to the predicted task and the information corresponding to the credential data that are included in the task-related metadata determine the digital 4 Appeal2013-010930 Application 11/656,894 content that is selected by the digital content provider after extracting the information from the task-related metadata; and the computer presenting the digital content to the user of the computer. Claim 1 requires "wherein the information relevant to the predicted task and the information corresponding to the credential data that are included in the task-related metadata determine the digital content that is selected by the digital content provider after extracting the information from the task-related metadata" and "the computer presenting the digital content to the user of the computer." Similarly, claim 27 requires: wherein the information relevant to the predicted task and the information corresponding to the credential data that are included in the task-related metadata determine the digital content that is selected by the digital content provider after extracting the information from the task-related metadata; and the computer presenting the digital content to the user of the computer. The Examiner relies upon Hertz (i-fi-f 16-18, 34, 64, 178, and 213-218) as teaching or suggesting this feature. See Ans. 3-5, Final Act. 6-8. Hertz discloses a method for pre-fetching files from a server and storing them on an electronic storage media. See Hertz at i1i1213-218. We agree with Appellants (App. Br. 11-13) that Hertz has not been shown by the Examiner to teach or suggest the disputed limitation of "the computer presenting the digital content to the user of the computer." Although Hertz does disclose a method for predicting files which a user may be interested in using, a method similar to that claimed by Appellants, and downloading the predicted files from a server onto a local storage media, the Examiner has 5 Appeal2013-010930 Application 11/656,894 not shown that Hertz teaches or suggests the computer presenting those files to the user of the computer, as recited in claims 1 and 27. Accordingly, we do not sustain the Examiner's anticipation rejection of independent claims 1and27 and claims 2-10, 12-22, 24--26, and 28-37 depending therefrom. CONCLUSION The Examiner erred in rejecting claims 1-10, 12-22, and 24--37 under 35 U.S.C. § 102(b) as being anticipated by Hertz. DECISION The Examiner's rejection of claims 1-10, 12-22, and 24--37 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation