Ex Parte Houston

Patent Trial and Appeal Board

Sep 29, 2016

13605690 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/605,690 09/06/2012
81905 7590 10/03/2016
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
FIRST NAMED INVENTOR
John S. Houston
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.
20004/303-4 3002
EXAMINER
ALAM, MUSHFIKH I
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
jflight@hfzlaw.com
mhanley@hfzlaw.com
docketing@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHNS. HOUSTON
Appeal 2015-004118
Application 13/605,690
Technology Center 2400
Before KALYAN K. DESHPANDE, DAVID M. KOHUT, and
JUSTIN T. ARBES, Administrative Patent Judges.
DESHPANDE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-004118
Application 13/605,690
STATEMENT OF CASE1
Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 2--4, 6-12, 14-19, and 21-23.2 We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
Appellant's invention is directed to a cooperative electronic media
measurement system using media handlers to extract information from
media objects. Spec. 1: 11-16.
An understanding of the invention can be derived from a reading of
exemplary claim 2, which is reproduced below.
2. A method of measuring media usage, the method
compnsmg:
extracting, via a media handler presenting media received
from a content provider at a device, identifying information from
the media;
determining whether the identifying information is of
interest based on a setting specified by a media research entity
different from the content provider, the setting identifying
information of interest to the media research entity;
in response to determining the identifying information is
of interest, creating a log object including the identifying
information;
1 Our decision makes reference to Appellant's Reply Brief ("Reply Br.,"
filed February 18, 2015), and Appeal Brief ("App. Br.," filed August 14,
2014), and the Examiner's Answer ("Ans.," mailed December 18, 2014) and
Final Office Action ("Final Act.," mailed December 6, 2013).
2 Claim 1 was cancelled previously. The Examiner indicates that claims 5,
13, and 20 recite allowable subject matter. See Final Act. 10.
2
Appeal 2015-004118
Application 13/605,690
determining whether the log object corresponds to
registered media based on the identifying information of interest
included in the log object; and
sending the log object to the media research entity when
the log object corresponds to registered media.
Graves et al.
Thomas et al.
Davis et al.
REFERENCES
us 5,410,344
us 5,481,294
us 5,796,952
REJECTIONS4
Apr. 25, 1995
Jan. 2, 1996
Aug. 18, 19983
Claims 2, 10, and 18 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 3.
Claims 2--4, 6, 8-10, 12, 14, 16-18, 21, and 23 stand rejected under
35 U.S.C. § 102(e) as anticipated by Davis. 5 Final Act. 4-7.
Claims 3, 11, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Davis and Graves. Final Act. 8-9.
Claims 7, 15, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Davis and Thomas. Final Act. 9-10.
3 Application filed March 21, 1997.
4 The rejection of claims 18-23 under 35 U.S.C. § 101 has been withdrawn.
See Ans. 2; Final Act. 2-3. Therefore, this rejection is not before us on
appeal. See 37 C.F.R. § 41.39(a)(l).
5 The Examiner's heading for the Davis rejection in the Final Office Action
incorrectly states that claim 20 also is rejected. See Final Act. 4, 10 (stating
that claim 20 is "objected to as being dependent upon a rejected base claim,
but would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims"). We find this to
be harmless error and make the appropriate change to the heading here.
3
Appeal 2015-004118
Application 13/605,690
ISSUES
The issue of whether the Examiner erred in rejecting claims 2, 10, and
18 under 35 U.S.C. § 112, second paragraph, as being indefinite turns on
whether the limitation "the setting identifying information of interest to the
media research entity," is indefinite for failing to particularly point out and
distinctly claim the invention's subject matter.
The issue of whether the Examiner erred in rejecting claims 2--4, 6-
12, 14-19, and 21-23 turns on whether (a) the "identifying information"
recited in claim 2 must be of interest to the media research entity; and Davis
discloses (b) "the setting identifying information of interest to the media
research entity,"; and ( c) "in response to determining the identifying
information is of interest, creating a log object including the identifying
information," as recited in independent claim 2, and similarly recited in
independent claims 10 and 18.
The issue of whether the Examiner erred in rejecting claims 6, 14, and
21 turns on whether Davis discloses "the setting is dynamically specified by
the media research entity," as recited in dependent claims 6, 14, and 21.
ANALYSIS
Claims 2, 10, and 18 rejected under 35 U.S. C. § 112, second paragraph, as
being indefinite
Independent claim 2 recites "determining whether the identifying
information is of interest based on a setting specified by a media research
entity different from the content provider, the setting identifying information
of interest to the media research entity." Independent claims 10 and 18
recite similar limitations. The Examiner finds the phrase "the setting
identifying information of interest to the media research entity" renders
4
Appeal 2015-004118
Application 13/605,690
claim 2 indefinite because this phrase is "grammatically incorrect" and
"does not make sense or limit the scope of the claim." Final Act. 3; Ans. 3.
Appellant argues this phrase is grammatically correct because the verb
"identifying" acts as a present participle to modify "setting." App. Br. 12-
13 (emphasis omitted); Reply Br. 4-5. We agree with Appellant. We do not
find the disputed phrase to be grammatically incorrect and that an ordinarily
skilled artisan would understand that the "identifying" describes the function
performed by the setting, as argued by Appellant. See App. Br. 13.
"[W]hen the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention, and thereafter the applicant fails to provide a satisfactory
response, the USPTO can properly reject the claim as failing to meet the
statutory requirements of§ 112 [second paragraph]." In re Packard,
751F.3d1307, 1310 (Fed. Cir. 2014); see also Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) ("A decision on
whether a claim is invalid under § 112, 2d ,-i, requires a determination of
whether those skilled in the art would understand what is claimed when the
claim is read in light of the specification"). We are not persuaded that the
disputed "identifying" language, given its broadest reasonable interpretation
in light of the Specification, is unclear in describing the claimed invention.
The Specification, for example, discloses that a setting may be specified by a
media research controller to filter out information which may be of interest
to the media research controller. Spec. 31 :20-24. A person with ordinary
skill in the art would have understood that the plain language of "the setting
identifying information of interest to the media research entity" encompasses
5
Appeal 2015-004118
Application 13/605,690
a setting that identifies information that is of interest to the media research
entity. Thus, a person with ordinary skill in the art would have understood
that "identifying information of interest to the media research entity" refers
to the function being served by "the setting," making the disputed limitation
sufficiently definite. Although the Examiner finds that this limitation
"makes no sense" and is "confus[ing]," the Examiner does not provide any
further information as to why a person with ordinary skill in the art would
not have understood what was being claimed by the limitation "the setting
identifying information of interest to the media research entity." See Final
Act. 3; Ans. 3.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 2, 10, and 18 as being indefinite.
Claims2--4, 6, 8-10, 12, 14, 16--18, 21, and23 rejectedunder35 U.S.C.
§ 102(e) as anticipated by Davis
Independent claim 2 recites ""determining whether the identifying
information is of interest based on a setting specified by a media research
entity different from the content provider, the setting identifying information
of interest to the media research entity." Independent claims 10 and 18
recite similar limitations.
Appellant contends that claim 2 requires that the identifying
information be of interest based upon a media research entity's setting. App.
Br. 16-20; Reply Br. 7-8. Appellant argues that there is an explicit
relationship between the "setting identifying information of interest to the
media research entity" and the determination of "whether the identifying
information is of interest," which precludes the identifying information to be
of interest to the user. See App. Br. 18; Reply Br. 8. Under this
6
Appeal 2015-004118
Application 13/605,690
interpretation, Appellant argues that Davis fails to disclose the limitation.
App. Br. 16-20; Reply Br. 7-8. Specifically, Appellant argues that Davis
determines whether information is of interest to a user, whereas the claims
require determining whether the information is of interest based upon a
setting specified by a media research entity. App. Br. 16-20 (citing Davis
4:55-58, 9:36-38, 14:1-2, 41-48, 52-58, 19:2-5); Reply Br. 7-8 (emphasis
omitted). As such, Appellant argues that the Examiner erred in relying on
Davis to disclose "determining whether the identifying information is of
interest based on a setting specified by a media research entity." App. Br.
16-20; Reply Br. 7-8.
We disagree with Appellant. Claim 2 recites "determining whether
the identifying information is of interest" and this determination is done
"based on a setting specified by a media research entity." Although the
media research entity specifies the setting, and the setting identifies
information of interest to the media research entity, claim 2 does not specify
to whom "the identifying information" is of interest. Therefore, under the
broadest reasonable interpretation in light of the Specification, "determining
whether the identifying information is of interest" encompasses determining
whether information is of interest to a user. This interpretation is consistent
with the Examiner's construction of the claim limitation. See Ans. 4-5.
This interpretation is also commensurate with the Specification's description
of a "setting" as a function to filter information collected from a panel
member (user). See Spec. 11 :8-12, 30:24-28.
The Examiner finds that Davis discloses a tracking program that
monitors a user's interaction with media, and provides all collected user
interaction data to a tracking server. Final Act. 4 (citing Davis 13:46-15:5);
7
Appeal 2015-004118
Application 13/605,690
Ans. 4. The Examiner further finds that the tracking server processes the
data to determine the user's interests based upon the user's actions (i.e., ads
clicked, number of clicks, time spent on a site, etc.), and this processing of
user data teaches "determining whether the identifying information is of
interest." Ans. 4-5. The Examiner further finds that Davis discloses a
tracking program that identifies media in which the user is interested, and
this tracking program meets "determining whether the identifying
information is of interest." Id.; Davis 13:18-14:46. Additionally, the
Examiner finds that Davis' analysis of whether the user is interested in the
media shown discloses "the setting identifying information of interest to the
media research entity," because the media research entity selects, or sets,
which media are shown to the user. See Ans. 4-5 (citing Davis 14:22-15:5).
We agree.
Independent claim 2 further recites "in response to determining the
identifying information is of interest, creating a log object including the
identifying information." Independent claims 10 and 18 recite similar
limitations. The Examiner finds that Davis' disclosure of using tracked
information to assemble resources geared toward a user's interest teaches
creating a log object based upon identifying information that is of interest to
the user. Final Act. 5 (citing Davis 14:47-15:5); see Ans. 6. Additionally,
the Examiner finds that logging the tracked information into a user profile
discloses creating a log object in response to determining information that is
of interest to the user. Final Act. 5 (citing Davis 14:47-15:5); Ans. 6.
Appellant argues that, based upon the Examiner's findings in the
Answer, "every tracked user selection [of Davis] is logged into the user
profile." Reply Br. 9 (emphasis omitted). Appellant argues that if every
8
Appeal 2015-004118
Application 13/605,690
tracked user selection is logged, creation of the log object is not performed
in response to determining the identifying information is of interest. Id.
Appellant argues "that the Examiner has ignored the explicit relationship or
interplay between the 'determining the identifying information is of interest'
and the 'creating a log object including the identifying information,' as set
forth in claim 2." Id.
We disagree with Appellant. As found by the Examiner, the selection
of an ad by the user indicates that the ad is of interest to the user. Ans. 6.
Accordingly, every selected ad tracked by Davis' system is determined to be
of interest to the user. Thus, Davis' disclosure of detecting and tracking ads
selected by a user discloses determining that the identifying information is of
interest to the user. Therefore, we do not find persuasive Appellant's
argument that because every tracked user selection of Davis is logged into
the user profile, there is no determination that the identifying information is
of interest to the user. Reply Br. 9.
Appellant additionally argues that the Examiner erred by mistakenly
finding that assembling resources geared toward user interests in Davis
discloses "creating a log object including the identifying information," as
recited in claim 2. App. Br. 21. Appellant argues that Davis' assembling of
resources geared toward user interests corresponds to selecting media to
present to a user based upon the user's past activity. Id. Appellant further
argues that creating a log object (user profile) for media that is to be
presented to a user cannot be based on the assembled resources geared
toward user resources because the resources were assembled prior to a
subsequent presentation of the media to the user. Id. at 21-22.
9
Appeal 2015-004118
Application 13/605,690
We do not find this argument persuasive. Appellant's argument
directed to a future presentation to a user does not address the Examiner's
findings pertaining to the creation of the original user profile (e.g., log
object) that contains information that has been identified to be of interest to
the user. See Final Act. 5; Ans. 6.
Accordingly, we sustain the Examiner's rejection of independent
claims 2, 10, and 18. Appellant argues that dependent claims 3, 4, 8, 9, 12,
16, 17, and 23, which depend from independent claims 2, 10, and 18,
respectively, are patentable for the same reasons. App. Br. 20, 22, 23.
Accordingly, we sustain the Examiner's rejection of these claims for the
reasons discussed above in our analysis of claims 2, 10, and 18.
Dependent claims 6, 14, and 21 additionally recite that setting
identifying information that is of interest "is dynamically specified by the
media research entity." The Examiner finds that Davis' tracking program
that creates a profile for each user and is constantly changing based upon
new user interaction data teaches the setting being dynamically specified by
the media research entity. Final Act. 5-6 (citing Davis 13:18-15:5); Ans. 7.
Appellant argues that the tracking program of Davis is static in that once it
has been downloaded the program itself does not change. App. Br. 24;
Reply Br. 11-12.
We do not find Appellant's argument persuasive. As discussed above,
we agree with the Examiner's finding that the media research entity's setting
determines which media is shown to the user, and that the determination is
based upon user interaction data. Ans. 4-5. We also agree with the
Examiner that with new user interaction data, the setting dynamically
changes, thereby changing which media are shown to the user. Id. at 7.
10
Appeal 2015-004118
Application 13/605,690
Thus, we are not persuaded that the Examiner erred in finding that Davis
discloses "the setting is dynamically specified by the media research entity"
because the media research entity's setting or filter that determines what is
shown to the user is constantly changing based upon collected user
interaction data.
Accordingly, we sustain the Examiner's rejection of dependent claims
6, 14, and 21.
Claims 3, 7, 11, 15, 19, and 22 rejected under 35U.S.C.§103(a) as
obvious over the cited prior art
Claims 3, 7, 11, 15, 19, and 22 depend from independent claims 2, 10,
and 18, respectively, and are not argued separately. App. Br. 22-23.
Accordingly, we sustain the Examiner's rejection of claims 3, 7, 11, 15, 19,
and 22 for the same reasons discussed above in our analysis of claims 2, 10,
and 18.
CONCLUSION
The Examiner erred in rejecting claims 2, 10, and 18 under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
The Examiner did not err in rejecting claims 2--4, 6, 8-10, 12, 14, 16-
18, 21, and 23 under 35 U.S.C. § 102(e) as anticipated by Davis.
The Examiner did not err in rejecting claims 3, 11, and 19 under
35 U.S.C. § 103(a) as unpatentable over Davis and Graves.
The Examiner did not err in rejecting claims 7, 15, and 22 under
35 U.S.C. § 103(a) as unpatentable over Davis and Thomas.
11
Appeal 2015-004118
Application 13/605,690
DECISION
To summarize, the rejections of claims 2--4, 6-12, 14-19, and 21-23
as anticipated or obvious are affirmed, and the rejection of claims 2, 10, and
18 under 35 U.S.C. § 112, second paragraph, as being indefinite is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
12