Ex Parte Jin et alDownload PDFPatent Trial and Appeal BoardMay 25, 201612644671 (P.T.A.B. May. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/644,671 12/22/2009 25537 7590 05/27/2016 VERIZON PA TENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 FIRST NAMED INVENTOR Zhiying Jin 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. 20090551 6794 EXAMINER DUFFIELD, JEREMY S ART UNIT PAPER NUMBER 2427 NOTIFICATION DATE DELIVERY MODE 05/27/2016 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): patents@verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ZHIYING JIN, ALEXANDER SAKHAROV, and JIANXIUHAO Appeal2014-004588 Application 12/644,671 1 Technology Center 2400 Before LARRY J. HUME, JEFFREY A. STEPHENS, and NORMAN H. BEAMER, Administrative Patent Judges. HUME, 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 1-25. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is Verizon Communications Inc. App. Br. 3. Appeal2014-004588 Application 12/644,671 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed invention relates to systems and methods for recommending content to a viewer watching television. Spec. iT 15. Exemplary Claims Claims 1, 2, and 8, reproduced below, are representative of the subject matter on appeal (emphases added to contested limitations): 1. A computer-implemented method comprising: determining a program currently being displayed for a user to watch; selecting a program to recommend to the user from a list of programs based on the program currently being displayed and based on an availability of the program to recommend, wherein selecting the program to recommend includes: comparing first metadata describing the program currently being displayed with second metadata describing one of the programs from the list of programs to identify matching words or phrases, wherein the first metadata includes a first plurality of data fields and the second metadata includes a second plurality of data fields, generating a correlation score based on the companng, 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Sept. 4, 2013); Examiner's Answer ("Ans.," mailed Dec. 19, 2013); Final Office Action ("Final Act.," mailed Apr. 10, 2013); and the original Specification ("Spec.," filed Dec. 22, 2009). We note Appellants did not file a Reply Brief in response to the factual findings and legal conclusions in the Examiner's Answer. 2 Appeal2014-004588 Application 12/644,671 adjusting the correlation score based on a length of one of the first plurality of data fields or a length of one of the second plurality of data fields, wherein the adjusting the correlation score comprises applying a greater weight to matching words or phrases associated with shorter ones of the first and second plurality of data fields, and selecting the one of the programs as the program to recommend based on the adjusted correlation score; and displaying an indication of the recommended program to the user. 2. The computer-implemented method of claim 1, wherein selecting the recommended program based on the availability includes querying a program guide to determine that the recommended program is scheduled to broadcast in the future. 8. The computer-implemented method of claim 7, wherein determining the correlation includes: determining a first number of occurrences of the phrase or stemmed phrase in one of the first plurality of data fields and a second number of occurrences of the phrase or stemmed phrase in one of the second plurality of data fields; and calculating the mean of the first number and the second number. 3 Appeal2014-004588 Application 12/644,671 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Roitblat US 6,189,002 Bl Feb. 13,2001 Dudkiewicz et al. ("Dudkiewicz") US 2002/0092031 Al July 11, 2002 Adams et al. ("Adams") US 2002/0111936 Al Aug. 15, 2002 Lau et al. ("Lau") US 2005/0044574 Al Feb.24,2005 Popov et al. ("Popov") US 2005/0076365 Al Apr. 7, 2005 McPeake et al. ("McPeake") US 2005/0084152 Al Apr. 21, 2005 Hindle et al. ("Hindle") US 2006/0161951 Al July 20, 2006 Okamoto et al. ("Okamoto") US 2009/0248678 Al Oct. 1, 2009 Sofos et al. ("Sofos") US 2010/0251280 Al Sept. 30, 2010 Rejections on Appeal RI. Claims 1; 3-7; 12; 15; 22; 23; and 25 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sofas, Dudkiewicz, McPeake, and Roitblat. Final Act. 4. R2. Claims 2, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sofas, Dudkiewicz, McPeake, Roitblat, and Hindle. Final Act. 16. R3. Claims 8, 9, and 24 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sofas, Dudkiewicz, McPeake, Roitblat, Okamoto, and Popov. Final Act. 19. 4 Appeal2014-004588 Application 12/644,671 R4. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sofas, Dudkiewicz, McPeake, Roitblat, and Adams. Final Act. 21. R5. Claims 16---18, 20, and 21 stand rejected under 35 U.S.C. § 103 (a) as being obvious over the combination of Sofas, Dudkiewicz, McPeake, Roitblat, and Lau. Final Act. 23. R6. Claim 19 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sofas, Dudkiewicz, McPeake, Roitblat, Lau, Okamoto, and Popov. Final Act. 26. CLAIM GROUPING Based on Appellants' arguments (App. Br. 11-26), we decide the appeal of obviousness Rejection RI of claims 1, 3-7, 10, 12, 15, 22, 23, and 25 on the basis of representative claim 1; we decide the appeal of obviousness Rejection R2 of claims 2, 13, and 14 on the basis of representative claim 2; and we decide the appeal of obviousness Rejection R3 of claims 8, 9, and 24 on the basis of representative claim 8. Remaining claims 11 and 16---21 in rejections R4 through R6, not argued separately, stand or fall with the respective independent claim from which they depend. 3 3 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv). Here, Appellants merely repeat the arguments against the motivation to combine Sofos, Dudkiewicz, McPeake and Roitblat in the rejection of claims 1 and 12 from which claims 11 and 16---21 variously and ultimately depend. App. Br. 23-26. 5 Appeal2014-004588 Application 12/644,671 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to claims 1-25, and we incorporate herein and adopt as our own: ( 1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. 1. Rejection RI of Claims 1, 3-7, 10, 12, 15, 22, 23, and 25 Issue 1 Appellants argue (App. Br. 11-17) the Examiner's rejection of claims 1, 3-7, 10, 12, 15, 22, 23, and 25 under 35 U.S.C. § 103(a) as being obvious over the combination of Sofas, Dudkiewicz, McPeake, and Roitblat is in error. These contentions present us with the following issues (a) Did the Examiner err in finding the cited prior art combination teaches or suggests a method that includes a step of "selecting a program to recommend," wherein selecting the program to recommend includes, inter alia, "adjusting the correlation score based on a length of one of the first plurality of data fields or a length of one of the second plurality of data fields, wherein the adjusting the correlation score comprises applying a 6 Appeal2014-004588 Application 12/644,671 greater weight to matching words or phrases associated with shorter ones of the first and second plurality of data fields," as recited in claim 1? (b) Did the Examiner err in combining the cited prior art references in the manner suggested to reject claim 1 under§ 103 by relying upon impermissible hindsight? Analysis All Limitations Allegedly not Taught or Suggested Appellants generally contend the reference combination does not teach or suggest all the limitations of claim 1. App. Br. 12-14. In particular, Appellants allege McPeake does not teach or suggest "adjusting the correlation score based on a length of one of the first plurality of data fields or a length of one of the second plurality of data fields, as required by claim 1." App. Br. 12-13. Further with respect to McPeake's teachings, Appellants argue: McPeake does not disclose or suggest the use of metadata fields, much less adjusting a correlation score based on a length of one of the first plurality of data fields (included in the first metadata) or a length of one of the second plurality of data fields (included in the second metadata), as required by claim 1. In other words, McPeake merely discloses that if two matching words/names have a significantly different length, the score may be adjusted. The words being compared in McPeake are clearly not at all related to metadata, much less first metadata having a first plurality of fields or second metadata having a second plurality of fields, as would be required by claim 1. App. Br. 13. Appellants further allege neither McPeake nor Roitblat teach or suggest the use of metadata fields. Id. 7 Appeal2014-004588 Application 12/644,671 Concerning the Examiner's reliance upon the teachings and suggestions of Roitblat, Appellants also contend: Roitblat may disclose inversely weighting words based on the length of the document in which they reside. Roitblat, however, does not disclose or suggest adjusting the correlation score based on a length of one of the first plurality of data fields or a length of one of the second plurality of data fields, as required by claim 1. In contrast, Roitblat discloses inversely weighting matches based on the length of a document in which the words appear. Id. Appellants conclude by asserting: Id. Therefore, the combination of Sofos, Dudkiewicz, McPeake and Roitblat does not disclose or suggest adjusting the correlation score based on a length of one of the first plurality of data fields or a length of one of the second plurality of data fields, wherein the adjusting the correlation score comprises applying a greater weight to matching words or phrases associated with shorter ones of the first and second plurality of data fields, as recited in claim 1. In response, the Examiner finds, and we agree: (1) "Sofos teaches a system wherein multimedia content may be recommended to a user based on the user's real-time contextual information" (Ans. 2)4 ; (2) "Dudkiewicz teaches a system wherein programming events are recommended to a user based on how well the potential program matches a user profile. Each program includes metadata that ... includes program descriptive data," (Ans. 3)5; (3) "McPeake teaches a system wherein the similarity of words is 4 The Examiner cites at least Sofos paragraphs 65, 85, and 97 as teaching multimedia content metadata. Final Act. 4. 5 The Examiner cites at least Dudkiewicz paragraph 55 as teaching metadata that describes programming events. Final Act. 5. 8 Appeal2014-004588 Application 12/644,671 determined," and where "the calculated score is adjusted ... if the length of the first work and the second word are significantly different" (id.); and ( 4) Roitblat "teaches a system wherein the similarity of words is determined." Ans. 4. As for the purported lack of a teaching of "metadata" (e.g., describing program content, either currently being played or available) in either of McPeake or Roitblat, and in addition to footnotes 4 and 5, supra, we emphasize Sofos teaches the use of content metadata (see Figs. 6, 7; i-f 65 ("process data received from content providers 4 7 6 to identify metadata related to available assets, such as a description of the content")); and Dudkiewicz additionally teaches the use of "metadata describing upcoming programs to identify programs for viewing or recording" (i-f 13). We further note, under§ 103, "one cannot show non-obviousness by attacking references individually where ... the rejections are based on combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981). Therefore, we agree with the Examiner's findings cited above that the combination of Sofos, Dudkiewicz, McPeake, and Roitblat teaches or at least suggests all limitations of claim 1, and particularly the contested "adjusting" step, as recited in claim 1. Allegedly Deficient Motivation to Combine the References Appellants allege "it would not have been obvious to combine the four references without the benefit of the Appellants' disclosure." App. Br. 14. Appellants further argue: [A]lthough these four references may be tangentially related to some aspect of searching for information, these four references 9 Appeal2014-004588 Application 12/644,671 are essentially unrelated. That is, each reference is directed toward a different purpose and uses significantly different methodologies. As a result, it would not have been obvious to combine these references to somehow read on the feature of claim 1 without the benefit of the Appellants' disclosure due to, among other things, the disparate nature of the references. App. Br. 15. First, as explained in In re McLaughlin: Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant's disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Our review of the record establishes that the Examiner's case for obviousness is only based on knowledge that was within the level of ordinary skill at the time of Appellants' invention as evidenced by the cited prior art, and does not include knowledge gleaned only from the Appellants' disclosure. Second, the Examiner identifies the relevant portions of each of the references relied on throughout the Examiner's Answer. See Final Act. 4--7. To the extent the Examiner may rely upon the knowledge of one of ordinary skill in the art to combine the teachings of the references, this practice is consistent with current case law. For example, the Supreme Court explains: Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an 10 Appeal2014-004588 Application 12/644,671 apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness"). As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int'! Co, v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Moreover, the Supreme Court stated that an explicitly stated motivation to combine the references is seen as "helpful insight" (id.), but that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. Id. at 416. Appellants appear to argue the cited prior art references are non- analogous. "Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Klein, 64 7 F.3d 1343, 1348 (Fed. Cir. 2011). We find Appellants' above-quoted statement that "these four references may be tangentially related to some aspect of searching for information" appears to at least meet the second prong of the test for analogous art, identified above. 11 Appeal2014-004588 Application 12/644,671 In addition, Appellants have not demonstrated that the Examiner's proffered combination of references would have been "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor have Appellants provided objective evidence of secondary considerations, which our reviewing court guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 3-7; 10; 12; 15; 22; 23; and 25; which fall therewith. See Claim Grouping, supra. 2. Rejection of Claims R2 of Claims 2, 13, and 14 Issue 2 Appellants argue (App. Br. 17-19) the Examiner's rejection of claim 2 under 35 U.S.C. § 103(a) as being obvious over the combination of Sofas, Dudkiewicz, McPeake, Roitblat, and Hindle is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the method of claim 1 in which the selecting step further includes the step of "querying a program guide to determine that the 12 Appeal2014-004588 Application 12/644,671 recommended program is scheduled to broadcast in the future," as recited in claim 2? Analysis Appellants contend, "Hindle is directed to providing a unified list of broadcast and other events available to a user of a set top box" (App. Br. 17). However: These portions of Hindle are not at all related to selecting a recommended program, based on an availability, much less that the selecting includes querying a program guide to determine that the recommended program is scheduled to be broadcast in the future, as required by claim 2. In contrast, this portion of Hindle merely discloses combining a standard EPG [electronic program guide] with VOD [video on demand] and PVR [personal video recorder] content. App. Br. 18. In response, the Examiner finds, and we agree, "Hindle teaches querying a program guide to determine a program is scheduled to broadcast in the future, i.e. the program guide database is queried for available programs (Para. 61, 62)." Final Act. 16; see Ans. 8-9. 6 Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 2, nor do we find error in the Examiner's 6 "An electronic program guide (EPG) application may provide this functionality [i.e., "to access content available from the different sources" (i-f 61 )] by querying a broadcast listing database (may be on a server or stored in a STB as part of a standard EPG database)." Hindle i162. We find an EPG querying a standard EPG database teaches or at least suggests determining whether a program is scheduled to broadcast in the future. 13 Appeal2014-004588 Application 12/644,671 resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 2, and grouped claims 13 and 14 which fall therewith. See Claim Grouping, supra. 3. Rejection of Claims R3 of Claims 8, 9, and 24 Issue 3 Appellants argue (App. Br. 20-22) the Examiner's rejection of claim 8 under 35 U.S.C. § 103(a) as being obvious over the combination of Sofas, Dudkiewicz, McPeake, Roitblat, Okamoto, and Popov is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests the computer-implemented method of claim 7, in which determining the correlation includes, inter alia, "calculating the mean of the first number and the second number," as recited in claim 8? Analvsis Appellants contend: The mean in Popov, however, does not correspond to calculating a mean of a first number of occurrences of the phrase or stemmed phrase in one of the first plurality of data fields and a second number of occurrences of the phrase or stemmed phrase in one of the second plurality of data fields, as required by claim 8. In contrast, the mean in Popov is based on user profile data and content metadata. Ans. 21. In response, the Examiner finds, and we agree, Okamoto teaches or suggests determining keyword term frequency using the frequency of appearance in a document, which may be, for example, an electronic 14 Appeal2014-004588 Application 12/644,671 program guide. Ans. 10 (citing Okamoto if 32). The Examiner further finds "Popov teaches calculating the geometric or arithmetic mean of two numbers." Id. (citing Popov if 37). The Examiner sets forth a reasoned statement with a rationale underpinning for combining the references, i.e., to "bring[] about a system wherein the mean of the number of occurrences of a keyword located in both sets of data fields is calculated." Ans. 10-11. We agree with the Examiner's findings in this regard. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 8, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 8, and grouped claims 9 and 24 which fall therewith. See Claim Grouping, supra. 3. Rejections R4 through R6 of Claims 11 and 16-21 In view of the lack of any substantive or separate arguments directed to obviousness Rejections R4 through R6 of claims 11and16-21 under § 103 (see App. Br. 23-26), we sustain the Examiner's rejection of these claims. Arguments not made are waived. CONCLUSION The Examiner did not err with respect to obviousness Rejections RI through R6 of claims 1-25 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. 15 Appeal2014-004588 Application 12/644,671 DECISION We affirm the Examiner's decision rejecting claims 1-25. 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). AFFIRMED 16 Copy with citationCopy as parenthetical citation