Ex Parte Jung et al

Patent Trial and Appeal Board

Jun 28, 2016

12002289 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/002,289 12/13/2007
71484 7590 06/30/2016
IV - SUITER SW ANTZ PC LLO
14301 FNB PARKWAY, SUITE 220
OMAHA, NE 68154
FIRST NAMED INVENTOR
Edward K.Y. Jung
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.
1007-002-001-000000 5842
EXAMINER
BLOCH, MICHAEL RYAN
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
file@suiter.com
srs@suiter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD K.Y. JUNG, ERIC C. LEUTHARDT, ROYCE A.
LEVIEN, ROBERT W. LORD, MARK A. MALAMUD, JOHN D.
RINALDO JR., and LOWELL L. WOOD JR.
Appeal 2014-000562
Application 12/002,289
Technology Center 3700
Before ERIC B. GRIMES, ULRIKE W. JENKS, and ROBERT A.
POLLOCK, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL
This is a decision on appeal 1 under 35 U.S.C. § 134 from the
Examiner's rejection of claims 46-98. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
STATEMENT OF THE CASE
The Specification discloses a method and system for specifying an
attribute of an avatar (Spec. i-f 2). The method comprises presenting a
1 Appellants identify the Real Party in Interest as Searete, LLC which is
wholly owned by Intellectual Ventures Management LLC (App. Br. 4).
Appeal2014-000562
Application 12/002,289
characteristic to, for example, "a virtual world participant [or] a computer
game participant" (id. at i-f 301) and measuring a physiological activity of the
user such as "magnetic, electrical, hemodynamic, and/or metabolic activity
in the brain" (id. at i-f 49). Surrogate markers of mental state can be
monitored rather than brain activity (id. at i-f 208). Surrogate markers
include skin response, face pattern, or eye movement (id. at i-f 209). An
avatar attribute is specified based on the user's mental state (id. at i-f 2).
Claim 46 is representative of the claims on appeal and reads as
follows:
Issue
46. A system comprising:
circuitry for presenting at least one characteristic to at
least one member of a population cohort;
circuitry for measuring at least one physiologic activity
of the at least one member of the population cohort, the at least
one physiologic activity proximate to the at least one presented
characteristic, wherein the circuitry for measuring at least one
physiologic activity includes one or more sensors configured to
sense one or more characteristics associated with brain activity
of the at least one member of a population;
circuitry for associating the at least one physiological
activity with at least one mental state; and
circuitry for specifying at least one avatar attribute based
on the at least one mental state.
The Examiner has rejected claims 46-63, 66-75, 77, 78, 80-82, and
87-98 under 35 U.S.C. § 103(a) as obvious in view ofRussek,2 Robinson, 3
2 Russek, US 2004/0199923 Al, published Oct. 7, 2004.
3 Robinson et al., US 2002/0113820 Al, published Aug. 22, 2002.
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Application 12/002,289
and Zaltman4 (Ans. 3, Final Rejection5 (Fin. Rej.) 8--42). 6 The Examiner
has also rejected claims 64, 65, 76, 79, and 83-86 under 35 U.S.C. § 103(a)
as obvious in view of Russek, Robinson, and Zaltman, and further in view of
Patton (claims 64, 65, and 86, Fin. Rej. 42--44), Cabeza (claims 76 and 79,
Fin. Rej. 44--46), Kenning (claim 83, Fin. Rej. 47), Martin (claim 84, Fin.
Rej. 48--49), or Wang (claim 85, Fin. Rej. 49-50). 7 The same issues are
dispositive for all of the rejections, and we will consider them together.
The issue presented is: Does the evidence of record support the
Examiner's conclusion that it would have been obvious to one of skill in the
art to modify the system of Russek with the avatars of Robinson and the
sensors for monitoring brain activity of Zaltman and thereby arrive at the
system of claim 46?
Findings of Fact
1. Russek discloses a system which allows for "customizing and
personalizing content based on a combination of the user's demographics,
4 Zaltman et al., US 6,099,319, issued Aug. 8, 2000.
5 Office Action mailed Nov. 21, 2012.
6 In the Final Rejection, the Examiner's statement of the rejection does not
include claim 46 but the explanation of the rejection addresses the
obviousness of claim 46 (Fin. Rej. 8). The omission of claim 46 from the
statement of the rejection therefore appears to be inadvertent.
7 The Examiner provisionally rejected claims 46, 91, and 95 for
obviousness-type double patenting over claims in application 12/006,239
(Fin. Rej. 3; see App. Br. 4). Application 12/006,239 has since been
abandoned (Notice of Abandonment mailed May 21, 2015). We therefore
dismiss the appeal of the provisional obviousness-type double patenting
rejection as moot.
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Application 12/002,289
psychodemographics, cognitive states, emotional states," etc. (Russek i-f 12).
"[A] user selects material for presentation and is presented with the dynamic
digital media narrative ... presented in a customized format that gives the
user a personalized experience" (id.).
2. Russek discloses that "the user accesses a website containing
sponsored material. ... Information regarding the demographics,
psychodemographics, cognitive states, emotional states, [etc.] ... of the user
is retrieved from storage" (id. at i-f 14). A new user's profile can be created
using answers to a series of questions or from the user's interactions with a
media narrative (id.).
3. Russek discloses an embodiment in which a user requests that
certain material be displayed, and that material presented along with
customized graphics (id. at i-f 15). "In another embodiment, the user can
interact with the graphics and video. By making certain choices, a profile of
the user can be determined and updated and the content ... modified
appropriately, thus giving the user an enhanced narrative" (id.).
4. Russek discloses that a "personalized user story 306 may
contain images, audio, text and/or other content 304 that is expected to elicit
certain emotions in the mind of the user" (id. at i-f 71 ). "The personalized
(internal) user story 306 ... may depend, at least in part, on the emotional
state, demographics, psycho-demographics, cognitive states [etc.] and/or
other factors particular to the user" (id. at i-f 73). "[T]he digital media assets
are customized to provide the user with a new personalized (internal) user
story 312 ... composed of new images, audio, text and/or other content that,
based on a user profile, are expected to trigger affinity element emotions 310
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that are newer and/ or stronger than emotions 304 previously experienced by
the user" (id.).
5. Robinson discloses a system that provides "network-enabled
three-dimensional computing environments ... enabl[ing] users to interact
fully, intuitively, and far more easily 'in' a spatial 3D environment"
(Robinson i-f 7).
6. Robinson discloses that the system can "add a whole new level
to the 'focused marketing' approach of advertisers" (id. at i-f 98). "The 3D
user interface ... [can] use specially designed avatars as a vehicle for
advertisement delivery" (id.). "As a user navigates through the virtual 3D
landscape, certain use patterns ... trigger[] a targeted message to be
delivered through the use of a 3D character (avatar)" (id.). "The avatar can
engage the user in chat to deliver the advertiser's message" (id.). "This
approach enables one to capitalize on the use of recognizable characters (i.e.
corporate mascots) to 1) enrich the user's experience and 2) reinforce the
message of the advertiser through further branding" (id.).
7. Robinson discloses that, in one example,
[a] sports fan exits a "room" where he/she has previously been
engaged in a multi user chat with other sports fans on the topic
of their favorite basketball team, the Golden State Warriors.
Through the 3 D interface ... the users have been swapping their
favorite images of team members. . . . The database of the
present invention recognizes this exchange has taken place and
... sends out a 3D representation (e.g. avatar) of the Warrior's
mascot to greet the user as he/ she continues on their virtual
"walk".
(Id. at i-f 100.)
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8. Zaltman discloses "[ n ]euroimaging as a means for validating
whether a stimulus such as advertisement, communication, or product
evokes a certain mental response such as emotion, preference, or memory"
(Zaltman, Abstract). "The results of neuroimaging are [] used to predict
future behavior of the subject and those similarly situated with respect to
purchase or consumption of products" (id.).
9. Zaltman discloses that "[ s ]ubjects are monitored 304 in a
neuroimaging device while they are exposed to a stimulus communication.
Neuroimaging devices include but are not limited to PET, ±MRI," etc. (id. at
14:24--27). "These devices all provide measurements of how active various
brain areas become while the subject is exposed to a stimulus. The stimulus
can be visual or auditory" (id. at 14:27-30). "Examples of [a] stimulus ...
include: copy from an advertisement" (id. at 14:30-34).
10. Zaltman discloses that the "neuroimaging data are analyzed
306. Activation in brain areas known to signal memory, preference and
affective response is noted 308" (id. at 14:50-52). "The presence of
activation in particular brain regions, and in sets of regions, is evidence that
the person had a particular cognitive and/or emotional response to the
stimulus" (id. at 14:57---60).
Principles of Law
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
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Application 12/002,289
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132,
alterations by the Jung court).
"[A]H that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of§ 132." Id. at 1363.
Analysis
The Examiner finds that Russek discloses systems comprising
"circuitry for presenting at least one characteristic to at least one member of
a population cohort ... [where] digital video and audio is sent to a user"
(Fin. Rej. 8). "[A] user may interact with the media narrative and the
interactions may be used to create a user profile" (id.). The Examiner finds
that Russek discloses circuitry for measuring at least one physiological
activity of the user wherein "the physiological activity of the person is the
measured responses that are input into the system" (id.). The Examiner
finds that Russek's system allows for "customizing and personalizing
content based on a combination of the user's demographics,
psychodemographics, cognitive states, emotional states" (id. at 8-9).
The Examiner finds that Robinson discloses a system "with a 3D user
interface that ... use[ s] specially designed avatars as a vehicle for
advertisement delivery" (id. at 10). "[T]he avatar can engage the user in
chat to deliver the advertiser's message" (id. at 11 ). The Examiner
concludes that, in view of Robinson, it would have been obvious to modify
Russek' s system "to include a media related avatar to be displayed to a user
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Application 12/002,289
in order to perform personaliz[ ed] content marketing analysis based on ...
the user's demographics, psychodemographics," etc. (id.).
The Examiner finds that Zaltman discloses "neuroimaging as a
marketing tool ... includ[ing] measurements from PET, ±MRI, MEG, and
SPECT devices to judge stimuli presented to a user" (id.). "[T]he stimulus
can be visual or auditory," such as copy from an advertisement (id.). "The
subject may also be asked simply to view or hear the stimulus ... [and]
neuroimaging data are analyzed 306; activation in brain areas known to
signal memory, preference and affective response is noted 308" (id. at 12).
"[A ]ctivation in particular brain regions ... is evidence that the person had a
particular cognitive and/or emotional response to the stimulus" (id.). The
Examiner concludes that it would have been obvious to modify the system
suggested by Russek and Robinson "with the teachings of Zaltman to
include measurements of brain signals related to stimuli presented to users in
order to perform marketing analysis" (id.).
We agree with the Examiner's fact-finding and reasoning, and his
conclusion that the system of claim 46 would have been obvious based on
the cited references.
Appellants argue that the Examiner has not cited
any objective evidence (e.g. a published document) or indicated
that [he] is taking properly supported official notice of such
alleged facts in support of its statement that "The usage of avatars
is an obvious design variation for displaying user characteristics,
likes/dislikes, or other qualitative or quantitative measurable
features that are stored in a user database and used in product
marketing."
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Application 12/002,289
(App. Br. 16-17.) Appellants argue that, to the extent the Examiner is citing
Robinson as disclosing specially designed avatars, the Examiner "has not
specified (e.g. by direct quotation) where Robinson expressly teaches 'usage
of avatars ... for displaying user characteristics, likes/dislikes."' (id. at 17-
18).
This argument is unpersuasive. The Examiner cited i-fi-1 98 and 99 of
Robinson as teaching specially designed avatars "for presenting
advertisement information" (Fin. Rej. 10-11, Ans. 4). Those paragraphs
expressly describe specifying an avatar attribute (e.g., clothing style) based
on a characteristic of a user (e.g., preference for a specific basketball team).
Appellants have presented no reasoned basis for concluding that Robinson
does not disclose the limitation for which the Examiner cited it.
Appellants further argue that the Examiner has not provided
any objectively verifiable evidence demonstrating that one of
skill in the art \vould ... be motivated to "include a media related
avatar to be displayed to a user in order to perform
personalization content marketing analysis based on a
combination of the user's demographics, psychodemographics,
cognitive states, emotional states, social placement, and group
interaction dynamics" within the context of the "association of
attributes with digital media assets" of Russek.
(App. Br. 21.) Appellants argue that the Examiner has not provided an
"'objective reason' to 'combine' the teachings of Russek and Robinson"
(id.) and therefore the rejection is based on hindsight (id. at 22).
This argument is also unpersuasive. Both Russek and Robinson are
directed to targeted advertising wherein digital media content and
advertisements are customized to appeal to particular users (FF 1, FF 6).
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Robinson discloses that specially designed avatars can be used for targeted
advertising (FF 6, FF 7). Thus, we agree with Examiner that it would have
been obvious to use Robinson's avatars in Russek's system for presenting
customized advertising. "If a person of ordinary skill can implement a
predictable variation [of a known work], § 103 likely bars its patentability."
KS~ Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). An obviousness
analysis "can take account of the inferences and creative steps that a person
of ordinary skill in the art would employ." Id. at 418.
Appellants argue that combining Robinson's avatars with Russek's
targeted advertising system would change the principle of operation of
Russek because, in the combined system, "Russek would no longer provide
for 'associating attributes with digital media assets ... that could be replaced
with other attributes."' (App. Br. 25).
Appellants' argmnent is not persuasive. Russek discloses tailoring the
attributes of assets, such as images, so that, for example, they are more
appealing to particular users (Russek, Abstract). Robinson discloses
changing the characteristics of avatars, such as clothing style, so that they
are more appealing to particular users (FF 7). In view of these similarities,
we agree with the Examiner (Ans. 9) that combining Robinson's avatars
with Russek's system would not change Russek's principle of operation.
Appellants argue that combining Zaltman with the other references is
based on "mere conclusory statements" (Appeal Br. 26). Appellants argue
that the Examiner has not provided any "any objectively verifiable evidence
demonstrating that one of skill in the art would, in fact, be motivated to
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'connect brain sensing devices' to the systems of Russek and/or Robinson"
(id.), and therefore the rejection is therefore based on hindsight (id. at 27).
Appellants' argument is not persuasive. Russek and Robinson
disclose systems that provide online computer users with customized
advertising (FF 3, FF 6). Zaltman discloses that neuroimaging that measures
brain activity can also be used to determine a subject's responses to
presented material such as advertising (FFs 8-10). We agree with the
Examiner (Ans. 12-15) that it would have been obvious to one of skill in the
art to employ the computer systems of Russek and Robinson in the market
analysis context of Zaltman because Russek and Robinson make clear that
computing environments are effective in tailoring advertisements to
particular subjects and combining such systems with neuroimaging, as
disclosed in Zaltman, would provide for a more detailed assessment of a
subject's response to particular types of advertising.
Appellants argue that incorporating Zaltman' s neuroimaging in
Russek's system would change the principle of operation of Russek (App.
Br. 29-31) and would render Russek unsatisfactory for its intended purpose
(id. at 31 ).
We agree with the Examiner, however, that the combination would
not change Russek's principle of operation, which is to present customized
advertising based on characteristics of a specific user (Ans. 15). The
Examiner finds, and we agree, that both Zaltman and Russek disclose
determining a user's response to a stimulus and therefore "the combination
would not change the operation of obtaining user information based on a
stimulus" (id. at 16).
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Thus, we affirm the rejection of claim 46 as being obvious in view of
Russek, Robinson, and Zaltman. Claims 47---63, 66-75, 77-78, 80-82, and
87-98 have not been argued separately and therefore fall with claim 46. See
37 C.F.R. § 41.37(c)(l)(iv).
The Examiner has also rejected claims 64, 65, 76, 79, and 83-86
under 35 U.S.C. § 103(a) as obvious in view of Russek, Robinson, and
Zaltman, and further in view of one of Patton, Cabeza, Kenning, Martin, or
Wang. Appellants have waived arguments based on Patton, Cabeza,
Kenning, Martin, or Wang (see App. Br. 32). We affirm the rejections of
claims 64, 65, 76, 79, and 83-86 for the reasons discussed above and as set
forth by the Examiner (Fin. Rej. 42--49).
Conclusion of Law
The evidence of record supports the Examiner's conclusion that it
would have been obvious to one of skill in the art to modify the system of
Russek with the avatars of Robinson and the sensors for monitoring brain
activity of Zaltman and thereby arrive at the system of claim 46.
SUMMARY
We affirm the rejection of claims 46-98 under 35 U.S.C. § 103(a).
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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