Ex Parte Kritt et al

Patent Trial and Appeal Board

Feb 21, 2017

13750253 (P.T.A.B. Feb. 21, 2017)

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.
13/750,253 01/25/2013 Barry A. Kritt AUS920120024US2 1756
7590
Lieberman & Brandsdorfer
802 Still Creek Lane
Gaithersburg, MD 20878
EXAMINER
JONES, HEATHER RAE
ART UNIT PAPER NUMBER
2481
MAIL DATE DELIVERY MODE
02/21/2017 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 BARRY A. KRITT and SARBAJIT K. RAKSHIT
Appeal 2016-003289
Application 13/750,2531
Technology Center 2400
Before ST. JOHN COURTENAY III, SCOTT B. HOWARD, and
SCOTT E. BAIN, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—7, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 3.
Appeal 2016-003289
Application 13/750,253
THE INVENTION
The disclosed and claimed invention is directed to “method that
combines the tools of a social networking channel with broadcast data to
capture and record relevant content scheduled to be broadcast.” Spec. 12.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
gathering media content, including feedback data
associated with the content, wherein the feedback data is
received from one or more social networking accounts;
extracting one or more tags applied to the feedback data;
correlating the extracted tags with digital content;
identifying at least one scheduled broadcast with content
matching the correlated digital content;
measuring a time duration that the content matching the
correlated digital content is present in the identified scheduled
broadcast;
comparing the measured time duration to a defined value;
registering a recording device identifier with at least one
of the accounts;
matching the identified scheduled broadcast with at least
one device identifier based on the feedback data and the
comparison; and
automatically setting a recording device associated with
the matching identifier, the device to capture the at least one
identified scheduled broadcast in a data storage medium.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Folgner et al. US 2012/0189273 A1 July 26, 2012
(filed Jan. 26, 2012)
Bhatiaetal. US 2013/0014136 Al Jan. 10,2013
(filed Dec. 30, 2011)
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Application 13/750,253
Parekh US 8,498,946 B1 July 30, 2013
(filed Dec. 22, 2008
Gharaat et al. US 2013/0223816 A1 Aug. 29, 2013
(eff. filing date Dec. 4,
2009)2
REJECTION
Claims 1—7 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Parekh in view of Gharaat, Folgner, and Bhatia. Final
Act. 3—9; Adv. Act. 2-4.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments regarding claims 1—7, 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 (Final
Act. 3—9; Adv. Act. 2-4), and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellants’ arguments (Ans. 9—12). We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments for emphasis as follows.
2 Gharaat was filed on April 9, 2013. Gharaat [22], Gharaat is a continuation
of an application filed on December 4, 2009. Id. [63]. Because Appellants
have not challenged Gharaat’s status as prior art, for purposes of this appeal,
Appellants have waived any argument that Gharaat is not entitled to at least
an effective filing date of December 4, 2009. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Claims 1 and 4—7
Appellants argue the Examiner erred in finding Folgner teaches
“measuring a time duration that the content matching the correlated digital
content is present in the identified scheduled broadcast,” as recited in claim
1. App. Br. 13. More particularly, Appellants argue Folgner “teaches
measuring a time duration for receiving and scoring social media data,”
which is not the same as “measuring a time duration that content matching
correlated digital content is present in an identified scheduled broadcast.”
Id.
The Examiner finds Parekh teaches “identifying at least one scheduled
broadcast with content matching the correlated digital content” and Folgner
teaches measuring a time duration. Final Act. 3, 5—6. The Examiner further
finds it would have been obvious to combine the time measuring function of
Folgner “in the method disclosed by Parekh in view of Gharaat et al. in order
to determine how relevant the identified scheduled broadcast is.” Final Act.
6.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F.2d
413, 425 (CCPA 1981). Because Appellants’ arguments are directed to
Folgner individually and not the combined teachings of the prior art as
applied by the Examiner, we are not persuaded by Appellants’ argument that
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the Examiner erred. Instead, we agree with and adopt the Examiner’s
findings.
Appellants also argue that Bhatia fails to cure the deficiency discussed
above regarding Folgner. App. Br. 13—14. Specifically, Appellants contend
“Bhatia teaches measuring a time duration between changing channels in
order to determine if a user is channel surfing.” Id., at 13 (emphasis
omitted). Appellants argue that “[t]he time interval in Bhatia is measured
irrespective of the content being viewed” and that it “does not teach or
suggest the time measurement claimed by Appellants.” Id., at 13—14.
We are not persuaded by Appellants’ argument that the Examiner
erred. First, because we find no deficiency in Folgner, Appellants’ argument
is moot. Moreover, we are not persuaded that the Examiner erred. The
Examiner finds, and we agree, Bahtia teaches measuring a time duration of
content. Final Act. 6—7; Adv. Act. 3; see also Bahtia 171 (measuring a time
interval). We also agree with the Examiner that it would have been obvious
to combine Bahtia’s teaching of measuring the time of an event to the
specific content taught by Parekh. Final Act. 6—7; Adv. Act. 3. Appellants’
argument directed to Bhatia individually and not the combined teaching of
the references does not persuade us the Examiner erred. See Merck, 800
F.2d at 1097; Keller, 642 F.2d at 425.
Appellants also argue the Examiner erred in finding Bahtia teaches
“comparing the measured time duration to a defined value,” as recited in
claim 1. App. Br. 14. More specifically, Appellants argue “[t]he
measurement of the elapsed time between channel selections, as taught by
Bhatia, is wholly unrelated to content matching correlated digital content.”
Id. (emphasis omitted).
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The Examiner finds, and we agree, Bahtia teaches measuring an
elapsed time and determining whether that elapsed time is greater than a
predetermined threshold. Final Act. 6—7; see also Bahtia 172 (“In another
implementation, when the elapsed time is greater than the surfing threshold
. . . . For example, when the elapsed time is too long, greater than the
capping threshold . . . .”). Accordingly, we are not persuaded by Appellants’
argument that the Examiner erred and instead, agree with the Examiner that
the combined teaching of the prior art references teaches the comparing step.
See Merck, 800 F.2d at 1097; Keller, 642 F.2d at 425.
Appellants also contend “that the combination of Parekh and Gharaat
with Folgner is improper because the combination of the teachings of
Parekh, Gharaat, and Folgner according to known methods does not yield
predictable results.” App. Br. 15 (emphasis omitted).
We are not persuaded of Examiner error because Appellants do not
provide persuasive argument or evidence to support the assertion that the
combination of the teachings of the prior art would not yield predictable
results. It is well settled that mere attorney arguments and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(attorney argument is not evidence).
Appellants also argue “[tjthere is no teaching, suggestion, or
motivation to modify the sampling interval of Folgner to take into account
the presence of matching content in an identified scheduled broadcast, as
claimed by Appellants.” App. Br. 15—16 (emphasis omitted).
To the extent Appellants argue the prior art must provide a teaching,
suggestion or motivation to combine prior art references, Appellants rely on
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an incorrect statement of law. In KSR, the Supreme Court rejected the rigid
application of the teaching, suggestion, or motivation (TSM) test in favor of
a more expansive and flexible approach to the determination of obviousness.
See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Instead, “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.”
Id., at 418.
Moreover, the Examiner finds that a person of ordinary skill in the art
would have been motivated to combine the teaching of Folgner with those of
Parekh and Gharaat “in order to determine how relevant the identified
scheduled broadcast is.” Final Act. 6. Rejections based on obviousness
must be supported by “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Appellants have not identified any
error with the Examiner’s finding on a reason to combine the references and
we determine the Examiner provides a sufficiently articulated reasoning with
rational underpinnings.
Finally, in the Reply Brief, Appellants respond to the Examiner’s
suggestion to further define the terms “time duration” and “content
matching” to further distinguish the claims over the prior art. Reply Br. 3.
We do not consider Appellants’ reply as it is not timely.
Although the Examiner suggests further defining those terms in the
Answer (Ans. 10—11), the Examiner makes the same suggestion in the
Advisory Action (Adv. Act. 3). Because Appellants did not raise that
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argument in the opening brief and good cause has not been shown why it
should be considered, we will not consider this argument. 37 C.F.R.
§ 41.41(b)(2); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(Informative) (“[T]he reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.”).
Accordingly, we sustain the Examiner’s rejection of representative
claim 1, along with the rejection of grouped dependent claims 4—7, which
are not separately argued. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 2 and 3
Appellants argue the Examiner erred in finding Parekh teaches or
suggests the additional limitations of dependent claims 2 and 3. App.Br. 17—
18. More particularly, Appellants argue the Examiner erred because Parekh
does not teach dynamic voting in which the votes can be changed:
As discussed above, the voting engine of Parekh is configured to
determine broadcast content based on popularity of content.
Even if the voting engine of Parekh is configured to assess a
cumulative score related to feedback data, by determining
content popularity from votes, Parekh does not teach or suggest
that its voting engine further ranks the votes based on the
assessed cumulative score. The voting engine of Parekh merely
ranks the content based on the votes. There is no teaching or
suggestion in Parekh that its voting engine is configured to
redefine the votes in any way. For instance, there is no teaching
or suggestion in Parekh that the votes are subject to change, or
are otherwise dynamic, after being submitted by the users.
Accordingly, Parekh fails to teach or suggest ranking extracted
tags based on an assessed cumulative score for an identified and
matching scheduled broadcast, and a feedback control system for
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redefining the ranking of the extracted tags, as claimed by
Appellants.
Id.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations
omitted). There is a presumption that a claim term carries its ordinary and
customary meaning. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). An applicant may rebut this presumption, however, by acting as
his own lexicographer, providing a definition of the term in the specification
with “reasonable clarity, deliberateness, and precision.” In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition,
limitations are not to be read from the specification into the claims. See In
re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). “[Although the
specification often describes very specific embodiments of the invention, we
have repeatedly warned against confining the claims to those
embodiments. . . . [CJlaims may embrace ‘different subject matter than is
illustrated in the specific embodiments in the specification.’” Phillips v.
AWHCorp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (enbanc) (citations
omitted).
Claim 2 recites “ranking the extracted tags based on an assessed
cumulative score for each identified and matching scheduled broadcast,
wherein the assessed cumulative score includes positive and negative
feedback.” App. Br. 21 (Claims App’x). Based on the ordinary meaning of
the words of the claims, we conclude that claim 2 does not require dynamic
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updating and we decline to read any such limitation from the Specification
into the claim. Because Appellants’ argument is not commensurate with the
scope of the claims, it is unpersuasive. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Claim 3 recites “further comprising a feedback control system for
redefining ranking of the extracted tags.” App. Br. 21 (Claims App’x). The
Examiner finds Parekh teaches or suggest this limitation. Final Act. 7—8
(citing Parekh 5:27-43). More particularly, the Examiner finds Parekh
teaches or suggest “that users or groups can search for, nominate, vote for
and contribute their favorite content for broadcast” along with different
weighted voting “in which the votes of some users are weighted more
heavily than others.” Ans. 11 (citing Parekh 3:42-46, 5:33—38). The
Examiner further finds Parekh teaches or suggests “a selection algorithm
along with ‘power’ users, wherein the ‘power’ users will continuously be
changing based on the definition given to the term ‘power’ users and the
user’s participation, which reads on a feedback control system for redefining
the ranking of the extracted tags.” Ans. 12.
Our reviewing court guides that “the question under 35 USC § 103 is
not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.” Merck & Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804,
807-08 (Fed. Cir. 1989). Moreover, “[ejvery patent application and
reference relies to some extent upon knowledge of persons skilled in the art
to complement that [which is] disclosed. . . .” In re Bode, 550 F.2d 656, 660
(CCPA 1977) (quoting In re Wiggins, 488 F.2d 538, 543 (CCPA 1973)).
Those persons “must be presumed to know something” about the art “apart
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from what the references disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA
1962). Additionally, the skilled artisan is “[a] person of ordinary creativity,
not an automaton.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Furthermore, there is no requirement in an obviousness analysis for the prior
art to “contain a description of the subject matter of the appealed claim in
ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA 1978).
Parekh discloses various voting types of weighted voting that can be
used. Parekh 5:28—38. We find a person of ordinary skill in the art would
have understood that Parakh’s discussion of various ways of counting and
weighing votes, at a minimum, suggests redefining the voting scheme. Id..
Accordingly, we are not persuaded by Appellants’ argument that the
Examiner erred.
According, we sustain the Examiner’s rejection of claims 2 and 3.3
DECISION
We affirm the Examiner’s decision rejecting claims 1—7 under 35
U.S.C. § 103.
3 In the event of further prosecution, including any review for allowance, we
leave it to the Examiner to consider whether claim 3 is indefinite under 35
U.S.C. § 112, second paragraph for adding an apparatus limitation (feedback
control system) to a method claim. See IPXL Holdings, L.L. C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (holding invalid a
claim covering both a system and a method as a “hybrid” claim); see also In
re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318
(Fed. Cir. 2011). In each of these cases, the Federal Circuit held claims
indefinite for combining two classes of invention.
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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
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