Ex Parte Matz et al

Patent Trial and Appeal Board

Jun 22, 2015

10017111 (P.T.A.B. Jun. 22, 2015)

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.
10/017,111 12/14/2001 William R. Matz 01372 6465
38516 7590 06/22/2015
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
06/22/2015 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 WILLIAM R. MATZ and SCOTT R. SWIX
____________

Appeal 2012-003155
Application 10/017,1111
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and MICHAEL W.
KIM, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–4, 6–15, and 18–38. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Appellants identify AT&T Intellectual Property I LP as the real party in
interest. App. Br. 1.

Appeal 2012-003155
Application 10/017,111
2

Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method, comprising:
defining a match between a user classification and an
incentive;
receiving content information describing content
selections by a user;
receiving clickstream data describing commands entered
by the user while viewing the content selections;
receiving credit card purchase records associated with the
user;
merging, by a processor, the clickstream data with the
content information to generate data describing an event
timeline that describes the clickstream data and the content
information over time;
comparing the data describing the event timeline to the
credit card purchase records; and
classifying the user in the user classification when the
data describing the event timeline matches the credit card
purchase records; and
transmitting the incentive to the at least one user.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Williams US 2002/0049631 A1 Apr. 25, 2002
Knudson WO 99/45702 Sept. 10, 1999
The following rejection is before us for review.
The Appellant appeals the final rejection of claims 1–4, 6–15, and 18–
38 under 35 U.S.C. § 103(a) as being obvious over Williams in view of
Knudson.
Appeal 2012-003155
Application 10/017,111
3
FINDINGS OF FACT
1. The Specification explicitly defines an event as “[a]n event is an
action or a change in the state of a STB [(subscribers set top box)] that is
deemed important to building a knowledge base on subscribers or their
viewing patterns.” Specification ¶ 44B.
2. The Specification describes merging by a processor in the context
of:
The merge processor, which may be a head end
server or a workstation computer forming part of
or coupled to the media delivery network, receives
(1) the event data and (2) content data that
identifies programming content broadcast or
delivered throughout the region in which the
system is deployed. Timelines showing particular
events over time may then be generated for each
subscriber. Rather than just determining the
channel viewed and time of day, the event
timelines describe the programming or interactive
applications selected by or shown to a subscriber
over a selected period of time (e.g., 24 hours).
Specification ¶ 44A.
3. The Specification at the SUMMARY OF THE INVENTION
describes that the “. . . system collects user data about a user associated with
a user terminal, including user viewing selections.” Specification ¶ 15.
ANALYSIS
Each of independent claims 1, 15, and 38 recites, in one form or
another: merging, by a processor, the clickstream data with the content
information to generate data describing an event timeline that describes the
clickstream data and the content information over time.

The Examiner found concerning this limitation that:
Appeal 2012-003155
Application 10/017,111
4
With respect to receiving clickstream data
describing actions performed by the user while
viewing the content selections and to generate
merged data describing the clickstream data and
the content information over time by describing
the event timeline. Williams teaches on
paragraphs 0029 and 0035 the selection of the
content being Online using a website, in that
context it would have been obvious for the user to
click on the webpage while viewing content in
order to select particular items of interest and to
merge the data describing the clickstream data and
the content information because such a
modification would allow advertisers and the like
to have knowledge of the user's clickthroughs in
order to keep track of the users likes and interests
and would allow for better targeted advertisements
over a period time.
(Ans. 6).
Our review of Williams at paragraph 29 reveals an incentive program,
allowing “that customer to automatically receive benefit of the incentive at
their choice of retailer,” but says nothing about how the incentive is effected
to the viewer. In paragraph 35 Williams discloses using the
A digital set-top box may be used in television
systems that support bi-directional communication
to a central location with an IIS facility. The
digital set top box allows the viewer of a television
advertisement to select and send responses to the
central location, and ultimately to the IIS, in
response to instructions given on the television
advertisement.
However, here the set top is used by the viewer to select and send responses
to the central location in response to instructions given on the television
advertisement. But, nothing is disclosed here about merging, by a processor,
the clickstream data with the content information to generate data describing
Appeal 2012-003155
Application 10/017,111
5
an event timeline that describes the clickstream data and the content
information over time as described by Appellants (FF. 2).
In order to make up for this shortcoming in Williams, the Examiner
thus concludes: “it would have been obvious for the user to click on the
webpage while viewing content in order to select particular items of interest
and to merge the data describing the clickstream data and the content
information . . . .” (Ans. 6). We disagree with the Examiner here. We find
that the limitation set forth above is a core limitation in that it is what causes
the system to collect “user data about a user associated with a user terminal.”
(FF. 3). This feature is specified in the SUMMARY OF THE INVENTION
(id.) as key to the targeting of incentive method/system, and thus it is the
nub of the invention.
With respect to core factual findings in a
determination of patentability, however, the . . .
[Examiner] cannot simply reach conclusions based
on its own understanding or experience -- or on its
assessment of what would be basic knowledge or
common sense. Rather, the . . . [Examiner] must
point to some concrete evidence in the record in
support of these findings.
In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001).
As such, we cannot sustain the rejection under 35 U.S.C. § 103(a)
where a core feature of independent claims 1, 15, and 38 is supported only
by the Examiner’s statement of obviousness of that feature.
Since claims 2–4 and 6–14, 18-37 depend from one of claims 1 and
15, and since we cannot sustain the rejection of claims 1 and 15, the
rejection of these dependent claims likewise cannot be sustained.

Appeal 2012-003155
Application 10/017,111
6
CONCLUSIONS OF LAW
We conclude the Examiner erred in rejecting claims 1–4, 6–15, and
18–38 under 35 U.S.C. § 103(a).

DECISION
REVERSED
mls