Ex Parte Moritz et al

Patent Trial and Appeal Board

Mar 8, 2017

13211520 (P.T.A.B. Mar. 8, 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.
13/211,520 08/17/2011 Simon MORITZ 3602-300 4378
132398 7590 03/10/
Clairvolex Inc.
4010 MOORPARK AVE, Ste, 228
San Jose, CA 95117
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
03/10/2017 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):
elofdocket @ clairvolex .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON MORITZ, MATTIAS LIDSTROM,
and RICKARD COSTER
Appeal 2014-007862
Application 13/211,520
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—20, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
Appeal 2014-007862
Application 13/211,520
THE INVENTION
The Appellants’ claimed invention is directed to a recommender
system (Spec., para 1). Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method for recommending a set of one or more items
to a user of a first communication device, the method comprising:
obtaining, by a recommender system, a complete location
profile associated with the first communication device, the complete
location profile comprising a set of item identifiers, wherein (i) each
item identifier included in the set of item identifiers identifies an item
that had been consumed using a communication device associated
with the complete location profile, (ii) the first communication device
and a second communication device that is separate and distinct from
the first communication device are both associated with the complete
location profile, and (iii) the set of item identifiers includes at least
one item identifier that identifies an item that has not been consumed
using the first communication device;
obtaining, by the recommender system, a first device profile
associated with the first communication device, the first device profile
comprising static information pertaining to the first communication
device and/or dynamic information identifying a set of items
consumed using the first communication device;
determining the set of one or more items to recommend to the
user; and
transmitting, from the recommender system to the first
communication device, information identifying the determined set of
one or more items,
wherein the step of determining the set of one or more items to
recommend to the user comprises using (a) information from the
complete location profile and (b) information from the first profile to
select one or more items to include in the set of one or more items to
recommend to the user.
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Appeal 2014-007862
Application 13/211,520
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1—18, 20, are rejected under 35 U.S.C. § 102(e) as
anticipated by Maharajh et al. (US 2011/0225417 Al, pub. Sept. 15, 2011,
hereinafter “Maharajh”).
2. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Maharajh.
3. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Maharajh and Schultz et al. (US 2012/0023556 Al, pub. Jan. 26, 2012,
hereinafter “Schultz”).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1
ANALYSIS
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation “(iii)” (App. Br. 8,
Reply Br. 2, 3). Here the claim recites in part:
obtaining, by a recommender system, a complete location profile
associated with the first communication device, the complete location
profile comprising a set of identifiers, wherein....
(iii) the set of item identifiers includes at least one item identifier that
identifies an item that has not been consumed using the first
communication device.
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2014-007862
Application 13/211,520
(Claim 1).
In contrast, the Examiner has determined that the cited claim
limitation (iii) is found in Maharajh at paras. 36, 37, 41, 42, 45, 49, 58, 74,
80, 137, 302, 335, 462, 464, 489, 498, 499, 633, 671, 674, 678, 745, 772,
and Figures 23, 38, 45 (Meta ID), and 46 (Final Rej. 7, Ans.26—30).
We agree with the Appellants. Claim limitation (iii) requires that the
location profile comprises a set of identifiers wherein
(iii) the set of item identifiers includes at least one item identifier that
identifies an item that has not been consumed using the first
communication device.
(Claim 1, emphasis added). Here, the argued claim limitation (iii) requires
that the identifier identifies an item that has not been consumed using the
first communication device. Here, the above citations to Maharajh fail to
disclose this. For example, Maharajh at para. 498 discloses that the agent
profile may be combined with a unique identifier for a specific device to
maintain consumption profiles but this profile would then contain data on
what has been consumed by that device, rather than specifically what has not
been consumed using the first communication device, as required. The other
above citations to Maharajh fail to disclose this argued claim limitation as
well. For these reasons the rejection of claim 1 and its dependent claims is
not sustained. Independent claims 7 and 14 contain a similar limitation and
the rejection of these claims and their dependent claims is not sustained for
the same reasons given above.
CONCFUSIONS OF FAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.
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Appeal 2014-007862
Application 13/211,520
DECISION
The Examiner’s rejection of claims 1—20 is reversed.
REVERSED
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