Ex Parte Neuhauser et al

Patent Trial and Appeal Board

Dec 5, 2012

11643160 (P.T.A.B. Dec. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALAN R. NEUHAUSER, JACK C. CRYSTAL, and
JACK K. ZHANG
____________________

Appeal 2011-006051
Application 11/643,160
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/643,160

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

BACKGROUND
Appellants’ invention relates to a method and system for initiating
participation of a portable user appliance (“PUA”) user in a research
operation using one of a plurality of PUAs providing communication
services pursuant to a single agreement with a communication service
provider (Spec., paras. [0045] – [0047]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
l. A computer-implemented method of initiating
participation in a computer system of a PUA user in a research
operation using a respective one of a plurality of PUA’s
providing communication services pursuant to a single
agreement with a communication service provider, comprising:
associating data identifying the PUA user in the
computer system with data identifying a group of persons
receiving communication services pursuant to the single
agreement;
associating demographic data of the PUA user in the
computer system with the data identifying the PUA user; and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 26, 2010) and Reply Brief (“Reply Br.,” filed
January 10, 2011) and the Examiner’s Answer (“Ans.,” mailed
November 10, 2010).
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gathering media exposure data for the PUA user pursuant
to the research operation, the media exposure data comprising
information regarding exposure to media content in a plurality
of different mediums.

THE REJECTION
The following rejection is before us for review:
Claims 1-30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nicolas (US 2004/0252816, pub. Dec. 16, 2004) in view
of Moles (US 6,615,038 B1, iss. Sep. 2, 2003) and further in view of Gerace
(US 5,991,735, iss. Nov. 23, 1999).

ANALYSIS
Independent claim 1 and dependent claims 2-7
We are persuaded of error on the part of the Examiner by Appellants’
argument that none of Nicolas, Moles, and Gerace discloses or suggests
“gathering media exposure data for the PUA user pursuant to the research
operation, the media exposure data comprising information regarding
exposure to media content in a plurality of different mediums,” as recited in
claim 1 (App. Br. 28-30 and Reply Br. 3-5). The Examiner maintains that
Gerace discloses this feature at column 13, lines 1-10 and 43-48 (Ans. 5-6).
However, we find nothing in that portion of Gerace that discloses or
suggests “gathering media exposure data . . . regarding exposure to media
content in a plurality of different mediums.”
Gerace discloses a computer network-based system that tracks and
records a user’s activity with respect to “agate” information while the user is
logged in to the network. The system provides a menu of “agate
information,” e.g., weather, sports, stock market data, and records the user’s
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menu selections, including the content viewed and the length of time
viewed, to create a behavioral or psychographic user profile of the user.
This profile is then used to provide future customized content, e.g., targeted
advertisements, to the user (Gerace, col. 4, ll. 29-64).
The law is clear that claims should be given their broadest reasonable
interpretation during examination. However, claims must be interpreted as
one of ordinary skill in the art would in light of the specification. See In re
Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (“Although the PTO must
give claims their broadest reasonable interpretation, this interpretation must
be consistent with the one that those skilled in the art would reach.”); In re
Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (“It is axiomatic that, in
proceedings before the PTO, claims in an application are to be given their
broadest reasonable interpretation consistent with the specification and that
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.”).
The Examiner emphasizes here that Gerace discloses that the
advertisements displayed to users may include multimedia data and, thus,
ostensibly equates “media content in a plurality of different mediums” to
media content having a plurality of different media components, e.g., a
combination of audio and graphics (Ans. 6 and 11). In our view, a person of
ordinary skill in the art would reasonably understand from the Specification
that “media content in a plurality of different mediums” refers to media that
is delivered via a plurality of different mediums, e.g., print media, broadcast
media, Internet, etc., and not multimedia data (see, e.g., Spec., paras.
[00049], [00063] – [00065], and [00071] – [00073]).
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Gerace only discloses collecting information regarding a user’s
exposure to media content on the Internet. As such, Gerace collects
information regarding the user’s exposure to media content in one medium,
not “exposure to media content in a plurality of different mediums,” as
recited in claim 1.
It is particularly telling that in response to Appellants’ arguments, the
Examiner responds, “[t]he combination of the references suggests that
surveys include multimedia information of which media exposure data can
be gathered” ( Ans. 10) and “the use of audio and video content in an
advertisement as taught by Gerace, meets the claim limitation of
‘multimedia’” (Ans. 11). Thus Examiner found the capacity to capture data
regarding multimedia survey data but not the predictability of doing so, and
also found that it was “multimedia” that was recited in the claims whereas
that term is not used. Instead the claims recite “a plurality of different
mediums.”
In view of the foregoing, we will not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). We also will not sustain
the Examiner’s rejection of dependent claims 2-7.

Independent claims 8, 14, and 23 and dependent claims 9-13, 15-22, and 24-
30

Independent claims 8, 14, and 23 include language substantially
similar to claim 1. Therefore, we will not sustain the Examiner’s rejection
of claims 8, 14, and 23 under 35 U.S.C. § 103(a) for the same reasons as set
forth above with respect to claim 1. We also will not sustain the Examiner’s
rejection of dependent claims 9-13, 15-22, and 24-30.
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DECISION
The Examiner’s rejection of claims 1-30 under 35 U.S.C. § 103(a) is
reversed.

REVERSED

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