Ex Parte O et al

Patent Trial and Appeal Board

Jan 30, 2017

13444465 (P.T.A.B. Jan. 30, 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.
13/444,465 04/11/2012 BRIAN M. O'CONNELL AUS920060146US4 2306
80878 7590 02/01/2017
Brown & Michaels (END)
c/o Brown & Michaels, PC
118 North Tioga Street
Suite 400
Ithaca, NY 14850
EXAMINER
HUANG, CHEN-LIANG
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
docket@bpmlegal.com
lwood@bpmlegal.com
twood@bpmlegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN M. O’CONNELL and KEITH R. WALKER
Appeal 2016-004234
Application 13/444,4651
Technology Center 2400
Before KRISTEN L. DROESCH, JOHN A. EVANS, and
SCOTT B. HOWARD, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 1—22. Br. 5.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 The Appeal Brief identifies International Business Machines Corporation
as the real party in interest. Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed June 25, 2015, “App. Br.”), the Examiner’s
Answer (mailed October 2, 2015, “Ans.”), the Final Action (mailed
December 24, 2014, “Final Act.”), and the Specification (filed April 11,
2012, “Spec.”) for their respective details.
Appeal 2016-004234
Application 13/444,465
STATEMENT OF THE CASE
The claims relate to a set-top box device that can detect a user
interaction associated with a remote control proximate to the set-top box
device. See Abstract.
INVENTION
Claims 1,11, and 20 are independent. An understanding of the
invention can be derived from a reading of exemplary Claim 1, which is
reproduced below
1. A method for verifying a user identity, the method comprising
the steps of: detecting, by a set-top box device, presses of
buttons directed to a television screen by a user via a remote
control associated with a television;
storing data indicative of the presses of buttons within a storage
device as user interaction data;
conveying the user interaction data from the storage device to a
remotely located server;
receiving a response from the remotely located server indicating
that a behavior pattern in the interaction data is substantially
equivalent to a behavior pattern in previously stored interaction
data of a behavior profile of the user for presses of the button;
and
verifying an identity of the user during an e-commerce session
from data of the response.
References and Rejections
Darbee, et al., US 4,959,810 Sept. 25, 1990
Cerrato US 2002/0178257 Al Nov. 28, 2002
Alie US 2003/0055738 Al Mar. 20, 2003
Barbara, et al., US 2003/0105710 Al June 5, 2003
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Application 13/444,465
Jacobson
Singh, et al.,
Aidasani, et al.,
US 2005/0008148 Al
US 7,873,595 B2
US 2013/0030936 Al
Jan. 13, 2005
Jan. 18,2011
Jan. 31,2013
Filed July 28, 2011
The claims stand rejected as follows:
1. Claims 1—7, 10, and 20-22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cerrato, Jacobson, and Darbee. Final Act. 8—
16.
2. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cerrato, Jacobson, Darbee, and Singh. Final Act.
15.
3. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cerrato, Jacobson, Darbee, and Aidasani. Final
Act. 17.
4. Claims 11—19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cerrato, Jacobson, Darbee, and Alie. Final Act.
17-23.
ANALYSIS
We have reviewed the rejections of Claims 1—22 in light of
Appellants’ arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Brief. Any
other arguments which Appellants could have made but chose not to make in
the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We are
not persuaded that Appellants identified reversible error. Upon
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Application 13/444,465
consideration of the arguments presented in the Appeal Brief, we agree with
the Examiner that all the pending claims are unpatentable. We adopt as our
own the findings and reasons set forth in the rejection from which this
appeal is taken and in the Examiner’s Answer, to the extent consistent with
our analysis below. We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis.
Appellants advance various contentions and allegations, including:
claimed limitations are not taught in the prior art (Br. 16—22), the prima
facie case improperly combines non-analogous art (Br. 10—12), the prima
facie case lacks motivation to combine the prior art (Br. 12—16), and the
rejection improperly was made final (Br. 16). We comment on each of
Appellants’ contentions, but not necessarily in the same ordering as
Appellants.
Claims 1-7,10, and 20-22: Obviousness over
Cerrato, Jacobson, and Darbee.
Claim 1: Obviousness over Cerrato, Jacobson, and Darbee.
Recitations not present in claims.
Appellants contend the Examiner finds the Cerrato/Jacobson
combination “do[es] not explicitly teach ‘the use of a universal remote
control that can be used to control both a TV and a STB’.” Br. 18 (quoting
Final Act. 10). Appellants argue the rejection of independent Claims 1 and
20 is improper because the accused recitation does not appear in either
claim. Id.
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Application 13/444,465
The Examiner acknowledges the response to Appellants’ prior
arguments may have been confusing. Ans. 20. The Examiner finds the
Darbee reference [to a universal remote] was included to address
Appellants’ arguments that a TV could not receive signals from a set-top
remote, nor could a set-top receive signals from a TV remote. Id.
Appellants chose not to file a Reply Brief. Because Appellants do not
address the Examiner’s findings regarding the teachings of Darbee, we are
not persuaded of error.
Storing data indicative ofpresses of buttons
Appellants contend the Examiner relies on Cerrato to teach the
claimed “storing data indicative of the presses of buttons within a storage
device as user interaction data.” Br. 18. Appellants argue the claims recite
the stored user interaction data is conveyed from the storage device to a
remotely located server, but in contrast, Cerrato teaches the raw clickstream
is not stored locally, but is sent directly to a remote server. Id.
The Examiner finds Cerrato teaches local storage. Ans. 20. We
agree. Cerrato teaches: “[t]he database of input pattern profiles and
software for detecting and matching current input patterns can reside at the
client terminal. . .” Cerrato, 132. We are not persuaded of error.
Data indicative of the presses of buttons.
Appellants contend the Examiner finds Jacobson (H 71, 79) teaches
various claimed limitations relating to the storage and transmission of data
indicative of the presses of buttons. See Br. 18. Appellants argue Jacobson
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teaches “mouse click feature vectors,” but that such “vectors” are not the
same as a press of a button. Id.
The Examiner finds Jacobson teaches a similar system wherein a
customer is authenticated customer by transmitting feature vectors
corresponding to the user input (i.e., presses of the button) to a remote server
for comparison against a master database. Ans. 21—22. Because Cerrato
uses a set-top-box remote control, consistent with the claimed limitation, the
Examiner does not replace Cerrato’s remote control with Jacobson’s mouse.
Id. at 22. Appellants do not reply. Because Appellants do not address the
Examiner’s findings and reasoning, we are not persuaded of error.
Claim 5: Obviousness over Cerrato, Jacobson, and Darbee.
Appellants contend the cited combination fails to teach the further
limitation “wherein the presses further comprise at least one input for a fast
forward action, a rewind action, and a high definition option.” Br. 19.
Appellants argue the Examiner improperly took Official Notice. Id.
The Examiner finds Cerrato teaches an infrared remote for a TV.
Ans. 24. The Examiner finds at the time of invention, such devices
commonly included the claimed control functions. Id. Appellants do not
reply. Because Appellants do not address the Examiner’s findings and
reasoning, we are not persuaded of error.
Claim 6: Obviousness over Cerrato, Jacobson, and Darbee.
Appellants contend Cerrato fails to teach local storage of user
interaction data in a set-top box, as claimed. Br. 20. The Examiner finds
Cerrato teaches a system comprising a content server and a client set-top
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box, but no other servers. Ans. 25. The Examiner finds, in view of
Cerrato’s disclosure, that the set-top box must be the locus where the
clickstreams are stored and compared. Id. Appellants do not reply. As
discussed above, Cerrato discloses the “database of input pattern profiles and
software for detecting and matching current input patterns can reside at the
client terminal [i.e., the set-top box], Cerrato, 132. We are not persuaded
of error.
Claim 7: Obviousness over Cerrato, Jacobson, and Darbee.
Appellants contend the cited art fails to teach JAVASCRIPT is stored
and used at the set-top box, as claimed. Br. 20. The Examiner finds Cerrato
teaches the data comparison [necessarily requiring software] happens at the
set-top box. The Examiner does not specifically refer to JAVASCRIPT, but
Jacobson discloses JavaScript. Jacobson, 172. Appellants do not reply.
We are not persuaded of error.
Claim 11: Obviousness over Cerrato, Jacobson, Darbee, and Alie.
Appellants first contend that the Examiner errs in rejecting Claim 11
for the reasons advanced in favor of Claim 1. Br. 21. In view of our
foregoing discussion, we are not persuaded of error. Appellants next
contend the Cerrato-Jacobson combination fails to teach the “specific
volume and channel profiles,” as claimed. Id.
The Examiner finds the volume and channel limitations were
addressed in the prior Office Action. Ans. 28. Appellants do not reply.
However, Appellants’ traversal merely argues, without more, that the
claimed limitations are not taught. We are not persuaded of error.
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Claim 12: Obviousness over Cerrato, Jacobson, Darbee, and Alie.
Appellants contend Jacobson teaches a mouse, whereas, the claims go
to a TV remote. Therefore, Jacobson cannot teach a “behavioral biometric
of remote control specific interactions,” as clamed. Br. 21. The Examiner
finds Cerrato (TV remote) and Jacobson (mouse) attempt to solve the same
problem, namely, biometric analysis of a user’s interaction with a remote
controller. Ans. 29. Appellants do not reply. Because Appellants do not
address the Examiner’s findings and reasoning, we are not persuaded of
error.
Claim 13: Obviousness over Cerrato, Jacobson, Darbee, and Alie.
Appellants contend the Examiner fails to find the prior art teaches
“wherein the user interaction data further comprises user input for a fast
forward action, a rewind action, or a high definition option,” as claimed. Br.
22. The Examiner refers to the findings made for Claim 5. Appellants do
not reply. Because Appellants do not address the Examiner’s findings and
reasoning, we are not persuaded of error.
Claim 16: Obviousness over Cerrato, Jacobson, Darbee, and Alie.
Appellants contend that Cerrato (191) fails to teach “wherein the
adjustments of volume include at least one of a stepwise adjustment and a
jump adjustment,” as claimed. Br. 22. The Examiner finds Cerrato teaches
capturing the different lengths of time a user depresses a button on a remote.
Ans. 30. The Examiner finds holding down the volume button on a remote
teaches the claimed “jump adjustment” and the captured time teaches
whether the adjustment is a jump or step. Id. Appellants do not reply.
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Because Appellants do not address the Examiner’s findings and reasoning,
we are not persuaded of error.
Non-Analogous Art.
Cerrato, Jacobson, Darbee, and Alie.
Appellants contend that the Examiner’s various prior art combinations
relate to non-analogous art as defined by Panduit Corp., v. Dennison Mfg.,
810 F.2d 1561 (Fed. Cir. 1987); In re Deminski, 796 F.2d 436 (Fed. Cir.
1986), and In re Wood, 599 F.2d 1032 (CCPA 1979). See Br. 10-12.
We note Appellants fail to reference In re Klein, the Federal Circuit’s
more recent guidance. “Two separate tests define the scope of analogous
prior art: (1) whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011). We are not persuaded the cited art are
from different fields. Moreover, Appellants do not sufficiently persuade us
the references are not “reasonably pertinent” to the claims. See Ans. 4—7. A
reference is reasonably pertinent if it relates to the same problem. See
Klein, 647 F.3d at 1348.
Motivation to combine.
Appellants contend the Examiner fails to articulate a proper
motivation to combine the various references. Br. 12—16. We are not
persuaded in view of the Examiner’s extensive findings (see Ans. 9-16) to
which Appellants fail to reply.
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Finality of Rejection
Appellants “would like the Board to comment on the appropriateness”
of the Examiner making the present rejection “Final.” Br. 16.
Any arguments directed towards the “finality” of an office action are
subject to petition and not appeal. In that regard, the Board typically does
not comment as to whether the finality of the Examiner’s office action is
improper. See 37 C.F.R. § 1.181; MPEP § 608.04(c); and In reMindick,
371 F.2d 892, 894 (CCPA 1967). The Board lacks jurisdiction to hear issues
that “dispute the administrative processing of [a rejection alleged to be
procedurally improperly raised during] the prosecution.” The Board insists
that “the proper procedure is to seek review by way of petition.,Ex parte
Edwards, Appeal No. 98-1396 at 4, 1998 WL 1736081 at *2 (BPAI Apr. 27,
1999); see Ex parte Frye, 2010 WL 889747, slip op. 7 (BPAI Feb. 26, 2G10(
(precedential).
DECISION
The rejection of Claims 1—22 under 35 U.S.C. § 103(a) is
AFFIRMED.
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).
AFFIRMED
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