Ex Parte Ohashi et al

Patent Trial and Appeal Board

Aug 8, 2016

12576516 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/576,516 10/09/2009 Takeshi OHASHI
22850 7590 08/10/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
452391 US8PPMPH 2277
EXAMINER
SYED,FARHANM
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKES HI OHASHI and HIROAKI OGAWA
Appeal2015-002325
Application 12/576,516
Technology Center 2100
Before JOHN A. EVANS, LINZY T. McCARTNEY,
and JOHN P. PINKERTON, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-12, which constitute all the claims pending in this
application. 1 Claims 2, 4, 12, 14, and 17-21 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We have reviewed Appellants arguments in the Appeal Brief and
Reply Brief, and the Examiner's response to Appellants' arguments. We
concur with Appellants' contention the Examiner erred in rejecting
independent claims 1 and 10-12 under 35 U.S.C. § 103(a) because Jeon2
1 Appellants identify Sony Corporation as the real party in interest. App.
Br. 3.
2 US 2009/0055385 Al; published Feb. 26, 2009.
Appeal2014-008192
Application 13/059,386
does not teach or suggest generating dependence information that indicates
an audience preference for viewing a first content out of the plurality of
contents before viewing a second content out of the plurality of contents
"wherein the preference is based on whether the first content served as a
basis for the creation of the second content," as recited in claim 1, and as
similarly recited in claims 10-12. 3 App. Br. 13-15; Reply Br. 3--4.
The Examiner finds that Jeon teaches the disputed limitation. See
Final Act. (citing Jeon i-fi-129-30, 32, 34, 77); Ans. 2-3 (citing i-fi-165, 72). In
particular, the Examiner relies on the "recommendations" described in
paragraph 65 of Jeon as teaching "the preference." Ans. 3. Regarding the
portion of the disputed limitation reciting "is based on whether the first
content served as a basis for the creation of the second content," the
Examiner cites paragraph 65 of Jeon and finds it "discloses the
recommendation entry can further include a summary of the episode and one
or more specific entries for current or upcoming episodes that may interest
the user." Id.
Appellants argue that the portions of Jeon cited by the Examiner fail
to teach or suggest the disputed limitation. See App. Br. 12-14; Reply Br.
3--4. In particular, regarding paragraph 65 of Jeon, Appellants argue Jeon's
teaching of providing recommendations for a second content in response to
selecting or viewing a first content "cannot disclose or suggest that a
'preference is based on whether the first content served as a basis for the
creation of the second content,' as recited in claim 1." Reply Br. 3--4.
Regarding paragraph 72 of Jeon, Appellants argue the teaching of selecting a
3 Although Appellants argue Jeon does not disclose other limitations of
claim 1, we do not address them because we find this issue is dispositive.
2
Appeal2014-008192
Application 13/059,386
program name or another program attribute (e.g., first content) to use to
generate a new list of programs (e.g., second content) in a new landing page
does not teach the disputed limitation because "none of the attributes upon
which the disclosed search request is based include any teaching or
suggestion of a 'preference ... based on whether the first content served as a
basis for the creation of the second content,' as recited in claims 1." Id. at 4.
For the reasons argued by Appellants, on this record, we agree that the
cited portions of Jeon relied on by the Examiner do not teach or suggest
"wherein the preference is based on whether the first content served as a
basis for the creation of the second content." Accordingly, we do not sustain
the rejection of claim 1, as well as claims 10-12 reciting similar limitations.
For the same reasons, we do not sustain the rejection of claims 2-9, which
depend from claim 12.
DECISION
We reverse the Examiner's decision rejecting claims 1-12.
REVERSED
3