Ex Parte Sezan et al

Board of Patent Appeals and Interferences

Aug 11, 2011

10894620 (B.P.A.I. Aug. 11, 2011)

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.
10/894,620 07/19/2004 Muhammed Ibrahim Sezan SLA0251.4 (7146.0233) 6405
55648 7590 08/11/2011
KEVIN L. RUSSELL
CHERNOFF, VILHAUER, MCCLUNG & STENZEL LLP
1600 ODSTOWER
601 SW SECOND AVENUE
PORTLAND, OR 97204
EXAMINER
PARRY, CHRISTOPHER L
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
08/11/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MUHAMMED IBRAHIM SEZAN, PETRUS VAN BEEK,
YOSHIAKI TOMIOKA, TADAHIDE SHIBAO,
and KOHEI YOSHIKAWA
____________

Appeal 2009-011792
Application 10/894,620
Technology Center 2400
____________

Before MAHSHID D. SAADAT, DENISE M. POTHIER,
and JULIE K. BROCKETTI, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 56-60 and 74-76. Claims 1-55, 61-73, and 77-94 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellants’ invention relates to a method and system for browsing,
filtering, searching, archiving, and personalizing audiovisual information.
(Spec. 1:4-7).
Claim 56, which is illustrative of the invention, reads as follows:
56. A method of using a system having an associated
description scheme (DS) with at least one of audio, image, and a video
comprising a plurality of frames, the method comprising the steps of:

(a) providing for said associated DS a first usage
preferences description and a second usage preferences
description, each containing descriptors describing preferences
of a single user with respect to characteristics of said audio,
image, and video, where said first usage preferences description
and said second usage preferences description include multiple
content descriptors;

(b) providing for said associated DS a relevance
attribute with respect to at least one of said multiple content
descriptors, said relevance attribute capable of being assigned a
value alternatively indicating a selective one of desirability and
aversion to at least one of said characteristics; and

(c) providing betterthan and worsethan descriptors
ranking said first and second usage preference descriptions with
respect to each other; and

(d) ranking said preferences of at least one of said first
and second usage preference descriptions based on said
betterthan and worsethan descriptors in the absence of the
existence of a stored value assigned to a respective said
relevance attribute for one or more of said content descriptors
associated with said characteristics in either of said first and
second usage preference descriptions.

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The Examiner’s Rejections
The Examiner relies on the following prior art in rejecting the claims:
Herz US 5,758,257 May 26, 1998
Hendricks US 5,798,785 Aug. 25, 1998

Claims 56-60 and 74-76 stand rejected under 35 U.S.C. § 101 as
failing to recite a patent-eligible process by reciting method steps that are
neither tied to a particular machine or apparatus, nor transform a particular
article into a different state or thing.
Claims 56-60, 74, and 75 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Herz.
Claim 76 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Herz and Hendricks.1
Appellants’ Contentions
Appellants respond to the new ground of rejection by contending that
the Examiner erred in rejecting claims 56-60 and 74-76 under 35 U.S.C.
§ 101 because, based on the Federal Circuit’s opinion in In re Bilski, “each
of the rejected claims is directed to a functional electronic description
scheme for imagery . . .” (Reply Br. 4)(emphasis in original). Appellants
conclude that the present claims are “sufficiently tied to a specific, practical
application” and therefore, are directed to statutory subject matter (Reply Br.
4-5).
With respect to the 35 U.S.C. § 102 rejection of claims 56-60, 74, and
75, Appellants argue the patentability of claims 56-60, 74, and 75 as one

1 The Examiner has withdrawn the 35 U.S. C. § 112, second paragraph
rejection of claims 56-60 and 74-76 and has entered a new ground of
rejection under 35 U.S. C. § 101 in the Answer mailed February 4, 2009.
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group (App. Br. 6-10). Accordingly, we select claim 56 as representative.
See 37 C.F.R. § 41.37(c)(1)(vii). Appellants contend that Herz does not
disclose ranking the profiles (or moods) relative to each other (App. Br. 8) or
using the satisfaction factor for selecting or modifying the profiles (Reply
Br. 7). Appellants specifically argue that Herz uses the satisfaction factors
only in the “predictive” steps, such as what the system thinks the user will
want to watch, and not for selecting the profile to be adjusted and
determining how to adjust those profiles (Reply Br. 8).
With respect to the 35 U.S.C. § 103 rejection, Appellants merely rely
on the dependency of claim 76 from claim 74 and argue its patentability
based on the same reasons discussed regarding the claim group that includes
claims 56 and 74 (App. Br. 10).

ISSUES
1. Did the Examiner err in rejecting claims 56-60 and 74-76 under
35 U.S.C. § 101 because the recited method steps are neither tied to a
particular machine or apparatus, nor transform a particular article into a
different state or thing?
2. Did the Examiner err in rejecting claim 56 as being anticipated by
Herz because the reference fails to teach or suggest all the claim limitations?
3. Did the Examiner err in rejecting claim 76 as being obvious over
Herz in view of Hendricks?
ANALYSIS
Rejection under 35 U.S.C. § 101
In order to determine whether the claimed subject matter relates to a
patent-eligible subject matter, we evaluate the claims under the threshold
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machine-or-transformation test set forth in Bilski v. Kappos, 130 S.Ct. 3218
(2010). Appellants do not present any arguments to show that the recited
method steps are tied to any machine or satisfy the transformation prong of
Bilski and merely contend that the claims are statutory under 35 U.S.C.
§ 101 because the recited process is tied to a specific, practical application
(Reply Br. 4-5).
Initially, we find that while the claims may be tied to a specific,
practical application, the functions recited by the claims for “providing … a
first usage preferences description and a second usage preferences
description,” “providing … a relevance attribute,” “providing betterthan or
worsethan descriptors,” and “ranking said preferences” are neither tied to a
machine nor transform an article into a different state or thing. In other
words, providing different sets of data and ranking the provided preferences
do not transform any of the preferences, attributes, or descriptors into a
different state or thing because the result is still a preference, attribute, or
descriptor. Such mathematical manipulations, however, are analogous to the
mathematical calculations found to be unpatentable in Parker v. Flook, 437
U.S. 584 (1978). Nevertheless, even if, arguendo, this raw data representing
preferences, attributes, or descriptors could be considered “articles” (which
they are not), the data would not constitute or be tied to a particular article
as required by Bilski’s transformation test. As such, the claims fail to satisfy
both prongs of the machine-or-transformation test.
Moreover, without tying these functional limitations to any concrete
parts, devices, or combinations of devices, these functional limitations could
be performed solely within one’s mind and are therefore unpatentable. See
Gottschalk v. Benson, 409 U.S. 63, 67 (CCPA 1972); In re Comiskey, 554
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F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes - or processes of human
thinking - standing alone are not patentable even if they have practical
application.”). For at least the aforementioned reasons, we conclude the
Examiner properly rejected 56-60 and 74-76 under 35 U.S.C. § 101.2
Rejection under 35 U.S.C. § 102
We have reviewed the Examiners’ rejections in light of Appellants’
arguments in the Appeal Brief that the Examiner has erred.
We disagree with Appellants’ conclusions. We adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellants’ Appeal Brief. However,
we highlight and address specific findings and arguments regarding claim 56
for emphasis as follows.
We note that the Examiner properly relies (Ans. 13) on ranking the
speculative moods in Herz as the disputed ranked profiles (see Herz; col. 17,
ll. 45-65, col. 18, ll. 29-45). We also agree with the Examiner’s position
(Ans. 13-14) stating that Herz discloses adjusting the customer profile by
monitoring if the user watched the predicted program (col. 26, ll. 57-64)
where the customer profile closest to the programs actually watched is
selected and adjusted (col. 26, l. 64 – col. 27, l. 6). Appellants rely on a

2 In order to decide the issues arising from the arguments presented by
Appellants, this panel need not consider Appellants’ proposed exemplary
amendment to claims 56 and 74 (see Reply Br. 5). However, in case of
further prosecution, we invite Appellants to present any amendment to the
claims that would overcome the 35 U.S.C. § 101 rejection so that the
Primary Examiner can evaluate the amended claims for their compliance
with the provisions of § 101 as well as against the prior art of record or any
additional references.
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more limited interpretation of the claim with respect to the claimed
“betterthan or worsethan descriptors ranking” or reading the claim limitation
on the satisfaction factors of Herz being used to adjust the profiles, whereas
claim 56 merely requires ranking the preferences (profiles in Herz) based on
the satisfaction factors when a stored value related to the relevance attributes
is absent. As discussed supra and found by the Examiner (Ans. 14), the
relied-on portions of Herz, in columns 26-27, describe how a program
closest to the watched program is ranked and selected based on the
satisfaction factors for each mood. Herz further discloses that if the
predicted program is watched no adjustment to the customer’s profile is
needed (col. 26, ll. 60-62), whereas adjustments to the profile is made based
on selecting another program closest to a watched program when the
predicted program is not watched (col. 26, l. 64-col. 27-, l. 6). As such,
determining the closest program is based on the already defined satisfaction
factors, which ultimately contribute to adjusting the user profile.

CONCLUSIONS
(1) The Examiner did not err in rejecting claims 56-60 and 74-76
under 35 U.S.C. § 101.
(2) The Examiner did not err in rejecting claims 56-60, 74, and 75
as being anticipated under 35 U.S.C. § 102(b).
(3) The Examiner did not err in rejecting claim 76 as being
unpatentable under 35 U.S.C. § 103(a).
(4) Claims 56-60 and 74-76 are not patentable.
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DECISION
The Examiner’s decision rejecting claims 56-60 and 74-76 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)(1)(iv).

AFFIRMED

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