Ex Parte Stefanik et al

Patent Trial and Appeal Board

Dec 3, 2014

12235159 (P.T.A.B. Dec. 3, 2014)

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.
12/235,159 09/22/2008 John R. Stefanik 7785-394_2008-0913 5534
92384 7590 12/03/2014
AT&T Legal Department - G&G
Attention: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
MYHRE, JAMES W
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
12/03/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN R. STEFANIK, E-LEE CHANG,
CHARLES PATRICK BRADLEY, TUCK SENG TAN,
DARNELL CLAYTON, and MADHUR KHANDELWAL
____________________

Appeal 2012-007065
Application 12/235,159
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
LYNNE H. BROWNE, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
John R. Stefanik et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–25 under 35 U.S.C.
§ 103(a) as being unpatentable over Herz (US 6,460,036 B1, issued Oct. 1,
2002) and MacLean (US 7,287,071 B2, issued Oct. 23, 2007). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2012-007065
Application 12/235,159

2

THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An internet protocol television system, comprising:
a memory; and
a controller coupled with the memory and configured to:
present to a server operated by a first entity
associated with at least one of government or community
activity, a graphical user interface for entering
information describing the government or community
activity;
receive the information from the server;
generate a notification graphical user interface for
presenting the received information;
analyze the received information to determine an
activity pattern of the received information;
retrieve public record information for a group of
users potentially associated with the at least one of the
government or community activity;
identify target users from the group of users having
interests that correlate to the information based on the
activity pattern and the public record information without
using private information; and
direct the notification graphical user interface to
one or more set-top boxes of the identified target users
for presentation during broadcast programming.

OPINION
The dispositive issue raised by Appellants in contesting the rejection
of claim 1 is whether the content of the information used to identify users
having interests that correlate to the information describing the government
or community activity patentably distinguishes the subject matter of claim 1
from the system of Herz. Appeal Br. 7. More specifically, Appellants argue
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that Herz uses private information and, thus, does not “disclose or suggest
identifying target users from the group of users having interests that
correlate to the information based on the activity pattern of the information
and public record information without using private information, as in claim
1.” Id. Appellants also contend that Herz teaches away from this feature of
claim 1. Id. at 10 (citing Herz, col. 2, ll. 29–39; col. 4, ll. 5–28).
The Examiner stated that
little, if any, patentable weight is given to the type of
information being delivered or to the entity providing the
information. In other words, the invention would operate the
same whether the information was from a government or
community organization or from a religious, educational,
charitable, social, or any other type of organization.
Ans. 4.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an otherwise unpatentable invention. In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004); cf. In re Gulack, 703 F.2d 1381, 1385
(Fed. Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability).
The Examiner correctly determined that the data at issue in the present
case (i.e., “public record information”) does not change the system or
controller of the invention. Rather, in Appellants’ invention, the data in
question is compared to patterns in the government or community
information (GCI). Fig. 7, step 710. If a correlation is found, Appellants’
controller identifies a subset of users having interests that correlate with the
GCI and directs a notification graphical user interface (GUI) to the identified
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subset of users. Id., steps 718, 720. In other words, Appellants’ controller
compares detected patterns in the GCI with the supplied information (e.g.,
the “public record information” alluded to in claim 1). Appellants disclose
server 130, which can compare the detected patterns in the GCI with public
record information and/or additional information, such as subscriber account
information and consumption information. Spec. paras. 62–64. Thus, the
controller of Appellants’ invention and its operation are unchanged,
regardless whether the user information retrieved for comparison with the
detected patterns of the GCI comprises public record information, private
information, or a combination of public record information and private
information.
Unlike the data structures in In re Lowry, 32 F.3d 1579 (Fed. Cir.
1994), the user information of Appellants’ invention does not “provide
increased efficiency in computer operation[s].” See Lowry, 32 F.3d at 1580,
1584; cf. Ex parte Curry, 84 USPQ2d 1272, 1274–75 (BPAI 2005)
(informative) (discussing computer-related situations involving
nonfunctional descriptive material); Ex parte Mathias, 84 USPQ2d 1276,
1279 (BPAI 2005) (informative) (same). Rather, the user information of
Appellants’ invention, whether public record information, private
information, or both, is compared to the detected patterns in the GCI.
Accordingly, the Examiner correctly determined that the limitation in claim
1 that the target users are identified “based on the activity pattern and the
public record information without using private information” (Appeal Br.
13, Claims App., emphasis added) does not patentably distinguish the
subject matter of claim 1 from the system of Herz.
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Appellants’ argument that Herz teaches away from the
aforementioned feature of claim 1 is not germane to, and, thus fails to
identify error in, the rejection, because the Examiner has not proposed
modifying the system of Herz to use information different from that used by
Herz or to refrain from using any of the information used by Herz.
Moreover, in any event, the passages of Herz cited by Appellants in support
of the teaching away contention do not criticize, discredit, or otherwise
discourage Appellants’ solution (i.e., not using private information, which
users might prefer to keep confidential). See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (holding that prior art does not teach away from
claimed subject matter merely by disclosing a different solution to a similar
problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed).
For the above reasons, Appellants’ arguments do not apprise us of
error in the Examiner’s rejection of claim 1 as unpatentable over Herz and
MacLean. Thus, we sustain the rejection of claim 1 and its dependent claims
2–14, for which Appellants do not present any separate arguments for
patentability, as unpatentable over Herz and MacLean.
In contesting the like rejection of independent claims 15 and 21, and
their dependent claims 16–20 and 22–25, Appellants rely on the arguments
asserted for claim 1. Appeal Br. 11–12. For the reasons set forth above,
these arguments fail to apprise us of error in the rejection. Thus, we also
sustain the rejection of claims 15–25 as unpatentable over Herz and
Maclean.

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Application 12/235,159

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DECISION
The Examiner’s decision rejecting claims 1–25 under 35 U.S.C.
§ 103(a) as being unpatentable over Herz and MacLean 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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