Ex Parte Van Brandenburg et alDownload PDFPatent Trial and Appeal BoardDec 19, 201613702035 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 13/702,035 02/14/2013 Ray Van Brandenburg 930841.00030 3203 26710 7590 12/21/2016 QUARLES & BRADY LLP Attn: IP Docket 411 E. WISCONSIN AVENUE SUITE 2350 MILWAUKEE, WI 53202-4426 EXAMINER IDOWU, OLUGBENGA O ART UNIT PAPER NUMBER 2425 NOTIFICATION DATE DELIVERY MODE 12/21/2016 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): pat-dept@quarles.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAY VAN BRANDENBURG, MATTIJS OSKAR VAN DEVENTER, and PETER JOANNES MATHIAS VEUGEN Appeal 2016-002367 Application 13/702,03 51 Technology Center 2400 Before MAHSHID D. SAADAT, THU A. DANG, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1—5 and 7—14. Claim 6 is objected to as being dependent upon a rejected base claim, but the Examiner indicated it would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Nederlandse Organisatie Voor Toegepast- natuurwetenschappelijk Onderzoek Tno as the real party in interest. App. Br. 1. Appeal 2016-002367 Application 13/702,035 THE INVENTION The claimed invention is directed to a system for outputting a choice recommendation to users based on earlier choices made by them. “Such a recommendation may be related to — not exclusively, however — to TV watching, which is seen as a good application example of such system.” Spec. 1:3-6. Claim 1, reproduced below with the disputed limitation emphasized, is illustrative of the claimed subject matter: 1. A method for outputting a choice recommendation related to content items, the method comprising: - recording a watching history of users in a memory, the watching history comprising representations of watch events, the representation of a watch event for a user including information about a further user or users who with the user has jointly watched a content item; - using a processor to make a recommendation for a group of users dependent on recorded joint watching of users in the group, including dependence on recorded joint watching of a combination of users in the group that does not coincide with the group. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Trajkovic et al. US 2004/0003392 A1 Jan. 1, 2004 Yalakanti et al. US 2008/0104196 A1 May 1,2008 Coles et al. US 2010/0046913 Al Feb. 25, 2010 REJECTIONS Claims 1—5 and 7—11 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Trajkovic in view of Coles. Final Act. 3—6. 2 Appeal 2016-002367 Application 13/702,035 Claims 12—14 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Trajkovic in view of Coles and Yalakanti. Final Act. 6—7. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellants. We are not persuaded by Appellants’ arguments regarding claims 1—5 and 7-14. Appellants argue the Examiner erred in finding either Trajkovic or Coles teaches making a recommendation based “on recorded joint watching of a combination of users in the group that does not coincide with the group,” as recited in claim 1. App. Br. 3—5; Reply Br. 2. Specifically, Appellants argue Trajkovic “teaches that the recommendation depends on recorded joint watching by a combination of all users in the group.” App. Br. 2—3. Appellants further argue Coles teaches “a single user in a group recommends a program to other users in the group.” App. Br. 3. Appellants’ argument concludes with the conclusory argument that since neither reference teaches the disputed claim limitation, “[t]he combined references, therefore, do not disclose all of the elements of claims 1 and 9, and the rejection based on obviousness should be overturned.” Id. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed invention is expressly 3 Appeal 2016-002367 Application 13/702,035 suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Because Appellants’ arguments are directed to the references individually and not the combined teachings, we are not persuaded that the Examiner erred. Instead, we agree with and adopt the Examiner’s findings and conclusions. The Examiner finds Trajkovic teaches “using a processor to make a recommendation for a group of users dependent on recorded joint watching of users in the group,” as recited in claim 1. Final Act. 2—3. Appellants have not identified any errors in that specific finding. “If an appellant fails to present arguments on a particular issue ... the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.” Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Thus, the only issue is whether the prior are provides a reason to modify the express teaching of Trajkovic to make recommendations based on the recorded watching of a “combination of users in the group that does not coincide with the group,” as recited in claim 1. The Examiner further finds “Coles teaches the recommendation for a group of users depending on users in the group that does not coincide with the group (content recommendation to a group of users based on voting).” Final Act. 3 (citing Coles 131). The Examiner further determines “it would have been obvious to one of ordinary skill in the art to modify Trajkovic’s group watching system to include recommendation based on a majority as described in Cole’s interactive system for the advantages of suggesting content that satisfy the majority of the group.” Final Act. 4; Ans. 8 (“Coles 4 Appeal 2016-002367 Application 13/702,035 was also brought in, not for teaching joint watching but for teaching recommendations being made to a group by a portion of the group.”). We agree with the Examiner that Cole explicitly teaches making a recommendation by a plurality users, but not all of the users, of a group. Coles 131 (recommending programs “based on one of more users within the user group recommending a program for recording and all the other users then being requested to approve this recommendation or reject it”). Although the specific method used in Coles is placing the recommendation to a vote, we agree with the Examiner that Coles broadly teaches having some, but not all, of the members of a group make a recommendation. We further agree with the Examiner that a person of ordinary skill in the art at the time of the invention would have combined the teachings and suggestions of the two references to achieve the claimed inventions. Accordingly, we are not persuaded by Appellants’ arguments that the Examiner erred. Appellants further argue that the only reason to combine the two references was hindsight and the Examiner did not “provide any reason why one of ordinary skill in the art would be motivated by the prior art to make the claimed invention.” App. Br. 5. Contrary to Appellants’ argument, the Examiner makes a specific finding on a reason to combine the references. The Examiner finds that a person of ordinary skill in the art would have combined the references in order to achieve the advantages “described in Cole’s interactive system for . . . suggesting content that satisfy the majority of the group.” Final Act. 4. We determine the Examiner’s finding provides a “rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 5 Appeal 2016-002367 Application 13/702,035 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, the Examiner did not engage in impermissible hindsight. For the foregoing reasons, we sustain the Examiner’s rejection of claim 1, along with the rejections of independent claim 9, which is argued on the same grounds, and dependent claims 2—5, 7, 8, 10, and 11, which are not argued separately. With respect to dependent claims 12—14, Appellants do not present any separate arguments. Accordingly, we sustain the Examiner’s rejection of claims 12—14. DECISION For the above reasons, we affirm the Examiner’s decision to reject claims 1—5 and 7—14. 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). See 37 C.F.R. § 41.50(f). AFFIRMED 6 Copy with citationCopy as parenthetical citation