International Business Machines Corporation

Patent Trials and Appeals Board

Jul 16, 2020

2019002759 (P.T.A.B. Jul. 16, 2020)

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.
15/058,707 03/02/2016 Joel W. Branch YOR920151422US1 1563
48062 7590 07/16/2020
RYAN, MASON & LEWIS, LLP
2425 Post Road
Suite 204
Southport, CT 06890
EXAMINER
SALCE, JASON P
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
07/16/2020 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):
ctoffice@rml-law.com
kmm@rml-law.com
mjc@rml-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOEL W. BRANCH, SHANG Q. GUO,
JONATHAN LENCHNER, and MAHARAJ MUKHERJEE
_____________

Appeal 2019-002759
Application 15/058,707
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1–20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is
IBM Corporation. See Appeal Br. 1.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to “techniques for
presenting media content, and, more particularly, to methods and apparatus
for alerting users to events of interest.” (Spec. ¶ 1).

Representative Independent Claim 1
1. A computer-implemented method, comprising:
collecting user media preferences indicating events of
interest to a given user, wherein said user media preferences are
collected by mining social media postings of the given user;
buffering at least a portion of media content associated
with the collected user media preferences of the given user;
monitoring, using at least one processing device, social
media for one or more media events of interest to the given user
based on the collected user media preferences of said given user;
identifying, using said at least one processing device, at
least one media event within a particular segment of said
buffered media content that satisfies one or more predefined
interest criteria for the given user based on the monitored social
media contributions of other parties and the collected user media
preferences of said given user; and
notifying, using said at least one processing device, the
given user of the at least one media event of interest within the
particular segment.
Appeal Br. 14, “CLAIMS APPENDIX.” (disputed limitations emphasized).

2 We herein refer to the Final Office Action, mailed April 23, 2018 (“Final
Act.”); Appeal Brief, filed Aug. 30, 2018 (“Appeal Br.”); the Examiner’s
Answer, mailed Dec. 19, 2018 (“Ans.”), and the Reply Brief, filed Feb. 19,
2019 (“Reply Br.”).
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References
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Payton
Jiang
Sherrets et al.
Shaw et al.
Tang et al.
US 5,790,935
US 2014/0253803 A1
US 8,942,542 B1
US 2015/0229975 A1
US 2015/0249852 A1
Aug. 4, 1998
Sept. 11, 2014
Jan. 27, 2015
Aug. 13, 2015
Sept. 3, 2015

Rejections
A. Claims 1–5, 8–12, 14–18, and 20 are rejected as being unpatentable
under 35 U.S.C. § 103 over Payton in view of Shaw et al. (“Shaw”),
and Tang et al. (“Tang”).
B. Claims 6, 13, and 19 are rejected as being unpatentable under
35 U.S.C. § 103 over Payton, Shaw, Tang, and Jiang.
C. Claim 7 is rejected as being unpatentable under 35 U.S.C. § 103 over
Payton, Shaw, Tang, and Sherrets et al. (“Sherrets”).

ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. In our analysis below, we highlight and address specific findings
and arguments for emphasis.

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Rejection A of Independent Claim 1 under § 103
Issues: Under 35 U.S.C. § 103, we focus our analysis on the
following argued limitations that we find are dispositive regarding Rejection
A of claims 1–4, 8–12, 14–18, and 20: 3
Did the Examiner err by finding that the cited references teach or
suggest the disputed limitations:
collecting user media preferences indicating events of interest to a
given user, wherein said user media preferences are collected by mining
social media postings of the given user;

buffering at least a portion of media content associated with the
collected user media preferences of the given user;

monitoring, . . . social media for one or more media events of interest
to the given user based on the collected user media preferences of said
given user;

identifying . . . at least one media event within a particular segment of
said buffered media content that satisfies one or more predefined interest
criteria for the given user based on the monitored social media
contributions of other parties and the collected user media preferences of
said given user [,]

within the meaning of representative claim 1?4 (emphasis added). See Final

3 Based upon Appellant’s arguments, we consider Rejection A of claims
1–4, 8–12, 14–18, and 20 as a group. See 37 C.F.R. § 41.37(c)(1)(iv).
Based upon Appellant’s arguments (Appeal Br. 9–10), we address dependent
claim 5, also rejected under Rejection A, separately.

4 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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Act. 3–5.
Appellant contends that Payton does not teach the user media
preferences of said given user. Appeal Br. 5–6. In particular, Appellant
contends that “Payton does not identify media events of interest in the
buffered media content. Rather, Payton merely buffers media based on the
list 44 created from the interests of all users.” Appeal Br. 5 (underlining
added for emphasis, italics and bold in original).
We are not persuaded by Appellant’s argument because Appellant
later concedes in the Reply Brief that Payton buffers media based upon the
interests of a particular user: “Payton merely buffers media based on the list
44 created from the interests of the user and all users.” Reply Br. 10.
(underlining added)
To the extent that Appellant argues that neither Payton nor Shaw
teaches the disputed limitations, we find Appellant is arguing the references
separately. See Appeal Br. 5–7.
The Examiner cites Shaw and Tang, not Payton, as teaching the
disputed “monitoring” step of method claim 1: “monitoring . . . social
media for one or more media events of interest to the given user based on the
collected user media preferences of said given user.” See Final Act. 4.
Appellant has not rebutted the Examiner’s ultimate legal conclusion
of obviousness, which relies upon the additional combination of Shaw and
Tang as teaching or suggesting the disputed limitation. See Ans. 3–4. See
also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references.).
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Moreover, we find Shaw’s description of “audience reaction data”
(¶ 69) that is used “to determine what a particular segment is about to
decide” (i.e., whether or not a given clip is what a user wants), teaches or at
least suggests the “user media preferences of a given user,” as recited in the
buffering step of claim 1. See Shaw ¶ 72 (Final Act. 4 provides notice of
Shaw ¶ 72).
We not persuaded the Examiner erred because we also find Tang’s
media consumption data (of an accessing user) also teaches, or at least
suggests, the disputed claim 1 limitation: “monitoring . . . social media for
one or more media events of interest to the given user based on the collected
user media preferences of said given user.” See Tang ¶ 9; Final Act. 4–5.
Appellant further urges:
Shaw is not identifying . . . a media event based on the monitored
social media. Rather, Shaw is monitoring social media during
showings of each media asset for posts related to the program,
to determine segments of a given media asset that are interesting
to particular users. Par. 0070. The media content is already
known, and media events within the media content are not
identified.
Appeal Br. 7.
We are not persuaded by Appellant’s argument (id.) because we
conclude the scope of the claim term “media event” broadly encompasses
Shaw’s monitoring of media assets. Ans. 6 (citing Shaw ¶ 66). See supra,
n.3.
We conclude the claim is broader than the interpretation imputed by
Appellant’s argument, given that the Specification does not contain a
limiting definition for the claim term “media event.” We emphasize that,
because “applicants may amend claims to narrow their scope, a broad
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construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
Appellant also argues, unlike Shaw, “[a]n aim of the present invention
is to modify such content within confines specified by the user whilst still
retaining the inherent value that content had to the user in the first place.”
Appeal Br. 7.
However, we are not persuaded by Appellant’s argument (id.) because
it is sufficient that references suggest doing what Appellant did, even
although the Appellant’s particular purpose was different from that of the
references. See In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In
re Gershon, 372 F.2d 535, 539 (CCPA 1967)). For a prima facie case of
obviousness to be established, the reference need not recognize the same
problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996). “[N]either the particular motivation nor the avowed
purpose of the [Appellant] controls” when performing an obviousness
analysis. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Appellant also contends: “the modification aspects of Shaw teach
away from the present invention, which is motivated, at least in part, to
automatically record media, highlighting or segmenting especially
interesting, exciting or thematic portions of the media, and alerting a user
about these specially segmented sections of media.[] Par. 0004.” Appeal
Br. 7 (emphasis added).
But teaching another way is not the same as teaching away. See
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327
(Fed. Cir. 2009). Teaching an alternative or equivalent method does not
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“teach away” from the use of a claimed method. In re Dunn, 349 F.2d 433,
438 (CCPA 1965). A reference does not teach away if it merely expresses a
general preference for an alternative invention but does not “criticize,
discredit, or otherwise discourage” investigation into the invention claimed.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). A finding that the prior
art as a whole suggests the desirability of a particular combination need not
be supported by a finding that the prior art suggests that the combination
claimed by the patent applicant is the preferred, or most desirable,
combination. See Fulton, 391 F.3d at 1200.
Appellant further argues that a person of ordinary skill in the art
would not have been motivated to incorporate the access control aspects of
Tang into the media aspects of Payton and/or Shaw. Appeal Br. 8.
However, Appellant does not provide substantive argument or
objective evidence in support. Appellant does not point to any evidence of
record that shows combining the teachings of Payton, Shaw, and Tang in the
manner proffered by the Examiner (Final Act. 3–5) would have been
“uniquely challenging or difficult for one of ordinary skill in the art” or
would have “represented an unobvious step over the prior art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).
On this record, and based upon a preponderance of the evidence, we
are not persuaded of error regarding the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness regarding Rejection A
of independent representative claim 1.
Therefore, we sustain the Examiner's Rejection A of representative
independent claim 1, and also Rejection A of independent claims 9 and 15,
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which recite similar limitations of commensurate scope. The remaining
grouped dependent claims also rejected under Rejection A (and not argued
separately) fall with representative independent claim 1. We note Rejection
A of claim 5 is argued separately and is addressed infra. See 37 C.F.R.
§ 41.37(c)(1)(iv). Accordingly, we sustain the Examiner's obviousness
Rejection A of claims 1–4, 8–12, 14–18, and 20.

Rejection A of Dependent Claim 5
Claim 5 recites:
5. The computer-implemented method of claim 1, further
comprising the step of providing the given user with
substantially immediate access, with respect to said identifying,
to the buffered media content associated with the at least one
media event of interest.

Appellant contends: “[T]here is no suggestion in Payton of providing
the given user with substantially immediate access to the buffered media
content associated with the at least one media event of interest, where the
‘substantially immediate access’ is with respect to said identifying.” Appeal
Br. 10.
We are not persuaded by Appellant’s argument (id.), because we find
Payton’s description of recommending the locally stored items to the
subscriber, and making the items easy to select, at least suggests: “providing
the given user with substantially immediate access . . . to the buffered media
content,” within the meaning of dependent claim 5. See Payton col. 6,
ll. 32–34; Final Act. 5–6; see also Ans. 8.
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Therefore, on this record, we are not persuaded of error regarding the
Examiner’s ultimate legal conclusion of obviousness for Rejection A of
dependent claim 5, and we sustain the rejection.

Rejection B of Dependent Claim 6
Based upon Appellant’s arguments (Appeal Br. 10–12), we consider
Rejection B of claims 6, 13, and 19 as a group. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Representative dependent Claim 6 recites:
6. The computer-implemented method of claim 5, wherein
said providing step further comprises one or more of sending a
link to the given user for the buffered media content associated
with the at least one media event of interest and embedding the
buffered media content associated with the at least one media
event of interest in one or more of the alert and a pop-up window
on a display.

Regarding claim 6, Appellant contends:
Jiang, however, is addressing interactive messages and not
“buffered media content associated with the at least one event of
interest.”
Thus, Applicants respectfully submit that a person of
ordinary skill in the art would not incorporate Jiang’s techniques
for incorporating “text content, or a video link included in the
contact message” (par. 0064) into a PIP window on a user
display, into the media systems of Payton and Shaw, in order to
quickly (“substantially immediate access”) notify a given user of
a media event of interest.
Appeal Br. 11.
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However, Appellant is arguing the references separately. The
Examiner cites to the collective teachings of Payton, Shaw, and Tang, and
not Jiang, for teaching or suggesting the “buffered media content associated
with the at least one event of interest,” as recited in claim 6. See Final Act.
6.
Furthermore, we find the message or video content displayed in
Jiang’s picture-in-picture (PIP) window is inherently temporarily stored in a
video buffer, and thus also suggests “buffered media content associated with
the at least one event of interest,” within the meaning of claim 6. See Ans.
8–9 (citing Jiang ¶¶ 3, 64).
Regarding Appellant’s argument that a person of ordinary skill would
not have been motivated to incorporate Jiang’s techniques, we find the
Examiner has set forth sufficient “articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). See also 35 U.S.C. §132(a). We
reproduce the Examiner’s finding of motivation below: 5
It would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to modify
the media content delivery system, as taught by Payton, Shaw
and Tang, using the pop-up window functionality, as taught by

5 The presence or absence of a reason “to combine references in an
obviousness determination is a pure question of fact.” In re Gartside, 203
F.3d 1305, 1316 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000 (Fed. Cir. 1999)). A reason to combine teachings from the prior art
“may be found in explicit or implicit teachings within the references
themselves, from the ordinary knowledge of those skilled in the art, or from
the nature of the problem to be solved.” WMS Gaming Inc. v. Int'l Game
Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d
1350, 1355 (Fed. Cir. 1998)).
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Jiang, for the purpose of providing PIP technology that enables
a user to obtain an SNS contact message in a timely manner on
any video playback page (see Paragraph 0013 of Jiang).
Final Act. 7.
Moreover, “when a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” KSR, 550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S.
273, 282 (1976)). “[A] combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at 401.
In reviewing the record, we are not persuaded the Examiner erred
because Appellant does not point to any evidence of record that shows
combining the teachings of the cited references in the manner proffered by
the Examiner would have been “uniquely challenging or difficult for one of
ordinary skill in the art” or would have “represented an unobvious step over
the prior art.” Leapfrog, 485 F.3d at 1162 (citing KSR, 550 U.S. at 418).
Appellant has not identified knowledge gleaned only from the present
application that was not within the level of ordinary skill at the time the
claimed invention was made. See In re McLaughlin, 443 F.2d 1392 (CCPA
1971). Moreover, Appellant has not provided any objective evidence of
secondary considerations (e.g., unexpected results), which our reviewing
court guides “operates as a beneficial check on hindsight.” Cheese Sys., Inc.
v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir.
2013).
Here, we find one of ordinary skill in the art would have understood
the advantages of incorporating PIP technology, e.g., a user can view a
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message on the display related to the user’s media event of interest. Thus,
we find the Examiner sets forth a sufficient rational underpinning explaining
why an artisan would have combined the teachings of the cited references.
See Final Act. 7.
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness regarding
Rejection B of representative dependent claim 6, and Rejection B of claims
13 and 19, which fall with claim 6. See 37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, we sustain the Examiner’s obviousness Rejection B of grouped
claims 6, 13, and 19.

Rejection C of Dependent Claim 7
Claim 7 recites:

The computer-implemented method of claim 5, further
comprising the step of aligning a segment of the buffered media
content associated with the at least one media event of interest,
based on the monitored social media contributions of the other
parties.

Regarding dependent claim 7, Appellant argues the claim term
“monitored social media contributions of other parties” is not taught by the
Sherrets reference. Appeal Br. 11.
We are not persuaded by Appellant’s argument (id.), and agree with
the Examiner’s findings (Final Ac. 7–8), because we find Sherrets’
description of viewers and content owners who create playlists of shared
video segments teaches or at least suggests “monitored social media
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contributions of other parties,” within the meaning of claim 7. See Ans. 9
(citing Sherrets, Col. 6, ll. 8–12). Accordingly, we sustain the Examiner’s
Rejection C of dependent claim 7.

CONCLUSION
The Examiner did not err with respect to obviousness Rejections A, B,
and C of claims 1–20 over the cited prior art of record, and we sustain the
rejections.
DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 8–12,
14–18, 20
103 Payton, Shaw,
Tang
1–5, 8–12,
14–18, 20

6, 13, 19 103 Payton, Shaw,
Tang, and Jiang
6, 13, 19
7 103 Payton, Shaw,
Tang, and Sherrets
7
Overall
outcome
1–20

FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED