15689621 - (D) (P.T.A.B. Apr. 29, 2020)

ADOBE INC.

Patent Trials and Appeals BoardApr 29, 2020

15689621 - (D) (P.T.A.B. Apr. 29, 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. 15/689,621 08/29/2017 STEPHANE MOREAU P5204-US-CON1/279015 9027 121363 7590 04/29/2020 Shook, Hardy & Bacon L.L.P. (Adobe Inc.) Intellectual Property Department 2555 Grand Blvd Kansas City, MO 64108 EXAMINER VU, VIET D ART UNIT PAPER NUMBER 2448 NOTIFICATION DATE DELIVERY MODE 04/29/2020 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): IPDocket@shb.com docket.shb@clarivate.com seaton@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEPHANE MOREAU, SACHIN SONI, ASHISH DUGGAL, and ANMOL DHAWAN ____________________ Appeal 2019-0049621 Application 15/689,621 Technology Center 2400 ____________________ BEFORE ST. JOHN COURTENAY III, THU A. DANG, and BARBARA A. BENOIT, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–10 and 12–20. Claim 11 has been cancelled. We have jurisdiction 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. Appellant identifies Adobe Systems Inc. as the exemplary real party in interest. Request to Change Applicant filed July 19, 2019. Appeal 2019-004962 Application 15/689,621 2 A. INVENTION According to Appellant, the invention relates to dynamically modifying rich media components provided by an email marketing. Spec. ¶ 5. B. REPRESENTATIVE CLAIM Claim 1 is representative of the subject matter on appeal: 1. One or more computer storage media storing computer- useable instructions that, when used by one or more computing devices, cause the one or more computing devices to perform operations comprising: sending an email message to a recipient, the email message containing links to a plurality of pre-existing rich media components, each rich media component comprising content about a product that is presented to the recipient upon selection of a corresponding link in the email message; receiving interaction information regarding the recipient interacting with a first rich media component from the plurality of pre-existing rich media components; and modifying content within a second rich media component from the plurality of pre-existing rich-media components based on the interaction information. Appeal Br. 26 (Claims Appendix). Appeal 2019-004962 Application 15/689,621 3 C. REJECTIONS Claims 1–10 and 12–20 stand rejected on the ground of judicially created nonstatutory double patenting as being unpatentable over U.S. Patent No. 9,794,205. Final Act. 2. Claims 1 and 12–13 stand rejected under 35 U.S.C. § 103 over Mancarella et al. (US 2010/0017294 A1; published Jan. 21, 2010) (“Mancarella”) and Bauman et al. (US 2017/0178179 A1; published June 22, 2017) (“Bauman”). Final Act. 2. Claims 2–10 and 14–20 stand rejected under 35 U.S.C. § 103 over Mancarella, Bauman, and Reinshagen (US 2014/0122227 A1; published May 1, 2014). Final Act. 4. II. ISSUE The principal issue before us is whether the Examiner erred in finding the combination of Mancarella and Bauman teaches or suggests, “receiving interaction information regarding the recipient interacting with a first rich media component . . . and modifying content within a second rich media component . . . based on the interaction information.” Claim 1. III. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments presented in this appeal. Arguments which Appellant could have Appeal 2019-004962 Application 15/689,621 4 made, but did not make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2016). Rejection Under Nonstatutory Double Patenting The Examiner rejects claims 1–10 and 12–20 under the judicially created doctrine of double patenting as being unpatentable over U.S. Patent No. 9,794,205. Final Act. 2. In particular, the Examiner concludes that, although the conflicting claims are not identical, they are not “patentabl[y] distinct from each other because the patent claims comprise all limitations required in the present claims.” Id. Appellant does not address this rejection. See generally Appeal Br. Because Appellant does not substantively challenge this rejection, we summarily sustain it. Obviousness over Mancarella with Bauman (Claims 1, 12–13) The Examiner rejects claims 1, 12, and 13 over Mancarella in view of Bauman. Final Act. 2. In particular, the Examiner finds “Bauman discloses a system for modifying content within ads (second media components) based upon user interactions with the first media component.” Id. at 3 (citing Bauman ¶¶ 76–78, 99–101). Appellant argues the combination of references do not teach or suggest, “modifying content within a second rich media component . . . based on the interaction information” as recited in Claim 1 and similarly recited in Claim 13. Appeal Br. 7–9, 14–15. In particular, Appellant contends, “Bauman only discusses modifying the ad portion 208 on the content page 208 (e.g., by replacing ads) when the user interacts with the ad portion 208.” Reply Br. 3. Appeal 2019-004962 Application 15/689,621 5 We have considered all of Appellant’s arguments and evidence presented. We agree with Appellant that the preponderance of evidence on this record does not support the Examiner’s legal conclusion that Claims 1 and 13, and Claim 12 depending from Claim 1, would have been obvious over Mancarella and Bauman. In particular, we disagree with the Examiner’s finding that Bauman teaches or suggests “modifying content within a second rich media component” as recited in Claim 1 (emphasis added). A portion of Figure 2 of Bauman is reproduced below. Figure 2 of Bauman illustrates a content page 204 generated with an advertising portion 208. Bauman ¶ 67. In Bauman, when a user clicks on ad 225 within content page 204, information is sent to an ad management system (AMS) and landing page 216 is presented to the user. Bauman ¶¶ 75–76. Based on interaction information, the AMS may “modify or retarget the presentation of ads, Appeal 2019-004962 Application 15/689,621 6 which may include modifying aspects of the content page 204 including aspects of the ad portion 208.” Id. at ¶ 88. Modification of content page 204 is illustrated in Figure 3 of Bauman, reproduced below. Figure 3 of Bauman shows modifications to ad portion 208. Bauman ¶ 79. As shown in Figure 3 of Bauman, “modification information 224 may populate the ad portion 208 with additional and different ads related to the selected ad 225 and/or related to the content 206 on the content page 204,” wherein modification information 224 may also include “one more links (e.g., the links 315) to dedicated advertising landing pages [325, 327],” and “information for modifying an interface [310] of the ad portion 208.” Bauman ¶¶ 76, 89 (emphasis added). Here, in relying on Figure 3 of Bauman, the Examiner finds, “the landing pages [216, 325, 327] are the plurality of pre-existing rich media components wherein any modification to ad portion and/or other landing Appeal 2019-004962 Application 15/689,621 7 page portion is considered modification to the landing page or the ‘rich media component.’” Ans. 4. Thus, although we agree with the Examiner’s finding that Bauman teaches “modifying the ‘rich media component’ including adding more ads content or changing the ad interface” (id.), as observed by Appellant, the “Examiner has not pointed to any portions of Bauman that discuss modifying a landing page,” because “Bauman only discusses modifying the ad portion 208 on the content page 208 (e.g., by replacing ads) when the user interacts with the ad portion 208” but “does not describe modifying the landing page 216.” Reply Br. 2–3 (emphasis added). That is, although the Examiner relies on Bauman’s landing pages 216, 325, 327 for teaching the “plurality of pre-existing rich media components,” the Examiner does not point to any portions of Bauman that teaches or suggests “modifying content within” the landing pages (i.e., “second rich media component”), as recited in claim 1. (Emphasis added.) Accordingly, we are persuaded by Appellant’s contention that the cited portions of Mancarella in view of Bauman fail to teach or suggest “modifying content within a second rich media component . . . based on the interaction information,” as recited in independent Claim 1, and the similarly recited limitations in independent Claim 13. Consequently, we are constrained by the record before us to find that the Examiner erred in finding the combination of Mancarella and Bauman teaches or suggests Appellant’s Claims 1 and 13, and Claim 12 depending from Claim 1. Obviousness over Mancarella, Bauman, and Reinshagen (Claims 2–10, 14–20) Appeal 2019-004962 Application 15/689,621 8 The Examiner similarly relies on Mancarella and Bauman to teach and suggest “modify content within a second rich media component” as recited in Claim 16. Final Act. 4–5. Further, the Examiner does not show that the additionally cited Reinshagen reference overcomes the aforementioned deficiencies of the base combination of Mancarella and Bauman discussed above. For similar reasons with respect to Claims 1 and 13, we also reverse the Examiner’s rejection of Claim 16, and Claims 2–10, 14, 15, and 17–20 depending respectively from claims 1, 13, and 16, and thus falling therewith, over Mancarella and Bauman, in further view of Reinshagen. IV. CONCLUSION We affirm the Examiner’s rejection of claims 1–10 and 12–20 under the judicially created doctrine of nonstatutory double patenting. However, we reverse the Examiner’s rejections of claims 1–10 and 12–20 under 35 U.S.C. § 103. Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R. § 41.50(a)(1). V. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 12–13 103 Mancarella, Bauman 1, 12–13 2–10, 14–20 103 Mancarella, Bauman, Reinshagen 2–10, 14– 20 Appeal 2019-004962 Application 15/689,621 9 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–10, 12–20 Nonstatutory Double Patenting 1–10, 12–20 Overall Outcome: 1–10, 12–20 VI. TIME PERIOD FOR 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). AFFIRMED