Ex Parte Guo et alDownload PDFPatent Trial and Appeal BoardJul 27, 201613589740 (P.T.A.B. Jul. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/589,740 120701 SVI 7590 FILING DATE FIRST NAMED INVENTOR 08/20/2012 Katherine H. Guo 07/29/2016 Lerner, David, Littenberg, Krumholz & Mentlik, LLP 600 South Avenue West Westfield, NJ 07090 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SVI 3.0-919 CON 9479 EXAMINER LASTRA, DANIEL ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 07/29/2016 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): eOfficeAction@ldlkm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KATHERINE H. GUO, ARUN N. NETRA VALL, and KRISHAN K. SABNANI Appeal2014-003870 Application 13/589,740 Technology Center 3600 Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE 1 Appellants seek our review under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1-20. We REVERSE and enter a new ground of rejection. (37 C.F.R. § 41.50(b)). 1 The Appellants identify Alcatel-Lucent as the real party in interest. (Appeal Br. 3). Appeal2014-003870 Application 13/589,740 THE CLAIMED fNVENTION Appellants' claimed invention relates generally "to delivering advertisements in wireless networks." (Spec. 1, 11. 11-12). Claim 1 is illustrative of the claimed subject matter: 1. An apparatus, comprising: a processor and a memory communicatively connected to the processor, the processor configured to: receive advertising content at a wireless user terminal; and receive, from a network device based on detection of a condition associated with the wireless user terminal, signaling for instructing the wireless user terminal to present advertising content at the wireless user terminal. REFERENCE The prior art relied upon by the Examiner in rejecting the claims on appeal is: Coxhill US 2008/0281940 Al Nov. 13, 2008 REJECTIONS The following rejection is before us for review. The Examiner rejected claims 1-20 under 35 U.S.C. § 102(e) as anticipated by Coxhill. FINDINGS OF FACT We find the following facts by a preponderance of the evidence. 1. Coxhill discloses "comprising providing an advertisement to the electronic device, detecting at least one prescribed condition of the electronic device corresponding to display of the advertisement, and 2 Appeal2014-003870 Application 13/589,740 displaying the advertisement on a display of the electronic device when the prescribed condition is detected." (Coxhill, para. 5). 2. Coxhill discloses operations performed on a mobile telephone 10 "may include storing the data in the memory 16, executing applications to allow user interaction with data, displaying video and/or image content associated with the data, outputting audio sounds associated with the data and so forth." (Id., para. 41). 3. Coxhill discloses that "advertising function 12" is executed by the mobile telephone 10. (Id., para. 43; see also para. 54). 4. Coxhill discloses that the mobile telephone 10 detects a condition of the phone itself and responds to that condition by displaying advertising content. (Id., para. 55). 5. Coxhill discloses the telephone contacting a server to retrieve advertisements to display, in that "[a ]dvertisements may also be streamed directly to the electronic device and displayed on the display. In such case, the advertisement function 12 would be configured to connect to an advertisement server to stream the advertisement to the electronic device." (Id., para. 68). 6. Coxhill discloses "advertisement support function 54 residing on the advertisement server can control which advertisements are downloaded by the phone. For example, the advertisement support function 54 can log which advertisements have already been displayed on the phone 10." (Id., para. 67). 7. Coxhill discloses: assisted-GPS (or A-GPS) may be used to determine the location of the mobile telephone 10. A-GPS uses an assistance server, which may be implemented with the server 52. The assistance 3 Appeal2014-003870 Application 13/589,740 server processes location related data and accesses a reference network to speed location determination and transfer processing tasks from the mo bile telephone 10 to the server 5 2. For instance, the assistance server may perform tasks to make range measurements and calculate position solutions that would otherwise be carried out by the position data receiver 44 or elsewhere in the mobile telephone 10. (Id., para. 75). ANALYSIS Claims 1-14 Independent claims 1 and 14 recite language substantially equivalent to "receiv[ing], from a network device based on detection of a condition associated with the wireless user terminal, signaling for instructing the wireless user terminal to present advertising content at the wireless user terminal." Appellants argue that in Coxhill, signaling for instructing the wireless user terminal to present advertising content is not received from a network device, because in Coxhill the mobile device itself decides when to display content downloaded from a network device. (Appeal Br.11-16; see also Reply Br. 2---6). The Examiner however finds signaling occurs in either the previously downloaded content files (Final Act. 2-3, citing para. 4--20 of Coxhill), or streamed content (Answer 9-10, citing Coxhill para. 37-71). We agree with Appellants. Coxhill discloses the mobile telephone detects conditions on itself and presents advertising in response to detecting those conditions. (FF 1--4 ). When streaming content, Coxhill discloses it is the telephone that contacts the server to initiate content streaming. (FF 5). 4 Appeal2014-003870 Application 13/589,740 Because the telephone is in both cases controlling the display of advertising, Coxhill does not disclose receiving instructions from a network device, outside of the element that executes advertising function, that signals to present advertising, as claimed. The Examiner has thus not established sufficiently anticipation of claims 1 and 14. As a result, we do not sustain the rejection under 35 U.S.C. § 102( e) of claims 1 and 14. Since claims 2-13 depend from claim 1, and since we cannot sustain the rejection of claim 1, the rejection of claims 2-13 likewise cannot be sustained. Claims 15-20 Independent claims 15 and 20 recite language substantially equivalent to "propagating, from the network device toward the wireless user terminal, based on detection of the condition at the network device, signaling for instructing the wireless user terminal to present advertising content at the wireless user terminal." Appellants present arguments substantially identical to those for claim 1. (Appeal Br. 16-21; see also Reply Br. 5). We agree with those arguments, for essentially the same reasons we set forth above at claim 1. Thus, we also do not sustain the rejection under 35 U.S.C. § 102(e) of independent claims 15 and 20, as well as claims 16-19 that depend from claim 15 and were rejected together with claim 15. New Rejection of Claims 1-20 under 35 U.S.C. § 103(a) We enter a new ground of rejection of claims 1-20 under 35 U.S.C. § 103(a) over Coxhill. 5 Appeal2014-003870 Application 13/589,740 As found supra, Coxhill fails to disclose receiving or propagating signals from a network device to a wireless user terminal. However, Coxhill discloses some advertising functions may be performed by an "assistance server" instead of on a telephone. (FF 6). Coxhill also discloses geographic location service functions that otherwise would be executed on a mobile telephone may instead be executed on a server, to more quickly make related determinations. (FF 7). The ordinary artisan would recognize where to implement the execution of a particular function in a client/server architecture, such as on a server (network device) or client machine (wireless user terminal), is variously selected such as to optimize speed, efficiency, cost, or control. The hosting location may be preferred at one server or client or another, but generally can be re-hosted to another device, such as server-to-client or client-to-server, without significant architectural changes. Because Coxhill discloses that some functions, that otherwise could be executed on a wireless user terminal, could instead be executed on a server (FF 6, 7), the ordinary artisan would recognize it would be a small step to implement the determination of when to signal to display an advertisement on a network device, instead of Coxhill' s user terminal. See KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making the obviousness determination one "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.") By merely executing such signaling functions (FF 6, 7) on a server instead of on a user device, Coxhill, thus, suggests the implementation of the specifically recited by the claim language, with the server propagating signals to the user device to display advertising. 6 Appeal2014-003870 Application 13/589,740 Under this additional rationale, in combination with the remainder of the Examiner's findings, other than those directed to the Examiner's non- server based rationale, we enter a new ground of rejection of claims 1, 14, 15, and 20 as obvious over Coxhill. We also newly reject dependent claims 2-13 and 16-19 under 35 U.S.C. § 103(a) as unpatentable over Coxhill adopting only the Examiner's findings for the dependent claim features (see Final Act. 3-7) as our own. CONCLUSIONS OF LAW The Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 102(e). We enter a new ground of rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Coxhill. DECISION For the above reasons, the Examiner's rejection of claims 1-20 is REVERSED. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter 7 Appeal2014-003870 Application 13/589,740 reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... 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)(l )(iv). REVERSED; 37 C.F.R. § 41.50(b) 8 Copy with citationCopy as parenthetical citation