Ex Parte Guo et al

Patent Trial and Appeal Board

Jul 27, 2016

13589740 (P.T.A.B. Jul. 27, 2016)

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