Mandel, David

Patent Trials and Appeals Board

Mar 8, 2021

2019005111 (P.T.A.B. Mar. 8, 2021)

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.
15/231,137 08/08/2016 Ayla Mandel 26025US03 7846
23446 7590 03/08/2021
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
NGUYEN, KIMBINH T
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
03/08/2021 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte AYLA MANDEL, DAVID MANDEL, and
STEPHEN D. WILLIAMS
____________________

Appeal 2019-005111
Application 15/231,1371
Technology Center 2600
____________________

Before JASON V. MORGAN, JON M. JURGOVAN, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1 and 22–41, constituting all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is Ayla
Mandel and David Mandel. Appeal Br. 1.
2 Our Decision refers to the Specification (“Spec.”) filed August 8, 2016;
the Final Office Action (“Final Act.”) mailed February 14, 2019; the Appeal
Brief (“Appeal Br.”) filed April 11, 2019; the Examiner’s Answer (“Ans.”)
mailed May 23, 2019; and the Reply Brief (“Reply Br.”) filed June 18, 2019.
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CLAIMED INVENTION
The claims relate to a method of operating a system for producing an
image or video with an avatar depicting an object in a context selected by an
end user. Spec. ¶ 5. The method includes monitoring and gathering
information from servers of Internet-based sources such as social media
website and public news sources, to determine subject matter of trending
topics. Id. ¶ 68. The method further includes classifying the gathered
information by their characteristics. Id. The method includes retrieving
background images related to a topic selected according to user input. Id.
¶¶ 69–71. The method includes creating one or more combined images
including the avatar and retrieved background images according to
characteristics and end-user input for display. Id. ¶ 71.
Claims 1, 28, and 35 are independent. Claim 1 is a method; claim 28
is a system; and claim 35 is a computer-readable medium. Appeal Br. 11,
13, 15–16 (Claims App.). Claims 22 to 27 depend from claim 1; claims 29
to 34 depend from claim 28; and claims 36 to 40 depend from claim 35.
Claim 1, reproduced below, is representative of the claimed subject
matter. Argued claim limitations are shown in italics:
1. A method of operating a system for producing an
image or video comprising an avatar depicting an object in a
context selected by an end-user of the system, the system
comprising one or more processors operably coupled to a
display, the method comprising:
monitoring information received from servers of one or
more Internet-based sources comprising one or both of a social
media website and a public source of news to determine subject
matter of topics of the information received from the sources;
gathering information items about the subject matter of
at least one topic of the topics of the information received from
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the sources, the information comprising one or more images
and any textual content attached to or associated with the one
or more images;
classifying the gathered information items, to determine
one or more characteristics of the information items;
retrieving one or more images related to the at least one
topic selected according to input from the end-user of the
system; and
creating one or more combined images comprising an the
avatar depicting the object and one or more background images
selected from the retrieved one or more images according to the
one or more characteristics and the input from the end-user of
the system, for the display.

Appeal Br. 11 (Claims App.).

REJECTION
Claims 1 and 22–41 stand rejected under 35 U.S.C. § 103 based on
De Keyser (WO 2013/120851 A1, published August 22, 2013); Davis
(US 2013/0257877 A1, published October 3, 2013); and Bill
(US 2013/0243245 A1, published September 19, 2013). Final Act. 7–14.

ANALYSIS
Standard of Review
We undertake a limited de novo review of the appealed rejections for
error based upon the issues identified by Appellant, and in light of the
arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential).
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§ 103 Rejection
Title 35, section 103, provides
A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not identically
disclosed as set forth in section 102, if the differences between
the claimed invention and the prior art are such that the claimed
invention as a whole would have been obvious before the
effective filing date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention pertains.3
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) any differences between the claimed subject matter and the prior art;
(3) the level of ordinary skill in the art; and (4) where present, objective
evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966).
A. Independent Claims 1, 28, and 35
Appellant presents the same arguments for claims 1, 28, and 35. See
Appeal Br. 5–9. Accordingly, we select claim 1 as representative of the
independent claims and unless otherwise indicated will restrict our analysis
to this claim only. 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple claims
subject to the same ground of rejection are argued as a group or subgroup by
appellant, the Board may select a single claim from the group or subgroup

3 The AIA included revisions to 35 U.S.C. § 103 that became effective on
March 16, 2013. Because the present patent application was filed after this
date, we assume AIA § 103 applies to this application. However, on this
record, our analysis would not be different if pre-AIA § 103 applied to this
case.
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and may decide the appeal as to the ground of rejection with respect to the
group or subgroup on the basis of the selected claim alone”).
Appellant argues that De Keyser fails to show the “monitoring
information . . . to determine subject matter of topics of the information
received from the sources” as recited in claim 1. Appeal Br. 5–6. We agree
with Appellant’s argument. The cited parts of De Keyser address a three-
dimensional model (an avatar) stored on a platform in a cloud environment
(4:14–21); cloud computing (8:23–26); a cloud application (9:3–5); a “living
portrait” (18:1–10); text-to-speech conversion using third party technology
(18:20–22); and a server controlling an event, which may interact with social
networks (47:19–21). Final Act. 7. The Examiner has not shown adequately
how these De Keyser citations disclose the claimed monitoring of
information of a social media website or public news source to determine the
subject matter of topics of information received from the source.
In the Answer, the Examiner cites to numerous other parts of
De Keyser, and to Davis, as disclosing the claimed “monitoring.” Ans. 4–6.
To the extent these citations are different from those relied on in the Final
Office Action, they should have been included in a new ground of rejection.
See 37 C.F.R. § 41.39.
In any event, the Examiner equates the claimed “topics” to at least
three different things: (1) discussions (Ans. 4); (2) a human subject (Ans.
6); and (3) interactive behavioral and personality characteristics (id.). While
claim terms are to be given their broadest reasonable interpretation
consistent with the specification in which they appear (see In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004)), we find the
Examiner’s interpretation to be unreasonably broad in light of what the
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Specification describes concerning the claimed “monitoring.” Particularly,
paragraph 68 of the Specification describes monitoring of various sources of
news and social traffic to determine currently trending topics such as
entertainment, weather, sports, finance, crime, housing, health and medical.
The Specification further describes that this information may be gathered,
analyzed, and classified to determine subject matter, level of importance and
timeliness, global/local relevance, and mood. Id.
In light of the Specification, the Examiner’s finding that “topics”
equate to “discussions” is in error because, while the content of discussions
may include topics, discussions are not per se topics. And “topics” as the
term is used in the Specification does not correspond to a “human subject”
or “interactive behavioral and personality characteristics” as the Examiner
finds. Accordingly, the Examiner’s rejection is based on an overly broad
interpretation of the claimed “monitoring” and we do not sustain the
rejection of claims 1, 28, and 35.
B. Remaining Claims
For the reasons stated above with respect to independent claims 1, 28,
and 35, we do not sustain the § 103 rejection of dependent claims 22–27,
claims 29–34, and claims 36–40.
C. Remaining Arguments
Having decided the appeal of the § 103 rejection on the basis stated
above, we do not reach Appellant’s remaining arguments concerning the
obviousness rejection.
Double Patenting
The Examiner rejected claim 1 on the ground of non-statutory
obviousness-type double patenting over claim 1 of U.S. Patent No.
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9,413,192. Final Act. 4–6. Appellant argues that since claim 1 of the
present application has not yet been allowed, no double patenting yet exists.
Appeal Br. 10. We do not agree that claim 1 of the subject application must
be allowed for a double patenting rejection to be timely. See MPEP § 804.
Other than the timing, Appellant does not argue the propriety of the double-
patenting rejection. See Appeal Br. 10. Consequently, we sustain the
double-patenting rejection of claim 1.

CONCLUSION
For the stated reasons, we reverse the Examiner’s rejection of claims 1
and 22–41 under 35 U.S.C. § 103. We affirm the rejection of claim 1 for
non-statutory obviousness-type double-patenting.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 22–41 103 De Keyser, Davis,
Bill
1, 22–41
1 Obviousness-Type
Double-Patenting
1
Overall
Outcome
1 22–41

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED-IN-PART