Sheldon Chang et al.Download PDFPatent Trials and Appeals BoardMar 26, 202014548590 - (D) (P.T.A.B. Mar. 26, 2020) Copy Citation 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. 14/548,590 11/20/2014 Sheldon Chang 4218.005US1 6707 144407 7590 03/26/2020 Schwegman Lundberg & Woessner / SNAP, Inc. P.O. Box 2938 Minneapolis, MN 55402 EXAMINER VU, THANH T ART UNIT PAPER NUMBER 2175 NOTIFICATION DATE DELIVERY MODE 03/26/2020 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): slw@blackhillsip.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHELDON CHANG and TIMOTHY MICHAEL SEHN ____________ Appeal 2018-009185 Application 14/548,590 Technology Center 2100 ____________ Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and STEVEN M. AMUNDSON, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–17, 19, 20, 22, 23, 25–28, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part and institute a new ground of rejection under the provisions of 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Snap Inc. Appeal Br. 3. Appeal 2018-009185 Application 14/548,590 2 THE INVENTION The disclosed and claimed invention is directed to identifying pictographs based on current geolocation of a user device. See Spec. ¶ 28.2 Claim 1, reproduced below with the disputed limitations italicized, is illustrative of the claimed subject matter: 1. A system comprising: a geolocation pictograph server computer for managing communication of content comprising geolocation based pictographs, the server computer comprising: a storage device configured to store a submission from a configuration device of a submitting entity, the submission comprising a custom pictograph, a geographic indication that corresponds to the custom pictograph, and an entity-specified criterion associated with access to the custom pictograph, the entity-specified criterion being met when a biometric sensor of a user device determines a user heart rate level exceeds a threshold level; one or more processors coupled to the storage device and configured to: process, using a geolocation module, a communication from a user device comprising a current geolocation of the user device; identify, using a pictograph module of the geolocation pictograph server computer, the custom pictograph based on the current geolocation from the user device and the geographic indication; 2 We refer to the Specification filed Nov. 20, 2014 (“Spec.”); Final Office Action mailed July 18, 2017 (“Final Act.”); Appeal Brief filed Apr. 20, 2018 (“Appeal Br.”); Examiner’s Answer mailed July 27, 2018 (“Ans.”); and the Reply Brief filed Sept. 27, 2018 (“Reply Br.”). Appeal 2018-009185 Application 14/548,590 3 determine, by the pictograph module based on the communication from the user device, a satisfaction of the entity-specified criterion; in response to the pictograph module identifying the custom pictograph and determining that the entity- specified criteria is satisfied, initiate a communication to the user device for presentation of the custom pictograph on a user interface of the user device; receive, from the user device at a communication module implemented using the one or more processors, a user message with a request to transmit the user message to a device of another user, wherein the user message further comprises image content generated by the client device for presentation with the custom pictograph; and cause transmission of the user message that includes the custom pictograph and the video to the device of another user. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Name Reference Date Anderton US 2008/0189177 A1 Aug. 7, 2008 Rajaram US 2013/0159110 A1 June 20, 2013 Bergboer US 8,660,358 B1 Feb. 25, 2014 Anderson US 2014/0092130 A1 Apr. 3, 2014 O’Keefe US 2014/0287779 A1 Sept. 25, 2014 Gottesman US 2014/0306986 A1 Oct. 16, 2014 Leydon US 2015/0095020 A1 Apr. 2, 2015 (parent application filed Dec. 19, 2011) Appeal 2018-009185 Application 14/548,590 4 Name Reference Date Mizrachi US 2015/0096042 A1 Apr. 2, 2015 (filed Oct. 2, 2013) REJECTIONS Claims 1–7, 9–15, 22, 23, 25–27 stand rejected under 35 U.S.C. § 103 as unpatentable over O’Keefe, Leydon, and Anderson. Ans. 3. Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable over O’Keefe, Leydon, Anderson, and Gottesman. Ans. 11. Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as unpatentable over O’Keefe, Leydon, Anderson, and Bergboer. Ans. 11. Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable over O’Keefe, Leydon, Anderson, and Anderton. Ans. 12. Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over O’Keefe, Leydon, Anderson, and Rajaram. Ans. 13. Claim 28 stands rejected under 35 U.S.C. § 103 as unpatentable over O’Keefe, Leydon, Anderson, and Mizrachi. Ans. 14. Claims 1, 25, and 283 stand rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention. Ans. 2. ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s arguments that the Examiner erred. In reaching this decision, we consider all evidence presented and all arguments made by Appellant. 3 The Examiner identified claim 27 in the Office Action. Final Act. 2–3. That was a typographical error that was corrected in the Answer. Ans. 2. Appeal 2018-009185 Application 14/548,590 5 Section 103 Rejections Claim 1 recites store a submission from a configuration device of a submitting entity, the submission comprising a custom pictograph, a geographic indication that corresponds to the custom pictograph, and an entity-specified criterion associated with access to the custom pictograph, the entity-specified criterion being met when a biometric sensor of a user device determines user heart rate level exceeds a threshold level . . . in response to the pictograph modules identifying the custom pictograph and determining that the entity-specified criteria is satisfied, initiate a communication to the user device for presentation of the custom pictograph on a user interface of the user device. The Examiner finds O’Keefe’s managing content comprising geolocation images when it is determined that the user’s device is within a geofence teaches storing “an uploaded pictograph and a geographic indication that corresponds to the pictograph.” Ans. 17 (citing O’Keefe ¶¶ 64, 72); see Ans. 4 (citing O’Keefe, Fig. 2, ¶¶ 64, 74, 75, 116, 117, 169). The Examiner also finds Leydon teaches configuring a custom pictograph and transmitting the user message that includes the identified pictograph. Ans. 5 (citing Leydon ¶¶ 32, 53); see Ans. 17–18. The Examiner further finds Anderson’s showing a location-based image and combining it with an avatar teaches a “user message further compris[ing] image content generated by the client device for presentation with the custom pictograph.” Ans. 6 (citing Anderson, Figs. 4, 11, ¶¶ 18, 42); see Ans. 18. Appellant argues that O’Keefe does not teach “a server is set to both store a pictograph with geographic and entity-specific criterion and then make that pictograph available for other users based on the geographic and entity specific criterion.” Appeal Br. 14. Specifically, according to Appeal 2018-009185 Application 14/548,590 6 Appellant, O’Keefe “merely describes storing data at a device, and presenting the data or a prompt to capture a photo when the device is at a location associated with the data,” which is “different than the pictograph system with geographic and entity-specific criterion that is first uploaded and then made available to other users when the criteria is specified.” Appeal Br. 15. Appellant also argues Leydon’s identifying emoticons is based “on the location term in the text matched to an image independently associated with a target subtext or a target meaning.” Appeal Br. 15. Appellant further argues that Anderson’s “automatic custom generation of images on-the-flow” is different than the claimed “custom pictogram is generated and associated with geographic and entity-specific criterion, and then only made available when the criterion is met.” Appeal Br. 16. We are persuaded by Appellant’s argument as the Examiner has not identified sufficient evidence or provided sufficient explanation as to how the combination of O’Keefe, Leydon, and Anderson teaches (1) storing a submission comprising a custom pictograph along with a corresponding geographic indication and access criterion comprising a biometric sensor of a user device determines a user heart rate level exceeds a threshold level, (2) identifying the custom pictograph based on the current geolocation from the user device and the stored geographic indication, (3) presenting the custom pictograph on a user interface of the user device, (4) receiving a user message requesting to transmit client-device-generated content for presentation with the custom pictograph, and (5) transmitting the user message including the custom pictograph and client-device-generated content to the device of another user. Appeal 2018-009185 Application 14/548,590 7 The cited sections of O’Keefe teach “determining . . . if the user’s smart phone 300 has entered into the geofence for a particular experience location” and then “one of a plurality of possible location specific digital stores is selected and provided to the user’s mobile device.” O’Keefe ¶¶ 117, 120. The cited sections of Leydon teach “[e]moticons [are] stored on the emoticon suggestion datastore,” and “[w]hen analyzing the context of one or more segments of interest . . . determin[ing] a subtext or a meaning for the segments of interest” and “identify[ing] one or more candidate emoticons for suggestion” “[b]ased on the subtext or meaning.” Leydon ¶¶ 32, 47. Leydon further teaches “narrow[ing] the search for candidate emoticons by utilizing user preferences, user-related information, recipient- related information,” which include “a user geographic location.” Leydon ¶ 53. In Anderson, as cited, a module “may use GPS information to create a user environment indicator in the form of a map or image of a recognizable feature of a location, e.g., the Eiffel Tower in Paris,” which “may further be combined with an avatar of the user to produce a user environment indicator depicting the user superimposed on the map or image.” Anderson ¶ 42. In other words, O’Keefe teaches identifying and presenting a pictograph on a user device based on the user device’s geographic location; Leydon teaches storing emoticons and suggesting emoticons based on context that can consider user geographic location; and Anderson teaches presenting digital images to a user device based on the user device’s geographic location, and transmitting the digital image superimposed with the user device’s content. However, these sections of O’Keefe, Leydon, and Anderson cited by the Examiner and on the record before us do not teach: (1) storing a submission comprising a custom pictograph along with a corresponding Appeal 2018-009185 Application 14/548,590 8 geographic indication and access criterion comprising a biometric sensor of a user device determines a user heart rate level exceeds a threshold level, and (2) identifying and presenting the custom pictograph based on the current geolocation from the user device and geographic indication, and (3) receiving a user message requesting to, and subsequently transmitting, client-device-generated content for presentation with the custom pictograph. We agree with Appellant that the proposed combination of references “would not arrive at the” claimed limitations “where a user selects a custom pictograph that is made available to the user based on geographic and entity-specific criterion that were part of the original upload of the pictograph.” Reply Br. 3–4 (emphasis added). Therefore, we agree with Appellant that the Examiner’s finding that the combination of O’Keefe, Leydon, and Anderson teaches the disputed limitations is in error because it is not supported by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (The Examiner’s burden of proving unpatentability is by a preponderance of the evidence.); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.”). Accordingly, we are constrained on the record before us to reverse the Examiner’s § 103 rejection of independent claim 1, along with the § 103 rejection of independent claims 3, 22, and 25, which recite limitations commensurate in scope to the disputed limitations discussed above, and dependent claims 2, 4–7, 9–15, 23, 26, and 27. Appeal 2018-009185 Application 14/548,590 9 Moreover, because the Examiner has not shown that the additional references cure the foregoing deficiencies regarding the rejection of the independent claims 1, 3, 22, and 25, we will not sustain the obviousness rejections of dependent claims 8, 16, 17, 19, 20, and 28. Section 112 Rejection Appellant does not address the rejection under 35 U.S.C. § 112, second paragraph. Accordingly, we summarily sustain the Examiner’s rejection of claims 1, 25, and 28 under 35 U.S.C. § 112(b) as indefinite. See MPEP § 1205.02 (2018) (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it.”); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issues – or more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”). New Ground of Rejection Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject dependent claims 2, 26, and 27 under 35 U.S.C. § 112(b) for indefiniteness. With regard to independent claim 1, the Examiner concludes “there is insufficient antecedent basis” for the limitations “the client device” and “the video”; and with regard to independent claim 25, the Examiner concludes “there is insufficient antecedent basis” for the limitation “the pictograph.” Ans. 2. Dependent claims 2 and 27—both of which depend on claim 1— suffer from the same insufficient antecedent basis as claim 1; and dependent Appeal 2018-009185 Application 14/548,590 10 claim 26, which depends from claim 25, suffers from the same insufficient antecedent basis as claim 25. Accordingly, for the same reasons that the Examiner concluded that claims 1 and 25 are indefinite, we conclude that claims 2, 26, and 27 are likewise indefinite. We designate the affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). CONCLUSION We reverse the Examiner’s § 103 rejections of claims 1–17, 19, 20, 22, 23, 25–28. We affirm the Examiner’s § 112(b) rejection of claims 1, 25, and 28. We enter a new ground of rejection for claims 2, 26, and 27 under § 112(b). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed New Ground of Rejection 1–7, 9– 15, 22, 23, 25–27 103 O’Keefe, Leydon, Anderson 1–7, 9– 15, 22, 23, 25–27 8 103 O’Keefe, Leydon, Anderson, Gottesman 8 16, 17 103 O’Keefe, Leydon, Anderson, Bergboer 16, 17 Appeal 2018-009185 Application 14/548,590 11 Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed New Ground of Rejection 19 103 O’Keefe, Leydon, Anderson, Anderton 19 20 103 O’Keefe, Leydon, Anderson, Rajaram 20 28 103 O’Keefe, Leydon, Anderson, Mizrachi 28 1, 25, 28 112(b) Indefiniteness 1, 25, 28 2, 26, 27 Overall Outcome 1, 25, 28 3–17, 19, 20, 22, 23 2, 26, 27 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). This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, 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 reconsidered Appeal 2018-009185 Application 14/548,590 12 by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED IN PART 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation