Van Der Haar, Rob et al.

Patent Trials and Appeals Board

Jun 10, 2020

12368747 - (D) (P.T.A.B. Jun. 10, 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.
12/368,747 02/10/2009 Rob Van Der Haar PAT 85636-2 2472
132251 7590 06/10/2020
(BLG/Conversant Wireless/27921)
Borden Ladner Gervais LLP
World Exchange Plaza
100 Queen Street, Suite 1300
Ottawa, ONTARIO K1P 1J9
CANADA
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/10/2020 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):
ipinfo@blg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROB VAN DER HAAR,
LAURA MAJAVA, and ANNA NILSSON
Appeal 2019-001640
Application 12/368,747
Technology Center 3600
Before BRADLEY W. BAUMEISTER, JOHN F. HORVATH,
and SCOTT RAEVSKY, Administrative Patent Judges.
HORVATH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–3, 7–10, 14, 16–20, 22–31, 33, and
34. Appeal Br. 10.2 Claims 4–6, 11–13, 15, 21, and 32 have been cancelled.
Id. at 3. 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(a). Appellant identifies the real party in interest as Conversant
Wireless Licensing S.A.R.L. Appeal Br. 3.
2 Appellant only requests “review of the grounds for rejecting claims 1–3,
8–10, 14, 16, 19, 20, 25, 28, 30, 31, 33, and 34.” Appeal Br. 10.
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CLAIMED SUBJECT MATTER
The invention is directed to “a user interface, an apparatus and a
method for presenting an advertisement in response to gesture input.”
Spec. 1:5–7.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An apparatus comprising:
a user interface for receiving user input text;
a display;
a motion sensor configured to detect motion; and
at least one controller coupled to the display and the
motion sensor, the at least one controller configured to:
receive the user input text via the user interface for
composing a message in a messaging application;
display a first advertisement on the display along
with the user input text;
determine whether a motion of the apparatus
detected by the motion sensor exceeds a threshold while
the messaging application is active;
responsive to determining that the motion of the
apparatus exceeds the threshold,
provide a second advertisement to be output
by the apparatus, the second advertisement
selected based on a set of contexts monitored by
the controller, the set of contexts comprising
context of the user input text; and
display the second advertisement along with
the same user input text displayed with the first
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advertisement, in place of the first advertisement
on the display.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Crolley US 2007/0061205 A1 Mar. 15, 2007
Jiang US 2008/0287150 A1 Nov. 20, 2008
Louis US 7,586,032 B2 Sept. 8, 2009
Jones US 2010/0114720 A1 May 6, 2010
Mastronardi US 2010/0312639 A1 Dec. 9, 2010
REJECTIONS
Claims 1–3, 7–10, 14, 16, 19, 20, 25, 28, 30, 31, 33, and 34 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Louis, Jiang, and
Jones. Final Act. 3–5.
Claims 17, 18, 22, 26, and 27 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Louis, Jiang, Jones, and Crolley. Final Act. 5–7.
Claims 24 and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Louis, Jiang, Jones, and Mastronardi. Final Act. 7–8.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential). Appellant argues for the patentability of claims 1–3,
8–10, 14, 16, 19, 20, 25, 28, 30, 31, 33, and 34 as a group. Appeal Br. 12–
21.3 We select claim 1 as a representative claim, and review the rejection of

3 Appellant argues independent claim 1 is patentable because the cited prior
art is missing a limitation and cannot be properly combined. Appeal Br. 12–
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claims 2, 3, 7–10, 14, 16–20, 22–31, 33, and 34 based on the rejection of
claim 1. See 37 C.F.R. § 41.37(c)(iv). Any arguments not raised by
Appellant are waived. Id.
We have reviewed the Examiner’s rejection of claim 1 in light of
Appellant’s arguments that the Examiner has erred. We are not persuaded
by Appellant’s arguments, and sustain the Examiner’s rejection for the
reasons stated in the Final Action and Answer, which we adopt as our own.
We highlight the following for emphasis.
Rejections under 35 U.S.C. § 103(a)
Appellant argues the Examiner erred in rejecting claim 1 because the
combination of Louis, Jiang, and Jones fails to teach or suggest the claim 1
limitations of “provid[ing] a second advertisement . . . selected based on. . .
the user input text” and “display[ing] the second advertisement along with
the same user input text displayed with the first advertisement.” Appeal
Br. 12 (emphases omitted). Appellant further argues the Examiner erred in
rejecting claim 1 because “there is no suggestion from the applied references
to modify their properly combined teachings so as to reach the requirements
of claim 1.” Id. at 18. We are not persuaded by Appellant’s arguments for
the reasons discussed below.
Appellant first argues that Jiang fails to teach or suggest displaying on
a device any advertisement based on the device’s input text because Jiang
“never displays an advertisement with the user input text displayed on the

15, 18–20. Appellant further argues that independent claims 8, 16, and 30
are patentable for the same reasons as claim 1. Id. at 15–18, 20–21.
Finally, Appellant argues “the dependent claims stand[] or fall[] with their
respective independent claims.” Id. at 10.
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screen of the . . . device.” Id. at 14 (emphases omitted). Rather, Appellant
argues, Jiang displays on a second (receiving) device an ad selected based on
the input text of a first (sending) device. Id. (citing Jiang ¶¶ 77, 78, Figs. 7,
8). Appellant argues “it is only the second device that receives the
transmitted message with appended advertisement” and displays the
advertisement. Reply Br. 4. The first device only displays “the original sent
message text and the reply message from the second device with [an]
appended second advertisement” that is “contextually related to the reply
message” input into the second device rather than the original message input
into the first device. Id.
We disagree that Jiang fails to teach or suggest displaying an
advertisement on a device based on the text input into the device. Rather,
we agree with the Examiner that paragraphs 54 and 66 of Jiang teach this
limitation. See Final Act. 3–4; Ans. 4. Jiang teaches an advertisement
system that selects “at least one advertisement” based on the “content of [a]
text message.” Jiang ¶ 54 (emphasis added). The system “captures the
context of message exchanges between [a] first subscriber [sender] and [a]
recipient of the text message,” and selects at least one advertisement based
on that content. Id. ¶¶ 54, 66. Although the system can send the at least one
advertisement to the recipient, as Appellant contends, it can also send
“another advertisement to the subscriber,” i.e., another one of the at least
one advertisements. Id. ¶¶ 66, 77 (emphasis added).
Jiang’s system can also insert the at least one advertisement “into the
reply the subscriber receives from the recipient of the text message.” Id.
¶ 66. Thus, Jiang’s subscriber can receive and display the advertisement
selected based on the subscriber’s text message because Jiang can either
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(a) append the at least one advertisement to the reply message sent to the
subscriber, or (b) send the subscriber another advertisement based on the
subscriber’s text message.
Appellant next argues that Jones fails to teach or suggest selecting and
displaying a second advertisement on a device based on the same input text
used to select and display a first advertisement on the device because Jones
teaches “a first advertisement is presented on [a] webpage, followed by an
event notification indicating a modification to the context of the webpage,”
and it is only after the webpage’s context is modified that “a second
advertisement [is] displayed with the modified context of the webpage.”
Appeal Br. 13 (citing Jones, Fig. 4). That is, Appellant argues that Jones’
second advertisement is generated “as a result of a change in context of the
original webpage,” whereas claim 1 “presents a second advertisement in
response to motion of the device, but also based on the same original user
input text.” Reply Br. 2–3 (emphasis omitted).
We disagree that Jones fails to teach or suggest selecting and
displaying a second advertisement on a device based on the same text input
used to select and display the first advertisement on the device. Rather, we
agree with the Examiner that paragraphs 53 and 84 of Jones teach this
limitation. See Final Act. 3–4; Ans. 4.
Jones teaches that contextual advertisement systems were known to
“scan the text of a web page for keywords, and select advertisements based
on any keywords located in the text.” Jones ¶ 5. Jones further teaches a
dynamic contextual advertisement system that displays a first set of
contextual advertisements on a web page based on a first request for
advertisements, and generates “a second request for one or more
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advertisements for display on the web page . . . based on . . . at least one
event notification.” Jones ¶¶ 48, 53. Although the event notification may be
due to “change(s) in context in [the] web page,” as Appellant contends, the
event notification may also be due to “passage of a predetermined amount of
time” or “another type of triggering event.” Id. Thus, Jones can select and
display a first set of advertisements on a web page based on the web page’s
content, and select and display a second set of advertisements on the same
web page based on the same web page content upon receiving an event
trigger such as (a) passage of a predetermined amount of time or (b) another
type of trigger, such as Louis’s motion detection trigger to change the media
item currently being played. See Jones ¶ 53; Louis, 2:52–57, 14:28–31.
Appellant next argues that the Examiner’s “stated rationale for
combining the teachings of Jiang with those of Louis is not provided by the
prior art, but rather necessarily derives from the improper use of Appellant’s
own teachings in hindsight.” Appeal Br. 18–19. We note the Examiner’s
rationale for combining the teachings of Jiang and Louis was to provide
users with (a) targeted ads that are more likely to elicit a response, and
(b) interactive means for presenting ads on a user device. See Final Act. 4.
Appellant argues Louis lacks such a suggestion because “it fails to
mention or suggest the displaying of advertisements entirely,” and Jiang
lacks such a suggestion because it “provides no reason why one would want
to ‘establish an interactive means for presenting ads on a user device.’”
Appeal Br. 19.
We are not persuaded by Appellant’s arguments, which attack the
separate teachings of Jiang and Louis rather than their combined teachings.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness
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is not . . . that the claimed invention must be expressly suggested in any one
or all of the references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.”).
Jiang teaches that it was known to provide users with targeted text-
based ads based on user textual input. See Jiang ¶¶ 32, 54. Louis teaches
that it was known to replace a currently playing media item, including text,
with an automatically selected media item upon detecting the shaking of a
media playback device. See Louis 14:18–27, 14:49–52, Fig. 4A. Thus, as
the Examiner found, Jiang and Louis teach providing users with targeted ads
(Jiang) and interactive means (motion detection) for replacing a first targeted
ad with a second targeted ad (Louis), and a person skilled in the art would
have combined these two teachings to increase the likelihood that the ads
would be of interest to the user and elicit a user response (e.g., selection of
the ad). See Final Act. 4; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) (“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.”).
Finally, Appellant argues that “Jones is not supportive” of the
Examiner’s reasons to combine Jiang and Louis because Jones fails to
“disclose or suggest the changing of an advertisement without a change in
the displayed content.” Appeal Br. 19–20. We are not persuaded by this
argument for the reasons stated above. Namely, Jones does, in fact, teach or
suggest changing a context-based advertisement without changing the
context of the web page by receiving a trigger, such as the passage of a
predetermined period of time. See Jones ¶ 53.
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CONCLUSION
The Examiner’s rejection of claims 1–3, 7–10, 14, 16, 19, 20, 23, 25,
28, 30, 31, 33, and 34 as unpatentable over Louis, Jiang, and Jones is
sustained.
The Examiner’s rejection of claims 17, 18, 22, 26, and 27 as
unpatentable over Louis, Jiang, Jones, and Crolley is sustained.
The Examiner’s rejection of claims 24 and 29 as unpatentable over
Louis, Jiang, Jones, and Mastronardi is sustained.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 7–10,
14, 16, 19,
20, 23, 25,
28, 30, 31,
33, 34
103(a) Louis, Jiang, Jones 1–3, 7–10,
14, 16, 19,
20, 23, 25,
28, 30, 31,
33, 34

17, 18, 22,
26, 27
103(a) Louis, Jiang, Jones 17, 18, 22,
26, 27

24, 29 103(a) Louis, Jiang, Jones 24, 29
Overall
Outcome
1–3, 7–10,
14, 16–20,
22–31, 33,
34

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED