Vungle, Inc.

Patent Trials and Appeals Board

Dec 24, 2020

2020003477 (P.T.A.B. Dec. 24, 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.
14/677,945 04/02/2015 Daniel Kang 9444P011 1051
151312 7590 12/24/2020
Vungle, Inc./ JWMH
7501 Village Square Drive, Suite 206
Castle Pines, CO 80108
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
12/24/2020 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):
deborah.higham@jwmhlaw.com
eofficeaction@appcoll.com
jeremy.schweigert@jwmhlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL KANG and BEN BEAR
____________

Appeal 2020-003477
Application 14/677,945
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
JAMES P. CALVE, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–22. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

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 Vungle Inc.
(Appeal Br. 3).
Appeal 2020-003477
Application 14/677,945

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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to systems and methods for
providing advertising services to devices (Spec., para 3). Claim 1,
reproduced below, is representative of the subject matter on appeal.

1. A system for improved ad selection, comprising:
a storage medium to store one or more software programs;
an adaptive decision unit coupled to the storage medium, the
adaptive decision unit including or being coupled to processing logic
that is configured to execute instructions of at least one adaptive
decision algorithm to:
obtain data of an advertisement (ad) engagement history for a
user to indicate engagement with a video ad in-app on a wireless
device of the user and device attributes of the wireless device
including tracking volume settings of the user during the ad
engagement when the user views the video ad, and application (app)
engagement history for the user including a level or degree of virality
or influence for influencing other users to install an application in
response to the user installing the application on the wireless device of
the user when making an ad selection decision; and
determine an ad selection decision for at least one relevant
video ad served in-app to the wireless device of the user based on the
data of the ad engagement history for the user including volume
settings of the user of the wireless device, device information
including a network connection for the wireless device, and the app
engagement history for the user for the ad selection decision.

Appeal Br. (Claims Appendix 1).

THE REJECTION
The following rejection is before us for review:
Claims 1–22 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Chan (US 2011/0264522 A1, published October 27, 2011), Guinn (US
2015/0012344 A1, published January 8, 2015), Dides (US 2015/0302458
Appeal 2020-003477
Application 14/677,945

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A1, published October 22, 2015), and Park (US 2013/0325573 A1,
published December 5, 2013).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
the references of record fail to disclose all the limitations of the claim, and
also because the combination of the references uses impermissible hindsight
and would not have been obvious (Appeal Br. 9–16, Reply Br. 2–5).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 5–8, Ans. 3–5).
We agree with the Appellant. Here, even taking the cited prior art to
disclose the argued claim limitations we determine that the rationale set forth
in the rejection of record to combine the references would not have been
obvious.
The Appellant has specifically argued that the combination of the
references of Chan, Guinn, Dides, and Parks lacks proper motivation for the
combination and would not have been obvious (Appeal Br. 14–16, Reply Br.
5). We agree with the Appellant in this regard. Here, Chan at para. 46 does
disclose an advertisement generation process based on targeting a user’s

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent and Trademark Office).
Appeal 2020-003477
Application 14/677,945

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demographic, geographic, and social information and a ranking. Chan at
para. 53 discloses selection of advertisements based on historical
interactions. Guinn at para. 47 discloses a method of interacting with ads to
unlock game enhancements. Dides at para. 65 discloses determining user
interest in ads by monitoring if the volume on the advertisement is increased
or decreased. Parks at para. 104 discloses displaying the most viral
distributions on the screen. While we agree that the cited prior art has
disclosed these elements, we do not agree that the cited combination of
references here would have been obvious.
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Supreme
Court at 418 noted that in an obviousness analysis that“[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”. In this case,
the cited rejection of record requires the teachings of Chan, Guinn, Dides,
and Parks to be modified to meet the limitations of claim 1 and here we
determine that the cited combination would not have been obvious. Here,
the rejection of record lacks articulated reasoning with rational
underpinnings without impermissible hindsight to sustain the rejection. In
particular, the inclusion of Guinn in the combination with the other
references of Chan, Dides and Parks lacks articulated reasoning and rational
underpinnings without impermissible hindsight. Chan does disclose an
advertisement generation process based on targeting a user’s data; Dides
does discloses monitoring ad volume as an indicator of interest; and Parks
discloses displaying viral distributions. However, Guinn’s disclosure of
unlocking content for a game based on an advertisement within the cited
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Application 14/677,945

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rationale for the rejection would not have been obvious to one of ordinary
skill in the art without impermissible hindsight. Accordingly, the rejection
of independent claim 1 and its dependent claims is not sustained. The
remaining independent claims 8, 15, and 20 are drawn to similar subject
matter and the rejection of these claims and their dependent claims is not
sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1–22 under 35 U.S.C. § 103(a) as unpatentable over Chan,
Guinn, Dides, and Park.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–22 103(a) Chan, Guinn,
Dides, Park
1–22

REVERSED