Acosta, Evan et al.

Patent Trials and Appeals Board

Jan 29, 2020

13911067 - (D) (P.T.A.B. Jan. 29, 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.
13/911,067 06/05/2013 Evan Acosta DISNEY-0700-US 3405
94468 7590 01/29/2020
DISNEY ENTERPRISES INC.
c/o Patent Ingenuity, P.C.
9701 Wilshire Blvd., Suite 1000
Beverly Hills, CA 90212
EXAMINER
NGUYEN, THUY N
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
patents@patentingenuity.com
ssimpson@patentingenuity.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EVAN ACOSTA, EDWARD DRAKE, and MARK ARANA
____________

Appeal 2019-001693
Application 13/911,0671
Technology Center 3600
_______________

Before HUNG H. BUI, JEREMY J. CURCURI, and
JOHN F. HORVATH, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 12, 13, 17, and 20–23, which are all
the claims pending in the application. Claims 1–11, 14–16, and 18–19 have
been cancelled. Claims 24–35 have been withdrawn from consideration.
App. Br. 9 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. The real party in interest is Disney Enterprises, Inc. App. Br.
2.
2 Our Decision refers to Appellant’s Appeal Brief (“App. Br.”) filed April
29, 2018; Reply Brief (“Reply Br.”) filed December 20, 2018; Examiner’s
Answer (“Ans.”) mailed November 29, 2018; Final Office Action (“Final
Act.”) mailed October 31, 2017; and original Specification (“Spec.”) filed
June 5, 2013.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to “a proximity-based device within a
product and/or a product package [that] sends [media] data associated with
the product and/or the product package to a mobile device [as shown in
Figure 1] when the mobile device is within a proximity to the proximity-
based device.” Spec. ¶¶ 7, 20–21; Abstract. Figure 1 is reproduced below:

Appellant’s Figure 1 shows interaction between mobile device 106 and
proximity-based transmitter 104 within product package 102, when mobile
device 106 is within the proximity of product package 109.
According to Appellant, “the product may be a media product, e.g., a
Blu-ray disk, DVD, video game, or the like.” Spec. ¶ 20.
The media [data] provided to the user [at the mobile device] may
include information about the contents of the package or the
product, e.g., a menu of the discs inside the package, a list of
items inside the package, previews, bonus games, quantity of
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discs, promotions, coupons, special offers, a video (such as a
video involving an action figure and/or a movie), music (such as
music corresponding to an action figure and/or a movie), an offer
to purchase a digital copy of a movie (such as with a movie
character corresponding to an action figure), additional
information, or the like.

Spec. ¶ 21. The proximity-based device may be a “proximity-based sensor
and/or transceiver [], e.g., RFID chip, RFID tag, Near Field Communication
(“NFC”) chip, NFC tag, Bluetooth, or the like.” Spec. ¶ 21. In another
aspect of Appellant’s invention, the content provided to the mobile device
can be used to display “a virtual magazine of the contents of the media
product,” where “the user may swipe through all the data in a digital
magazine format.” Spec. ¶ 28.
Representative Claim
Claims 12 and 23 are independent. Representative claim 12 is
reproduced below:
12. A method comprising:
[1] receiving, at a proximity-based receiver within a
mobile device, a virtual magazine of items associated with an
object stored within a product package, from a proximity-based
transmitter within the product package, based upon the
proximity-based receiver being within a proximity to the
proximity-based transmitter;
[2] displaying the virtual magazine at the mobile device to
provide a user with an immersive experience based on the virtual
magazine prior to purchasing the object;
[3] receiving a plurality of user inputs corresponding to a
plurality of swipes; and
[4] changing the display of the virtual magazine based on
the plurality of swipes to render different pages of the virtual
magazine on the mobile device.
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App. Br. 10–11 (Claims App.) (bracketing added).

Evidence Considered

Name Reference Date
Arponen et al.
“Arponen”
US 2012/0218084 A1 Aug. 30, 2012
Pereymer US 2014/0040070 A1 Feb. 6, 2014
Bradley et al.
“Bradley”
US 2013/0290106 A1 Oct. 31, 2013
Zilliacus et al.
“Zilliacus”
US 8,010,621 B2 Aug. 30, 2011
Robson et al.
“Robson”
US 2006/0113371 A1 June 1, 2006

EXAMINER’S REJECTIONS3
(1) Claims 12, 17, and 20–22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Arponen and Pereymer. Final
Act. 8–11.
(2) Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arponen, Pereymer, and Robson. Final Act. 11.
(3) Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arponen, Pereymer, and Zilliacus. Final Act. 16–19.

3 Claims 1 and 5–11 were rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 2–3. Similarly,
claims 1 and 5–10 were rejected under 35 U.S.C. § 103(a) as being obvious
over Robson and Bradley. Final Act. 4–7. However, the Examiner has
withdrawn these rejections (App. Br. 2). As such, these rejections of claims
1 and 5–11 are no longer on appeal.
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Issue on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the cited prior art (Arponen and Pereymer) teaches or suggests
“receiving, at a proximity-based receiver within a mobile device, a virtual
magazine of items associated with an object stored within a product
package, from a proximity-based transmitter within the product package,
based upon the proximity-based receiver being within a proximity to the
proximity-based transmitter,” as recited in Appellant’s claim 12. App. Br.
3–4; Reply Br. 2–4 (emphasis added).

ANALYSIS
With respect to independent claim 12, the Examiner finds Arponen
teaches all aspects of Appellant’s claimed “method,” including the disputed
limitation: “receiving, at a proximity-based receiver within a mobile device,
virtual advertisement contents associated with an object stored within a
product package, from a proximity-based transmitter within the product
package, based upon the proximity-based receiver being within a proximity
to the proximity-based transmitter.” Final Act. 8 (citing Arponen ¶¶ 23, 25,
27, 28, 32–37, 57–60, 76–79, 97, Figs. 1, 2A, 4B, 4C).
Arponen’s Figure 1A is reproduced below:
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Arponen’s Figure 1 shows interaction between mobile device 101 and
proximity-based transmitter (memory tag) 107 within product package
(object) 109, including receiving “virtual advertisement contents” from
product package (object) 109, when mobile device 101 is within the
proximity of product package (object) 109.
The Examiner does not find that Arponen teaches, and therefore relies
on Pereymer for expressly teaching that Arponen’s “advertisement contents”
can include Appellant’s claimed “virtual magazine of items associated with
an object stored within a product package,” so that the “virtual magazine”
can be received and displayed by the mobile device, and different pages of
the “virtual magazine” can be swiped or scrolled, via user interactions. Final
Act 9–19 (citing Pereymer ¶¶ 63, 76–91, 110, 114, 121). Based on these
teachings, the Examiner concludes it would have been obvious to modify
Arponen to transmit, receive, and display “advertisement contents” in
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Pereymeyer’s “virtual magazine” in order to “provide the user with
additional details associated with the products/product packages” and to
“increase user experience and satisfaction.” Id. at 10
Appellant argues (1) the combination of Arponen and Pereymer does
not teach or suggest a “virtual magazine of items associated with an object
stored within a product package,” as recited in claim 12; and (2) “one of
ordinary skill in the art would know to only perform a partial replacement of
the advertisement in Arponen with only the formatting of the electronic
magazine of Pereymer” and “[s]uch a result could only be reasonably
deduced by one of ordinary skill in the art after varying ‘all parameters’ or
trying ‘each of numerous possible choices until one possibly arrived at a
successful result,’ which is not permissible.” App. Br. 4–5 (citing In re
Stepan Company, 2016-1811, 8 (Fed Cir. 2017)). According to Appellant,
the Examiner has not demonstrated “why one of ordinary skill in the art,
based on In re Stepan, would be motivated to replace an advertisement of
links to local dry cleaners with a virtual magazine of local dry cleaners.”
Appellant also argues that, “[w]ithout the benefit of hindsight and varying
all parameters, one of ordinary skill in the art would not have had a
reasonable expectation of success in modifying Arponen to have a virtual
magazine based on the contents of a product package.” Reply Br. 2–3.
We do not find Appellant’s arguments persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellant’s arguments
supported by a preponderance of evidence. Ans. 5–6. Therefore, we adopt
the Examiner’s findings and explanations provided therein. Id. At the
outset, we note both Arponen and Pereymer teach Appellant’s claimed
“virtual magazine of items associated with an object stored within a product
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package,” as recited in claim 12. Ans. 5–6 (citing Arponen ¶ 35; Pereymer
¶¶ 63, 76–91, 110, 114, 121).
For example, paragraph 35 of Arponen describes that content
associated with low-cost radio frequency (RF) memory tag 107 (e.g., NFC
tag, RFID tag, or Blu-tooth device (see Arponen ¶¶ 36, 39)) of a package
(object) 109, as shown in Figure 1A, includes “a magazine, a newspaper,
products.” Paragraph 59 of Arponen further clarifies the:
“additional information” from the RF memory tag 107 may also
include an electronic representation of the object 109 (e.g., an
electronic version of a hardcopy magazine or catalog), one or
more media files, one or more documents, one or more links to
content, purchasing information, advertising information, an
electronic catalog, or a combination thereof.”

Arponen ¶ 59 (emphasis added). Paragraphs 79–80, and 83 of Arponen
further describe (1) “interactive content—i.e., buttons, links, actionable
content—for allowing the user to execute various actions” and (2) the print
media representation of the information stored in RF memory tag 107, such
as the virtual magazine of items as recited in Appellant’s claim 12, “may be
scrolled [or swiped] through by the user (e.g., via scroll selectors 469
[shown in Figure 4C, or scroll bar 475, shown in Figure 4D].”
Because Arponen teaches all aspects of Appellant’s claim 12,
including the disputed limitation: “receiving, at a proximity-based receiver
within a mobile device, a virtual magazine of items associated with an object
stored within a product package, from a proximity-based transmitter within
the product package, based upon the proximity-based receiver being within a
proximity to the proximity-based transmitter,” Pereymer is not needed to
support the Examiner’s obviousness rejection. A disclosure such as
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Arponen that anticipates under 35 U.S.C. § 102 typically renders the claim
unpatentable under 35 U.S.C. § 103 in all but rare cases. See In re Pearson,
494 F.2d 1399, 1402 (CCPA 1974); cf. Cohesive Tech v. Water Corp., 543
F.3d 1351, 1363 (Fed. Cir. 2008) (“novelty under 35 U.S.C. § 102 and
nonobviousness under 35 U.S.C. § 103 are separate conditions of
patentability”).
To the extent that Pereymer is required and/or relied upon, Pereymer
also teaches that (1) advertisement content can be presented in “a magazine
[of items] which has interactive features such as web links, videos, and
photos” and (2) a page index view of the magazine can be used to allow the
user to execute “various types of finger swiping or tapping gestures to
initiate a desired action,” which support the Examiner’s conclusion of
obviousness. Pereymer ¶¶ 63, 76–91.
Because both Arponen and Pereymer teach Appellant’s claimed
“virtual magazine of items associated with an object stored within a product
package,” as recited in claim 12, we are not persuaded by Appellant’s
arguments that (1) In re Stepan Co., No. 2016-1811 (Fed. Cir. Aug. 25,
2017) is applicable, and (2) in the absence of hindsight, “one of ordinary
skill in the art would not have had a reasonable expectation of success. See
In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016) (Appellant’s hindsight
argument is of no moment where the Examiner provides a sufficient, non-
hindsight reason to combine the references).
For the reasons set forth above, Appellant has not persuaded us of
Examiner error. Accordingly, we sustain the Examiner’s obviousness
rejection of independent claim 12, and dependent claims 17 and 20–12,
which Appellant does not argue separately. App. Br. 5.
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With respect to independent claim 23, Appellant argues patentability
“for similar reasons as independent claim 12.” App. Br. 5. Accordingly, we
also sustain the Examiner’s obviousness rejection of independent claim 23
for the same reasons discussed above relative to claim 12.

CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 12, 13, 17, and 20–23 under
35 U.S.C. § 103(a). As such, we AFFIRM the Examiner’s Final Rejection
of claims 12, 13, 17, and 20–23.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12, 17, 20–22 103 Arponen, Pereymer 12, 17, 20–
22

13 103 Arponen, Pereymer,
Robson
13
23 103 Arponen, Pereymer,
Zilliacus
23
Overall
Outcome
12, 13, 17,
20–23

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

AFFIRMED