Apple Inc.

Patent Trials and Appeals Board

Aug 28, 2020

2019006739 (P.T.A.B. Aug. 28, 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.
14/728,791 06/02/2015 David T. Wilson 522158 (P27103US1) 3272
77970 7590 08/28/2020
Polsinelli -- Apple Inc.
c/o Polsinelli PC
Three Embarcadero Center
Suite 2400
San Francisco, CA 94111
EXAMINER
STOLTENBERG, DAVID J
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
08/28/2020 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):
Apple@Polsinelli.com
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID T. WILSON and THOMAS ALSINA
____________

Appeal 2019-006739
Application 14/728,791
Technology Center 3600
____________

Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, 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 1–27. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
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 Apple, Inc.
(Appeal Br. 2).
Appeal 2019-006739
Application 14/728,791

2

CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to selecting media content
based on a computing device context (Spec., para. 1). Claim 1, reproduced
below, is representative of the subject matter on appeal.

1. A computer-implemented method comprising:
determining that a first media content item was inserted
into a first application executing at a client device;
detecting that at least one media content presentation
opportunity is available for a second media content item to be
inserted into a second application executing at the client device,
the second application configured for operating independently
from the first application;
generating a present context filter for the client device
comprising one or more copresentation rules associated with a
present context of the client device, wherein the copresentation
rules includes selection criteria for selecting at least one
compatible media content item for the at least one media
content presentation opportunity while the first application and
the second application are concurrently executing on the client
device;
applying the present context filter to a plurality of
candidate media content items available for presentation at the
client device to select the at least one compatible media content
item as the second media content item; and
based on the selection, inserting the second media
content item into the second application via the at least one
media content presentation opportunity.
Appeal 2019-006739
Application 14/728,791

3

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–12 and 14–27 are rejected under 35 U.S.C. § 102(a)
as anticipated by Gagner (US 2012/0264504 A1; published Oct. 18, 2012).
2. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Gagner and Kilar (US 2012/0072272 A1; published Mar. 22, 2012).

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 evidence.2

ANALYSIS
The Appellant first argues that the rejection of claim 1 is improper
because Gagner does not disclose inserting media content into the “second
application” (Appeal Br. 9, Reply Br. 2). The Appellant further argues that
the rejection of claim 1 is improper because the prior art fails to disclose a
“second application configured for operating independently from the first
application” (Appeal Br. 9, 10).
In contrast, the Examiner has determined that the cited claim
limitation is disclosed by Gagner at paragraphs 20–23 (Final Act. 9–11;
Ans. 4–7).
We agree with the Examiner. Gagner at paragraph 20 discloses that
the independent applications can run independently from each other. Gagner

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2019-006739
Application 14/728,791

4

at paragraph 20 also discloses that applications can run concurrently. Thus,
it is disclosed in Gagner that the applications can run independently from
each other. Gagner at paragraph 21 also discloses that a contextual
management module 110 can route data between the secondary
applications 113 (secondary application) and the primary wagering game
application 103 (first application). Gagner at paragraph 22 also discloses
that the context management module 110 can dynamically update any or all
structure (e.g., update structures of windows, update content presented in
windows) in any of the applications. While the Appellant at page 2 of the
Reply Brief argues that the “updating” of the content is not the claimed
“insertion” of the content, the claimed “inserting” is broad enough to include
“updating” as new data is “inserted” for the old data, under a broadest
reasonable interpretation. Regardless, Gagner at paragraph 21 also discloses
that the management module can “route and/or publish application data”
between the secondary gaming applications 113 and primary wagering game
application 103 which would serve as “insertion” of content. Thus, Gagner
discloses the insertion of media content items in the applications, which
would include the first and second applications. Accordingly, the argued
claim limitations have been disclosed by Gagner, and the rejection of
claim 1 is sustained. The Appellant has provided the same arguments for the
remaining claims, and the rejection of these claims is sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–12 and 14–27 under 35 U.S.C. § 102(a) as anticipated by
Gagner.
Appeal 2019-006739
Application 14/728,791

5

We conclude that Appellants have not shown that the Examiner erred
in rejecting claim 13 under 35 U.S.C. § 103(a) as unpatentable over Gagner
and Kilar.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–12, 14–27 102(a) Gagner 1–12, 14–27
13 103 Gagner, Kilar 13
Overall
Outcome
1–27
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).
AFFIRMED