Datonics, LLC

Patent Trials and Appeals Board

Sep 21, 2020

15893354 - (D) (P.T.A.B. Sep. 21, 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.
15/893,354 02/09/2018 Roy Shkedi 14 PP CON4 5057
26362 7590 09/21/2020
LOUIS J. HOFFMAN, P.C.
7689 East Paradise Lane
Suite 2
Scottsdale, AZ 85260
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/21/2020 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):
Louis@valuablepatents.com
donald@valuablepatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROY SHKEDI
____________________

Appeal 2020-001216
Application 15/893,354
Technology Center 3600
____________________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD and
IRVIN E. BRANCH, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Rejection of claims 34–61. Appeal Br. 12. Appellant has cancelled claims
1–33. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as Datonics, LLC. Appeal
Br. 1.
Appeal 2020-001216
Application 15/893,354

2
CLAIMED SUBJECT MATTER
Claim 34 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
34. A method of causing delivery of electronic advertisements
based on provided profiles comprising:
(a) with a computer system automatically storing, in a central
database associated with the computer system, profile
information associated with a visitor, as a result of electronic
receipt from a profile owner computer of indicia of the
profile information, which profile information associated
with the visitor matches a profile or kind of profiles
requested by an entity controlling the computer system,
wherein a tag associated with a visitor device serves as a link
to the profile information associated with the visitor;
(b) wherein the profile owner computer is programmed:
(i) to automatically select a media property entity of a
plurality of media property entities based on a
comparison of
[(A)] profile information about a visitor who
electronically accessed electronic apparatus
of a profile supplier
with
[(B)] a plurality of stored requests from the
plurality of media property entities,
one of which media property entities is the entity
controlling the computer system, each stored request
being for requested profiles or kinds of profiles,
which plurality of stored requests includes the profile
or kind of profiles requested by the entity controlling
the computer system, and
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(ii) to automatically arrange for electronic storage of a
requested profile linked to a tag that is associated with
the visitor device and that is readable by equipment
controlled by the selected media property entity,
which equipment is part of the computer system of
part (a) when the selected media property
entity is the entity controlling the computer
system, and
which tag is the tag of part (a) when the selected
media property entity is the entity controlling
the computer system; and
(c) later, when the visitor device is available to receive an
advertisement, with the computer system,
(i) using the tag of part (a) that is associated with the visitor
device to access the profile information stored in the
central database, and
(ii) using the profile information linked to the tag of part
(a) to automatically cause delivery of an electronic
advertisement to the visitor device, wherein the
electronic advertisement is dependent on the profile
information associated with the visitor.

REFERENCES2
The Examiner relies on the following references:
Name Reference Date
Horowitz US 2005/0097204 A1 May 5, 2005
Kublickis US 2007/0067297 A1 Mar. 22, 2007
Jaschke US 2007/0130005 A1 June 7, 2007

2 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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Application 15/893,354

4
REJECTIONS
A.
The Examiner rejects claims 34–37, 39, 41–43, 45, 47–51, 53–56, 58,
60, and 61 under 35 U.S.C. § 103 as being unpatentable over the
combination of Kublickis and Jaschke. Final Act. 5–17.
We select claim 34 as the representative claim for this rejection. The
contentions discussed herein as to claim 34 are determinative as to this
rejection. Therefore, except for our ultimate decision, we do not address the
merit of the § 103 rejection of claims 35–37, 39, 41–43, 45, 47–51, 53–56,
58, 60, and 61 further herein.
B.
The Examiner rejects claims 38, 40, 44, 46, 52, 57, and 59 under
35 U.S.C. § 103 as being unpatentable over the combination of Kublickis,
Jaschke, and Horowitz. Final Act. 18–23.
We select claim 49 as the representative claim for this rejection. The
contentions discussed herein as to claim 34 are determinative as to this
rejection. Therefore, except for our ultimate decision, we do not address the
merit of the § 103 rejection of claims 38, 40, 44, 46, 52, 57, and 59 further
herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are determinative as to the rejections on appeal. Therefore, Appellant’s
other contentions are not discussed in detail herein.
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A.
The Examiner determines as to the above “media property entity” of
claim 34:
Media Property and Media Property entity do appear to be
given an “explicit” and “clear” definition in the specification and
from a reading of this definition the two terms appear to be
synonymous with each other. Provisional Specification
(60/805,114) at pg. 5 provides the following definition:
“. . . a media property for this application could
also be defined as any entity that controls an ad
space viewed by a visitor. This definition of a media
property will therefore include a web site, an ad
network of sites where the ad network represents the
ad space of different sites, a TV program, a cable
company that represents some of the ad space
within TV programs or TV channels, a TV network,
any entity allowed to sell an advertisement and
deliver it within an advertisement space whether the
ad space is owned by that entity or whether the
entity pays the owner of the ad space when using its
ad space to deliver an ad sold by the entity. Ad
space could be on a web site, in a TV program, in a
text message, in a radio show, in any broadcasted
material, in any streaming video or audio etc.”
Final Act. 4 (formatting added).
B.
Appellant contends that the Examiner erred in rejecting claim 49
under 35 U.S.C. § 103 because:
Appellant proposes that the Board construe “media
property equipment” as “equipment, which is part of the
computer system that controls an ad space viewed by a visitor, at
least temporarily” and “media property entity” as “an entity that
controls media property equipment (as defined above).”
. . .
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The specification, at page 5, lines 1–27, contains the
following explanation and definition, supporting the proposed
definition:
Because the purpose of the tag is to enable the
delivery of additional ads on other media properties
visited by the visitor, and because the delivery of an
ad requires only control of the ad space and not
necessarily control of the entire media property
visited by the visitor, a media property (in the
present context) can also be defined as any
equipment that controls an ad space viewed by a
visitor, including a web site, an ad network’s site
(where the ad network represents the ad space of
different sites), a TV program, some of the ad space
within TV programs or TV channels (represented
by a cable company), a TV network, or any ad space
for which an entity is allowed to sell an
advertisement and deliver it within the ad space;
whether the ad space is owned by that entity, or
whether the entity pays the owner of the ad space
when using its ad space to deliver an ad sold by the
entity. Ad space can be on a web site, in a TV
program, in a text message, in a radio show, in any
broadcasted material, in any streaming video or
audio, etc.
Appeal Br. 6–7.
The specification later says, on page 8, lines 5-6: “A low-
value ad space owner could be any media property owner,
whether it owns a web site, a TV program, a radio show, or any
other media property.” On line 23 of page 8, the specification
similarly refers to “a media property (if acting as a profile
owner) . . . .” Those page 8 citations indicate that the
specification uses the term “media property” in some contexts to
refer to an “owner” (entity), whereas the above quotation on page
5 of the specification uses the term “media property” in the
context of “equipment.” To avoid confusion, appellant crafted
the claims to distinguish between “media property entity” and
“media property equipment.” Which of the two is being
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referenced at various points in the specification is clear from
context. The Final Office Action says that “media property” and
“media property entity” are “two terms [that] appear to be
synonymous with each other.” Although that is not exactly true,
the usage (owner vs. equipment) is parallel in the specification,
and appellant’s proposed construction defines one by reference
to the other.
Appeal Br. 8.
C.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” 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 . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id. We conclude the Examiner’s
analysis fails to meet this standard because the Examiner’s determination
that the two terms “media property entity” and “media property equipment”
are synonymous with each other is not properly founded. Thus, the
Examiner’s findings of fact as to the “media property entity” are based on
error as to the definition of that term.
D.
We agree with Appellant that the terms “media property entity” and
“media property equipment” are distinct. We determine that “media
property entity” (shortened to “entity” at page 5 of the Specification) refers
to an “owner” in a legal/business context; and “media property equipment”
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refers to hardware or hardware/software such as a web site, a computer, a
mobile device, a TV set, a TV set top box, or any other device (Spec. 5) in a
technology context.
We conclude, consistent with Appellant’s arguments that there is
insufficient articulated reasoning to support the Examiner’s finding that
Kublickis or Jaschke discloses the argued “media property entity” claim
limitations, as required by claim 34. Therefore, we conclude that there is
insufficient articulated reasoning to support the Examiner’s final conclusion
that claim 34 would have been obvious to one of ordinary skill in the art.
E.
We have determined that the “media property entity” and “media
property equipment” are distinct and are not synonymous. For this reason
alone, the Examiner’s articulated reasoning is insufficient. However, for
example, Figure 1 of Jaschke teaches an advertiser entity 110 and advertiser
equipment 132 as distinct items. Similarly, a profiler entity 100 and profiler
equipment 131 are distinct items.
We recommend that the Examiner reevaluate the appropriateness of a
rejection under 35 U.S.C. § 103 based on the teachings of the Kublickis,
Jaschke, and Horowitz references in light of the proper claim construction.

CONCLUSION
Appellant has demonstrated the Examiner erred in rejecting claims
34–61 as being unpatentable under 35 U.S.C. § 103.
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The Examiner’s rejections of claims 34–61 as being unpatentable
under 35 U.S.C. § 103 are reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
34–37, 39,
41–43, 45,
47–51, 53–
56, 58, 60, 61
103 Kublickis, Jaschke 34–37, 39,
41–43, 45,
47–51, 53–
56, 58, 60, 61
38, 40, 44,
46, 52, 57, 59
103 Kublickis, Jaschke,
Horowitz
38, 40, 44,
46, 52, 57, 59
Overall
Outcome
34–61

REVERSED