Ex Parte Ball et al

Patent Trial and Appeal Board

Mar 28, 2016

13345678 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/345,678 01107/2012
77269 7590
Oppenhuizen Law PLC
146 Monroe Center NW
McKay Tower, Suite 730
Grand Rapids, MI 49503
03/28/2016
FIRST NAMED INVENTOR
Zachary W. Ball
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BZA-110-A 3860
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
MAILDATE DELIVERY MODE
03/28/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZACHARY W. BALL, JOSHUA L. BALL, and
MICHAEL H. GAUTHIER
Appeal2013-008440
Application 13/345,678 1
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
BART A. GERSTENBLITH, Administrative Patent Judges.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Zachary W. Ball et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-22. We have jurisdiction
under 35 U.S.C. § 6(b).
1 Appellants identify Gravy Network Inc. as the real party in interest.
Appeal Br. 1.
Appeal2013-008440
Application 13/345,678
Claimed Subject Matter
Claims 1, 9, 16, and 20 are the independent claims on appeal.
Claims 1 and 9 are illustrative of the claimed subject matter and are
reproduced below.
1. A method of delivering an advertisement to at least one
mobile device which comprises:
(a) providing a software application which is operable on
the at least one mobile device;
(b) providing an application interface on a web server,
the application interface being in communication with the at
least one mobile device;
( c) defining a boundary of a geographic location for
delivery of a mobile advertisement by the application interface;
( d) generating a geographic location of the at least one
mobile device by the application interface;
( e) comparing, by the application interface, the
geographic location of the at least one mobile device with the
geographic location for delivery of the mobile advertisement;
(t) transmitting the advertisement by the application
interface to the at least one mobile device \'l1hich is located
within the geographic location for delivery of the mobile
advertisement; and
(g) providing an incentive to a user of at least one mobile
device which has received the advertisement.
9. A method of delivering an advertisement to at least one
mobile device which comprises:
(a) providing a software application which is operable on
the at least one mobile device;
(b) providing an application interface on a web server
for transmitting an advertisement to the at least one mobile
device, the application interface including at least one
advertising parameter that is selectable by an advertiser;
( c) determining by the application interface when the at
least one mobile device matches the at least one advertising
parameter;
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(d) transmitting the advertisement by the application
interface to the at least one mobile device operating the
software to each of the at least one mobile devices which match
the advertising parameter; and
( e) providing a monetary payment incentive to a user of
at least mobile device which has received the advertisement.
Appeal Br. 15-17, Claims App.
Rejections
Appellants seek review of the following rejections:
I. Claim 16 is rejected under 35 U.S.C. § 102(e) as anticipated by
Crolley (US 8,027 ,877 B2, iss. Sept. 27, 2001 );
II. Claims 1--4, 6, 8-11, 13, 18, 20, and 21 are rejected under
35 U.S.C. § 103(a) as unpatentable over Crolley and Applebaum
(US 2004/0193492 Al, pub. Sept. 30, 2004);
III. Claims 5, 7, 12, 14, 15, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Crolley, Applebaum, and Davison
(US 2010/0293059 Al, pub. Nov. 18, 2010);
IV. Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Crolley and Davison; and
V. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Crolley.
SUMMARY OF DECISION
We AFFIRM.
OPINION
Rejection I - Claim 16 as Anticipated by Crolley
The Examiner finds that Crolley discloses each and every element of
claim 16. Ans. 3-5. In particular, the Examiner finds that Crolley's
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teaching that "the method determines the approximate position of the mobile
device along a predefined path" discloses the recited "determining the
geographic location of the at least one mobile device" limitation of the
claim. Ans. 3 (citing Colley, 2:25-29).
Appellants challenge the Examiner's rejection, asserting that Crolley
does not determine a geographic location of the at least one mobile device as
recited by the claim. Appeal Br. 6-7. Appellants contend that Crolley
discloses explicitly that it can determine the approximate position of the
mobile device along a predefined path without determining an approximate
geographic location of the mobile device, and, therefore, does not disclose
the above-recited limitation of the claim. Id.
In response to Appellants' argument, the Examiner finds that
Appellants' Specification does not define the term "geographic location" or
limit how the recited "geographic location" is expressed. Ans. 17. Thus, the
Examiner finds that "when Crowley [sic] determines the (approximate)
location of the mobile device along the path, the geographic location of the
mobile device has been determined, i.e. any location on the Earth is its
geographic location." Id. at 18.
Neither Appellants' Specification nor Crolley defines specifically the
term "geographic location." The Specification broadly explains that any
suitable means can be used to determine the location of the mobile device.
Spec. i-f 28 ("Preferably, the mobile device 12 is capable of determining its
location, such as through GPS, a triangulation calculation using signals sent
from geographically known sources, or any other suitable means which are
well-known [sic] in the art."). The Specification and claim 16, therefore, use
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the phrase "geographic location" as a location within some geography and
do not use the phrase to mean a particular protocol of expressing location.
Crolley, on the other hand, distinguishes geographic location from
position. See Crolley, claims 1 and 2. Crolley uses the adjective
"geographic" not to mean within a geography, as the instant claim 16 does,
but as a two dimensional protocol for identifying position. Crolley allows
for implementations that would determine a geographic location relying on
finding two separate dimensions, by admitting that they are prior art (see,
e.g., id. at 1:41--43), but describes an alternate implementation for
determining geographic position without the complexity of two dimensional
calculations by taking advantage of a geographic entity, such as a road (see,
e.g., id. at 3:43-50), having positions that can be expressed with one
dimension (see, e.g., id. at 3:51---61). Crolley, therefore, uses the phrase
"geographic location" in determining a geographic location with a set of two
dimensional complex computational algorithms rather than determining a
position in a geographic space.
Crolley explains that "GPS systems have been provided that can track
the location of a user and show the location of the user on an electronic map .
. . . [but,] there is a need for an improved system and method of providing
advertisements to mobile devices." Crolley, 1:41--48. Crolley's Figure 2 is
shown below.
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Application 13/345,678
~,;i:::e: ... e n~~ ;;o!;,i;,";J~;.;;,·1 ,,. /rr :Z02
j atong ~ :Ni~rt ~~s.e-d Joll :e.<>~~ ~~-t~~~- or;_·~~:-: ~'.:".t.~1-~~~--
r··soie~~;tN:;;o~~;i~~;~~~~~;.;~~,;f~·~·;;~m1·-···"· ----- 204
·w !illlW -
: Rece1o·~ ~et«nd ~'fa ;..1e.r:t1t-;:t~~ a r::-~i»'le d~Y;~ -,,,.-Mtr.i. ~-------.... ---"" 208
~ .a se.cor.d c~:1t11a~ ooverage- regi-Or, at a s.econ;; t ma ..
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FIG.2
Crolley' s Figure 2 "is a flow diagram of a particular illustrative
embodiment of a method of providing advertisements to mobile devices."
Crolley, 1 :55-57. "At block 200, first data is received from a mobile device,
the first data indicating that the mobile device is within a first cellular
coverage region at a first time." Id. at 5:32-35. Crolley explains that "the
first data can include an identification of the mobile device, an identification
of a cellular tower providing the first cellular coverage region, and the first
time." Id. at 5:35-38. Most relevant to the issue raised in this rejection, in
block 202, "an approximate position of the mobile device along a path is
determined based at least partially on the first data. The approximate
position of the mobile device along the path can be determined without
determining an approximate geographic location of the mobile device." Id.
at 5:47-51 (emphasis added).
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Because Crolley distinguishes geographic location from position, and
the instant Specification and claims treat such location as a position, the
issue we have is whether the claimed use of determining an approximate
position is broad enough to include determining an approximate geographic
location with two dimensions as well as determining an approximate
position without determining an approximate geographic location in two
dimensions. In other words, does Crolley' s disclosure of determining an
approximate position include methods of determining position based on
geographic location in two dimensions as well as methods not based on
geographic location in two dimensions. If the answer is in the affirmative,
then Crolley' s disclosure of determining an approximate position is broad
enough to include Appellants' recited "determining a geographic location."
We agree with the Examiner that Crolley's disclosure is broad enough
to include determining a geographic location even if Crolley explicitly
describes an example wherein an approximate geographic location is not
determined. Crolley indicates that the approximate position of the mobile
device can be determined without determining an approximate geographic
location of the mobile device, but that does not mean that Crolley's
disclosure of determining an approximate position of the mobile device does
not teach or suggest determining an approximate geographic location of the
device. Notably, Crolley's claim 1 recites a method of providing
advertisements to mobile devices comprising "determining ... an
approximate position of the mobile device along a path based at least
partially on the first data and the travel plan." Id. at 10:27-29. Crolley's
claim 2, depends from claim 1, and further recites "wherein the approximate
position of the mobile device along the path is determined without
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determining an approximate geographic location of the mobile device." Id.
at 10:35-38. Crolley's claims 1 and 2 reflect that determining an
approximate position of the mobile device is broader than determining an
approximate geographic location. Thus, by disclosing a method that
determines an approximate position of the mobile device, where such
disclosure is not limited to only non-geographic location methods, the
Examiner's finding that Crolley discloses claim 16' s recitation of
"determining a geographic location of the at least one mobile device" is
supported by a preponderance of the evidence.
Accordingly, we sustain the rejection of claim 16.
Rejection II - Obviousness of Claims 1-4, 6, 8-11, 13, 18, 20, and 21
over Crolley and Applebaum
The Examiner concludes that the combination of Crolley and
Applebaum would have rendered the subject matter of claims 1--4, 6, 8-11,
13, 18, 20, and 21 obvious to one of ordinary skill in the art at the time of
invention. Ans. 5-13. With respect to independent claims 1 and 9, the
Examiner finds that Crolley discloses the elements of the claims, except that
Crolley does not disclose "that the user of the mobile device that has
received the advertisement will be provided an incentive." Id. at 7. The
Examiner finds that Applebaum discloses
delivering advertisement[ s] to mobile devices that enter a pre-
defined geographic location in which "vendors are solicited to
subscribe to participate ... by providing both monetary
consideration and promotional offers that provide a
considerable benefit to users, such as by ... donating a share
of proceeds to a user-selected charity."
Id. (quoting Applebaum i-f 24). The Examiner finds that it would have been
obvious to one of ordinary skill in the art to modify Crolley "to provide an
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Application 13/345,678
incentive (compensation) to the user of the mobile device that received the
advertisement. ... in order to entice the user to subscribe to the system." Id.
Claims 9--11 and 13
With respect to claims 9--11 and 13, 2 Appellants raise two arguments.
First, Appellants assert that "the monetary consideration [in Applebaum] is
being provided to whatever entity is providing the navigation-system-based
advertising - not the user of the mobile device," and, therefore, fails to
disclose or render obvious "providing a monetary payment incentive to a
user of at least mobile device [sic] which has received the advertisement" as
recited in claim 9. Appeal Br. 9 (emphasis omitted).
Second, Appellants assert that the claims are "directed to a system
which provides the user an incentive for either simply receiving or viewing
the advertisement." Id. Appellants contend that the claimed "incentive is
entirely separate from any benefit that the user may obtain by actually
purchasing the goods." Id. Appellants attempt to distinguish Applebaum;
arguing that it simply describes a typical advertising scheme in which an
advertisement is provided to a potential customer, and the advertisement
may include a discount or other benefit (e.g., a charitable donation) that is
realized only upon purchasing the goods. Id.
The Examiner responds to Appellants' first argument by noting that it
is contradicted by Appellants' second argument, which acknowledges that
Applebaum teaches providing monetary consideration to the user of the
mobile device. Ans. 18-19. We agree with the Examiner that Applebaum
2 Appellants do not separately argue claims 9-11 and 13. Appeal Br. 8-9.
We select claim 9 as representative. Accordingly, claims 10, 11, and 13
stand or fall with claim 9. See 37 C.F.R. § 41.37(c)(l)(iv).
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teaches providing a monetary incentive to the user of the device, not simply
an entity that is providing the advertising, and, thus, Appellants' argument is
not persuasive.
The Examiner responds to Appellants' second argument by noting
that the claim language-"providing a monetary payment incentive"---does
not preclude receiving the incentive upon purchasing the advertised goods.
Id. at 18-19. The Examiner further explains that "forms of monetary
incentives provided to the user of the mobile device" include "subsidizing
the cost of the navigation system for a user ... [and] providing a monetary
donation to a charity or scholarship selected by the user." Id.
The claim language does not limit the incentive to only being
provided before a purchase by the user. The language simply states
"providing a monetary incentive to a user of at least mobile device [sic]
which has received the advertisement." Appellants' Specification is
consistent with the claim language, but further explains that "[t]he
incentive 16 can be provided to the user U at any time as specified by the
user U according to the parameters 13." Spec. i-f 50 (emphases added).
Appellants' Specification identifies several examples of providing an
incentive, including "after the user U redeems the ad." Id. (emphases
added). Further the Specification identifies several examples of a "monetary
payment incentive," including a payment to a charity. Id.
Thus, neither the claim language nor the Specification limits
"providing a monetary incentive" to providing an incentive prior to a
purchase by a user. And, the Specification makes clear that a payment to a
charity is a monetary incentive. Accordingly, we sustain the rejection as
applied to claims 9-11 and 13.
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Claims 1-4, 6, 8, 18, 20, and 21
Independent claims 1 and 20 recite the step of determining (or
generating) "the geographic location of the at least one mobile device."
Appellants rely upon their arguments raised in the context of Rejection I.
Appeal Br. 10. Independent claim 1 and dependent claim 21 (which
depends from claim 20), recite "providing an incentive to a [(or the)] user of
at least one mobile device which has received the advertisement."
Appellants rely upon their arguments directed to claims 9--11 and 13. Id.
For the reasons discussed above, Appellants' arguments as to these
limitations are not persuasive. Accordingly, we sustain the rejection as
applied to claims 1--4, 6, 8, 18, 20, and 21.
Rejection III - Obviousness of Claims 5, 7, 12, 14, 15, and 22 over Crolley,
Applebaum, and Davison
The Examiner concludes that the combination of Crolley, Applebaum,
and Davison would have rendered the subject matter of claims 5, 7, 12, 14,
15, and 22 obvious to one of ordinary skill in the art at the time of invention.
Ans. 14--15. The Examiner finds that the combination of Crolley and
Applebaum discloses the elements of the claims, except the limitation of
"displaying a countdown timer on the mobile device that indicates the time
remaining before the expiration of the advertisement." Id. at 14. The
Examiner finds that Davison discloses a countdown clock that is "visible
during the playing of the commercial portion so that the recipient can easily
see the remaining time on the commercial." Id. (quoting Davison i-f 21 ).
The Examiner determines that one of ordinary skill in the art "would have
been motivated to display such a countdown to the user in order to allow the
user to 'easily see the remaining time on the commercial."' Id.
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Appellants assert that the combination of Crolley, Applebaum, and
Davison fails to disclose or render obvious the step of "displaying, on the
mobile device, a countdown until expiration of the ad," as recited in the
claims. 3 Appeal Br. 11. Appellants argue that Davison's teachings are
limited to displaying a countdown clock "during the playing of the
commercial portion so that the recipient can easily see the remaining time on
the commercial and know that the content portion of the video will resume
momentarily following the commercial portion." Id. (emphasis omitted).
In response to Appellants' argument, the Examiner explains that
Davison's display of the time remaining until the end of the "commercial
(ad)" is "a countdown until expiration of the ad." Ans. 19. In other words,
the Examiner equates a commercial and an advertisement.
We agree. A display showing a countdown until the expiration of a
commercial discloses a display showing a countdown until the expiration of
an ad. Thus, Appellants' arguments attempting to distinguish Davison are
unpersuasive. Accordingly, we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-22.
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)(l )(iv).
AFFIRMED
3 Appellants do not separately argue claims 5, 7, 12, 14, 15, and 22. Appeal
Br. 10-12. We select claim 5 as representative. Accordingly, claims 7, 12,
14, 15, and 22 stand or fall with claim 5. See 37 C.F.R. § 41.37(c)(l)(iv).
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