Ex Parte Linietsky et al

Patent Trial and Appeal Board

Feb 8, 2019

13050490 (P.T.A.B. Feb. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/050,490 03/17/2011 Laurence B. Linietsky
86548 7590 02/12/2019
Garlick & Markison (IH)
106 E. 6th Street, Suite 900
Austin, TX 78701
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.
23 l-OMR-12-2010 2750
EXAMINER
BELOUSOV, ANDREY
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
02/12/2019 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):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURENCE B. LINIETSKY and
BRIAN DAVID LAKAMP
Appeal2017-011650
Application 13/050,490
Technology Center 2100
Before ST. JOHN COURTENAY III, JENNIFER S. BISK, and
SCOTT E. BAIN, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-011650
Application 13/050,490
STATEMENT OF CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
BACKGROUND2
The claims are directed to providing downloadable software
applications that are customized with graphical user interfaces "GUis"
associated with a particular brand. Spec. ,r,r 1-3. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method to generate a customized application for
execution on an end-user device, the method comprising:
receiving, from an online application store at an
application provider server, an application request associated
with a user request for the online application store to provide an
application to a user, the application request identifying at least
the application and a first local branding element of a plurality
of different local branding elements associated with different
geographic markets;
receiving from the online application store at the
application provider server, a graphic user interface (GUI)
configuration parameter associated with the first local branding
element, the GUI configuration parameter indicating at least
one GUI visual element associated with the first local branding
element including at least one of an associated logo, font or
color;
1 Appellants identify the real party in interest as iHeartMedia Management
Services, Inc. App. Br. 3.
2 Throughout this Decision we have considered the Specification filed
March 17, 2011 ("Spec."), the Non-Final Rejection mailed November 3,
2016 ("Non-Final Act."), the Appeal Brief filed March 29, 2017 ("App.
Br."), the Examiner's Answer mailed July 27, 2017 ("Ans."), and the Reply
Brief filed September 21, 2017 ("Reply Br.").
2
Appeal2017-011650
Application 13/050,490
obtaining at the application provider server, responsive to
the application request, an unconfigured application from a
codebase; and
altering the unconfigured application to generate a
customized application from the unconfigured application and
the GUI configuration parameter, the customized application
having a configured GUI associated with the first local
branding element.
App. Br. 16 (Claims Appendix).
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Milius (US 2003/0197727 Al, published Oct. 23, 2003) in
view ofNovak (US 2002/0103817 Al, published Aug. 1, 2002).
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Claims 1, 8, and 14
The Examiner rejects independent claims 1, 8, and 14 over a
combination of Milius and Novak. Non-Final Act. 2-5. Appellants argue
all three independent claims as a single group. App. Br. 10-13; Reply Br.
3-7.
The Examiner relies on Milius as teaching the portions of the claims
relating to the process of interacting with an online store, including a user
requesting a customized product and the store creating and delivering a
customized computer product. Non-Final Act. 2-3 (citing Milius, Figs. 1, 4,
5, ,r,r 2, 16-17, 20); Ans. 6-9 ( citing Milius, Fig. 4, ,r 22). According to the
Examiner, Milius discloses an online store for requesting and customizing a
3
Appeal2017-011650
Application 13/050,490
computer system and the "transfer of customized media to the user's
computer." Ans. 6 ( citing Milius, Fig. 4 ), 9 ( citing Milius ,r 20). The
Examiner relies on Novak for its disclosure of customizing software
applications using "skins." Non-Final Act. 4--5 (citing Novak, Figs. 1, 3, 10,
,r,r 34--35, 42, 52-55, 59); Ans. 7-9 (citing Novak ,r 35).
1. "the application request identifying at least the
application and a first local branding element of a
plurality of different local branding elements"
Appellants argue that the "combination of cited references does not
disclose an application request identifying at least the application and a first
local branding element of a plurality of different local branding elements."
App. Br. 10-11. According to Appellants, neither Milius nor Novak teaches
or suggests this limitation on its own. Id. Appellants, however, do not
address the Examiner's explanation that it is a combination of the two
references that teaches or suggests the limitation. Thus, this argument is not
persuasive. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
In their Reply Brief, Appellants argue that "[t]here is no teaching or
suggestion in the combination of Milius and Novak that a website used to
order hardware or software includes an option to obtain software skinning
requirements." Reply Br. 4. This is a new argument and Appellants do not
explain what "good cause" there might be to consider the new argument.
See 37 C.F.R. § 4I.41(b)(2). On this record, therefore, Appellants' new
argument is untimely. Id. Moreover, there is no requirement that a specific
suggestion to combine the references be found within the references
themselves. KSR Int'! Co. v. Teleflex, Inc., 550 US 398,419 (2007) ("The
obviousness analysis cannot be confined by a formalistic conception of the
4
Appeal2017-011650
Application 13/050,490
words teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of issued patents.").
As discussed above, the Examiner explained why a person of ordinary skill
in the art would have been motivated to combine the known elements in the
manner claimed. Non-Final Act. 5. We agree that, here, the combined
disclosures in Milius and Novak teach or suggest "an application request
identifying at least the application and a first local branding element of a
plurality of different local branding elements." See id. at 2-5; Ans. 6-7.
2. "an application provider server receives an application
request and a GUI configuration parameter from an
online application store"
Appellants also argue the "combination of cited references does not
disclose that an application provider server receives an application request
and a GUI configuration parameter from an online application store." App.
Br. 11-12. The Examiner notes that Appellants' quoted language is not
actually present in the claims. Ans. 7-8. Instead, claim 1 recites "receiving"
the application request and the GUI configuration parameter "from an online
application store at [an/the] application provider server." App. Br. 16
(Claims Appendix). Similarly, claim 8 recites receiving the request and
parameter "from [an/the] online application store" and claim 14 recites
receiving them "by an application provider system from [an/the] online
application store." Id. at 18, 20. We do not agree with the Examiner,
however, that "[t]he claims do not limit where the receiving is actually
occurring, but merely that configuration parameter is received from an
online application store that is situated at the application provider server."
5
Appeal2017-011650
Application 13/050,490
Ans. 8. At least claim 14 makes clear that the receiving is done by an
application provider system.
Nevertheless, we do not agree with Appellants that the combination of
Milius and Novak does not teach or suggest the application provider server
receiving a request and a GUI configuration parameter. Milius teaches
ordering through a web site by entering "component and configuration
selections." Milius ,r 20. And Novak teaches that the product at issue can
be a software application and the configuration at issue can be the
parameters defining a skin-a customized user interface for the application.
Novak ,r,r 35, 42, 59. The Specification does not require that the application
provider server be separate from the application provider store. See Spec.
,r 21 ("One embodiment is comprised of a collection of components, which
will be referred to herein as the app provider system. It is to be understood
that these components may be combined in many different ways to form a
variety of combinations within the scope of the disclosure."). Thus, the
application provider server may or may not be situated at the application
provider store.
We, therefore, agree with the Examiner that a person of ordinary skill
in the art would understand the combination of Milius and Novak teaches or
suggests "an application provider server [ ( a component of Milius' website)]
receives an application request [(Milius' order of a product combined with
Novak's application software product)] and a GUI configuration parameter
[(Milius' entry of configuration selections combined with Novak's skin
definition)] from an online application store [(Milius' website)]." See Non-
Final Act. 2-5. We do not agree with Appellants that "if the ... online
application store is merely part of the application provider server, then the
6
Appeal2017-011650
Application 13/050,490
request would be received at the online application store from the user, not
'from an online application store.'" Reply Br. 4, 6; see also Reply Br. 5-6
(Arguing that the written description requires the application provider server
and application store to be separate "actors."). Appellants' assertion does
not take into account that the application provider server could be a
component of the application store, as contemplated by the Specification.
See Spec. ,r 21.
Appellants' arguments again focus on the two references individually.
App. Br. 11 ("Milius discloses, at best, that the online application store
receives an application request (component selection) and user's personal
information."), 12 ("Novak does not disclose that an application provider
server receives both 1) an application request, and 2) a GUI configuration
parameter, from an online application store.") As discussed above, where a
rejection rests on the combined disclosures in the references, Appellants
cannot establish nonobviousness by attacking the references individually.
See Merck, 800 F.2d at 1097. Moreover, Appellants' conclusory assertion
that "the combination of Milius and Novak does not teach or suggest these
claimed interactions" between an online application store and an application
provider server (App. Br. 12) is also not persuasive. It is well settled that
mere attorney arguments and conclusory statements, which are unsupported
by factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (attorney argument is not evidence).
7
Appeal2017-011650
Application 13/050,490
3. "the application provider server obtains an unconfigured
application from a codebase in response to a request
from an online application store"
Finally, Appellants argue that the "combination of cited references
does not disclose that the application provider server obtains an
unconfigured application from a codebase in response to a request from an
online application store." App. Br. 12-13. According to Appellants, the
Examiner errs in construing the term "unconfigured application" to
encompass "any application" because it renders meaningless the term
"unconfigured." Id. The Examiner disputes Appellants' characterization of
the construction, explaining that the construction of the term "unconfigured
application" includes "[a]n application before it is customized" and,
therefore, the Examiner relies on Novak's teaching of "any one of numerous
suitable software applications may be customized with a skin" as an
unconfigured application. Ans. 8. We agree with the Examiner's
construction of "unconfigured application" as encompassing the
applications, such as Windows Media Player, described by Novak.
Accordingly, Appellants' arguments regarding this claim limitation do not
persuade us the Examiner erred.
"altering the unconfigured application to generate a customized
application"
In the Reply Brief, Appellants also argue that Novak's "skinning
process ... is not accomplished by obtaining an unconfigured application,
and then actually altering that application to generate a customized
application," but instead Novak's skin file "is used in conjunction with an
underlying program, but does not actually alter the underlying program."
Reply Br. 6-7.
8
Appeal2017-011650
Application 13/050,490
Again, Appellants' argument that Novak does not properly disclose
"actually alter[ing]" an unconfigured application is a new argument and
Appellants do not explain what "good cause" there might be to consider the
new argument. On this record, therefore, Appellants' new argument is
untimely. See 37 C.F.R. § 4I.41(b)(2).
4. Conclusion
Accordingly, we are not persuaded of error in the Examiner's
rejection of independent claims 1, 8, and 14 as obvious over the combination
of Milius and Novak.
Claims 2 and 15
The Examiner rejects claims 2 and 15, which depend from claims 1
and 14 respectively, over a combination of Milius and Novak. Non-Final
Act. 5. Both claims add a limitation: "transmitting the customized
application to the end-user device." App. Br. 16, 20 (Claims Appendix).
The Examiner relies on the combination of Milius and Novak as disclosing
this limitation. Non-Final Act. 5 (citing Novak ,r,r 52-55); Ans. 8-9 (citing
Milius ,r 22).
Appellants argue the claims together. App. Br. 13. Appellants
reiterate several arguments made with respect to the independent claims. Id.
For the reasons discussed above, those arguments do not show Examiner
error. Appellants also argue that "Novak employs a non-customized
application that re-skins itself on the end-user's computer" and, therefore,
"no customized application is first generated and then transferred to the
user's computer." Id. Appellants, however, do not address the Examiner's
specific finding that "Milius teaches transfer of customized media to the
9
Appeal2017-011650
Application 13/050,490
user's computer" and the Examiner's legal conclusion "it would also have
been obvious to utilize the distributed computing environment of Novak to
transmit the same to the user's computer once configuration is complete."
Ans. 9.
Appellants do not persuade us of error in the Examiner's finding that a
person of ordinary skill in the art would understand the combination of
Milius and Novak to teach "transmitting the customized application to the
end-user device."
Claims 3 and 9
The Examiner rejects claims 3 and 9, which depend from claims 1 and
8 respectively, over a combination of Milius and Novak. Non-Final Act. 6.
Both claims add limitations: "transmitting both the unconfigured application
and the GUI configuration parameter to the end-user device" and "the
customized application is generated from the unconfigured application
having the GUI configuration associated with the first local branding
element upon initialization at the end-user device." App. Br. 16, 18 (Claims
Appendix). The Examiner relies on the combination of Milius and Novak as
disclosing this limitation. Non-Final Act. 6 (citing Novak, Fig. 3, ,r,r 57-60);
Ans. 8-9 ( citing Novak ,r 42; Milius ,r,r 22-23).
Appellants argue the claims together, arguing that Novak does not
disclose these limitations. App. Br. 14; Reply Br. 7-8. Appellants add that
"mere disclosure of using distributed processing by ... Milius and Novak,
does not teach or suggest transmitting the unconfigured application and the
parameters so that the end-user device can generate a customized
application." Reply Br. 8. Appellants, however, do not address the
Examiner's specific finding, with which we agree, that "Milius teaches
10
Appeal2017-011650
Application 13/050,490
transfer of customized media to the user's computer which is then executed
on the user's computer for further customization and configuration of the
user's computer." Ans. 10 (citing Milius ,r,r 22-23).
Appellants do not persuade us of error in the Examiner's finding that a
person of ordinary skill in the art would understand the combination of
Milius and Novak to teach the limitations of claims 3 and 9.
Claim 16
The Examiner rejects claim 16, which depends from claim 14, over a
combination of Milius and Novak. Non-Final Act. 6. Claim 16 adds the
limitation: "download, responsive to the user request, the GUI configuration
parameter from a source other than the online application store." App. Br.
20 (Claims Appendix). The Examiner relies on the combination of Milius
and Novak as disclosing this limitation. Non-Final Act. 6 (citing Novak,
Fig. 3, ,r,r 57-60); Ans. 10 (citing Novak ,r,r 41--42, 53; Milius ,r,r 22-23).
Appellants argue that "the cited references are silent regarding the
source from which the claimed GUI configuration parameter is
downloaded." App. Br. 14. We agree with Appellants that the Examiner
has not explained how the cited portions of the references teach "from a
source other than the online application store."
Appellants, therefore, persuade us of error in the Examiner's finding
that claim 16 would have been obvious over a combination of Milius and
Novak.
Claims 4, 10, and 17
The Examiner rejects claims 4, 10, and 17, which depend from claims
1, 8, and 14 respectively, over a combination of Milius and Novak. Non-
Final Act. 6. All three claims add the limitations: "customizing default
11
Appeal2017-011650
Application 13/050,490
information sources" and "customizing channel configurations." App. Br.
16, 18, 20 (Claims Appendix). The Examiner relies on Novak as disclosing
this limitation. Non-Final Act. 6 (citing Novak, Fig. 3, ,r,r 57---60); Ans. 11.
Specifically, the Examiner "construes a 'channel' as a 'playlist' [in Novak],
as they are both functionally equivalent in providing a stream of content to
the user" and "[s]witching between playlists is equivalent to switching
between channels." Id. at 8.
Appellants argue the claims together, arguing that the recited channel
and Novak's playlist are not functionally equivalent. Reply Br. 9. Although
we agree with Appellants that the definitions of channel and playlist are not
the same, we find that, in view of Novak's disclosure of customizing playlist
configurations of music player applications (Novak ,r 58), a person of
ordinary skill in the art would have found it obvious to customize channel
configurations of applications that play music channels.
Appellants, therefore, do not persuade us of error in the Examiner's
finding that a person of ordinary skill in the art would understand the
combination of Milius and Novak to teach the limitations of claims 4, 10,
and 17.
Claims 5-7, 11-13, and 18-20
The Examiner rejects claims 5-7, 11-13, and 18-20, which depend
from claims 1, 8, and 14, over a combination of Milius and Novak. Non-
Final Act. 6-7. For each of these claims, Appellants rely on the same
arguments made with respect to independent claims 1, 8, and 14. App. Br.
15. These arguments, however, are not persuasive for the reasons discussed
above. Consequently, we find Appellants' arguments do not show error in
12
Appeal2017-011650
Application 13/050,490
the Examiner's underlying factual findings and the ultimate legal conclusion
of obviousness for claims 5-7, 11-13, and 18-20.
CONCLUSIONS
Appellants have not shown Examiner error in rejecting claims 1-15
and 17-20 as obvious over a combination of Milius and Novak. Appellants
have shown Examiner error in rejecting dependent claim 16.
DECISION
We affirm the Examiner's rejection of claims 1-15 and 17-20.
We reverse the Examiner's rejection of claim 16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv) (2009).
AFFIRMED-IN-PART
13