Ex Parte Lyren

Patent Trial and Appeal Board

Jun 25, 2018

13736960 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/736,960 01109/2013
64021 7590
PHILIP S. L YREN, PC
289 Woodland A venue
Wadsworth, OH 44281
06/25/2018
FIRST NAMED INVENTOR
Philip Scott Lyren
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.
PSL-018 1280
EXAMINER
SPAR, ILANA L
ART UNIT PAPER NUMBER
3682
MAILDATE DELIVERY MODE
06/25/2018 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 PHILIP SCOTT L YREN
Appeal 2016-008571
Application 13/736,960
Technology Center 3600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant 1 appeals from the
Examiner's final decision to reject claims 1-20, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm and designate new grounds of rejection pursuant to
37 C.F.R. § 41.50(b) (2015).
1 Appellant identifies the real party in interest as Four Mile Bay LLC. Br. 2.
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STATEMENT OF THE CASE
Appellant's disclosed invention relates to generating a customized
advertisement that is unique to a user. Spec., Abstract. Claim 1, which is
illustrative, reads as follows:
1. A method executed by a computer system to generate and
display a customized video, comprising:
determining, by a user intention determiner in the
computer system and based on information in a user profile of a
user, a product that the user expressed an interest in purchasing;
obtaining, by an advertisement customizer in the computer
system, a template video that is an advertisement for the product
that the user expressed the interest in purchasing;
negotiating, by a user agent of the user in the computer
system and with a merchant that sells the product, a price for the
product;
modifying, by the advertisement customizer in the
computer system, the template video to include the price
negotiated by the user agent of the user and personal information
about the user to generate a customized advertisement video that
is unique to the user; and
presenting, on a display of a handheld portable electronic
device of the user, the customized advertisement video that
includes the price negotiated by the user agent of the user and the
personal information about the user.
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, 2 as
failing to comply with the enablement requirement and the written
description requirement. See Final Act. 2---6.
2 All rejections are under the provisions of 35 U.S.C. in effect before the
effective date of the Leahy-Smith America Invents Act of2011 (AIA). See,
e.g., Final Act. 2 n.1.
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Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. See Final Act. 6-8.
Claims 1 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chockalingam et al. (US 2009/0037279 Al, published
Feb. 5, 2009) and Jain (US 7,991,645 B2, published Aug. 2, 2011). See
Final Act. 9-12.
Claims 2, 8, 13, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chockalingam, Jain, and Maislos et al. (US
2007/0186165 Al, published Aug. 9, 2007). See Final Act. 12-15.
Claims 3, 6, 10, 11, and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chockalingam, Jain, Maislos, and Official Notice.
See Final Act. 15-16.
Claims 4, 7, 16, and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chockalingam, Jain, and Svendsen et al. (US
2012/0123830 Al, published May 17, 2012). See Final Act. 16-19. 3
Claims 9 and 144 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chockalingam, Jain, Maislos, and Svendsen. See Final
Act. 19-20.
3 In the header for the rejection of claim 14 (Final Act. 16), the Examiner
mistakenly omits Maislos, which is relied upon in rejecting the base claim 8
(id. at 12-14). For purposes of our review, we include Maislos in the
rejection and list claim 14 with claim 9, which was rejected over the same
combination of art. We treat the Examiner's omission as a typographical or
ministerial error.
4 See supra n.3.
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Claims 5 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chockalingam, Jain, and Small et al. (US 2012/0072936
Al, published Mar. 22, 2012). See Final Act. 20-21.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chockalingam, Jain, Maislos, and Small. See Final
Act. 21-22.
Rather than repeat the arguments here, we refer to the Brief ("Br."
filed Jan. 14, 2016) for Appellant's positions; the Final Office Action ("Final
Act." mailed July 15, 2015) and Examiner's Answer ("Ans." mailed June
14, 2016) for the reasoning, findings, and conclusions of the Examiner; and
the Specification ("Spec." filed Jan. 9, 2013). Only those arguments actually
made by Appellant have been considered in this decision. Arguments that
Appellant did not make in the Brief have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
Written Description
The Examiner finds claim l's user intention determiner,
advertisement customizer, and user agent (the "three elements") "are all
implemented inside a computer, and therefore all require artificial
intelligence [(AI)] at some level." Final Act. 5. According to the Examiner,
the three elements require extensive implementation details "subject of
cutting edge research, e.g.[,] natural language processing and autonomous
software agents exhibiting intelligent behavior." Id. The Examiner
concludes, "one skilled in the art would not be persuaded that Applicant
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possessed the invention" because "it is not readily apparent how to make a
device [to] analyze natural language." Id. at 5---6.
Appellant argues, "[t]he originally filed specification includes sixty-
five ( 65) pages that describe in much detail the computer system and
example methods .... These sixty-five pages reasonably convey to persons
skilled in the art that the inventor had possession of the claimed subject
matter." Br. 16. Appellant further argues the claims do not recite AI, nor
does the Specification teach that AI is necessary to implement the claims.
Id. at 18.
We find Appellant has the better position. The Specification must
reasonably convey to an artisan of ordinary skill that Appellant had
possession of the claimed invention at the time the application was filed.
See Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682
(Fed. Cir. 2015) (citing Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane)); see also MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2161.01 (9th Ed. Rev. 08.2017, Jan. 2018) (citing
Vasudevan). "The written description requirement is not met if the
specification merely describes a desired result." Vasudevan, 782 F.3d at 682
(internal quotation marks and citation omitted). The Specification must
explain, for example, how Appellant intended to achieve the claimed
function to satisfy the written description requirement. Id. at 683.
At the outset, we note that, to the extent Appellant argues that the
Specification's length alone is somehow indicative that Appellant had
possession of the three elements, we disagree. Here, we look instead to
Appellant's explanation of the claimed subject matter from the Summary of
Claimed Subject Matter section of the Brief. See Br. 4. Appellant's
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Specification discloses a computer system's electronic device including the
three elements. Spec. 46:5-10; Fig. 15. In particular, the electronic device's
user intention determiner "can perform functions such as those described in
connection with Figures 2 and 9" (Spec. 46:18-19), and the advertisement
customizer "can perform functions such as those described in connection
with Figures 4, 5, 6, 9, and 14" (id. at 46:20-21). The electronic device's
"'user agent' is software that acts on behalf of a user. User agents include,
but are not limited to, one or more of intelligent agents (agents that use
learning, reasoning and/or artificial intelligence [AI]), ... mobile agents
(agents that move execution to different processors) .... " Id. at 49:5-11.
Here, an artisan of ordinary skill would be able to discern from these
disclosures how Appellant intended to achieve the claimed functions of the
three elements. Thus, the Examiner has not carried the burden of providing
a sufficient reason why one of ordinary skill in the art would not consider
the Specification adequate to satisfy 35 U.S.C. § 112, first paragraph's
written description requirement, and we do not sustain the Examiner's
rejection of claims 1-20 for failing to meet the written description
requirement. Because this argument is dispositive regarding our reversing
the written description rejection of these claims, we need not address
Appellant's other arguments regarding the written description rejection.
Enablement
The enablement requirement requires that the Specification teach
those in the art to make and use the invention without "undue
experimentation." In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Facts
that should be considered in determining whether a specification is enabling,
or if it would require undue experimentation to practice the invention
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include: (1) the quantity of experimentation necessary to practice the
invention, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, ( 6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Id.
The Examiner finds that the claims do not comply with the
enablement requirement for reasons similar to those underlying the
Examiner's written description rejection. Compare Final Act. 3, with id. at
5---6. The Examiner further compares the independent claims to each of the
Wands factors (id. at 3-5), and concludes that "undue experimentation
would be required to realize this invention" (id. at 5).
Breadth of the Claims
Appellant argues, with respect to the Wands factor relating to the
breadth of the claims, "[t]he claims do not recite ... [AI] or ... [AI] agents.
The specification does not require example embodiments to include ... [AI]
or ... [AI] agents." Br. 10 (emphasis omitted). In response, the Examiner
finds the Specification makes clear that the claims encompass AI because
the description of agents includes AI. Ans. 10.
We find Appellant has the better position. "'The enablement
requirement is met if the description enables any mode of making and using
the invention."' Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1361
(Fed. Cir. 1998) (quoting Engel Indus., Inc. v. Lodiformer Co., 946 F.2d
1528, 1533 (Fed. Cir. 1991)) (emphasis added) (bracketing omitted).
Appellant's Specification discloses that only the user agent among the
electronic device's components uses AI, and that only one embodiment of
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the user agent uses AI. Spec. 49:5-11. Thus, contrary to the Examiner's
findings (Final Act. 3; Ans. 10), we find the scope of enablement provided
to one skilled in the art by the Specification's non-AI embodiments is
commensurate with the scope of protection sought by the claims. See AK
Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003); In re Moore,
439 F.2d 1232, 1236 (CCPA 1971).
The Amount of Direction or Guidance Presented
Appellant argues, with respect to the Wands factor relating to the
amount of direction or guidance presented, "[t]he originally filed
specification includes sixty-five ( 65) pages that describe in much detail the
computer system and example methods. The specification includes fifteen
(15) drawings showing numerous example embodiments." Br. 13. In
response, the Examiner finds the black boxes illustrated to Figure 15 that
represent advertisement customizer 1570, user intention determiner 1540,
and user agent 1585 "are not the kind of disclosure that enables one of
ordinary skill to make or find a 'user agent,' an 'advertisement customizer,'
or a 'user intention determiner."' Ans. 12.
We again find Appellant has the better position. Although
Appellant's black boxes illustrated in Figure 15 may be short on functional
detail, they do not stand alone, but must be read in conjunction with the
functional description provided by the method diagrams of Figures 3-7, 9,
10, 13, and 14, the display screen diagrams of Figures 12 and 13, and the
accompanying text. Under the enablement requirement of§ 112, "[ w]hen
the challenged subject matter is a computer program that implements a
claimed device or method, enablement is determined from the viewpoint of a
skilled programmer using the knowledge and skill with which such a person
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is charged." Northern Telecom, inc. v. Datapoint Corp., 908 F.2d 931, 941
(Fed. Cir. 1990). The Examiner has not explained why the functional
description in the Specification could not be implemented by an ordinarily
skilled programmer without undue experimentation. Accordingly, in the
context of the Specification as a whole, Appellant's black boxes illustrated
in Figure 15 that represent advertisement customizer 1570, user intention
determiner 1540, and user agent 1585 are sufficient to meet the enabling
requirement of 35 U.S.C. § 112, first paragraph. See In re Knowlton, 481
F.2d 1357, 1367 (CCPA 1973); In re Comstock, 481F.2d905, 909-10
(CCPA 1973).
Conclusion
It is not necessary that a court review all the Wands factors to find a
disclosure enabling, as they are illustrative, not mandatory. See Amgen, Inc.
v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991). Rather, the
rejection "should focus on those factors, reasons, and evidence that lead [to]
the ... [conclusion] that the specification fails to teach how to make and use
the claimed invention without undue experimentation." MPEP § 2164.04.
The Examiner's findings regarding the remaining Wands factors
depend upon an unfounded requirement that an AI embodiment of a user
agent must be read into the claims as discussed above. See, e.g., Ans. 11
(finding that, with respect to the Wands factor relating to the nature of the
invention, "[t]he invention is in the nature of [AI] negotiating, advertising,
and video editing agents" (emphasis omitted)). Thus, the Examiner has not
provided sufficient reason to doubt the assertions made in the Specification,
and we do not sustain the Examiner's rejection of claims 1-20 under
35 U.S.C. § 112, first paragraph, for failure to comply with the enablement
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requirement. Because this argument is dispositive regarding the Examiner's
non-enablement rejection of these claims, we need not address Appellant's
other arguments regarding non-enablement.
REJECTIONUNDER35 U.S.C. § 101
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To
determine whether claims are patent eligible under § 101, we apply the
Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd. v.
CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of nature,
natural phenomena, and abstract ideas. Id. at 2354--55. If so, we then
proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357 (internal quotation marks
and citation omitted).
Prima F acie Case
Appellant contends that the Examiner failed to establish a prima facie
case to reject claims 8-20 under 35 U.S.C. § 101 because the Examiner
failed to follow the two-step test articulated in Alice. Br. 25. According to
Appellant, "the Examiner merely makes a conclusory statement that
computer readable media and system claims are invalid because they merely
recite generic computer components." Id.
We are not persuaded of error. Our reviewing court held that, during
prosecution, the Examiner is governed by 35 U.S.C. § 132, which requires
notification to an applicant of the reasons for a rejection with "such
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information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011) (quoting Chester v. Miller, 906 F.2d 1574, 1578
(1990) (§ 132 "is violated when a rejection is so uninfonnative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection")). Here, the Examiner identifies independent claim 1, a
method, as being "[r]epresentative of the claimed invention." Final Act. 6.
That is, the Examiner identifies independent claim 1 as being representative
of claims 2-20. We find the Examiner's rejection satisfies the initial burden
of production by identifying claim 1 as being (1) "directed to determining
the expressed interests of a user, negotiating to meet those needs, and
presenting a customized advertisement matching the interest" under Alice
step one (Final Act. 7); and (2) not applied in an eligible manner under Alice
step two (id.). Although the Examiner's finding that independent claims 8
and 15 place the abstract idea in a particular technological context (id. at 8),
the Examiner's finding is merely an additional finding that supplements the
findings made regarding representative claim 1.
Thus, we conclude the Examiner explained the rejection of claims
8-20 under 35 U.S.C. § 101 in sufficient detail to permit Appellant to
respond meaningfully. Accordingly, we find that the Examiner set forth a
prima facie case of ineligibility for claims 8-20.
Alice Step One
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355 (emphasis added). Appellant argues
claim 1 is not directed to an abstract idea of a fundamental economic
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practice because "[claim] 1 is directed to a method executed by a computer
system to generate and display a customized video." Br. 23.
The dispute implicates the "directed to" inquiry. "[T]he 'directed to'
inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is directed to
excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). The court in Enfish put the
question as being "whether the focus of the claims is on . . . [a] specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfish, 822 F.3d at 1335-36. The court found that the "plain
focus of the claims" there was on "an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity." Id. at 1336.
Claim 1 recites four key method-steps executed by a computer
system--( a) determining a product a user expressed an interest in
purchasing, (b) obtaining a template video that is an advertisement for the
product, ( c) negotiating a price for the product, and ( d) generating a
customized advertisement video by modifying the template video to include
the price negotiated. Claim 1 further recites presenting the customized
advertisement video. A plain reading of the claim suggests that the claimed
invention is directed to, as a whole, customizing advertisements in response
to a user's interest in a product. Moreover, the Specification provides
evidence that supports the notion that the invention pertains to customizing
advertisements. As the Specification explains, a goal of the claimed
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invention is to create an advertisement that effectively reaches a target
audience. Spec. 1: 8-10. Appellant's invention achieves the goal by
customizing advertisements in response to a user's interest in a product. Id.
at 5:4--7.
Customizing an advertisement is an age-old economic activity. For
example, sales representatives are eager to provide customized information
for a particular product once they see that a customer shows visual interest in
the particular product. In one typical scenario, a car salesman, after seeing a
potential customer visually looking at a particular car, obtains a
corresponding specification sheet of the car that includes the car's base
price. Once the car salesman and potential customer negotiate a price for the
car, the car salesman modifies the specification sheet to include the
customer's name and the negotiated price which, in tum, is presented to the
potential customer.
In short, customizing advertisements in response to a user's observed
interest in a product is an economic activity and, therefore, an abstract idea.
That the recited method of claim 1 is executed by a computer system is of no
material consequence here. See Enfish, 822 F.3d at 1335-36, 1338
(citing OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed.
Cir. 2015)).
Thus, for the above reasons, we are unpersuaded the Examiner erred
in concluding the claims are directed to an abstract idea.
Alice Step Two
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, we "consider the elements of each
claim both individually and 'as an ordered combination' to determine
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whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The claim differs from the abstract idea in that the claim recites using the
method on a computer and using a video advertisement in the method.
"[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Id. at 2358.
The computer functions must be more than well-understood, routine, and
conventional activities previously known to the industry. Id. at 2359
(quoting Mayo, 566 U.S. at 73).
Appellant argues the computer system of claim 1 that generates and
displays a customized video is an improvement in the technical field of
generating videos. Br. 24. We disagree. The claimed customized video can
be any video modified in any way-the claims are not directed to the details
of how the video is modified, but rather to the result of modifying the video.
Our reviewing court has observed that "[i]n applying the principles
emerging from the developing body of law on abstract ideas under section
101, ... claims that are 'so result-focused, so functional, as to effectively
cover any solution to an identified problem' are frequently held ineligible
under section 101." Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d
1253, 1265 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1356 (Fed. Cir, 2016); Cf DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1258 (2014) (finding the claims "specify
how interactions with the Internet are manipulated to yield a desired result-
a result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink"). Therefore, Appellant's
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claim 1 is not directed to any improvement in the field of generating videos,
but rather merely recites that a modified video is to be generated and
displayed. Further, Appellant's claim 1 "simply instruct[ s] the practitioner
to implement the abstract idea with routine, conventional activity."
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (2014). Here, as in
Alice, the claims "do not ... purport to improve the functioning of the
computer itself or effect an improvement in any other technology or
technical field." Alice, 134 S. Ct. at 23 51. Thus, "the claims at issue
amount to 'nothing significantly more' than an instruction to apply the
abstract idea ... using some unspecified, generic computer." Id. at 23 60
(quoting Mayo, 566 U.S. at 79).
Accordingly, we are not persuaded the Examiner erred in rejecting the
claims as directed to ineligible subject matter under 35 U.S.C. § 101.
REJECTIONS UNDER 35 U.S.C. § 103(a)
Claims 1, 2, 5, 7, 8, and 12-18
We begin by noting the Examiner's obviousness rejection relies
principally on Chockalingam to teach many of the recited elements of claim
1. Final Act. 9-10. Of particular note, the Examiner finds Chockalingam
discloses obtaining a template video that is an advertisement for a product a
user expressed an interest in purchasing. Id. (citing Chockalingam i-fi-126,
32). The Examiner further finds that, although Chockalingam discloses (1)
generating a customized advertisement by modifying the template video to
include the user's personal information, and (2) presenting the customized
advertisement video on a handheld portable electronic device's display,
Chockalingam does not teach the template video including a negotiated price
of the product by a user agent of the user and a merchant that sells the
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product. Id. at 10 (additionally citing Chockalingam i-fi-16, 27, 31, 34). The
Examiner, however, cites Jain for teaching this feature in concluding that the
claim would have been obvious. Id. (citing Jain 6: 1---6; 8:37-39).
Appellant asserts Chockalingam discloses a personalized
advertisement including a price discount promotion such as a coupon, but
argues Chockalingam does not teach or suggest that a personalized
advertisement can include a customized price or a price particular to the
user, let alone a price negotiated by a user agent of the user. Br. 30-31
(citing Chockalingam i-fi-1 4, 5, 17, 18, 31; Fig. 3). Moreover, Appellant
asserts Jain discloses online actions involving proxy buyers and proxy
sellers negotiating a price for a product, but argues Jain's negotiated price
is not included in an advertisement for the product. Id. at 31 (citing Jain
2:27--40; 4:48--49; 5:42--46, 54--58; 7:13-14; 9:40--45; 10:64--11:3; 12:23-
29);
Appellant's arguments are not persuasive at least because Appellant
considers the teachings of Chockalingam and Jain in isolation and
Appellant's arguments fail to specifically rebut the Examiner's ultimate
legal conclusion of obviousness that is based on the combination of
Chockalingam and Jain. Non-obviousness cannot be established by
attacking references individually where, as here, the ground of
unpatentability is based upon the teachings of a combination of references.
In re Keller, 642 F.2d 413, 426 (CCPA 1981). Rather, the test for
obviousness is whether the combination of references, taken as a whole,
would have suggested the patentee's invention to a person having ordinary
skill in the art. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
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It is irrelevant whether Chockalingam's modified template video
includes a price negotiated by a user's user agent because the Examiner
relies on Chockalingam only to teach modifying a template video to create a
personalized video and modifying the template video to include personal
information about the user. Nor is it relevant whether Jain's negotiated price
of a product is included in an advertisement because the Examiner merely
relies on Jain's negotiated price of the product. One of ordinary skill in the
art would have recognized from the combined teachings that Jain's
negotiated price could be added to Chockalingam's personal information
when customizing the video. Thus, we agree with the Examiner in
concluding the combination of Chockalingam and Jain teaches or suggests
(1) modifying a template video (as taught by Chockalingam) to include a
product's negotiated price (as taught by Jain) and a user's personal
information (as taught by Chockalingam) to generate a customized
advertisement video that is unique to the user (as taught by Chockalingam),
and (2) presenting the customized advertisement video on a user's handheld
portable electronic device display.
Thus, Appellant does not persuade us of error in the rejection of claim
1. Accordingly, we sustain the rejections of (1) independent claim 1;
(2) independent claims 8 and 15, which are argued relying on the arguments
made for claim 1 (see Br. 35-36); and (3) claims 2, 5, 7, 12-14, and 16-18,
which depend, directly or indirectly, from claims 1, 8, and 15, respectively,
and were not separately argued with particularity (see id. at 42, 44--45).
Claims 3, 10, and 19
We do not sustain the Examiner's obviousness rejection of claim 3,
(Final Act. 15) which recites, in part, analyzing words of a user in a text
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message exchange between the user and another person, and determining,
based on analysis of words in the text message, a product the user expressed
an interest in purchasing.
Appellant argues, among other things, that the Examiner's Official
Notice is improper. Br. 38-39. According to Appellant, the Examiner did
not take Official Notice of facts that are "capable of ... instant and
unquestionable demonstration as to defy dispute." Id. at 39 (citing MPEP
§ 2144.03). We agree.
At the outset, we note a key aspect of the Examiner's rejection is the
Examiner's taking of Official Notice that, "in light of the ability to analyze
natural language spoken content, analyzing natural language type text would
be obvious, and done to capture additional interpersonal interactive dat[a] for
the same reasons." Final Act. 15. Our emphasis underscores that the
Examiner did not officially notice a fact, let alone a fact capable of instant
and unquestionable demonstration, but instead officially noticed a legal
conclusion of obviousness. The Examiner's taking of Official Notice is,
therefore, problematic for that reason alone.
The Examiner provides Brandow et al. (US 6,064,957, issued May 16,
2000) as evidence to support an officially noticed fact that "systems that
perform speech recognition routinely analyze the corresponding text."
Ans. 8 (citing Brandow 1:21-23). But even assuming Brandow is adequate
documentary evidence to support the Examiner's officially noticed fact, the
Examiner's officially noticed fact is not the subject matter of claim 3,
including a determination, based on analysis of words in a text message, of a
product a user expressed an interest in purchasing. Thus, we are constrained
by this record to reverse.
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Accordingly, we do not sustain the rejections of claim 3 and claims 10
and 19, which were rejected on substantially the same bases as claim 3. See
Final Act. 15. Because this issue is dispositive regarding the Examiner's
rejection of these claims, we need not address Appellant's other arguments.
Claim 4
We sustain the Examiner's obviousness rejection of claim 4 (Final
Act. 16-17), which recites, in pertinent part,
[a] determining, by the computer system, a geographical
location of the user;
[b] retrieving, by the computer system, the template video
when the user walks in a first direction from the geographical
location; [and]
[ c] retrieving, by the computer system, a different template
video when the user walks in a second direction from the
geographical location of the user.
Br. 47 (Claims App.) (bracketed letter designations added for ease of
reference and emphasis added).
In accord with our precedent, steps [b] and [ c] of claim 4 need not be
satisfied. See Ex parte Schulhauser, Appeal 2013-007847, 2016 WL
6277792 (PTAB Apr. 28, 2016) (precedential) (holding that in a method
claim, a step reciting a condition precedent does not need to be performed if
the condition precedent is not met); see also MPEP § 2111. 04(II) (citing
Schulhauser). Although the limitations at issue in Schulhauser were
rendered conditional by the recitation of "if' (see id. at 6-8), we discern no
meaningful distinction between the recitation of "if' and "when" in this
context. Indeed, one dictionary definition of "when" is "in the event that: on
condition that: IF." MERRIAM-WEBSTER'S THIRD NEW INT'L DICTIONARY OF
THE ENGLISH LANGUAGE 2602 (2002). Accordingly, we construe "when" to
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be synonymous with "if' in this case; therefore, the term "when" in the
context of claim 4 renders steps [b] and [ c] conditional such that these steps
need not be performed.
Turning to the rejection, Appellant does not dispute the Examiner's
reliance on Chockalingam to disclose step [a]. Final Act. 16. Given the
Examiner's undisputed findings, we see no error in the Examiner's rejection
of claim 4.
Accordingly, Appellant does not persuade us of error in the rejection
of claim 4 and we sustain the rejection of claim 4.
Claims 6 and 11
We sustain the Examiner's obviousness rejection of claim 6. Final
Act. 15-16. Our reviewing court has held that non-functional descriptive
material cannot lend patentability to an invention that would have otherwise
been unpatentable. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Cf In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability).
The content of nonfunctional descriptive material is not entitled to weight in
the patentability analysis. Cf In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir.
1994) ("Lowry does not claim merely the information content of a
memory").
Claim 6 recites, in pertinent part, (a) gathering, by a user agent and
before presenting a product on a display to a user, information about the
product that includes (1) availability of colors of the product, (2) availability
of sizes of the product, (3) a geographical location of the product, and (4)
whether the product is in stock at the geographical location (the "four field
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descriptions ( 1}---(4 )"); and (b) presenting, on a display of a handheld
portable electronic device, the information about the product to the user
gathered by the user agent. Our emphasis underscores the information as
recited is just that, information. The information does not affect any step or
alter any structure recited in the claim. Therefore, the "information" is non-
functional descriptive material that does not distinguish the claim from the
prior art in terms of patentability. See Ngai, 367 F.3d at 1339.
Here, this case is distinguished from Lowry, because in Lowry the
claims were directed to data structures stored in memory that contained both
information used by application programs and information regarding their
physical interrelationships within a memory. Lowry, 32 F.3d at 1583. By
contrast, the present invention is directed to the "gathering" step (a) and
"presenting" step (b) identified above, where the only distinction over the
prior art is the four field descriptions (1}---(4). Unlike in Lowry, we find that
the four field descriptions (1}---(4) from claim 6 are descriptive and do not
functionally relate to any structure of the claimed user agent or handheld
portable electronic device. Rather, the four field descriptions ( 1}---(4) are
analogous to printed matter in that they represent merely underlying data in
a database. See Lowry, 32 F.3d at 1583. Accordingly, the four field
descriptions ( 1}---(4) represent nonfunctional descriptive material that is
entitled to no weight in the patentability analysis.
The Examiner finds Jain teaches steps (a) and (b) absent the four field
descriptions (1}-(4) taken as Official Notice. Final Act. 16. Appellant does
not dispute the Examiner's reliance on Jain. Br. 39--41. Given the
Examiner's undisputed findings, we see no error in the Examiner's rejection
of claim 6.
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Accordingly, Appellant does not persuade us of error in the rejection
of claim 6 and we sustain the rejection of claim 6.
Claim 9
We sustain the Examiner's obviousness rejection of claim 9 (Final
Act. 19-20), which recites, in pertinent part, retrieving a first template video
based on a user walking in a first direction toward a first store, and retrieve a
second template video based on the user walking in a second direction
toward a second store.
The Examiner finds Svendsen discloses claim 9. Final Act. 19-20
(citing Svendsen i-fi-127, 37); Ans. 9. We agree with the Examiner's findings
and adopt them as our own. Svendsen is generally directed to generating
photo advertisements. Svendsen, Abstract. Svendsen's user performs a
check-in by announcing the user is currently located within a particular
check-in zone. Id. i-fi-127, 37; Fig. 4, step 1000. Svendsen's check-in zones
are geographic areas corresponding to boundaries of "business
establishments (e.g., restaurants, bars, gas stations, stores, or the like)."
Id. i127. Svendsen, then, at least suggests a user currently located within a
particular check-in zone, or store, occurs after the user walks in a direction
toward the store. After the user performs a check-in at the check-in zone,
the user retrieves a photo ad template. Id. i-fi-137, 50; Fig. 4, step 1008.
Svendsen, then, at least suggests retrieving a template video based on the
user walking in the direction toward the store. Svendsen discloses other
multiple check-in zones (id. i-fi-129, 34, 37) and multiple photo ad templates
(id. i-fi-129, 50, 51, 57; Figs. 2, 3A). Svendsen, then, at least suggests
retrieving a first template video based on a user walking in a first direction
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toward a first store, and retrieving a second template video based on the user
walking in a second direction toward a second store.
Accordingly, Appellant does not persuade us of error in the rejection
of claim 9 and we sustain the rejection of claim 9. Although the overall
thrust of our analysis of claim 9 is the same as the Examiner's reasoning, we
have provided additional explanation not provided by the Examiner.
Accordingly, in the interest of giving Appellant a full and fair opportunity to
respond, we designate our affirmance of claim 9 as a new ground of
rejection.
Claim 20
We sustain the Examiner's obviousness rejection of claim 20 (Final
Act. 16-17), which recites a non-transitory computer readable storage
medium storing instructions that causes a computer system to execute
limitations similar to those in claim 6, including steps [a]-[ c].
The broadest reasonable interpretation of a product claim with
structure that performs a function that need only occur if a condition
precedent is met, still requires structure for performing the function should
the condition occur. See Schulhauser at 14--15. Therefore, our
interpretation of product claim 20 differs from method claim 6 because the
structure, namely the structure configured to perform the recited functions, is
present in the system regardless of whether steps [b] and [ c] are met and the
function is actually performed.
As discussed above, Appellant does not dispute the Examiner's
reliance on Chockalingam to disclose step [a]. Final Act. 16. The Examiner
finds Svendsen discloses steps [b] and [c]. Id. (citing Svendsen i-fi-127, 37).
We agree with the Examiner's findings and adopt them as our own.
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Svendsen's user performs a check-in by announcing the user is currently
located within a particular check-in zone. Svendsen i-fi-127, 37; Fig. 4, step
1000. Svendsen, then, at least suggests the user currently located within a
particular check-in zone occurs when the user walks in a direction from
outside the particular check-in zone. After the user performs a check-in at
the check-in zone, the user retrieves a photo ad template. Id. i-fi-137, 50;
Fig. 4, step 1008. Svendsen, then, at least suggests retrieving a template
video when the user walks in a direction from outside the particular check-in
zone. Svendsen discloses other multiple check-in zones (id. i-fi-129, 34, 37),
and multiple photo ad templates (id. i-fi-129, 50, 51, 57; Figs. 2, 3A).
Svendsen, then, at least suggests retrieving a first template video when the
user walks in a first direction from outside the particular check-in zone, and
retrieving a different template video when the user walks in a second
direction from outside the particular check-in zone.
Accordingly, Appellant does not persuade us of error in the rejection
of claim 20 and we sustain the rejection of claim 20. Although the overall
thrust of our analysis of claim 20 is the same as the Examiner's reasoning,
we have provided additional explanation not provided by the Examiner.
Accordingly, in the interest of giving Appellant a full and fair opportunity to
respond, we designate our affirmance of claim 20 as a new ground of
rejection.
DECISION
The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 112,
first paragraph is reversed.
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The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 101
is affirmed.
The Examiner's decision to reject claim 3 under 35 U.S.C. § 103(a) is
reversed.
The Examiner's decision to reject claims 1, 2, and 4--20 under 35
U.S.C. § 103(a) is affirmed, and the affirmance of the rejections of claims 9
and 20 is designated as new grounds of rejection within our authority under
37 C.F.R. § 41.50(b).
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to
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seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection, the effective date of the affirmance is deferred until
conclusion of the prosecution before the Examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§§ 41.50(±), 41.52(b).
AFFIRMED
37 C.F.R. § 41.50(b)
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