Ex Parte Malu et al

Patent Trial and Appeal Board

Jul 24, 2013

11018952 (P.T.A.B. Jul. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHAND MALU and MURALI KRISHNA
PUNAGANTI VENKATA1
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Appeal 2010-012264
Application 11/018,952
Technology Center 2600
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Before CAROLYN D. THOMAS, ELENI MANTIS MERCADER, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4-14, 16, 17, and 19-28, all pending claims in the
application. Appellants have previously canceled claims 3, 15, and 18. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The Real Party in Interest is Nokia Corporation. (App. Br. 1.)
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STATEMENT OF THE CASE 2
The Invention
Appellants’ invention generally relates to events occurring in mobile
terminals and other electronic devices and, more particularly, to mobile
terminals in which various events may be executed by a user of a terminal or
by a system associated with the terminal. Spec. ¶ [0001] (“FIELD OF THE
INVENTION”).
Exemplary Claim
Claim 1 is an exemplary claim representing an aspect of the invention
which is reproduced below (emphases added to disputed limitations):
1. A method of providing sponsored content to a user
in conjunction with the execution of an event on an electronic
device, comprising:
having an event initiated for execution on an electronic
device;
checking a set of preferences for information regarding
the event;
determining whether sponsorship is accepted for an
application associated with the event;
if sponsorship is accepted for the application associated
with the event, obtaining sponsored content based upon the
set of preferences; and
conveying the sponsored content to the user in
conjunction with the execution of the event.

2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed
Mar. 30, 2010); Reply Brief (“Reply Br.,” filed Sep. 8, 2010); Examiner’s
Answer (“Ans.,” mailed Jul. 8, 2010); Final Office Action (“FOA,” mailed
Feb. 17, 2009); and the original Specification (“Spec.,” filed Dec. 21, 2004).
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Prior Art
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Leapman US 2002/0087401 A1 Jul. 4, 2002
Webb US 2002/0143664 A1 Oct. 3, 2002
Vasudevan US 2004/0215692 A1 Oct. 28, 2004
Anand US 2005/0076130 A1 Apr. 7, 2005
(filed Sep. 26, 2003)
Rejections on Appeal
1. Claims 1, 2, 4-8, 10-14, 16, 17, 20, 21, and 25-28 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Webb and Leapman. Ans. 4.
2. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Webb, Leapman, and Anand. Ans. 7.
3. Claims 19, and 22-24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Webb, Leapman, and
Vasudevan. Ans. 8.
ISSUE
Appellants argue (App. Br. 6-14; Reply Br. 2-5) that the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Webb and Leapman is in error. These contentions present us
with the following issue:
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Did the Examiner err in finding that the combination of Webb and
Leapman teaches or suggests the limitation of “determining whether
sponsorship is accepted for an application associated with the event; if
sponsorship is accepted for the application associated with the event,
obtaining sponsored content based upon the set of preferences,” as recited in
claim 1?
ANALYSIS
We disagree with Appellants’ conclusions with respect to claim 1, and
we adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken and (2) the reasons and
rebuttals set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Arguments. However, we highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
Appellants contend that claim 1 requires obtaining sponsored content
if sponsorship for the application associated with the event is accepted, and
that the sponsored content does not exist in the device until the sponsored
content is obtained. However, Appellants attempt to distinguish over
Leapman by pointing out that, in Leapman, broadcast advertisements have
already been received by the mobile device before comparison step 410.
App. Br. 9-10. Appellants further contend that the Examiner’s position that
Leapman’s storing of advertisements (step 420) is equivalent to claim 1’s
requirement for obtaining sponsored content is unreasonable “because
‘obtaining’ is quite different from ‘conveying’ or ‘storing.’” App. Br. 10.
Appellants also contend:
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[S]toring the sponsored content must happen separate and apart
from receiving (or obtaining or getting) the sponsored content . . .
[such that,] in the context of the claimed invention, it is
unreasonable for the Examiner to assert that the term “stored”
means “to get” or “to obtain,” and no amount or air brushing
Leapman or spinning can make it so.
Id.
Further in this regard, Appellants contend:
[I]n Leapman, the broadcast advertisements are broadcast and
transmitted such that the mobile device 100 may receive the
broadcast advertisements without soliciting these
advertisements. On the other hand, the claimed invention
requires obtaining the sponsored content if the sponsorship is
accepted for the application associated with the event, and does
not specify receiving a content that is broadcast from a content
provider. In other words, in the claimed invention, the
sponsored content is not obtained until after the determination
has been made that the sponsorship is accepted for the
application associated with the event. Therefore, receiving
unsolicited (broadcast) content without any determination step
cannot be equated to obtaining sponsored content.
App. Br. 11 (emphases in original).
Finally, Appellants contend, while Leapman lists various factors
related to filtering or acceptance criteria for particular advertising
preferences e.g., company and/or brand names, information about products
and/or services, price information and/or price thresholds, Leapman does not
teach that sponsorship is accepted for a particular application with an event
(App. Br. 12). That is, Leapman is silent on any teaching or suggestion of
“sponsorship.” App. Br. 12 (citing Leapman ¶ [0026]). “In Leapman, the
broadcast advertisement is received even if an application is not willing or
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able to accept the advertisement, and thus the sponsorship is not considered
in receiving the advertisement in Leapman.” App. Br. 13.
We begin our analysis by first considering the scope and meaning of
the claim limitation “obtaining sponsored content,” which must be given the
broadest reasonable interpretation consistent with Appellants’ disclosure, as
explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). See also In re Zletz,
893 F.2d 319, 321 (Fed. Cir. 1989) (stating that “claims must be interpreted
as broadly as their terms reasonably allow.”). Our reviewing court further
states, “the ‘ordinary meaning’ of a claim term is its meaning to the ordinary
artisan after reading the entire patent.” Phillips v. AWH Corp., 415 F.3d
1303, 1321 (Fed. Cir. 2005) (en banc).
The Examiner finds that “the definition of ‘obtaining’ is to get, to
acquire, or to receive . . . [t]hus ‘obtaining the sponsored content’ can be
equated to conveying, getting, or receiving sponsored content.” Ans. 12.
The Examiner continues by observing that to “store” sponsored content in
Leapman is a specific way of getting or obtaining sponsored content, and “to
store sponsored content is an additional step [that] occurs after the sponsored
content is obtained . . . [such that] ‘storing advertisement’ of Leapman reads
on ‘obtaining sponsored content’ of [the] claimed invention.” Id.
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We note that Appellants’ originally-filed application discloses that
advertisements may or may not be available locally, i.e., pre-stored on the
user’s mobile device. For example, step 340 (“Is ad available?”), step 350
(“Return Ad.”), and step 360 (“Fetch ad from server”) in Figure 5 and
related disclosure indicates that the advertisement may be available either
locally or within system cache 250 and, if the ad is immediately available,
step 350 retrieves the ad for event manager 200. If not available locally,
e.g., in system cache 250, ad manger 210 fetches the ad from ad server 220,
and event manager 200 then processes the fetched ad for display or
conveyance on the user’s mobile device. Spec. ¶¶ [0025]-[0026]. Thus,
contrary to Appellants’ contention cited above, sponsored content can exist
in the device before determining whether sponsorship is accepted for an
application associated with the event.
Therefore, based upon Appellants’ disclosure cited above, we find
that “obtaining sponsored content” may reasonably be construed as either
meaning (1) retrieving a pre-stored advertisement and then displaying or
conveying the ad on the user’s device, or as (2) fetching an advertisement
from an ad server, and then displaying or conveying the fetched ad on the
user’s mobile device. Our finding is consistent with the Examiner’s
statement that Leapman’s storing of an advertisement teaches or suggests the
recited “obtaining sponsored content.” Ans. 12.
As for Appellants’ arguments concerning Leapman’s purported lack
of “sponsorship,” i.e., that “receiving unsolicited (broadcast) content without
any determination step cannot be equated to obtaining sponsored content”
(App. Br. 10-11; Reply Br. 4-5), we agree with the Examiner and find that
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Leapman teaches or suggests determining sponsorship before sponsored
content is obtained by determining whether or not to accept the sponsored
content (advertisement). Ans. 13; Leapman Fig. 4 (steps 410, 415, and 420),
and ¶¶ [0025]-[0027].
Accordingly, Appellants have not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s
characterization of the cited art and related claim construction. Therefore,
we sustain the Examiner’s obviousness rejection of independent claim 1. As
Appellants have not provided separate arguments with respect to
independent claims 12, 16, and 20, or dependent claims 2, 4-11, 13, 14, 17,
19, and 21-28 (App. Br. 14-15), we similarly sustain the Examiner’s
rejection of these claims under 35 U.S.C. § 103(a).
CONCLUSION
The Examiner did not err with respect to the various unpatentability
rejections of claims 1, 2, 4-14, 16, 17, and 19-28 under 35 U.S.C. § 103(a)
over the prior art cited by the Examiner, and the rejections are sustained.
DECISION
The decision of the Examiner to reject claims 1, 2, 4-14, 16, 17, and
19-28 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
AFFIRMED

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