Ex Parte Rothschild

Patent Trial and Appeal Board

Mar 2, 2016

12775951 (P.T.A.B. Mar. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121775,951 05/07/2010 Leigh M. Rothschild
12896 7590 03/04/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
8153-0015 (CRGP-7) 1188
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/04/2016 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):
ptomail@iplawpro.com
scott.paul@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEIGH M. ROTHSCHILD
Appeal2013-010276
Application 12/775,951 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, SHEILA F. McSHANE, and
AMEE A. SHAH, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1 and 3-17. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appellant, the real party in interest is SRR Patent
Holdings, LLC. Appeal Brief filed March 18, 2013, hereafter "App. Br.," 1.
Appeal2013-010276
Application 12/775,951
BACKGROUND
The invention relates to a means of delivering customized content and
advertising to a user in a vehicle. Specification, hereinafter "Spec.," i-f 4.
The ratio of content to advertising may depend on external weather
conditions or the temperature within the vehicle. Provisional Application
61/176, 127, hereinafter the "Provisional Application" or "Prov. App.," i-f 10.2
Representative claims 1 and 6 are reproduced from pages 20-21 of the
Appeal Brief (Claims App'x) as follows, with emphasis added to relevant
claim limitations:
1. A content delivery method for providing advertising content to
a vehicle, comprising:
retrieving a profile of an end user operating the vehicle;
determining a selection of content for wireless delivery to a
playback device disposed in the vehicle according to the
retrieved profile;
identifying advertising content corresponding to the retrieved
profile; and
transmitting the identified advertising content and the selection
of content for playback in the playback device disposed in the
vehicle, wherein
a ratio of the identified advertising content to the selection of
content is determined based upon external weather conditions.
6. A content delivery method for providing advertising content to
a vehicle, comprising:
retrieving a profile of an end user operating the vehicle;
determining a selection of content for wireless delivery to a
playback device disposed in the vehicle according to the
retrieved profile;
2 The Provisional Application is incorporated by reference into the
Specification. See Spec. i-f 1.
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Application 12/775,951
identifying advertising content corresponding to the retrieved
profile; and
transmitting the identified advertising content and the selection
of content for playback in the playback device disposed in the
vehicle, wherein
a ratio of the identified advertising content to the selection of
content is based upon a temperature within the vehicle.
In a Final Rejection, the Examiner rejects claims 1 and 3-17 under 35
U.S.C. § 112, first paragraph3, for failure to comply with the enablement
requirement, and claims 1, 4, 6, 8, 10, 12, 14, and 16 for failure to comply
with the written description requirement. The Examiner rejects claims 1 and
3-17 under 35 U.S.C. § 112, second paragraph, as indefinite for failing to
particularly point out and distinctly claim the subject matter regarded as the
invention. The Examiner rejects claims 1 and 3-17 under 35U.S.C.§103(a)
as unpatentable over Shahraray4, Des Jardins5, and Banga6. Final Action
mailed February 5, 2013, hereinafter "Final Act.," 2-17; see, also, Answer
mailed May 23, 2013, hereinafter "Ans.," 2-17. The Appellant did not file a
Reply Brief.
DISCUSSION
The Appellant addresses claims 1 and 3-1 7 as one group for the
enablement and indefiniteness rejections. Claims 1, 4, 6, 8, 10, 12, 14, and
16 are addressed as a group for the written description rejections. The
Appellant also addresses claims 1, 3-5, and 10-13 as one group for the
3 The current application was filed May 7, 2010, prior to the effective date of
the AIA (America Invents Act), and the pre-AIA statute is applicable.
4 US Publication 2010/0023544 Al, published January 28, 2010.
5 US Patent 8,103,546 Bl, issued January 24, 2012.
6 US Publication 2008/0262901 Al, published October 23, 2008.
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obviousness rejections, and claims 6-9 and 14--17 as a separate group, with
common arguments presented for each group. App. Br. 5-17. We will
address the claims in a similar manner, using claim 1 as representative for
the first group and claim 6 as representative for the second group for the
obviousness rejections.
35U.S.C.§112,firstparagraph, enablement
The Examiner finds that the Specification lacks sufficient explanation
of the determination of the claimed ratio. Ans. 2-3, 13-14. The Appellant
argues that the Examiner fails to provide a basis for undue experimentation
and that a correlation between factors, such as external weather conditions
and temperature within a vehicle, and the ratio can be easily and readily
determined without undue experimentation by a person of skill in the art.
App. Br. 6-7.
We find the Examiner has not presented evidence that the scope of the
claim would not be within the knowledge of one of ordinary skill in this art
in accordance with the factors set forth in vVands. See In re vVands, 858
F.2d 731 (Fed. Cir. 1988). Absent this showing, we cannot sustain the
rejection under 35 U.S.C. § 112, first paragraph, for lack of enablement.
3 5 U.S. C. § 112, first paragraph, written description
The Examiner finds that the Specification provides no description of
the claimed ratios sufficient to demonstrate possession. Ans. 3---6. The
Appellant argues that support for the claimed limitations is found in the
Provisional Application, which is incorporated by reference. App. Br. 7-8.
The Examiner has the burden of establishing a prima facie case that
the appealed claims do not comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, by setting forth evidence or reasons why, as
a matter of fact, the written description in Appellant's disclosure would not
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reasonably convey to persons skilled in the art that Appellant was in
possession of the invention defined by the claims, including all of the
limitations thereof, at the time the application was filed. See, e.g., In re
Alton, 76 F.3d 1168, 1172, 1175-76 (Fed. Cir. 1996), citing In re Wertheim,
541 F.2d 257, 262---64 (CCPA 1976). Claims that introduce elements or
limitations which are not supported by the as-filed disclosure violate the
written description requirement. See, e.g., Ariad Pharm., Inc. v. Eli Lilly &
Co., 598 F. 3d 1336, 1353-1354 (Fed. Cir. 2010) (en bane). As the
Appellant points out, the Specification incorporates by reference its
Provisional Application that discloses the use of external weather conditions
and temperature as a parameter for determining content and associated
ratios, and we concur that the disclosure provides sufficient support of
weather and temperature as determinants in the claimed ratios. See Prov.
App. i-f 10. Accordingly, we cannot sustain the rejection under 35 U.S.C.
§ 112, first paragraph, for lack of written description.
35 U.S. C. § 112, second paragraph, indefiniteness
The Examiner finds the Specification provides no explanations for
interpretation of the claims, and, more specifically, for how the claimed
ratios are determined. Ans. 15. The Appellant argues that the Examiner's
rejection is based on details of how the invention works, but that is not an
indefiniteness issue. App. Br. 8-9.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Here, the Examiner has not established that a person of skill in the
art could not understand the claims as written. Instead, the Examiner's
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concerns are a matter of claim breadth, not indefiniteness. "Breadth is not
indefiniteness." In re Gardner, 427 F.2d 786, 788 (1970). Accordingly, we
cannot sustain the rejection under 35 U.S.C. § 112, second paragraph.
35 U.S.C. § 103(a)
Claims l, 3-5, and J{}-13
The Appellant argues that Des J ardins does not teach the admitted
deficiency of Shahraray, i.e., a ratio of advertising content based on external
weather conditions. App. Br. 14--15. The Appellant contends that Des
Jardins and Shahraray are nonanalogous art, because Des Jardins is directed
to transmitting content over packet-based networks like the internet, has
nothing to do with a car, and is in a different field than Shahraray. Id. at 15.
The Appellant also alleges that neither Shahraray nor Des Jardins relates to
weather. Id. at 16. The Appellant additionally argues that the Examiner
fails to explain how the users viewing content has anything to do with
operating a vehicle, and the analysis fails to tie the claimed ratio to the
benefits of the combination. Id. at 15.
The Examiner finds that Shahraray does not teach the ratio of
advertising to content, however, Des Jardins discloses this by "maintain[ing]
a particular ratio between the programming media content and the
advertising media content that a user is presented." Final Act. 9 (citing Des
Jardins 1 :40-42). The Examiner finds that Banga teaches the claimed
weather and temperature limitations where, for instance, specific items such
as rainwear are advertised depending on the weather conditions, and that
Banga itself suggests the motivation to vary the ratio of the advertising. Id.
at 9-10. The Examiner finds that Shahraray and Des Jardins are analogous
because both deliver targeted advertising and content to a user, and also
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identify the benefits of attempting to find a balance between advertising and
content. Ans. 16.
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results. Id. at 416. In
determining whether obviousness is established by combining the teachings
of the prior art, "the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art." In re Keller, 642
F.2d 413, 425 (CCPA 1981).
We agree with the Examiner's findings that the combination of
Shahraray and Des Jardins adequately teaches the required ratio between
advertising and content, that Banga discloses the claimed weather and
temperature limitations, and there is sufficient rationale to combine the
references. We do not find the Appellant's arguments against the individual
references persuasive. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Additionally, we concur with
the Examiner's findings above that Shahraray and Des Jardins are
analogous, because the references are from the same field of endeavor as the
claimed invention, that is, delivery of targeted advertising and content to a
user. See In re Klein, 647 F.3d 1343 (Fed. Cir. 2011).
We therefore sustain the rejection of claims 1, 3-5, and 10-13.
Claims 6--9 and 14-17
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The Appellant argues that the Examiner does not address the
limitation of claim 6, "a ratio of the identified advertising content to the
selection of content is determined based upon a temperature within the
vehicle," and that Des Jardins and Shahraray are nonanalogous. App. Br.
16-17.
Contrary to the Appellant's contention, the Examiner addresses claim
6's "temperature" limitation, finding that Banga discloses delivering ad
content to users at any location based on temperature, exemplified by a
website that "trigger[ s] specific advertising content related to [a] soft drink
to be delivered to users at any location in New York City where the local
temperature in the City exceeds 90 degrees." Ans. 12 (citing Banga i-f 82).
The Examiner thus finds that "many vehicles, have no or broken air
conditioning, so the outside temperature is the same as inside, or hotter[,]
[t]herefore, it would have been obvious" to base advertising content on the
temperature within a vehicle. Id.
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellant, we find that the Appellant has not
identified reversible error in the Examiner's finding that these claims are
obvious. The Appellant provides no arguments specifically disputing the
Examiner's findings regarding Banga's teachings on temperature.
Additionally, we refer to the Examiner's findings above that Shahraray and
Des Jardins are analogous, and concur with the same as previously
discussed.
We therefore sustain the rejection of claims 6-9 and 14--17.
SUMMARY
The rejections of claims 1 and 3-17 under 35 U.S.C. § 112, first
paragraph, based on lack of enablement, are reversed.
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The rejections of claims 1, 4, 6, 8, 10, 12, 14, and 16 under 35 U.S.C.
§ 112, first paragraph, based on lack of written description, are reversed.
The rejections of claims 1 and 3-17 under 35 U.S.C. § 112, second
paragraph, are reversed.
The rejections of claims 1 and 3-17 under 3 5 U.S. C. § 103 (a) over
Shahraray, Des Jardins, and Banga are 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)(l).
AFFIRMED
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