13834330 (P.T.A.B. Feb. 27, 2019)

Ex Parte Visintainer et al

Patent Trial and Appeal BoardFeb 27, 2019

13834330 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/834,330 03/15/2013 28395 7590 03/01/2019 BROOKS KUSHMAN P.C./FG1L 1000 TOWN CENTER 22NDFLOOR SOUTHFIELD, MI 48075-1238 FIRST NAMED INVENTOR Randal Henry Visintainer 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. 83356025 9917 EXAMINER REINHARDT, RICHARD G ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 03/01/2019 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte RANDAL HENRYVISINTAINER, YIMIN LIU, PERRY ROBINSON MAcNEILLE, and OLEG YURIEVITCH GUSIKHIN Appeal2017-011134 Application 13/834,330 Technology Center 3600 Before ST. JOHN COURTENAY III, DENISE M. POTHIER, and LINZY T. McCARTNEY, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1,2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 8 and 14. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Throughout this opinion, we refer to the Final Action (Final Act.) mailed September 22, 2016, the Appeal Brief (Appeal Br.) filed February 15, 2017, the Examiner's Answer (Ans.) mailed June 28, 2017, and the Reply Brief (Reply Br.) filed August 28, 2017. 2 Appellants identify the real party in interest as Ford Global Technologies, LLC. Appeal Br. 2. Appeal 2017-011134 Application 13/834,330 Invention Appellants' invention relates to a system and method "for subjective advertisement effectiveness analysis." Spec. ,r 1. For example, a vehicle (e.g., 31) is equipped with a vehicle based computing system (VCS) (e.g., 1) that contains a visual interface (e.g., 4) and is controlled by a processor (e.g., 3) that has inputs, including a camera, to interface with the processor. Id. ,r,r 21-22, 50-51, and 60, Figs. 1, 4. Through facial recognition, the VCS can identify a person's subjective emotional state (e.g., surprised, happy, sad, or puzzled) and deliver a command to the VCS. Id. ,r,r 40-46, 51-53, 63, and 79, Figs. 2A-3. The invention presents advertisements to a person (e.g., step 703) and dynamically updates advertisements (e.g., play segment 2A at step 721) based on a person's certain emotional state (e.g., surprised) identified by facial recognition techniques. Id. ,r,r 36, 66-68, 75-79, and Fig. 7. Independent claim 8 exemplifies the claims at issue and reads as follows: 8. A system comprising: a vehicle-based processor configured to: receive an advertisement including a facial expression delivery instruction; present the previously received advertisement when a user expression captured by a vehicle camera corresponds to the facial expression delivery instruction; record user facial expression, via the vehicle camera, during the advertisement delivery; and dynamically adapt the advertisement during delivery, by delivering predefined variable segments of the advertisement based on an observed change in user facial expression. Appeal Br. 14 (Claims App'x). 2 Appeal 2017-011134 Application 13/834,330 The Examiner relies on the following as evidence of unpatentability: Fukuda Chung Gates US 2008/0228394 Al US 2012/0143693 Al US 2014/0039991 Al The Rejections Sept. 18, 2008 June 7, 2012 Feb. 6,2014 Claim 14 is rejected under 35 U.S.C. Â§ 112(b) as being indefinite. Final Act. 5---6. Claims 8 and 14 are rejected under 35 U.S.C. Â§ I03(a) 3 as unpatentable over Fukuda, Chung, and Gates. Final Act. 6-8. 4 THE INDEFINITENESS REJECTION Appellants present no argument for this rejection. See generally Appeal Br. In the Reply Brief, Appellants indicate that they intended to "correct[] the antecedent basis issues." Reply Br. 2. Because no argument is presented, we summarily sustain this rejection. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that when appellant fails to contest a ground of rejection, the Board may affirm the rejection without considering its substantive merits); see also 37 C.F.R. Â§ 4I.37(c)(l)(iv); MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) Â§ 1205.02 (9th Ed., Rev.08.2017 (Jan. 2018)) ("If a ground of rejection stated by the examiner is 3 This application was filed on March 15, 2016. The effective date for an application being examined under 35 U.S.C. Â§Â§ 112 and 103 of the Leahy- Smith America Invents Act (AIA), Pub. L. No. 112-29, Â§ 3, 125 Stat. 284, 285-93 (2011), is September 16, 2012 and March 16, 2013 respectively. 4 Despite stating the 35 U.S.C. Â§ 101 rejection should be maintained (Ans. 14), the Examiner has withdrawn this rejection (Ans. 4, 13). 3 Appeal 2017-011134 Application 13/834,330 not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it"). THE OBVIOUSNESS REJECTION Regarding independent claim 8, the Examiner finds Fukuda teaches receiving an advertisement including a delivery instruction and presenting the previously received advertisement corresponding to the delivery instruction. Final Act. 6 (citing Fukuda ,r,r 67, 69,291,307, and 360); Ans. 6-7. The Examiner turns to Chung to teach the particularly recited facial expression delivery instruction and to teach presenting the advertisement when a user's expression corresponds to this specific instruction. Final Act. 6-7 (citing Chung ,r,r 25, 27, 28, 30, 36, 42, 43, 47, and 49, Figs. 2-3); Ans. 6, 8-9 (citing Chung ,r,r 27, 29, 42, and 47). The Examiner adds that it would have been obvious to one skilled in the art to include a camera in a vehicle, as taught by Chung, as a way to capture facial expressions. Final Act. 6-7. The Examiner further relies on Gates to teach recording the facial expression during an advertisement and adapting the advertisement based on facial expression changes. Final Act. 7 (citing Gates ,r 137); Ans. 6-7. Appellants argue Fukuda teaches presenting advertisements independent of vehicle's route, and thus, when combined with Chung, 5 would still deliver advertisements in the same fashion and regardless of any facial expressions. Appeal Br. 9-10 (citing Fukuda ,r 68). Appellants also assert Gates has an opposite teaching from Fukuda. Appeal Br. 10. Appellants further argue Chung delivers advertisements based on emotional 5 We presume all references to "Chen" (e.g., Appeal Br. 10) are intended to refer to Chung. 4 Appeal 2017-011134 Application 13/834,330 state or compatibility, not "the facial expression delivery instruction" as claim 8 recites. See Appeal Br. 10-11 (citing Chung ,r 32); Reply Br. 2-3 (citing Chung ,r,r 31, 34, 36). Appellants argue the Examiner's proposed modification would render Chung "completely ineffective" (Appeal Br. 11) by adding costs and complexity, because Chung teaches to maintain advertisements remotely rather than pre-storing them in the vehicle and there is insufficient evidence that a vehicle could store onboard all of Chung's advertisements related to emotional states. Appeal Br. 11-12. Similar to the argument related to Chung, Appellants also contend modifying Fukuda based on Gates' teaching is inappropriate because Fukuda teaches advertising in a pre-planned order. Appeal Br. 12-13. Appellants argue claims 8 and 14 as a group. Appeal Br. 9-13. We select claim 8 as representative. See 3 7 C.F .R. Â§ 41.3 7 ( c )( 1 )(iv). ISSUES Under Â§ 103, has the Examiner erred in determining Fukuda, Chung, and Gates collectively would have taught or suggested a vehicle-based processor configured to: (1) "receive an advertisement including a facial expression delivery instruction" and (2) "present the previously received advertisement when a user expression captured by a vehicle camera corresponds to the facial expression delivery instruction"? ANALYSIS Based on the record before us, we find no error in the Examiner's rejection. We agree with the Examiner that combining Fukuda and Chung, as proposed, would not result in the advertisements being presented in a 5 Appeal 2017-011134 Application 13/834,330 predetermined sequence and would consider the user's captured expression corresponding to a facial expression delivery instruction. See Ans. 7-8. First, the Examiner finds Fukuda teaches receiving an advertisement that includes a delivery instruction related to a location. Final Act. 6; Ans. 7 (stating "the advertisement delivery instruction is location."). Appellants do not challenge these findings. Appeal Br. 10 ( quoting Fukuda ,r 66 and indicating Fukuda's vehicle includes an apparatus that provides "an advertisement information group which includes a number of pieces of advertisement information and location information indicating the location where a predetermined advertisement is to be output.") Second, contrary to Appellants' assertions, Fukuda teaches presenting advertisements based on a location change. See Appeal Br. 10. As the Examiner explains, Fukuda teaches presenting advertisements corresponding to a delivery instruction that is based on the vehicle's location. Ans. 7; see also Final Act. 6. For example, Fukuda teaches when a vehicle (e.g., 22) arrives at a specific advertisement display location ( e.g., location 2), an apparatus displays certain advertisement information ( e.g., adl O 1) and subsequently, when the vehicle arrives at another location ( e.g., location 3), presents another advertisement (e.g., ad102). Fukuda ,r,r 66,292, and 307, Figs. 18, 20 (steps S422, 424, 426, and 428), cited in part in Final Act. 6. Thus, Fukuda teaches an embodiment where an advertisement is presented when the vehicle arrives at a location. See Ans. 7. Third, the rejection as proposed replaces Fukuda's delivery instruction that delivers an advertisement at a certain location with a different delivery instruction that delivers an advertisement based on facial expressions as taught by Chung. Final Act. 6-7; see also Ans. 7 (stating "[i]f the delivery 6 Appeal 2017-011134 Application 13/834,330 instructions from Chung replace those from Fukuda.") When combining Chung's teaching with Fukuda, such a combination would predictably capture a user's expression with a camera and deliver an advertisement when the expression corresponds to a facial expression delivery instruction as claim 8 recites. Final Act. 6-7; see Ans. 7-8. In this regard, Appellants argue Chung delivers advertisements based on emotional state or compatibility, not the recited "facial expression delivery instruction." Appeal Br. 10-11 (citing Chung ,r 32); Reply Br. 2-3 (citing Chung ,r,r 31, 34, and 36). We agree with the Examiner that Chung "uses the facial expression to determine the emotional state" and thus delivers advertisements based on a facial expression. Ans. 9. For example, Chung teaches (1) capturing a user's emotion indicators ( e.g., 200), includingfacial expressions that determine whether a person is smiling or frowning, with videos ( e.g., using webcam 260), (2) assigning an appropriate emotion (e.g., 152 in Fig. 2, such as happy or tired), and (3) delivering an advertisement based on the emotion. Chung ,r,r 27, 30, 36, 42--43, 47, and Fig. 2. Similarly, as noted by the Examiner (Ans. 9), the Specification describes using facial expressions to assign emotion states ( e.g., happy and sad) and to select advertisements based on the states. Spec. ,r,r 41--46 ( describing facial expressions are analyzed and assigned emotions, such as surprised, happy, and sad), 66 (stating "advertisements are keyed to certain emotional states"), 67 (indicating "the facial recognition software begins to detect an emotional state based on expression 601," which can be evaluated as shown in Figures 2A-D), 75 (indicating Figure 7's example begins the same as Figure 6), 79 (indicating that the advertisement differs depending on whether the user is happy, sad, or has another emotion). 7 Appeal 2017-011134 Application 13/834,330 We thus fail to see the argued distinction between Chung's emotion states used to present advertisements and the claimed "present the ... advertisement when a user expression captured by a vehicle camera corresponds to the facial expression delivery instruction" as taught by the proposed Fukuda/Chung combination. See Appeal Br. 10-11; see Reply Br. 3. Notably, Appellants acknowledge that a "facial expression may be a component" of Chung's delivery system. Reply Br. 3. Moreover, the combined teachings suggest dynamically adapting advertisements based on an observed change in user facial expression given Chung's additional teaching to cater advertisements based on a person's emotional state, such as selecting a certain advertisement when a person is in a negative emotional state and selecting another advertisement when the person is happy. See Chung ,r 47. Thus, to the extent Appellants assert (see Reply Br. 3), we disagree Chung's taught facial expressions do not determine the advertisement's outcome. See also Ans. 9. In the Reply Brief, Appellants newly assert there is no reason to deliver an instruction to a vehicle because Chung delivers the advertisement immediately. Reply Br. 3. This argument is untimely because such an argument is not being raised in response to argument made by the Examiner in the Answer. Nor have Appellants shown good cause to raise this argument for the first time in the Reply Br. See 37 C.F.R. Â§ 4I.41(b)(1)(2). In any event, Appellants provide no citation to evidence that shows Chung operates as asserted. Reply Brief. 3. Also, the rejection proposes to modify Fukuda, which, as noted above, includes a delivery instruction, with a different delivery instruction as taught by Chung and thus does not deliver immediately but based on facial expressions as previously addressed. 8 Appeal 2017-011134 Application 13/834,330 Appellants also argue the Examiner is ignoring Chung's discussed bid process. Reply Br. 3. We are not persuaded. The Examiner's proposed rejection relies on Chung for a limited purpose (see Ans. 1 O}-to teach that is known in the art to deliver advertisements based on a user's facial expressions-and to combine this specific teaching with Fukuda as already noted. That is, the test for obviousness is not whether all of Chung's features, including its bidding or monetization process (see Appeal Br. 11----- 12), need to be bodily incorporated into Fukuda. "Rather, 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)). Appellants further argue the Examiner's proposed modification would render Chung ineffective and would add costs and complexity. Appeal Br. 11-12. We are not persuaded. Claim 8 requires receiving and presenting and advertisement when a user expression is captured and dynamically adapting the advertisement based on a facial expression change. Appeal Br. 14 (Claims App'x). There is no requirement in the claims to store advertisements for all facial expressions (id.) as Appellants discusses. Appeal Br. 11-12. Nor do we find the rejection discusses selecting advertisements frorn those pre-stored on the vehicle (see Final Act 6-7) as asserted, such that there need be "sufficient storage" (Appeal Br. 12). See Appeal Br. 11-----12. Additionally, even assuming storage capacity is needed in the vehicle, ,ve agree with the Examiner (see Ans. 10----11) that there is insufficient evidence demonstrating the Fukuda/Chung system would not be able to handle such purported storage and processing requirements. See In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996) (indicating "it is well- 9 Appeal 2017-011134 Application 13/834,330 settled that counsePs arguments cannot take the place of factually supported objective evidence.") Appellants further assert Gates has an opposite teaching from Fukuda and that the Examiner cannot simply import Gates teachings. Appeal Br. 10. We are unsure what imported teachings Appellants are referring to in Gates. To the extent Appellants intended to refer to Chung, we refer to our previous discussion. Additionally, we adopt the Examiner's statements related to Gates in this regard. See Ans. 7. Lastly, similar to the argument related to Chung, Appellants contend modifying Fukuda based on Gates' teaching is inappropriate because Fukuda teaches advertising a pre-planned order. Appeal Br. 12-13. We are not persuaded for the above stated reasons when addressing the proposed Fukuda/Chung combination. See Final Act. 7; see also Ans. 6-7, 11-12. For the foregoing reasons, Appellants have not persuaded us of error in the rejection of claim 8 and claim 14, which is not separately argued. DECISION We affirm the Examiner's rejection of claim 14 under 35 U.S.C. Â§ 112(b) and claims 8 and 14 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 10