Google Inc.

Patent Trials and Appeals Board

Sep 18, 2020

2020002519 (P.T.A.B. Sep. 18, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/737,300 06/11/2015 Xin Jiang 16113-6550001 4727
26192 7590 09/18/2020
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XIN JIANG and TUNA TOKSOZ
____________

Appeal 2020-002519
Application 14/737,300
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–5 and 10–23, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2019). Appellant identifies the real party in interest
as Google LLC. Appeal Br. 1.
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Application 14/737,300

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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns “information
presentation.” Spec. ¶ 1.2 The Specification explains that “a web page can
include slots in which content,” such as advertisements, “can be presented”
along with resources, such as “search results.” Id. ¶ 2. “Slots can be
allocated to content sponsors through a reservation system or an auction.”
Id. ¶ 3. Specifically, “slots can be allocated to sponsors according . . . to
their bids and/or the relevance of the sponsored content to content presented
on a page hosting the slot or a request that is received for the sponsored
content.” Id. The invention endeavors to allow a sponsor to “bid for a
re-engagement opportunity for a user on a user device after the user has
installed the application on the user device.” Id. ¶ 8. “A re-engagement
content item presented on a user device can be customized for a user based
on information associated with the user and an application installed on the
user device.” Id.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
1. A method comprising:
identifying a first application that is installed on
a user device;

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed June 11, 2015; “Final Act.” for the Final Office Action,
mailed April 16, 2019; “Appeal Br.” for the Appeal Brief, filed August 20,
2019; “Ans.” for the Examiner’s Answer, mailed December 12, 2019; and
“Reply Br.” for the Reply Brief, filed February 6, 2020.
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Application 14/737,300

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accepting, by one or more servers, a bid from a sponsor
of the first application for presenting customized content on the
user device after installation of the first application on the user
device and after the first application has not been launched on
the user device for a specified amount of time post-installation;
determining, by the one or more servers, that the first
application has not been launched on the user device for the
specified amount of time;
enabling, by the one or more servers, presentation of
a content item on the user device using the bid based on the
determination that the first application has not been launched
on the user device for the specified amount of time;
after enabling presentation of the content item:
identifying, after the accepting and the enabling,
an opportunity to present content in a second different
application that is installed on the user device, including
receiving a request for content that identifies the user
device and the second application;
conducting, by the one or more servers, an auction
including evaluating the accepted bid along with other
bids;
determining, by the one or more servers, that
the accepted bid is the winning bid in the auction and
providing, in response to the determining, a shell for
the content item;
populating, at the user device, a placeholder in the
shell with data from the first application that
(i) is stored on the user device,
(ii) corresponds to the placeholder, and
(iii) specifies a progress level of the
user within the first application to produce
a customized content item;
presenting the customized content item in the
second application that is executing at the user device
in response to the identified opportunity that occurs after
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Application 14/737,300

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the determination that the first application has not been
launched on the user device for the specified amount of
time[.]
Appeal Br. 12–13 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103, the Examiner
relies on the following prior art:
The Rejections on Appeal
Claims 1, 2, 10–12, 16, 17, and 21–23 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Garcia and Niessen. Final Act. 4–12.
Claims 3–5, 13–15, and 18–20 stand rejected under 35 U.S.C. § 103
as unpatentable over Garcia, Niessen, and Ghosh. Final Act. 12–19.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we disagree with
the Examiner’s conclusions concerning unpatentability under § 103. We
provide the following to address and emphasize specific findings and
arguments.
Ghosh et al.
(“Ghosh”)
US 2010/0228634 A1 Sept. 9, 2010
Niessen et al.
(“Niessen”)
US 2015/0169529 A1 June 18, 2015
(filed Dec. 16, 2013)
Garcia US 2016/0267540 A1 Sept. 15, 2016
(provisional application
filed Feb. 9, 2015)
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The § 103 Rejection of Claims 1, 2, 10–12, 16, 17, and 21–23
As noted above, the § 103 rejection of independent claims 1, 11, 16,
and 22 rests on Garcia and Niessen. See Final Act. 4–8. Appellant argues
that the Examiner erred in rejecting each independent claim because the
references do not teach or suggest the following limitation in claim 1 and
similar limitations in claims 11, 16, and 22: “populating, at the user device,
a placeholder in the shell with data from the first application that (i) is stored
on the user device, (ii) corresponds to the placeholder, and (iii) specifies a
progress level of the user within the first application to produce a
customized content item.” See Appeal Br. 9–10; Reply Br. 5–6.
Specifically, Appellant asserts that the independent claims differ
from the references because the claims require that “data from the first
application is used to populate the template to produce the customized
content item.” Appeal. Br. 9 (emphasis by Appellant). Appellant also
asserts that Garcia contains no suggestion that “data from one application
is used to populate a placeholder to produce a customized content item that
is then presented in a different application.” Reply Br. 6. In addition,
Appellant contends that the data populating a presentation template in
Niessen comes from a backend system instead of an application installed
on a user device. Appeal. Br. 9 (citing Niessen ¶ 11). According to
Appellant, the claimed “list of modifiers (i)-(iii)” applies to the claimed
“data from the first application” installed on a user device. Id. at 10.
The Examiner finds that Garcia teaches identifying a first application
installed on a user device and presenting a customized content item in a
second application. Final Act. 5–6 (citing Garcia ¶¶ 4, 13, 18, 23, 28, 34);
see Ans. 10–11. Further, the Examiner finds that Niessen teaches a
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presentation template corresponding to a shell for receiving data. Final
Act. 7 (citing Niessen ¶¶ 1, 11, 16, 29–30, 34, 44–45); see also Ans. 9–10.
In addition, the Examiner determines that “there appears to be no limiting
factor of where the data” populating a shell comes from because “the three
elements (i)-(iii) appear to be reasonably referring to the ‘first application’
recited in the claim, and not the ‘data’.” Final Act. 20; Ans. 8.
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of the
references generally, and Garcia in particular, teach or suggest populating
a shell with “data from the first application that (i) is stored on the user
device, (ii) corresponds to the placeholder, and (iii) specifies a progress level
of the user within the first application to produce a customized content item”
as claimed. According to the claims, the data for populating a shell and
producing a customized content item “is stored on the user device.” Appeal
Br. 12–13, 15, 17, 19 (Claims App.).
In contrast to the claims, Garcia discloses that a server device sends
a “reminder message” to a user device after “a given period of inactivity
relative to [a] retail application.” Garcia ¶ 21. The “reminder message”
serves “to provide the end user of the user device . . . with a reminder to
reengage in a previously-engaged application.” Id. ¶ 24. As an example, a
“server device . . . can be configured to collect real-time commerce behavior
associated with a user device . . . and to provide real-time messaging, such
as advertisement messages, to the user device . . . based on the detected
commerce behavior.” Id. Because Garcia’s server device sends reminder
messages containing content, e.g., advertising data, to a user device, the data
for producing a customized content item “is [not] stored on the user device.”
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Niessen discloses populating a presentation template with data that
comes from a backend system instead of an application installed on a user
device. See Niessen ¶¶ 11, 14–16. Thus, the data for populating a shell and
producing a customized content item “is [not] stored on the user device.”
Because the claims require that the data for populating a shell and
producing a customized content item “is stored on the user device” and
because neither Garcia nor Niessen teaches or suggests that feature, we
do not sustain the § 103 rejection of claims 1, 11, 16, and 22.
Claims 2, 10, and 21 depend from claim 1; claim 12 depends from
claim 11; claim 17 depends from claim 16; and claim 23 depends from
claim 22. For the reasons discussed for claims 1, 11, 16, and 22, we do
not sustain the § 103 rejection of these dependent claims.
The § 103 Rejection of Claims 3–5, 13–15, and 18–20
Claims 3–5 depend from claim 1; claims 13–15 depend from
claim 11; and claims 18–20 depend from claim 16. On this record, the
Examiner has not shown how the additionally cited Ghosh reference
overcomes the deficiency in Garcia and Niessen discussed above for
claims 1, 11, and 16. Hence, we do not sustain the § 103 rejection
of claims 3–5, 13–15, and 18–20.
Because these determinations resolve the appeal for the § 103
rejections, we need not address Appellant’s other arguments regarding
Examiner error.3 See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423

3 Because we reverse the § 103 rejections due to a deficiency in the
teachings of the references, we need not address whether Garcia qualifies
as prior art based on entitlement to priority to a provisional application’s
filing date. See Appeal Br. 6–9; Ans. 5–7; Reply Br. 1–5.
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(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on “a single dispositive issue”).
CONCLUSION
We reverse the § 103 rejections of claims 1–5 and 10–23.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 10–12,
16, 17,
21–23
103 Garcia, Niessen
1, 2, 10–12,
16, 17,
21–23
3–5, 13–15,
18–20 103
Garcia, Niessen,
Ghosh
3–5, 13–15,
18–20
Overall
Outcome 1–5, 10–23
REVERSED