Jason Anguiano

Patent Trials and Appeals Board

Dec 2, 2019

15332601 - (D) (P.T.A.B. Dec. 2, 2019)

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.
15/332,601 10/24/2016 Jason Anguiano P2012-0928.1/290110.565C1 3982
70336 7590 12/02/2019
Seed IP Law Group/DISH Technologies (290110)
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
CHOKSHI, PINKAL R
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JASON ANGUIANO
____________________

Appeal 2018-009234
Application 15/332,601
Technology Center 2400
____________________

BEFORE ST. JOHN COURTENAY III, JUSTIN BUSCH, and
JENNIFER L. McKEOWN, Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20, which constitute all the claims
pending in this Application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We affirm in part.
CLAIMED SUBJECT MATTER
Appellant’s disclosure generally “relates to acquiring and using
geocoding information from a user’s mobile device to determine program

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as DISH Technologies
L.L.C. Appeal Br. 1.
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and advertising content to present to the user, and to acquiring and using
geocoding information included in program and advertising content to
enhance content presentation to the user.” Spec. 1. Claims 1, 9, and 17 are
independent. Claim 1 is reproduced below:
1. A method, comprising:
identifying at a television receiver user geocoding
information associated with a mobile device of at least one user;
comparing the user geocoding information with a
geocoded assets database containing locations of geocoded
assets to identify matched locations the at least one user is
currently in proximity to;
receiving at the television receiver content information
containing at least one of program content and advertising
content, the content including geocoding information, embedded
in the program or advertising content, the geocoding information
identifying a location relevant to at least a portion of the content;
receiving at the television receiver user content
preferences for the at least one user;
comparing the matched locations with the embedded
geocoding information identifying the location relevant to the at
least a portion of the content and with the user content
preferences to determine content relevant to the at least one user;
and
presenting on a presentation device the content relevant to
the at least one user, the presenting device presenting to the user
in real time data regarding a geocoded asset that is physically
close to the user’s location.
REJECTIONS
Claims 1–5, 8–15, and 17–20 stand rejected under 35 U.S.C. § 103 as
obvious in view of Koo (US 2010/0229190 A1; Sept. 9, 2010), Bartley (US
2012/0310784 A1; Dec. 6, 2012), and Scofield (US 8,073,460 B1; Dec. 6,
2011). Final Act. 4–11.
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Claim 6 stands rejected under 35 U.S.C. § 103 as obvious in view of
Koo, Bartley, Scofield, and Baker (US 2011/0137951 A1; June 9, 2011).
Final Act. 11–12.
Claim 7 stands rejected under 35 U.S.C. § 103 as obvious in view of
Koo, Bartley, Scofield, and Hao (US 2013/0091239 A1; Apr. 11, 2013).
Final Act. 12–13.
Claim 16 stands rejected under 35 U.S.C. § 103 as obvious in view of
Koo, Bartley, Scofield, and Martin (US 2013/0198321 A1; Aug. 1, 2013).
Final Act. 13.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellant made.
Arguments Appellant could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues the rejection of claims 1–5 and 9–20 as a group. See
Appeal Br. 9 (arguing claims 2–8 depend from claim 1; independent claim 9
recites a similar comparing step to that recited in claim 1; claims 10–16
depend from claim 9; independent claim 17 recites a similar comparing step
to that recited in claim 1; and claims 18–20 depend from claim 17 and,
therefore, these claims are nonobvious based on the arguments presented
with respect to independent claim 1).2

2 Appellant actually just recites a single limitation of independent claims 9
and 17 and argues Koo does not teach or suggest these features and Bartley
and Scofield fail to cure the deficiencies. Appeal Br. 9. This argument alone
would be insufficient to demonstrate error in the rejection. In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
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CLAIMS 1–5, 8–15, AND 17–20
The Examiner finds the combination of Koo, Bartley, and Scofield
teaches or suggests every limitation recited in claims 1–5, 8–15, and 17–20.
Final Act. 4–11. With respect to independent claim 1, the Examiner finds
Koo teaches the identifying step, the first comparing step, most of the
second comparing step, and presenting relevant content to the user on a
presentation device (i.e. the portion of the presenting step except that the
presenting is done in real time regarding an asset physically close to the
user’s location). Final Act. 4–6 (citing Koo ¶¶ 20, 22 24–27, 30–32, Figs. 2
(211), 3 (320, 330), 5 (410, 451)). The Examiner finds Koo fails to teach the
receiving step, but finds Bartley teaches receiving media content including
scenes tagged with location information and receiving user content
preferences. Final Act. 6 (citing Bartley ¶¶ 19, 39, Fig. 1 (30, 40, 45)). The
Examiner also finds Bartley teaches comparing matched locations with
content location information and user preferences and indicating the most
relevant content to a nearby landmark. Final Act. 6–7 (citing Bartley ¶¶ 19,
23–24, 35–36, 39–40, Fig. 2 (110), Fig. 5). Finally, regarding the aspect of
the presenting step relating to presenting content in real time, the Examiner
finds Scofield teaches this aspect of the presenting step. Final Act. 7 (citing

interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); 37 C.F.R.
§ 41.37(c)(1)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”).
However, for purposes of this Decision, we treat Appellant’s argument as
asserting independent claims 9 and 18 are not obvious in view of Koo,
Bartley, and Scofield for the same reasons Appellant asserts with respect to
independent claim 1.
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Scofield 30:10–24, 31:15–17, Fig. 1 (100, 110). The Examiner provides a
rationale for combining each of the cited teachings. Final Act. 6–7.
Appellant argues Bartley fails to teach or suggest “comparing the
matched locations . . . with the user content preferences,” as recited in
representative claim 1. Reply Br. 3. Specifically, Appellant argues Bartley
merely discloses comparing digital media content to both locations and user
preferences, but Bartley fails to teach comparing a matched location to user
preferences. Reply Br. 3. Appellant contends that, because instances of
media content are not matched locations, Bartley’s comparison of digital
media content to user preferences fails to teach or suggest the claimed
comparison of the matched locations to user preferences. Reply Br. 3–4.
Bartley teaches comparing user locations (i.e., locations to which a
user is traveling or has traveled) to video content that includes scenes tagged
with locations in order to identify content having tagged locations that match
the user locations. Bartley ¶¶ 19, 35. Bartley refers to instances of content
associated with at least one particular location as “digital landmarks” and
may notify the user of digital landmarks associated with a location where the
user is currently, or was previously. Bartley ¶¶ 23–24, 35.
For example, a movie with scenes filmed in different locations (e.g.,
the Sydney Opera House and Times Square in New York) may tag each
section of the film with the respective location where that scene was filmed.
See Bartley ¶ 19. When a user travels to one of those locations (e.g., the
Sydney Opera House), the system then may determine the user’s current
location matches a location associated with a scene in the film and notify the
user of that film. See Bartley ¶ 19. Bartley then may prompt the user with
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information about the content if the user is currently at the matched location.
Bartley ¶ 19.
“Once the related instances of digital [landmarks] are identified,”
Bartley “then determines a relevance of each instance of creative digital
media for the user.” Bartley ¶ 36 (emphases added). Bartley may use
historical data to identify user preferences, such as a preference for audio
files over video games if the system determines a user accesses audio
content often but never access video game content. Bartley ¶ 36; see also
Bartley ¶ 37 (describing temporal preferences for ranking the relevancy of
content determined to match the user’s location). A user also “may explicitly
specify parameters for use in determining the relevance of identified digital
landmarks.” Bartley ¶ 39 (emphasis added). These preferences may be used
to assign relevancy values in order to rank the identified instances of digital
media and present the most relevant results to the user. Bartley ¶¶ 36, 39–40.
Therefore, although Bartley discloses applying user content
preferences to determine the most relevant content to a user’s location and
preferences, Bartley does not teach or suggest comparing a matched location
to a user preference. Bartley merely teaches ranking the relevancy of
identified content based on user preferences.
Claim 1, on the other hand, recites “comparing the matched locations
with the embedded geocoding information identifying the location relevant
to the at least a portion of the content and with the user content preferences
to determine content relevant to the at least one user.” Appeal Br. 12.
Therefore, claim 1 explicitly requires comparing (1) the matched location to
both (2) locations relevant to the content and (3) the user content
preferences. See Spec. 14 (describing an example embodiment in which one
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user designates preferred specific locations (e.g., a favorite store) and the
system presents a notification or coupon to a second user when the second
user is in proximity to the designated locations within a month of the first
user’s birthday).
As explained above, Bartley clearly teaches comparing (1) a matched
location (where the user is) with (2) locations relevant to the content because
that is how Bartley identifies relevant content. See Bartley ¶ 35. Bartley then
evaluates (3) user preferences (e.g., content type or time periods) against the
identified content to rank the relevancy of the already-identified content
whose locations match the user location. See Bartley ¶¶ 36–40. Bartley,
however, fails to compare a matched location with the user preferences, as
recited in claim 1. Bartley instead compares the content itself with the user
preferences. In other words, Bartley teaches or suggests the first comparison
but fails to teach or suggest the second comparison because ranking the
relevancy of identified content using the preferences does not teach or
suggest comparing the matched location to the user preferences.
Therefore, we agree with Appellant that Bartley fails to teach or
suggest “comparing the matched locations . . . with user content
preferences,” as recited in independent claim 1. Independent claim 17 recites
a similar comparing step.
However, independent claim 9 does not recite comparing a matched
location with a user content preference. Appellant presents no other
substantive arguments with respect to independent claim 9. See Reply Br. 4
(asserting Koo, Bartley, and Scofield fail to teach or suggest “compare the
matched locations with the embedded geocoding information to determine
content relevant to the user” without persuasive explanation or evidence in
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support of the bare assertion); Lovin, 652 F.3d at 1357 (“[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”). Therefore, Appellant’s argument fails to demonstrate error in the
rejection of claim 9 because the argument is not commensurate with the
scope of the claim.
Claim 14, which depends directly from claim 9 recites a device
configured to “compare the matched locations with . . . the user content
preferences.” Therefore, for the same reasons discussed with respect to
independent claim 1, we find Bartley fails to teach or suggest the subject
matter recited in claim 14.
For the reasons discussed above, we reverse the Examiner’s rejection
of independent claims 1 and 17 and dependent claim 14 as obvious in view
of Koo, Bartley, and Scofield. Claims 2–5 ultimately depend from
independent claim 1; claim 15 depends directly from claim 14; and claims
18–20 ultimately depend from independent claim 17. Therefore, because of
their dependency on claims 1, 14, and 17, we also reverse the Examiner’s
rejection of claims 2–5, 15, and 18–20 as obvious in view of Koo, Bartley,
and Scofield. However, because Appellant failed to demonstrate error in the
rejection of independent claim 9 and Appellant did not separately argue
dependent claims 10–13 with particularity, we sustain the Examiner’s
rejection of claims 9–13 as obvious in view of Koo, Bartley, and Scofield.
CLAIM 6
The Examiner rejects claim 6, which ultimately depends from
independent claim 1, as obvious in view of Koo, Bartley, Scofield, and
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Baker. Final Act. 11–12. Appellant argues claim 6 is patentable for the same
reasons asserted with respect to claim 1. Appeal Br. 9. On this record, we are
constrained to reverse the Examiner’s rejection of dependent claim 6 as
obvious in view of Koo, Baker, Scofield, and Baker for the same reasons
discussed above with respect to claim 1. Because this is dispositive with
respect to claim 6, we need not reach Appellant’s other arguments.3
The Examiner rejects claim 7, which depends directly from
independent claim 1, as obvious in view of Koo, Bartley, Scofield, and Hao.
Final Act. 12–13. Appellant argues claim 7 is patentable for the same
reasons asserted with respect to claim 1. Appeal Br. 9. On this record, we are
constrained to reverse the Examiner’s rejection of dependent claim 7 as
obvious in view of Koo, Baker, Scofield, and Hao for the same reasons
discussed above with respect to claim 1. Because this is dispositive with
respect to claim 7, we need not reach Appellant’s other arguments.
CLAIM 16
The Examiner finds combination of Koo, Bartley, Scofield, and
Martin teaches or suggests every limitation recited in claim 16, which
directly depends from independent claim 9. Final Act. 13. Appellant does
not separately argue the patentability of claim 16 with particularity.
Therefore, for the reasons discussed above, we also sustain the Examiner’s

3 Should this matter undergo further prosecution, we encourage the
Examiner to evaluate the scope of claim 6 in light of the fact that the only
additional limitations recited in claim 6 are conditional limitations. See Ex
parte Schulhauser, Appeal No. 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); MPEP § 2111.04(II) (citing Schulhauser).
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rejection of claim 16 as obvious in view of Koo, Bartley, Scofield, and
Martin.
DECISION SUMMARY
In summary:
Claims Rejected 35 U.S.C. § References Affirmed Reversed
1–5, 8–15, 17–20 103 Koo, Barley,
Scofield
9–13 1–5, 8, 14, 15,
17–20
6 103 Koo, Barley,
Scofield, Baker
6
7 103 Koo, Barley,
Scofield, Hao
7
16 103 Koo, Barley,
Scofield, Martin
16
Overall Outcome 9–13, 16 1–8, 14, 15,
17–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART