John Penberthy et al.

Patent Trials and Appeals Board

Sep 1, 2020

13584154 - (D) (P.T.A.B. Sep. 1, 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.
13/584,154 08/13/2012 John S. Penberthy 145194 2759
52531 7590 09/01/2020
COJK
1201 THIRD AVENUE
SUITE 3600
SEATTLE, WA 98101-3029
EXAMINER
GARTLAND, SCOTT D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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):
efiling@cojk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN S. PENBERTHY, SIMON A ASSAAD,
DAVID V. CARSON, and BRADLEY G. JOHNSON
____________

Appeal 2020-001335
Application 13/584,154
Technology Center 3600
____________

Before ERIC S. FRAHM, KALYAN K. DESHPANDE, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21–23, 25, 29–32, 34–38, 40, 42–44, 46–50, 52, 54–56,
and 58, which are all the claims pending and rejected in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Nytell Software LLC as the real party in interest.
Appeal Br. 3.

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Application 13/584,154

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STATEMENT OF THE CASE
Introduction
The present invention relates to “a method and system for selecting
and delivering media content, such as video content and advertisements, via
a packet based network such as the internet.” Spec. ¶ 2. In particular,
[t]he present invention . . . select[s] portions of content,
and media content sets to be delivered over a packet based . . .
network. The selected portions of content . . . may be keywords
such as a word or a group of words. . . . the present invention
provides a heuristic model employing a piece-wise linear
optimization function to select keywords and the media content
sets for delivery by a media delivery provider.
Spec. ¶ 9. Claim 32 is exemplary:
32. A method comprising:
determining, by a first computing device, a plurality of
values for a plurality of keywords of a web page, wherein each
of the plurality of values is based on a combination of variables
including location, local time, and content being viewed;
receiving, by the first computing device from a second
computing device, a request for identification of the plurality of
keywords of the web page;
receiving, by the first computing device from the second
computing device, data associated with the second computing
device;
determining, by the first computing device, a location of
the second computing device, a local time at the second
computing device, and content being viewed at the second
computing device based on the data associated with the second
computing device;
selecting, by the first computing device, a value from
among the plurality of values for the plurality of keywords that
corresponds to the location of the second computing device, the
local time at the second computing device, and the content
being viewed at the second computing device;
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determining, by the first computing device, that the value
meets a criterion;
responsive to determining that the selected value meets
the criterion, selecting, by the first computing device, a
keyword associated with the selected value;
determining, by the first computing device, keyword
identifying information based on the value and the keyword,
wherein the keyword identifying information comprises a link
that, when activated, causes a request for selected video content
to be generated;
transmitting, by the first computing device to the second
computing device, the keyword identifying information;
receiving the request for the selected video content to be
generated; and presenting the selected video content to the
second computing device for display in a video player having
an interactive video skin displayed along at least a portion of a
periphery of the video player, the interactive video skin
comprising a hyperlink configured to be actuated by a user and
one or more form elements configured to receive input from the
user.

References and Rejections2

Claims
Rejected
35 U.S.C. § References
32, 34, 35, 46,
47, 58
103 Henkin (US 2010/0138452 A1, published
June 3, 2010), Agarwal (US 2005/0076014
A1, published Apr. 7, 2005), Knight (US
2008/0320512 A1, published Dec. 25,
2008).

2 Throughout this opinion, we refer to the (1) Final Office Action dated Nov.
20, 2018 (“Final Act.”); (2) Appeal Brief dated July 16, 2019 (“Appeal
Br.”); (3) Examiner’s Answer dated Oct. 11, 2019 (“Ans.”); and (4) Reply
Brief dated Dec. 9, 2019 (“Reply Br.”).
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21, 22, 25,
29–31, 36, 37,
40, 42–44, 48,
49, 52, 54–56
103 Henkin, Agarwal, Knight, Ramer (US
2007/0061198 A1, published Mar. 15,
2007)
23, 38, 50 103 Henkin, Agarwal, Knight, Ramer, Campbell
(US 2008/0243822 A1, published Oct. 2,
2008)

ANALYSIS3
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contention that the Examiner erred in this case.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007); see
also Metalcraft of Mayville, Inc., v. The Toro Co., 848 F.3d 1358, 1367
(2017) (Fed. Cir. 2017) (“Without any explanation as to . . . why the
references would be combined to arrive at the claimed invention, we are
left with only hindsight bias that KSR warns against. . . . [W]e cannot
allow hindsight bias to be the thread that stitches together prior art patches
into something that is the claimed invention.”).
Further, the USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made” and that articulation
requirement “appl[ies] with equal force to the motivation to combine

3 Appellant raises additional arguments. Because the identified issue is
dispositive of the appeal, we do not address the additional arguments.
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analysis.” In re Nuvasive, Inc., 842 F.3d 1376, 1382–83 (Fed. Cir. 2016).
When “motivation to combine . . . is disputed,” USPTO “must articulate a
reason why a PHOSITA would combine the prior art references.” Id.
The Examiner cites the combination of Henkin and Agarwal for
teaching the “determining” and “selecting” limitations of independent claim
32. See Final Act. 14–17. The Examiner concludes:
it would have been obvious to one of ordinary skill in the art at
the time of the invention to combine or modify the valuation of
Henkin with the factors of Agarwal in order to determine and
select value(s) based on location, local time, content being
viewed.

The rationale for combining in this manner is that using
determining and selecting value(s) based on location, local
time, content being viewed is applying a known technique to a
known device, method or product to yield predictable results as
explained above.
Final Act. 17 (emphases added).
“[M]odifying Henkin in view of Agarwal . . . would be the use
of the claimed variables or factors as taught by Agarwal and
combined into Henkin per the stated rationale.” Ans. 9 (emphasis
added).
We agree with Appellant that the Examiner has not provided the
requisite rationale for combing the teachings of Henkin and Agarwal. See
Appeal Br. 20; Reply Br. 3–6. In particular, the Examiner’s assertion that “it
would have been obvious to one of ordinary skill in the art at the time of the
invention to combine or modify the valuation of Henkin with the factors of
Agarwal in order to determine and select value(s) based on location, local
time, content being viewed” (Final Act. 17 (emphasis added)) is inadequate,
because the Examiner’s rationale merely paraphrases a portion of the
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disputed limitations. See KSR, 550 U.S. at 418. That is, the Examiner’s
rationale to combine is merely to achieve the claim language, without setting
forth a reason why one skilled in the art would have made the modification
or combination.
Nor is the Examiner’s statement that the “rationale for combining in
this manner is that using determining and selecting value(s) based on
location, local time, content being viewed is applying a known technique to
a known device, method or product to yield predictable results as explained
above” (Final Act. 17 (emphasis added)) adequate, because the Examiner’s
reasoning does not “articulate a reason why a PHOSITA would combine the
prior art references.” See Nuvasive, 842 F.3d at 1382. As a result, the
Examiner has not provided “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness,” as required by
KSR. See KSR, 550 U.S. at 418.
Because the Examiner fails to provide sufficient support for the legal
conclusion of obviousness, we are constrained by the record to reverse the
Examiner’s rejection of claim 32. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (we will not resort to speculation or assumptions to cure
deficiencies in the Examiner’s fact finding or reasoning).4

4 If prosecution reopens, we recommend the Examiner consider whether one
skilled in the art would have modified Henkin’s method to incorporate
Agarwal’s features in order to customize content delivery based on, among
other things, location and local time associated with the user computing
device. Such customization would create the benefit of delivering more
targeted and effective content to the user. See KSR, 550 U.S. at 424 (“[t]he
proper question to have asked was whether a . . . designer of ordinary skill . .
. would have seen a benefit to upgrading Asano with a [feature from the
secondary reference]”).
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For each of independent claims 35 and 47, the Examiner cites the
same reasoning (discussed above for claim 32) for the legal conclusion of
obviousness. See Final Act. 17, 19. Therefore, for similar reasons, we are
constrained by the record to reverse the Examiner’s rejection of independent
claims 35 and 47.
We also reverse the Examiner’s rejection of corresponding dependent
claims 21–23, 25, 29–31, 34, 36–38, 40, 42–44, 46, 48–50, 52, 54–56, and
58.
CONCLUSION
We reverse the Examiner’s decision rejecting claims 21–23, 25, 29–
32, 34–38, 40, 42–44, 46–50, 52, 54–56, and 58 under 35 U.S.C. § 103.
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
32, 34, 35,
46, 47, 58
103 Henkin, Agarwal,
Knight
32, 34, 35,
46, 47, 58
21, 22, 25,
29–31, 36,
37, 40, 42–
44, 48, 49,
52, 54–56
103 Henkin, Agarwal,
Knight, Ramer
21, 22, 25,
29–31, 36,
37, 40, 42–
44, 48, 49,
52, 54–56
23, 38, 50

103 Henkin, Agarwal,
Knight, Ramer,
Campbell
23, 38, 50
Overall
Outcome
21–23, 25,
29–32, 34–
38, 40, 42–
44, 46–50,
52, 54–56,
58
REVERSED