Jon Butler et al.

Patent Trials and Appeals Board

Jan 29, 2021

2020003679 (P.T.A.B. Jan. 29, 2021)

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.
12/350,127 01/07/2009 Jon Butler RTM-1011 6312
95084 7590 01/29/2021
Loza & Loza, LLP
Tyler Barrett, Esq.
305 N. Second Avenue #127
Upland, CA 91786
EXAMINER
REAGAN, JAMES A
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
01/29/2021 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@lozaip.com
tyler@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JON BUTLER and MICHAEL D. HAMLING
____________

Appeal 2020-003679
Application 12/350,1271
Technology Center 3600

____________

Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 11–33 and 35. 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. Appellant identifies the real party in interest as Mediaport
Entertainment, Inc. (Appeal Br. 2.)
Appeal 2020-003679
Application 12/350,127

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CLAIMED SUBJECT MATTER
Appellant’s invention “relates to systems and methods for storing and
distributing digital content using identification (ID) tags.” (Spec. ¶ 1.)
Claims 11, 18, and 26 are the independent claims on appeal. Claim 11
is illustrative. It recites (emphasis added):
11. A method of distributing digital content, comprising;
providing digital content at a distribution device;
displaying an offer about the digital content at a display
device, wherein the display device includes a first RFID chip that
transmits a tag containing information about the digital content
to a user’s capture device;
accepting the offer for the digital content displayed at the
display device by receiving the tag from the first RFID chip at a
second RFID chip at the user’s capture device in response to the
user’s capture device being positioned adjacent to the display
device;
detecting the presence of the tag at the distribution device;
and
distributing the digital content from the distribution device
to the user’s capture device after detecting the presence of the tag
at the distribution device.

REJECTIONS
Claims 11–13, 18–21, 26, 29–33, and 35 are rejected under 35 U.S.C.
§ 103(a) as unpatentable in view of Maritzen (US 2004/0098740 A1, pub.
May 20, 2004), Reed (US 2005/0276570 A1, pub. Dec. 15, 2005), and
Rosenblatt (US 2010/0082491 A1, pub. Apr. 1, 2010).
Claims 14–17, 22–25, 27, and 28 are rejected under 35 U.S.C.
§ 103(a) as unpatentable in view of Maritzen, Reed, Rosenblatt, and Official
Notice.
Appeal 2020-003679
Application 12/350,127

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ANALYSIS
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that Rosenblatt discloses “displaying an offer about the digital content
at a display device, wherein the display device includes a first RFID chip
that transmits a tag containing information about the digital content to a
user’s capture device.” (Final Action 10; see also Answer 5.)
Appellant argues that Rosenblatt does not include any teachings
relating to the display limitation. (Appeal Br. 7–8; see also Reply Br. 2–4.)
In particular, Appellant argues that Rosenblatt “merely describes a user’s
handheld device that displays various song purchasing options to the user.”
(Appeal Br. 8.)
Rosenblatt teaches “[s]ystems, methods, and devices for providing
and managing electronic event tickets.” (Rosenblatt, Abstract.) In
particular, Rosenblatt, teaches that electronic devices may include NFC
(near filed communication) interfaces, and that such interfaces “may provide
a manner of receiving electronic ticket data from an RFID tag located on a
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Application 12/350,127

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ticket.” (Id. ¶ 129.) Rosenblatt teaches that “a user may purchase an NFC-
enabled ticket 106 for a concert. The user may tap the NFC-enabled ticket
106 to a handheld device 40 running a ticket management application, which
may cause the handheld device 40 to receive ticket information from the
NFC-enabled ticket 106.” (Id. ¶ 155.) Indeed, the NFC-enabled ticket may
be stored on an electronic device, such as a handheld device. (Id. ¶ 158.)
The Examiner cites to Figure 5 of Rosenblatt as teaching the display
device displaying the offer as recited in claim 11, and that Figures 15A–D
teach display screens of a kiosk, i.e., the display device. (Answer 5.)
However, Figures 15A–D depict screens on the user’s handheld device,
rather than a screen of the kiosk of Figure 5. (See Rosenblatt ¶¶ 180–81.)
The Examiner further cites to Figures 37A–I as teaching offers displayed on
the kiosk. (Answer 5.) However, Figures 37A–I “illustrate a manner in
which an electronic ticket may be obtained through an online purchase,”
using a handheld device, rather than a kiosk. (See Rosenblatt ¶ 256.)
In view of the above, we are persuaded that the portions of Rosenblatt
cited by the Examiner do not teach “displaying an offer about the digital
content at a display device, wherein the display device includes a first RFID
chip that transmits a tag containing information about the digital content to a
user’s capture device,” as recited in claim 11.2 Independent claim 18
contains similar language.

2 We note that Rosenblatt also teaches an unmanned kiosk including an NFC
interface. (Rosenblatt ¶¶ 1, 14, Figs. 1, 6.) The unmanned kiosk includes a
display having a user interface through which a user may conduct
transactions including “for example, purchasing electronic tickets or
obtaining credit for certain content associated with a user account.” (Id.
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Application 12/350,127

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Unlike independent claims 11 and 18, independent claim 26 recites, in
relevant part, “receiving, by a display device, a request for digital content
from the user, the requested digital content selected from a plurality of
available digital content; transmitting, from the display device, an offer for
the requested digital content to the user device.”
In rejecting claim 26, the Examiner determines that “[t]he
combination of MARITZEN/REED/ROSENBLATT discloses the
limitations as shown in the rejections of the claims above,” e.g., the rejection
of claim 11. (Final Action 13.) But unlike claim 11, claim 26 does not
require the display device to display an offer about digital content. And also
unlike claim 11, claim 26 requires transmitting the offer itself from the
display device to the user device. The Examiner does not sufficiently
explain where the cited art discloses transmitting the offer from the display
device to the user device.
Therefore, we determine that the Examiner has not presented a prima
facie case of obviousness with regard to independent claim 26.
Additionally, we note with regard to the Examiner’s proposed
modification of Maritzen in view of Reed and Rosenblatt, the Examiner
determines:
In the competitive business climate, there is a profit-driven
motive to maximize the profitability of goods and services that
are provided or marketed to customers. Enterprises typically use
business planning to make decisions in order to maximize profits.
Therefore, it would have been obvious to one of ordinary skill in
the art at the time of the invention to combine/modify the method

¶¶ 111, 112, 146, Fig. 6.) The Examiner does not rely on these portions of
Rosenblatt in the current rejection and we take no position on their relevance
in the first instance.
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Application 12/350,127

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of MARITZEN/REED with the technique of ROSENBLATT
because, “Event tickets may provide entry to events as well as
other benefits. A person using an event ticket may also have one
or more electronic devices. However, event tickets may be lost
or misplaced, may not easily be transferred between distant
individuals, and may provide a limited range of benefits.
Moreover, those benefits associated with event tickets may not
provide additional functionality to a user of one or more
electronic devices.” (ROSENBLATT: paragraph 0005).
Moreover, each of the elements claimed are all shown by the
prior art of record but not combined as claimed. However, the
technical ability exists to combine the elements as claimed and
the results of the combination are predictable. Therefore, when
combined, the elements perform the same function as they did
separately. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)).

(Final Action 10.)
The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398 . . . (2007), explained that, “because inventions in most,
if not all, instances rely upon building blocks long since
uncovered, and claimed discoveries almost of necessity will be
combinations of what, in some sense, is already known,” “it can
be important to identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” Id. at 418–
19.

Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed. Cir.
2017). Here, the Examiner does not sufficiently explain the reasoning with
rational underpinnings why one of skill in the art would have modified
Maritzen in the manner claimed, e.g., why one would have modified
Maritzen to accept an offer for digital content displayed at the display device
by receiving a tag in response to positioning the user’s device adjacent the
display device.
Appeal 2020-003679
Application 12/350,127

7
In view of the above, we will reverse the rejection of independent
claims 11, 18, and 26, and the rejection of dependent claims 12, 13, 19–21,
29–33, and 35. The addition of Official Notice taken by the Examiner does
not cure the deficiencies discussed above. Therefore, we will reverse the
rejection of dependent claims 14–17, 22–25, 27, and 28.

CONCLUSION
The Examiner’s rejections of claims 11–33 and 35 under 35 U.S.C.
§ 113(a) is reversed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–13,
18–21, 26,
29–33, 35
103(a) Maritzen, Reed,
Rosenblatt
11–13,
18–21, 26,
29–33, 35
14–17,
22–25, 27,
28
103(a) Maritzen, Reed,
Rosenblatt, Official
Notice
14–17,
22–25, 27,
28
Overall
Outcome
11–33, 35

REVERSED