Keiser, Luke

Patent Trials and Appeals Board

Dec 6, 2019

15363903 - (D) (P.T.A.B. Dec. 6, 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.
15/363,903 11/29/2016 Luke Keiser SEC-P072C1 2758
74243 7590 12/06/2019
Fogarty LLP
P.O. Box 703695
Dallas, TX 75370-3695
EXAMINER
LAEKEMARIAM, YOSEF K
ART UNIT PAPER NUMBER
2651
NOTIFICATION DATE DELIVERY MODE
12/06/2019 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@fogartyip.com
pair@fogartyip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUKE KEISER
____________

Appeal 2018-007985
Application 15/363,903
Technology Center 2600
____________

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

HOWARD, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 4–9, 12–17, and 20, which constitute all of the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

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 Securus
Technologies, Inc. Appeal Br. 3.
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THE INVENTION
The disclosed and claimed invention is directed, generally, “to
providing subsidized inmate calling services in a correctional system and,
more specifically, to methods for providing calling services at a lower cost
by using advertisement revenue to offset costs.” Spec. ¶ 2.2
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for providing a visitation session to a
resident of a controlled-environment facility, the method
comprising:
receiving a request for the visitation session between the
resident and a nonresident, wherein the requested visitation
session is associated with a fee;
determining whether funds are provided for the visitation
session fee by the resident or the non-resident;
if no funds are provided for the visitation session fee,
selecting one or more advertisements that can provide funding
for the visitation session for a first length of time, wherein at least
one of the one or more advertisements is selected based on a
location of the resident within the controlled-environment
facility;
presenting the one or more advertisements to the resident;
and
authorizing the requested visitation session, wherein the
visitation session is limited to the first length of time.

2 We refer to the Specification filed Nov. 29, 2016 (“Spec.”); Final Office
Action mailed Aug. 31, 2017 (“Final Act.”); Appeal Brief filed Feb. 1, 2018
(“Appeal Br.”); Examiner’s Answer mailed June 1, 2018 (“Ans.”); and the
Reply Brief filed Aug. 1, 2018 (“Reply Br.”).
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REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:

Name Reference Date
Olshansky US 6,493,437 B1 Dec. 10, 2002
Boyd US 2006/0087555 A1 Apr. 27, 2006

REJECTION
Claims 1, 4–9, 12–17, and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Boyd and Olshansky. Ans. 2; Final Act. 2.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments.

Claims 1, 6, 9, 14, and 17
Claim 1 recites “wherein at least one of the one or more
advertisements is selected based on a location of the resident within the
controlled-environment facility.” Emphasis added.
Appellant argues that Olshansky’s geographic location, upon which
the selection of advertisements is based, does not teach or suggest the
claimed basis “on the location of a resident within a controlled-environment
facility.” Appeal Br. 11–12. Specifically, Appellant argues that “the
selection of advertisements based on the general notion of a ‘geographic
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location’ in Olshansky[3] is distinct from the particularized scenario of
selecting an advertisement based on the location of a resident of a
controlled-environment facility.” Appeal Br. 13; see Reply Br. 3.
According to Appellant, Olshansky does not teach that a “particular location
is provided for the subscriber . . . much less . . . indicate a location of the
subscriber within a specific facility.” Appeal Br. 11.
We are not persuaded by Appellant’s argument that the Examiner
erred. We agree with the Examiner’s findings that Olshansky’s pushing an
advertising copy to a subscriber’s terminal based on a geographic location
and E.164 address teaches the claimed selecting advertisements based on a
location of the resident within the controlled-environment facility. Ans. 3–4
(citing Olshansky Fig. 4B, col. 5, ll. 39–55); see Ans. 8.
Olshansky teaches the “advertising copy ‘pushed’ to the subscriber’s
terminal 130 may be based on geographical location, E.164 address, or
known demographic or behavior traits of the subscriber.” Olshansky, col. 5,
ll. 46–50. In other words, Olshansky teaches selecting an advertisement
based on a subscriber’s geographical location.
As the Examiner properly determines, the Specification describes
“select[ing] the advertisement” using “selection criteria” that includes
“certain key characteristics of the advertisement, such as . . . geographic
location.” Spec. ¶ 33; see Ans. 7. The Specification provides non-limiting
examples of basing the selection of advertisements on geographical location,
broadly including “the custodial phone location,” “a jail booking area,” and

3 Appellant used italics to denote the prior-art references. For ease of
reading, unless used for emphasis, we have omitted using italics to denote a
prior-art reference.
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“a call from Dallas, Texas to . . . Los Angeles, California.” Id. Therefore,
Appellant has not persuasively argued why Olshansky’s selection of
advertisements based on geographical location does not teach or suggest the
claimed selection of advertisements based on geographic location.
Moreover, Appellant’s argument (that Olshansky’s geographical
location does not teach a particular location within the facility) does not
consider that Olshansky’s selection of an advertisement based on
geographical location is performing a routine technique (i.e., using location)
in the same way and for the same purpose as the claim (i.e., using location to
select an advertisement). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (“the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ”). In other words, “if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. at 417.
Here, as discussed above, Olshansky uses location data to select an
advertisement.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, along with the rejection of independent claims 9 and 17, for which
Appellant relies on the same arguments as discussed above for claim 1,
along with dependent claims 6 and 14, which are not argued separately.4
See Appeal Br. 17, 19.

4 In the event of further prosecution, the Examiner should consider whether
claim 1—along with the claims that depend from claim 1—is directed to
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Claims 4 and 12
Claim 4 recites “wherein the location comprises a booking area of the
controlled-environment facility.” Emphasis added.
Appellant argues that Boyd does not teach “any ‘booking area,’ or any
other specific area within a controlled-environment facility that indicates a
need for particular services by residents located within that area.” Appeal
Br. 15. Appellant also argues that Boyd’s “selecting a location with a
facility for a visitation session . . . does not include any suggestion of
providing advertisements based on a specific location (i.e., a booking area)
within a facility.” Reply Br. 5–6.
Our reviewing court guides that “the question under 35 USC § 103 is
not merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807–08 (Fed.
Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Moreover, “[e]very patent application and reference relies to some extent
upon knowledge of persons skilled in the art to complement that [which is]
disclosed. . . .” In re Bode, 550 F.2d 656, 660 (CCPA 1977) (quoting In re
Wiggins, 488 F.2d 538, 543 (CCPA 1973)). Those persons “must be

patent-ineligible abstract idea judicial exceptions—namely “mental
processes.” See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50, 52 (Jan. 7, 2019) (“Memorandum”). The Examiner should
also consider whether claims 9 and 17, reciting limitations that are
commensurate in scope to claim 1, include additional elements that do not
integrate the judicial exception into a practical application and simply
append well-understood, routine, conventional activities to the judicial
exception. Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so.
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presumed to know something” about the art “apart from what the references
disclose.” In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Additionally, the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Boyd teaches video visit participants “select[ing] desirable geographic
locations for them to participate in the video visit.” Boyd ¶ 11. Boyd
provides an example where “the visit is between a prison inmate and one or
more of his family members.” Boyd ¶ 12. In other words, Boyd teaches
selecting geographic locations for participants of a video visit taking place
between a prison inmate and his visitors. Although Boyd does not
specifically identify a booking area, it suggests different areas of a
correctional facility, which would include a booking area. Accordingly, we
are not persuaded by Appellant’s argument that the Examiner erred. We
agree with the Examiner’s findings that Boyd’s selecting “desirable
locations to participate” in the video visit, “i.e.[,] a specific location, such as
a booking area, of a participant within a specific facility” suggests the
location includes a booking area. Ans. 9–10; see Ans. 6.
Moreover, Appellant has not identified how performing the claimed
method in a specific location, such as a booking area, would have been
“uniquely challenging or difficult for one of ordinary skill in the art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418).
Accordingly, we sustain the Examiner’s rejection of dependent claim
4, along with the rejection of dependent claim 12, for which Appellant relies
on the same arguments as discussed above for claim 4. See Appeal Br. 19.

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Claims 5, 13, and 20
Claim 5 recites “wherein, based on the location of the resident in the
booking area, one or more of the selected advertisements promotes at least
one of an attorney and a bail bondsman.” Emphasis added.
Appellant argues that Olshansky does not teach “providing
advertisements that promote an attorney or bail bondsman based on the
location of a resident within a booking area.” Appeal Br. 16. Specifically,
Appellant argues that Olshansky does not teach or suggest “the selection of
particular advertisements, such as bail services, based on the specific
location, such as a booking area, of a participant within a specific facility.”
Id.; see Reply Br. 6–7.
We are not persuaded by Appellant’s argument that the Examiner
erred. We consider that the claimed selected advertisements “promot[ing] at
least one of an attorney and a bail bondsman” is directed to nonfunctional
descriptive material/printed matter that should not be given patentable
weight.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability); King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted); see also Ex parte Nehls, 88 USPQ2d
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1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the information
being manipulated does not lend patentability to an otherwise unpatentable
computer-implemented product or process.”); Ex parte Mathias, 84 USPQ2d
1276, 1279 (BPAI 2005) (informative), aff’d, 191 F. App’x 959 (Fed. Cir.
2006) (“[N]onfunctional descriptive material cannot lend patentability to an
invention that would have otherwise been anticipated by the prior art.”); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (designated informative),
aff’d, No. 2006-1003 (Fed. Cir. June 12, 2006) (Rule 36) (“Nonfunctional
descriptive material cannot render nonobvious an invention that would have
otherwise been obvious.”). Although we will not disregard any claim
limitations and will assess the claimed invention as a whole, we will follow
the Federal Circuit’s guidance from the Gulack decision and will “not give
patentable weight to printed matter absent a new and unobvious functional
relationship between the printed matter and the substrate.” In re Lowry, 32
F.3d 1579, 1582 (Fed. Cir. 1994) (discussing Gulack).
“The first step of the printed matter analysis is the determination that
the limitation in question is in fact directed toward printed matter.” In re
Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if
it is “claimed for what it communicates.” Id. at 850. The disputed limitation
of claim 5 (that the selected advertisement “promotes at least one of an
attorney and a bail bondsman”) pertains to the content of the selected
advertisement. Therefore, the disputed claim limitation is directed to printed
matter. See id. at 848 (A claim limitation is directed to printed matter “if it
claims the content of information.”).
If a claim in a patent application claims printed material, “one must
then determine if the matter is functionally or structurally related to the
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associated physical substrate, and only if the answer is ‘no’ is the printed
matter owed no patentable weight.” Distefano, 808 F.3d at 851. Here, the
claimed selected advertisements “promot[ing] at least one of an attorney and
a bail bondsman” is not interrelated or explicitly used in the claim—in
particular, the selecting of advertisements. Therefore, we find that the
disputed claim limitation constitutes nonfunctional descriptive material and
is not entitled to patentable weight. This is analogous to Curry, where we
found the type of data to be nonfunctional descriptive material when it “does
not functionally change either the data storage system or communication
system used in the method of claim 81.” 84 USPQ2d at 1274.
As we recognized in Curry, “if the prior art suggests storing a song on
a disk, merely choosing a particular song to store on the disk would be
presumed to be well within the level of ordinary skill in the art at the time
the invention was made.” Id. at 1275. Choosing the type of information to
use in an advertisement is no different.
Concluding otherwise would result not only in Appellant’s identified
specific type of advertisement distinguishing over the prior art, but equally
would distinguish every other type of advertisement. To give effect to
Appellant’s argument, we would need to ignore our reviewing court’s
concerns with repeated patenting. See King Pharm., 616 F3d at 1279 (“The
rationale behind this line of cases is preventing the indefinite patenting of
known products by the simple inclusion of novel, yet functionally unrelated
limitations.”); cf. Ngai, 367 F.3d at 1339 (“If we were to adopt Ngai’s
position, anyone could continue patenting a product indefinitely provided
that they add a new instruction sheet to the product.”). We decline to do so.
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Accordingly, we sustain the Examiner’s rejection of dependent claim
5, along with the rejection of dependent claims 13 and 20, for which
Appellant relies on the same arguments as discussed above for claim 5. See
Appeal Br. 19, 20.
Claims 7 and 15
Claim 7 recites “wherein the location of the resident within the
controlled-environment facility is determined based on a communication
device being used by the resident for the visitation session.” Emphasis
added.
Appellant argues that Boyd teaches “selection of advertisements based
on ‘geographic location’ and the scheduling of visitation sessions using
specific devices,” but does not teach “selection of advertisement based on
the specific visitation device that is being utilized for the scheduled
visitation session.” Appeal Br. 17; see Reply Br. 7.
Appellant’s argument against Boyd separately from Olshansky does
not persuasively rebut the combination made by the Examiner. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA
1981).
Specifically, we agree with the Examiner’s finding that the claimed
“controlled-environment facility geographical location can be identified
using [Olshansky’s] geographic location,” and the “provid[ing] a relevant
advertisement for an intended participants or inmates device based on the
device capability . . . and location of the called party as disclosed by Boyd in
view of Olshansky” teaches the disputed limitation. Ans. 11; see Ans. 6.
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For example, Olshansky teaches the “advertising copy ‘pushed’ to the
subscriber’s terminal 130 may be based on geographical location, E.164
address, or known demographic or behavior traits of the subscriber.”
Olshansky, col. 5, ll. 46–50. In other words, Olshansky teaches selecting an
advertisement based on a subscriber’s geographical location.
Boyd teaches that the “audio/video equipment employed during the
video visit . . . may be located at fixed or mobile geographic locations where
such equipment connections and operations may be maintained.” Boyd ¶ 9.
Boyd also teaches video visit participants “select[ing] desirable geographic
locations for them to participate in the video visit.” Boyd ¶ 11. In other
words, Boyd teaches video visit participants selecting geographic locations
to participate in the video visit and those locations providing the audio/video
equipment employed for the video visit.
Thus, we agree with the Examiner’s finding that the combination of
Boyd’s use of provided audio/video equipment for a video visit at a
geographic location and Olshansky’s consideration of the geographic
location of the subscriber teaches the location of the resident is determined
based on the communication device being used by the resident for the
visitation session as required by claim 7.
Accordingly, we sustain the Examiner’s rejection of dependent
claim 7, along with the rejection of dependent claim 15, for which Appellant
relies on the same arguments as discussed above for claim 7. See Appeal
Br. 19.

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Claims 8 and 16
Claim 8 recites “wherein the communication device is a custodial
telephone device or a personal computing device provided by the controlled-
environment facility.” Emphasis added.
Appellant argues that Boyd’s “scheduling of visitation sessions using
specific ‘terminal’ devices” does not teach or suggest “the use of a custodial
device that is provided to the resident by the facility.” Appeal Br. 18.
Specifically, Appellant argues that Boyd “does not teach or suggest the
recited use of a custodial device” or “any determination of the location of the
resident within the controlled-environment facility based on the location of a
custodial device assigned to the resident.” Reply Br. 8.
We are not persuaded by Appellant’s argument that the Examiner
erred. We agree with the Examiner’s findings that Boyd’s equipment
housed in data centers to schedule and conduct video visits teaches the
claimed “custodial device that is provided to the resident by the facility.”
Ans. 9 (citing Boyd ¶¶ 14, 25, 26, 45); see Ans. 7.
Boyd teaches that the “audio/video equipment employed during the
video visit . . . may be located at fixed or mobile geographic locations where
such equipment connections and operations may be maintained.” Boyd ¶ 9.
In other words, Boyd teaches—or at the very least, suggests—video visit
participants using the provided audio/video equipment for the video visits.
Appellant does not specify any limiting definition of the claimed
“custodial telephone device or personal computing device.” Therefore,
Appellant has not persuasively argued why the claimed “communication
device,” that is a “custodial telephone device or a personal computing device
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provided by the controlled-environment facility” precludes Boyd’s
audio/video equipment provided for video visits.
Accordingly, we sustain the Examiner’s rejection of dependent claim
8, along with the rejection of dependent claim 16, for which Appellant relies
on the same arguments as discussed above for claim 8. See Appeal Br. 19.

CONCLUSION
We affirm the Examiner’s rejection of claims 1, 4–9, 12–17, and 20
under 35 U.S.C. § 103.
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–9, 12–17, 20 103 Boyd, Olshansky 1, 4–9, 12–17, 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)(1)(iv). See 37
C.F.R. § 41.50(f) (2019).

AFFIRMED