Linda Tong et al.

Patent Trials and Appeals Board

Oct 10, 2019

14329796 - (D) (P.T.A.B. Oct. 10, 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.
14/329,796 07/11/2014 LINDA TONG 60291-0094 5951
29989 7590 10/10/2019
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
10/10/2019 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LINDA TONG, STEPHEN JAMES McCARTHY,
RYAN ALLEN JOHNS, HAI-VAN PHAM, NORMAN CHAN,
AMIR BASHIR MANJI, JIA FENG, MARC BOURGET, JOEY PAN,
and HWAN-JOON CHOI
____________

Appeal 2018-002502
Application 14/329,796
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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Application 14/329,796

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–12, 14–26, and 28. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED INVENTION
Appellant’s claimed invention “relate[s] to the field of delivering
online advertisements to computing devices such as mobile computing
devices” (Spec. ¶ 2).
Claims 1 and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
using a marketplace server computer, storing, at the
marketplace server computer, application marketplace account
information that identifies one or more computing devices that
are linked to one or more marketplace accounts;
wherein a first computing device and a second computing
device are linked to a particular marketplace account;
using the marketplace server computer, storing at the
marketplace server, for one or more marketplace associated
applications, interaction information comprising a plurality of
entries, wherein the marketplace server adds an entry each time
a device interacts with an instance of an application of the one or
more marketplace associated applications and wherein the entry

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed July 24, 2017) and Reply Brief (“Reply Br.,” filed January 4, 2018),
and the Examiner’s Answer (“Ans.,” mailed November 30, 2017) and Final
Office Action (“Final Act.,” mailed March 8, 2017). Appellant identifies the
real party in interest as Tapjoy, Incorporated. Appeal Br. 1.
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identifies the application and the device that interacted with the
instance of the particular application;
using the marketplace server computer, receiving at the
marketplace server, from the first computing device, a request
for a list of offer eligible applications;
using the marketplace server computer, identifying a set of
two or more applications associated with the first computing
device by identifying, in the interaction information of the one or
more marketplace associated applications, data indicating that
the first computing device executed an instance of each
application of the set of two or more applications;
using the marketplace server computer, selecting a
plurality of eligible applications including the set of two or more
applications based, at least in part, on identifying the set of two
or more applications associated with the first computing device;
using the marketplace server computer, sending a list of
the plurality of eligible applications including the set of two or
more applications to the first computing device;
using the marketplace server computer, receiving a
selection of an eligible application of the list of selected eligible
applications;
using the marketplace server computer, identifying a
plurality of offers for the selected eligible application, based, at
least in part, on user account information of the particular
marketplace account identifying capabilities of the second
computing device; [and]
using the marketplace server computer, displaying a
plurality of offer descriptions, each offer description of the
plurality of offer descriptions describing a respective offer for the
selected eligible application, wherein each respective offer offers
a reward in exchange for a performance of an offer action.
REJECTIONS
Claims 1–5, 7, 8, 12, 14, 15–19, 21, 22, 26, and 28 are rejected under
35 U.S.C. § 103(a) as unpatentable over Mehta et al. (US 2012/0291022 A1,
published Nov. 15, 2012) (“Mehta”), Kääriäinen et al.
(US 2012/0102008 A1, published Apr. 26, 2012) (“Kääriäinen”), Patterson
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(US 2007/10255576 A1, published Nov. 1, 2007), Perkins et al.
(US 2003/0084439 A1, published May 1, 2003 (“Perkins”), and Levi et al.
(US 2011/0119131 A1, published May 19, 2011) (“Levi”).
Claims 6 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Mehta, Kääriäinen, Patterson, Perkins, Levi, and Gorman et al.
(US 2011/0208616 A1, published Aug. 25, 2011) (“Gorman”).
Claims 9, 10, 11, 23, 24, and 25 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Mehta, Kääriäinen, Patterson, Perkins, Levi, and
Van Luchene et al. (US 2011/0300923 A1, published Dec. 8, 2011)
(“Van Luchene”).
ANALYSIS
Independent Claims 1 and 15 and Dependent Claims 2–5, 7, 8, 12, 14,
16-19, 21, 22, 26, and 28
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 15 under 35 U.S.C. § 103(a) because
Levi, on which the Examiner relies, does not disclose or suggest “identifying
a plurality of offers for the selected eligible application, based, at least in
part, on user account information of the particular marketplace account
identifying capabilities of the second computing device,” as recited in
claim 1, and similarly recited in claim 15 (Appeal Br. 5–7).
Levi is directed to a system and method for peer-to-peer advertising
between mobile communication devices (Levi Abstract), and discloses an
arrangement in which a subscriber subscribes to a communication subsidy
program of an intermediary by connecting to the intermediary website and
setting up a subscriber profile (id. ¶¶ 19, 29). Levi discloses, in
paragraph 31, on which the Examiner relies (see Final Act. 11–12), that once
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the subscriber’s profile is set up, the intermediary analyzes the profile data
and identifies advertisers whose criteria for subsidy match the subscriber’s
criteria. Levi, thus, discloses that if, for example, advertiser A offers static
graphic media and video media and advertiser B offers only audio media, the
intermediary qualifies those subscribers (based on the media type offered)
whose communication devices have the capability to accept static graphics,
video, and/or audio (Levi ¶ 31).
We agree with Appellant that although Levi discloses that the
requested advertisements are sent to a user based on the capabilities of the
user’s device, Levi only discloses determining the capabilities of the device
making the request (Appeal Br. 6–7). We find nothing in the cited portion
of Levi that discloses or suggests identifying a plurality of offers for a first
user device based on the capabilities of a second device different from the
first device but linked to the same profile, i.e., “identifying a plurality of
offers for the selected eligible application, based, at least in part, on user
account information of the particular marketplace account identifying
capabilities of the second computing device,” as recited in claim 1 and
similarly recited in claim 15.
Responding to Appellant’s argument in the Answer, the Examiner
asserts,“[c]ontrary to the Appellant’s assertion, the examiner does not rely
upon Levi alone to teach the feature in question but instead relies upon a
combination of references to teach this feature” (Ans. 3). However, we
agree with Appellant that the Examiner has failed to explain how any of the
references use the capabilities of a non-requesting device to perform any
function and, therefore, failed to explain how the cited references, which
only disclose identifying information about a requesting device, in
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combination, disclose or suggest identifying offers based the capabilities of a
second, different device linked to the same profile as the requesting device
(Reply Br. 1–2).
In view of the foregoing, we do not sustain the rejection of claims 1
and 15 under 35 U.S.C. § 103(a). For the same reason, we also do not
sustain the rejection of dependent claims 2–5, 7, 8, 12, 14, 16 19, 21, 22, 26,
and 28. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent
claims are nonobvious if the independent claims from which they depend are
nonobvious”).
Dependent Claims 6, 9, 10, 11, 20, 23, 24, and 25
The rejections of dependent claims 6, 9, 10, 11, 20, 23, 24, and 25 do
not cure the deficiency in the rejection of independent claims 1 and 15.
Therefore, we do not sustain the rejections under 35 U.S.C. § 103(a) of
dependent claims 6, 9, 10, 11, 20, 23, 24, and 25 for the same reason set
forth above with respect to the independent claims.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–5, 7, 8, 12,
14–19, 21, 22,
26, 28
103(a) Mehta,
Kääriäinen,
Patterson,
Perkins, Levi
1–5, 7, 8, 12,
14–19, 21,
22, 26, 28
6, 20 103(a) Mehta,
Kääriäinen,
Patterson,
Perkins, Levi,
Gorman
6, 20
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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
9, 10, 11, 23, 24,
25
103(a) Mehta,
Kääriäinen,
Patterson,
Perkins, Levi,
Van Luchene
9, 10, 11, 23,
24, 25
Overall
Outcome
1–12, 14–26,
28

REVERSED