AiBUY, Inc.Download PDFPatent Trials and Appeals BoardFeb 3, 20212020005036 (P.T.A.B. Feb. 3, 2021) Copy Citation 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. 14/484,047 09/11/2014 Robert K. Spitz CINS-005/03US 326663-2037 1098 58249 7590 02/03/2021 COOLEY LLP ATTN: IP Docketing Department 1299 Pennsylvania Avenue, NW Suite 700 Washington, DC 20004 EXAMINER RETTA, YEHDEGA ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 02/03/2021 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): zIPPatentDocketingMailboxUS@cooley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT K. SPITZ, CHRISTIAN BRIGGS, and TODD DOWNING ____________ Appeal 2020-0050361 Application 14/484,047 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and MATTHEW S. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–25, which constitute all 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. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed March 6, 2020) and Reply Brief (“Reply Br.,” filed June 24, 2020), and the Examiner’s Answer (“Ans.,” mailed April 24, 2020) and Final Office Action (“Final Act.,” mailed March 18, 2019). 2 Appellant identifies “AIBUY Inc.,” as the real party in interest. Appeal Br. 3. Appeal 2020-005036 Application 14/484,047 2 CLAIMED INVENTION Appellant’s claimed invention relates to “dynamically binding supplemental content to a content transactional item,” and “includes identifying the content transactional item at a device and identifying a description related to the content transactional item.” Spec. ¶ 6. Claims 1, 8, and 15 are the independent claims on appeal. Claim 1, reproduced below with bracketed matter added, is illustrative of the claimed subject matter: 1. A processor-implemented method for dynamically binding supplemental electronic content to a content transactional item in a shareable media container, the method comprising: [a] capturing, at a first compute device, a base media content associated with a content transactional item that is being offered for sale at a store; [b] identifying a description related to the content transactional item using a location of the store offering the content transactional item and a location of the first compute device where the base media content is captured; [c] obtaining supplemental electronic content based on the description, the supplemental electronic content providing additional information about the content transactional item at the store; and [d] dynamically binding the supplemental electronic content to the base media content associated with content transactional item to form a shareable media container allowing sharing of the base media content and the supplemental electronic content together from the first compute device to at least one second compute device, the shareable media container, when shared to the at least one second compute device, configured to: [e] render the shareable media container on a graphical display of the at least one second compute device; Appeal 2020-005036 Application 14/484,047 3 [f] present the base media content within the shareable media container; [g] display the supplemental electronic content within the shareable media container; and [h] provide an interface within the shareable media container, the interface configured to allow a user associated with the at least one second compute device to complete a transaction associated with the content transactional item without leaving the shareable media container. REJECTIONS Claim 23 is rejected under 35 U.S.C. § 112(b) as indefinite. Claims 1–5, 7–12, and 14–20 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Klein (US 2014/0108111 A1, pub. Apr. 17, 2014). Claims 6 and 13 are rejected under 35 U.S.C. § 103(a) as being obvious over Klein and Liu (US 2014/0254942 A1, pub. Sept. 11, 2014). Claims 21–25 are rejected under 35 U.S.C. § 103(a) as being obvious over Klein and Mallinson (US 2011/0247042 A1, pub. Oct. 6, 2011). Claims 1–25 are rejected on the ground of non-statutory obviousness- type double patenting over claims 1–21 of U.S. Patent No. 9,875,489 B2. Claims 1–25 are rejected on the ground of non-statutory obviousness- type double patenting over claims 1–21 of U.S. Patent No. 9,953,347 B2. ANALYSIS Indefiniteness We are persuaded that the Examiner erred in rejecting claim 23 under 35 U.S.C. § 112(b). The Examiner takes the position that because “claim 1 recites capturing a base media at a first device it is unclear how the captured Appeal 2020-005036 Application 14/484,047 4 media content at the first device, is also streamed at the first device from streaming server. It is unclear if the base media content is a captured content (image object) or streamed content.” Final Act. 3. We disagree. Instead, we agree with Appellant that “claim 23, which recites ‘the base media content includes video content further comprising: streaming, at the first device, the video content from a streaming service,’ is clear on its face when read in conjunction with claim 1, which recites ‘capturing, at a first device, a base media content.’” Appeal Br. 13. Thus, we agree with Appellant that a person of ordinary skill in the art would understand from the Specification (including the claim language) what is being claimed, namely that “the capturing a base media content recited in claim 1 can be performed by streaming video content from a streaming service.” Id. Therefore, we do not sustain the Examiner’s rejection of claim 23 under 35 U.S.C. § 112(b). See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the [S]pecification.”). Anticipation Independent claim 1 and dependent claims 2–5 and 7 We are persuaded by Appellant’s argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 102(a)(2) because Klein fails to disclose “provid[ing] an interface within the shareable media container . . . configured to allow a user associated with the at least one second compute device to complete a transaction associated with the content Appeal 2020-005036 Application 14/484,047 5 transactional item without leaving the shareable media container,” as recited by limitation [h] of independent claim 1. Appeal Br. 9; Reply Br. 2). The Examiner maintains the rejection is proper, and cites paragraphs 56–68 of Klein, as disclosing the argued limitation. See Final Act. 5–6. In the Examiner’s Answer, although the Examiner does not specifically address the argued limitation, the Examiner generally cites to paragraphs 30–33, 39–42, and 70, along with Figure 3, as disclosing the subject matter of independent claim 1. See Ans. 3–4. Klein is directed to “a mobile advertising system providing advertising to potential customers via a network.” Klein ¶ 1. Klein discloses that its system may include a smart phone “to capture the graphically displayed and encoded vending details.” Id. ¶ 12. More particularly, Klein discloses that [b]y means of the visual capturing (e.g. by scanning the merchant's encoded vending details), respective data and information about a product, a service and/or about a particular shop or service provider can be almost automatically obtained and further processed by the mobile device in order to generate a transferable recommendation. Id. ¶ 9; see also id. ¶ 13 (“The additional information typically relates to a product, to a service, or to a merchant’s shop in general.”). According to Klein, the additional information is “presented to the user via the mobile device in a readable and decoded format so that the user can be informed about the additional shop-, product- or service-related information prior to a creation and/or distribution of the recommendation to other potential customers.” Id. ¶ 14. Klein further discloses that captured vending details are submitted “to the advertisement service . . . to receive additional information either from a Appeal 2020-005036 Application 14/484,047 6 database of the advertisement service or from various other information sources, such as a search engine used or operated by the advertisement service.” Id. ¶ 31. And, in response, Klein discloses “generat[ing] a transferable and electronic message-based recommendation . . . to provide a sharing or distributing functionality to the user of the mobile device” that is “not only indicative of the additional information retrieved from the advertisement service, but also includes at least an identifier of the recommending user, which is typically subscribed to the advertisement service.” Id. ¶ 32. According to Klein, “[t]his way, electronic recommendations to be transferred among users of a social network may uniquely correspond to a recommendation-generating user for assigning a respective commission to the user when the recommendation-receiving potential customer follows the respective recommendation (e.g. by purchasing a product or service from the recommended merchant).” Id. ¶ 33. According to Klein, “to create a recommendation 36 the software application 40 comprises a request module 42 by way of which the captured vending details 16 can be at least partially transferred to the advertisement service 20.” Id. ¶ 55. And, “[i]n response to such a request, the advertisement service provides additional information regarding the particular shop 13” and this “additional information is then returned to the mobile device 24 and is processed by a link generator 44.” Id. ¶ 56. Once the addition information is returned to the mobile device 24, link generator 44 “prepare[s] a hyperlink to be embedded into the recommendation 36.” Id. ¶ 57. Klein notes that because “the recommendation 36 typically comprises a hyperlink it can be easily tracked when a follower or potential Appeal 2020-005036 Application 14/484,047 7 customer 32, 34 follows said hyperlink.” Id. ¶ 58. Klein further discloses, however, that “[w]hen the potential customer 32 follows the recommendation 36 he will be automatically forwarded to a web page or a shop of the merchant 12.” Id. ¶ 59. We have reviewed the cited portions of Klein, and agree with Appellant that none of the cited portions of Klein discloses limitation [h] of independent claim 1. In making this determination, we note that limitation [h] requires an “interface configured to allow a user associated with the at least one second compute device to complete a transaction associated with the content transactional item without leaving the shareable media container” (emphasis added). To address this limitation, in the Final Action, the Examiner simply cites to paragraphs 56–68 of Klein without any explanation. Final Act. 6. The Examiner appears to rely on Klein’s disclosure of “recommendation link (selectable link)” as disclosing “a sharable media container.” See Final Act. 5 (“[T]o form a shareable media container ( . . . in order to generate a transferable recommendation).”); Ans. 4; see also Klein ¶ 57 (Once the addition information is returned to the mobile device 24, link generator 44 “prepare[s] a hyperlink to be embedded into the recommendation 36.”). However, we do not see, and the Examiner does not explain adequately where Klein discloses allowing a user at a second computing device “to complete a transaction associated with the content transactional item without leaving the shareable media container,” as required by limitation [h]. Instead, we agree with Appellant that Klein discloses just the opposite. Appeal Br. 9. In this regard, Klein discloses that “[w]hen the potential customer 32 follows the recommendation 36 he will be Appeal 2020-005036 Application 14/484,047 8 automatically forwarded to a web page or a shop of the merchant 12.” Klein ¶ 59. Thus, we agree with Appellant that “being forwarded to a web page or shop of a merchant is antithetical to completing transactions without leaving a media container” (Appeal Br. 9), and as such, we agree with Appellant that Klein fails to disclose the argued limitation. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(a)(2) as anticipated by Klein. For the same reasons, we also do not sustain the Examiner’s rejection of dependent claims 2–5 and 7, which ultimately depend from independent claim 1. Independent claims 8 and 15, and dependent claims 9–12, 14, and 16–20 Independent claims 8 and 15 include limitations substantially similar to independent claim 1’s limitation [h] discussed above, and the Examiner relies on the same rationale in rejecting independent claims 8 and 15. See Final Act. 5. Therefore, we do not sustain the Examiner’s rejection of independent claims 8 and 15, and dependent claims 9–12, 14, and 16–20, which depend therefrom, respectively, for the same reasons set forth above with respect to independent claim 1. Obviousness Dependent claims 6, 13, and 21–25 Claims 6, 13, and 21–25 depend, directly or indirectly, from independent claims 1, 8, and 15, and thus, incorporate limitation [h] recited in independent claim 1. The Examiner’s rejections with respect to Liu, in combination with Klein, as applied to claims 6 and 13, and Mallinson, in combination with Klein, as applied to claims 21–25, do not cure the above- discussed shortcomings of Klein identified by Appellant. Thus, we do not Appeal 2020-005036 Application 14/484,047 9 sustain the Examiner’s rejections of dependent claims 6, 13, and 21–25 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to independent claim 1. Non-statutory Obvious-type Double Patenting The Examiner rejected claims 1–25 on the ground of non-statutory obviousness-type double patenting over claims 1–21 of U.S. Patent No. 9,875,489. Final Act. 4. The Examiner also rejected claims 1–25 on the ground of non-statutory obviousness-type double patenting over claims 1–21 of U.S. Patent No. 9,953,347. Id. Appellant does not challenge the Examiner’s double patenting rejections. See generally Appeal Br.; Reply Br. Therefore, the double patenting rejection is summarily sustained. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23 112(b) Indefiniteness 23 1–5, 7–12, 14–20 102(a)(2) Klein 1–5, 7–12, 14–20 6, 13 103(a) Klein, Liu 6, 13 21–25 103(a) Klein, Mallinson 21–25 1–25 Obviousness-Type Double Patenting (US 9,875,489 B2) 1–25 1–25 Obviousness-Type Double Patenting (US 9,953,347 B2) 1–25 Overall Outcome 1–25 Appeal 2020-005036 Application 14/484,047 10 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). AFFIRMED Copy with citationCopy as parenthetical citation