12515030 (P.T.A.B. Dec. 22, 2014)

Ex Parte Bramley et al

Patent Trial and Appeal BoardDec 22, 2014

12515030 (P.T.A.B. Dec. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LEI BRAMLEY, RUSSELL BULMER, ANDREW TILLER, and NEIL PEPPER ____________ Appeal 2012-005695 Application 12/515,030 Technology Center 2400 ____________ Before STANLEY M. WEINBERG, JOHN A. EVANS, and MINN CHUNG, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of Claims 1–17, 22, 24, and 252 as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). 1 The Appeal Brief identifies Critical Path Data Centre Limited as the Real Party in Interest. App. Br. 2. 2 App. Br. 6. Appeal 2012-005695 Application 12/515,030 2 We REVERSE.3 STATEMENT OF THE CASE The claims relate to methods for transferring advertising content to a mobile telephone. See Abstract. Claims 1, 22, 24, and 25 are independent. An understanding of the invention can be derived from a reading of exemplary Claim 1, which is reproduced below with paragraphing added: 1. A method of selecting which advertising content, obtained from a remote server and stored on a mobile telephone, should be automatically displayed on the mobile telephone; the method comprising the step of a client application on the mobile telephone automatically providing appropriate advertising content for one or more end-user applications to display, so that a specific end-user application automatically displays advertising content that is appropriate for that specific end-user application. 3 Our Decision refers to Appellants’ Appeal Brief filed November 9, 2011 (“App. Br.”); Reply Brief filed February 16, 2012 (“Reply Br.”); and the Examiner’s Answer mailed December 16, 2011 (“Ans.”). Appeal 2012-005695 Application 12/515,030 3 References and Rejections The Examiner relies upon the prior art as follows: Hendrickson US 2002/0069037 A1 June 6, 2002 Vishwanathan US 2007/018661 A1 May 24, 2007 The claims stand rejected as follows:4 1. Claims 1–9, 12, 14, 15, 17, 22, 24, and 25 stand rejected under 35 U.S.C. § 102(e) as anticipated by Vishwanathan. Ans. 4–7. 2. Claims 10, 11, 13, and 16 stand rejected under 35 U.S.C. § 103(a) as obvious over Vishwanathan and Hendrickson. Ans. 7–8. ANALYSIS ANTICIPATION Independent Claim 1 We agree with Appellants’ contention that Vishwanathan fails to disclose that “a client application on the mobile telephone automatically provid[es] appropriate advertising content for one or more end-user applications to display,” as recited in Claim 1. App. Br. 7–8. 4 Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claims as set forth below. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2012-005695 Application 12/515,030 4 The Examiner finds that concurrency application server (CAS) 200 is a “client application” that resides in a mobile device together with various “end user application[s],” i.e., various mobile applications 210(N) (“concurrent applications, CAS App”). Ans. 8. Context trigger function 250 of CAS 200 determines what type of concurrent application (CAS App) should be invoked for a mobile device based on the context. Smart content agents activate concurrent applications to retrieve content relevant to the context. CAS 200 automatically provides information like listing of goods or services based on context information. CAS also inserts targeted multimedia content for presentation to a mobile device user in the context of the existing session. The targeted multimedia content includes personalized or tailored targeted advertisements. The Examiner finds that the relevant or targeted content to be equivalent to the claimed advertising which, as claimed, is “automatically” provided to the CAS App based on the context. Therefore, Vishwanathan’s teaching of retrieving relevant or targeted content based on the context and presenting to the mobile device user meets the claim limitations. Ans. 8–9 (citing Vishwanathan, ¶¶ 21, 22, 28, 33, and 39). Appellants contend that Claim 1 explicitly recites that the content is provided to the end-user application by “a client application on the mobile telephone.” App. Br. 7. However, in contrast to the claims, Figures 1 and 2 of Vishwanathan disclose that remote server CAS 200 and the mobile applications 210(1)–210(n) are separate from and do not reside on the Appeal 2012-005695 Application 12/515,030 5 mobile devices. Reply Br. 3–4. Thus, Appellants contend, Vishwanathan does not disclose “a client application on the mobile telephone automatically providing appropriate advertising content for one or more end-user applications to display, so that a specific end-user application automatically displays advertising content that is appropriate for the specific end-user application,” as is claimed. App. Br. 8; Reply Br. 4. On the record, we are constrained to agree with Appellants. The Examiner finds that the concurrency application server CAS 200 (“client application”) and “end user application[s]” 210 (1) to 210 (N) reside on the mobile device. Ans. 8. However, this reading is not supported by the disclosure of Vishwanathan, Figures 1 and 2. Figure 1 shows that CAS 200 is an application server that is part of the network “cloud” and not a part of the mobile device. Figure 2 shows that the CAS server is communicatively- linked to, but distinct from, the mobile device. In addition, paragraph 21 clarifies that only the concurrency application plug-in and the library 300 are installed on the mobile device. See ¶ 21, ll. 7-14. Although paragraph 21 seems, at first glance, to disclose that CAS 200 resides on the mobile device, a careful reading of the paragraph reveals that such is not the case. Because our reading of the Vishwanathan disclosure does not support the Examiner’s finding, we decline to sustain the rejection of Claim 1. Independent Claim 22 Appellants contend that independent Claim 22 recites “the client application managing the download and storage of advertising content from Appeal 2012-005695 Application 12/515,030 6 a remote server and the presentation of any advertising content.” Appellants argue that Vishwanathan’s “voice calling application” merely retrieves and presents links to advertising content, but does not, itself, retrieve the content. App. Br. 10. The Examiner finds that Vishwanathan discloses that CAS 200, the “client application,” retrieves advertising content from various content servers. Ans. 9. We disagree. Independent Claim 22 recites “a client application installed on the mobile telephone.” However, as discussed above, Vishwanathan discloses that CAS 200 is not a “client application installed on the mobile telephone,” but is part of the network cloud apart from the mobile device. Therefore, we decline to sustain the rejection of Independent Claim 22. Independent Claim 24 Appellants contend that independent Claim 24 recites “a client application on the mobile telephone . . .” and traverses Vishwanathan substantially as argued above in connection with independent Claim 1. App. Br. 11. The Examiner finds that CAS 200 is the “client application” and states a prima facie case substantially as for independent Claim 1. Ans. 10. As discussed above, Vishwanathan discloses that CAS 200 is not “a client application on the mobile telephone,” as claimed, but is part of the network cloud apart from the mobile device. Therefore, we decline to sustain the rejection of independent Claim 24. Appeal 2012-005695 Application 12/515,030 7 Independent Claim 25 Independent Claim 25 recites “[a]n end-user application running on a mobile telephone, the end-user application (i) interfacing with a client application resident on the mobile telephone.” As discussed above, Vishwanathan discloses that CAS 200 is not “a client application on the mobile telephone,” as claimed, but is part of the network cloud apart from the mobile device. Therefore, we decline to sustain the rejection of Independent Claim 25. Dependent Claims 2–9, 12, 14, 15, 17 Appellants contend that in view of their dependency, Claims 2 and 5– 17 are not anticipated by Vishwanathan. App. Br. 12. We find that Appellants have mis-identified the relevant claims because the Examiner has rejected dependent Claims 2–9, 12, 14, 15, and 17 under § 102. In view of the foregoing discussion, we also decline to sustain the rejection of dependent Claims 2–9, 12, 14, 15, and 17. OBVIOUSNESS Claims 10, 11, 13, and 16 Appellants contend that Hendrickson fails to supply the teachings missing from Vishwanathan. App. Br. 13. The Examiner does not respond to Appellants’ traversal. The Examiner does not cite Hendrickson as supplying a teaching relevant to the deficiencies of Vishwanathan as alleged by Appellants. Ans. 7. Appeal 2012-005695 Application 12/515,030 8 Therefore, we decline to sustain the rejection of Claims 10, 11, 13, and 16. DECISION5 The rejection of Claims 1–9, 12, 14, 15, 17, 22, 24, and 25 under 35 U.S.C. § 102 is REVERSED. The rejection of Claims 10, 11, 13, and 16 under 35 U.S.C. § 103 is REVERSED. REVERSED lp 5 We suggest that the Examiner review the claims for compliance with the requirements of 35 U.S.C. § 101 in view of the Supreme Court’s recent Opinion in Alice v. CLS Bank, which was promulgated after the close of prosecution in the present application.