Ex Parte CoxDownload PDFPatent Trial and Appeal BoardMay 31, 201612270957 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/270,957 11/14/2008 58342 7590 06/03/2016 WARREN A. SKLAR (SOER) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE 19THFLOOR CLEVELAND, OH 44115 FIRST NAMED INVENTOR MaryM. Cox 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PU08 0473US1 3152 EXAMINER STERNBANE,LAURENCEJ ART UNIT PAPER NUMBER 2699 NOTIFICATION DATE DELIVERY MODE 06/03/2016 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): ipdocket@rennerotto.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARY M. COX Appeal2014-007556 Application 12/270,957 Technology Center 2600 Before JEAN R. HOMERE, CAROLYN D. THOMAS, and SHARON PENICK, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1, 2, 5-10, 13-19, and 21. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The present invention relates generally to a communication circuit configured to automatically include multimedia data into a user-composed message, with the multimedia data corresponding to an entity subsidizing an electronic device including the communication circuit. See Abstract. Appeal2014-007556 Application 12/270,957 Claim 9 is illustrative: 9. A branded electronic device for promoting an interest of an entity, comprising: a communication circuit configured to establish a communication over a wireless network; and a messaging circuit operative to create messages for transmission to other devices via said communication circuit, said messaging circuit configured to obtain multimedia data corresponding to the entity or the interest of the entity, form electronic stationery based on the multimedia data, and automatically combine a user- composed message and the electronic stationery prior to transmission of the user composed message from the electronic device. Appellant appeals the following rejections: RI. Claims 9, 10, 13, 15, 16, 18, and 19 are rejected under 35 U.S.C. § 102(b) as being anticipated by Lahtiranta (US 2008/0057915 Al, Mar. 6, 2008) (Final Act. 4); R2. Claims 1, 2, 6, and 8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lahtiranta and Nave (US 7,324,810 B2, Jan. 29, 2008) (Final Act. 7); and R3. Claim 5, 7, 14, 17, and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Lahtiranta in combination with various other prior art (see Final Act. 9-17). ANALYSIS Rejection under§ 102(e) Claims 9, 10, 13, 15, 16, and 19 Issue 1: Did the Examiner err in finding that Lahtiranta discloses combining a user-composed message and the electronic stationery, as set forth in claim 9? 2 Appeal2014-007556 Application 12/270,957 Appellant contends in Lahtiranta "no reference is found with respect to a step of forming electronic stationery or combining the user-composed message with such electronic stationery as claimed .... paragraph [0034] pertains to a sponsor-financed telephone call .... telephone calls involve voice communication" (App. Br. 5). Appellant emphasizes that "regardless of the form of the 'initial' communication, the process described in paragraph [0034] [ofLahtiranta] is still related to a sponsor-financed call" (id. at 8) and "nor is it reasonable to conclude electronic stationery would be utilized in a telephone call" (id.). Appellant further contends that Lahtiranta "is concerned with inserting an advertisement, and provides no teaching of combining a user composed message with electronic stationery as claimed" (App. Br. 9). The Examiner finds that "Lahtiranta teaches initiating a call, messagel] or other communication ... Lahtiranta further teaches 'whenever a new e-mail, SMS or other communication is received, the notification of the connection may include the sponsor advertisement message.' This indicates embedding advertising in other than a voice call" (Ans. 3, citing Lahtiranta i-fi-134, 36, 38). We agree with the Examiner. For example, as noted by the Examiner, Lahtiranta discloses initiating a call, message, or other communication ... an ad may be inserted before, during or after a communication connection. The communication is then placed and a connection established" (see i134). Thus, contrary to Appellant's contention, Lahtiranta's paragraph [0034] is not limited to voice communications, but rather illustrates all forms of communications (id.). Lahtiranta further discloses that the ad content may be inserted in the 3 Appeal2014-007556 Application 12/270,957 communication transaction by a displayed logo or other indication (id.) and that "[t]he advertisement may be multi-media such as video, images, text, logos, or even audio ads associated with receiving a textual message" (id. at i-f 40). In other words, Lahtiranta broadly relates to any type of communication between parties and to inserting multimedia data, e.g., logos, pertaining to an entity into such communication between the parties. Although Appellant's Specification states that "[t]he data may take the form of electronic stationery (e.g., the user's message is reproduced on top of a background image so as to give the appearance of stationery" (7: 13- 15), we conclude that the claimed electronic stationery is not limited to a background image, as this is merely noted as exemplary in the Appellant's Specification (id.). We conclude that the broadest reasonable interpretation of the claimed "electronic stationery" includes any electronic representation corresponding to the entity. As such, we find that the claimed "electronic stationery" reads on Lahtiranta's logos. Accordingly, we sustain the Examiner's rejection of claim 9, and Appellant does not argue separate patentability for dependent claims 10, 13, 15, 16, and 19 (see App. Br. 3-9). We, therefore, also sustain the Examiner's rejection of claims 10, 13, 15, 16, and 19. Claim 18 Issue 2: Did the Examiner err in finding that Lahtiranta discloses updating the multimedia data based on predetermined events, as set forth in claim 18? Appellant contends that "the rejection of claim 18 is premised on the 'display' of ads being triggered by events such as calendar notification, 4 Appeal2014-007556 Application 12/270,957 alarm, etc. The display of an ad, however, is unrelated to updating multimedia data corresponding to the entity or interest of the entity" (App. Br. 10). In response, the Examiner finds that paragraphs [0037] and [0040] of Lahtiranta discloses the aforementioned limitation (see Ans. 4). We disagree with the Examiner. For example, in paragraph [0037], Lahtiranta merely discloses that "the ads may be displayed to the user when the user makes an outgoing call[, and] [ t ]he display of an ad to the user could also be triggered by other events." We find that the aforementioned disclosure fails to illustrate any update to the multimedia data based on events, but rather merely displaying the multimedia data based on events. Additionally, in paragraph [0040], Lahtiranta merely discloses the different forms of multimedia data without referencing any update of the same. In view of the above discussion, we are of the opinion that the cited portion of Lahtiranta does not support the anticipation rejection. We, accordingly, do not sustain the rejection of claim 18. Rejection under§ 103(a) Claims 1, 2, 5--8, 14, and 17 Because Appellant has not presented separate patentability arguments or have reiterated substantially the same arguments as those previously discussed for patentability of claim 9 above (see App. Br. 10-13) for claims 1, 2, 5-8, 14, and 17, we affirm the rejection of claims 1, 2, 5-8, 14, and 17 for the same reasons noted supra regarding claim 9. 5 Appeal2014-007556 Application 12/270,957 Claim 2j Issue 3: Did the Examiner err in combining Lahtiranta and Dobronsky? Appellant contends that "[t]here is no reasonable basis to apply the teachings of Dobransky to the advertisement system of Lahtiranta . ... the advertisements of Lahtiranta are not under user control, ... there is no reason to apply the 'template locking' scheme of Dobransky to the system of Lahtiranta" (App. Br. 15). Appellant further contend that "Lahtiranta is unrelated to the system of Dobransky . ... There is no nexus between the two methodologies" (App. Br. 15-16). In response, the Examiner notes that "[a]lthough the systems do appear unrelated, Dobronsky was cited solely for its exemplary teaching of using protected templates ... it would have been obvious to one of ordinary skill ... [to] use the protected template teaching of Dobronsky to modify the system of Lahtiranta, in order to better protect said sponsoring entity interest" (Ans. 4--5). The Examiner further finds that "the teaching of protected templates is reasonably pertinent to the particular problem with which the Applicant (now Appellant) was concerned" (id. at 5). We agree with the Examiner. Although the Examiner notes that the teaching of protected templates is reasonably pertinent to the particular problem with which Appellant was concerned, for a prima facie case of obviousness to be established, however, the reference need not recognize the problem solved by the Appellant. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); Exparte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985). Furthermore, there is no requirement that the problem 6 Appeal2014-007556 Application 12/270,957 solved by the secondary reference be discussed by the primary reference to apply the teachings of the secondary reference in a rejection under 35 U.S.C. § 103. The Supreme Court has held that in analyzing the obviousness of combining elements, a court need not find specific teachings, but rather may consider "the background knowledge possessed by a person having ordinary skill in the art" and "the inferences and creative steps that a person of ordinary skill in the art would employ." See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). In order to be nonobvious, an improvement must be "more than the predictable use of prior art elements according to their established functions," and the basis for an obviousness rejection must include an "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." Id. Here, the Examiner has found actual teachings in the prior art and has provided a rationale for the combination, i.e., in order to better protect said sponsoring entity interest. Further, the teachings suggest that the combination involves the predictable use of prior art elements according to their established functions. Thus, we find unavailing Appellant's contention that there is no reasonable basis to apply the teachings of Dobronsky to the advertisement system of Lahtiranta. Accordingly, we find that the Examiner has provided sufficient motivation for modifying Lahtiranta with the teachings of Dobronsky, and we will sustain the obviousness rejection of claim 21. DECISION We reverse the Examiner's§ 103(a) rejection of claim 18. We affirm the Examiner's§ 103(a) rejections of claims 1, 2, 5-10, 7 Appeal2014-007556 Application 12/270,957 13-17, 19, and 21. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART Aj 8 Copy with citationCopy as parenthetical citation