Ex Parte Freiberger et al

Patent Trial and Appeal Board

Apr 1, 2014

95001577 (P.T.A.B. Apr. 1, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,577 03/16/2011 Paul A. FREIBERGER 2230.0001L 1540
27896 7590 04/01/2014
EDELL, SHAPIRO & FINNAN, LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/01/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

APPLE, INC.
Requester and Appellant

v.

INTERVAL LICENSING LLC
Patent Owner and Respondent
________________

Appeal 2013-005424
Reexamination Control 95/001577
Patent 6,788,314 B1
1

Technology Center 3900
________________

Before HOWARD B. BLANKENSHIP, THU A. DANG, and
STANLEY M. WEINBERG, Administrative Patent Judges.

WEINBERG, Administrative Patent Judge.

DECISION ON APPEAL

1
The patent involved in this reexamination appeal proceeding (the “’314
Patent”) issued to Paul Freiberger et al. on September 7, 2004 and is owned
by Interval Licensing LLC (“Owner”).
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A. STATEMENT OF THE CASE
Introduction
This reexamination proceeding arose from a third-party request for
inter partes reexamination filed on March 16, 2011 by Apple, Inc.
(“Requester”). Requester appeals under 35 U.S.C. §§ 134(c) and 315(b)
from the Examiner’s refusal to adopt its proposed rejections of claims 1-4
and 7-31.
2
App. Br. 2. Claims 5 and 6 were canceled following the May 19,
2011 Non-Final Office Action (“NFOA”). App. Br. 3; Resp. Br. 1; October
14, 2011 Action Closing Prosecution (“ACP”) 2.
An oral hearing was conducted on August 28, 2013. A transcript
(“Tr.”) was made of record on December 20, 2013.
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We reverse and enter new grounds of rejection.
Related Proceedings
The parties have informed us that the ‘314 Patent is the subject of the
following judicial proceedings in the U.S. District Court for the Western
District of Washington, all of which had been stayed as of the filing dates of
the briefs before the Board:
Interval Licensing LLC v. AOL, 2:10-cv-01385.
Interval Licensing LLC v. Apple, Inc., 2:11-cv-00708 MJP.
Interval Licensing LLC v. Google, Inc., 2:11-cv-00711 MJP.
Interval Licensing LLC v. Yahoo! Inc., 2:11-cv-00716 MJP.

2
Requester relies on its Corrected Brief filed on April 3, 2012 (“App. Br.”)
and its Rebuttal Brief filed on June 18, 2012 (“Reb. Br.”). Owner relies on
its Respondent Brief filed on May 3, 2012 (“Resp. Br.”).
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Requester has further informed us that the District Court has held
invalid the “unobtrusive manner limitation” as indefinite for being insolubly
ambiguous and that the issue is currently on appeal to the U.S. Court of
Appeals for the Federal Circuit. Tr. 4:14-16. We are not aware that the
Federal Circuit has issued a decision.
The parties have also informed us that there are no other related
appeals, interferences, or judicial proceedings that are related to, directly
affect, or may be directly affected by, or have a bearing on this appeal. App.
Br. 2; Resp. Br. 1.
The Invention
The invention relates to the engagement of the peripheral attention of
a person in the vicinity of a display device such as the display monitor of a
computer. Spec. col. 1, ll. 16-18. More specifically, the invention has an
attention manager that makes use of unused capacity of the display device
and the person’s attention, providing information to the person that the
person might not otherwise expend adequate energy to obtain. The attention
manager also affords an opportunity to content providers to disseminate their
information to people that are interested in receiving such information,
enabling the content providers to provide better directed information
dissemination, as well as providing access to the previously unused attention
capacity of those interested users. Abstract.
Computers frequently include screen saving mechanisms (“screen
savers”) intended to prevent the phosphors of a computer display screen
from burning out when the same image remains on the screen for a long
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period of time, such as might occur during a long period of inactivity while
the computer is operating. Spec. col. 1, ll. 48-54. Further, the use of
“wallpaper” (i.e., a pattern generated in the background portion on a
computer display screen) in computer display screens has also arisen. Spec.
col. 1, ll. 59-62. Screen savers and wallpaper have not heretofore been used
as a means to convey information from information providers to computers.
Spec. col. 1, l. 66-col. 2, l. 1.
Here, the attention manager makes use of “unused capacity” of the
display device. For example, the information can be presented to the person
while the apparatus (e.g., computer) is operating, but during inactive periods
(i.e., when a user is not engaged in an intensive interaction with the
apparatus), Or, the information can be presented to the person during active
periods (i.e., when a user is engaged in an intensive interaction with the
apparatus), but in an unobtrusive manner that does not distract the user from
the primary interaction with the apparatus (e.g., the information is presented
in areas of a display screen that are not used by displayed information
associated with the primary interaction with the apparatus). Spec. col. 2, ll.
16-28.
According to one aspect of the invention, an attention manager
engages the peripheral attention of a person in the vicinity of a display
device of an apparatus by displaying on the display device, in an unobtrusive
manner that does not distract a user of the apparatus from a primary
interaction with the apparatus, images generated from a set of content data.
According to a further aspect of the invention, the selective display of the
image or images begins automatically after detection of an idle period of
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predetermined duration (the “screen saver embodiment”). According to
another further aspect of the invention, the selective display of images
occurs while the user is engaged in a primary interaction with the apparatus,
which primary interaction can result in the display of images in addition to
the images generated from the set of content data (the “wallpaper
embodiment”). Spec. col. 2, ll. 20-40.
In summary, the Specification describes a wallpaper embodiment in
which information is displayed to a user while the user is actively engaged in
a primary interaction with the display device; and a screensaver embodiment
in which information is displayed while the display device is idle. Resp. Br.
5.
Claim 1 is illustrative of the appealed subject matter and is reproduced
below (App. Br. 39-47, Claims App’x):
1. A method for engaging the peripheral attention of a
person in the vicinity of a display device, comprising the steps
of:
providing one or more sets of content data to a content
display system associated with the display device and located
entirely in the same physical location as the display device;
providing to the content display system a set of
instructions for enabling the content display system to
selectively display, in an unobtrusive manner that does not
distract a user of the display device or an apparatus associated
with the display device from a primary interaction with the
display device or apparatus, an image or images generated from
a set of content data; and
auditing the display of sets of content data by the content
display system;
wherein the one or more sets of content data are selected
from a plurality of sets of content data, each set being provided
by an associated content provider,
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wherein each associated content provider is located in a
different physical location than at least one other content
provider and each content provider provides its content data to
the content display system independently of each other content
provider and without the content data being aggregated at a
common physical location remote from the content display
system prior to being provided to the content display system,
and
wherein for each set the respective content provider may
provide scheduling instructions tailored to the set of content
data to control at least one of the duration, sequencing, and
timing of the display of said image or images generated from
the set of content data.

The Prior Art
Kjorsvik US 5,748,190 May 5, 1998
Rakavy US 5,913,040 June 15, 1999
Salm, Buying a Real Computer Monitor, Popular Mechanics, Oct. 1984
(“Salm”).

The Examiner-Initiated Rejections And The Non-Adopted Proposed
Rejections

Requester contends that the Examiner incorrectly withdrew the
rejections that the Examiner initiated in the May 19, 2011 Non-Final Office
Action (“NFOA”) and incorrectly declined to adopt its proposed rejections
under §§ 102 and 103
3
:
Reference(s) Claims Challenged Basis
Kjorsvik 1, 3, 7, 9, 10, 12, 13, 15 103
4
Examiner-Initiated

3
Requester App. Br. 8.
4
Requester states, and we agree, that it is entitled to appeal the Examiner’s
withdrawal of the Examiner-Initiated rejections. See October 14, 2011
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Kjorsvik and Salm 2, 4, 8, 11, 14 103 Examiner-Initiated
or Requester-Proposed
Kjorsvik and Owner’s
Admitted Prior Art
16-31 103
Kjorsvik 1, 3, 7, 9, 10, 12, 13, 15 102
Rakavy 1, 3, 7, 9, 10, 12, 13,
15-31
102
Rakavy and Salm 2, 4, 8, 11, 14 103
Rakavy and Kjorsvik 1, 3, 7, 9, 10, 12, 13,
15-31
103

The Declaration
Requester submitted the Declaration of Mark E. Crovella, Ph.D. along
with its August 25, 2011 Comments (“Comments”) following Owner’s July
26, 2011 Response to the NFOA.
B. ANALYSIS
The Examiner-Initiated And The Proposed Rejection Of Claims 1-4 And 7-
15 Based On Kjorsvik

The Examiner-Initiated Rejections Of Claims 1, 3, 5
5
, 7, 9, 10, 12, 13,
And 15 As Obvious Over Kjorsvik
In the NFOA, the Examiner initiated rejections of claims 1, 3, 5, 7, 9,
10, 12, 13, and 15 as obvious over Kjorsvik and later withdrew them in the
ACP. See NFOA 3-33; ACP 6-13. When withdrawing the Examiner-
Initiated obviousness rejections, the Examiner concluded that the broadest

Action Closing Prosecution (“ACP”) 13; App. Br. 9. See 37 C.F.R. §
41.61(a)(2) (“the requester may appeal to the Board with respect to any final
decision favorable to the patentability . . . . of any original, proposed
amended, or new claim of the patent.”)
5
As indicated above, claim 5 was later canceled following the NFOA.
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reasonable interpretation of claim 1 excludes the screensaver embodiment
(ACP 6-11), that the Examiner-Initiated rejections “rely on the screensavers
of Kjorsvik to disclose the claimed ‘content data,’” and that Kjorsvik is
“limited to a screensaver.” ACP 13. The Examiner therefore withdrew the
Examiner-Initiated rejections based on the conclusion that Kjorsvik’s
screensaver content data is outside the scope of the claims. Id.
in an unobtrusive manner that does not distract the user
of the display device . . . from a primary interaction
Claim 1 recites “enabling the content display system to selectively
display, in an unobtrusive manner that does not distract a user of the display
device . . . from a primary interaction with the display device.” The
Examiner concludes that the totality of the evidence in the Specification,
claims, and prosecution history supports the argument that “in an
unobtrusive manner” excludes the screensaver embodiment and that the
screensaver embodiment is therefore outside the scope of the claims. ACP
11.
Requester contends that the Specification does not define
“unobtrusive.” App. Br. 11. Neither the Examiner nor the Owner find or
contend otherwise. We therefore agree with Requester.
Instead, Owner contends, and the Examiner concludes, that the
broadest reasonable interpretation of the claims excludes the screensaver
embodiment because reading “in an unobtrusive manner” in context of the
claims and in light of the Specification shows that it is “associated with the
‘unobtrusive’ (wallpaper) embodiment and is not associated with the
‘screensaver embodiment.’” ACP 6. See Resp. Br. 5, 11. In contrast,
Requester contends that the Specification describes “in an unobtrusive
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manner” as including both screensaver and wallpaper embodiments (App.
Br. 10) and that, for a number of reasons, the broadest reasonable
interpretation of the “unobtrusive” limitation consistent with the
Specification includes both screensaver and wallpaper embodiments. App.
Br. 15; Reb. Br. 6.
In reexamination, claims are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. Of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Citing various parts of the
Specification (sometimes the same parts of the Specification), the parties and
the Examiner contend that the Specification does, or does not, support their
respective positions as to whether the “unobtrusive” limitation does, or does
not, include the screensaver embodiment.
For example, citing Spec. col. 6, ll. 43-54, Requester contends that
“[t]he screensaver is described as being unobtrusive because it activates only
when ‘the user is not engaged in an intensive interaction with the apparatus,’
and the wallpaper is described as being unobtrusive because it displays only
in unused areas of the screen.” App. Br. 12. Owner, on the other hand, also
citing Spec. col. 6, ll. 43-54, contends that the Specification supports its
interpretation “because each time the term ‘in an unobtrusive manner…’ is
used, it describes the unobtrusive (wallpaper) embodiment in which the
information is displayed while the user is engaged in a primary
interaction with the display device or apparatus.” Resp. Br. 6.
Owner’s contention is not persuasive.
Even assuming that each time the “unobtrusive” term is used, the
Specification describes the wallpaper embodiment, that fact does not
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establish that the “unobtrusive” limitation has been defined, expressly or
inherently, as limited to the wallpaper embodiment and as not including the
screensaver embodiment. Although an inventor is free to define the specific
terms used to describe the invention, “this must be done with reasonable
clarity, deliberateness, and precision.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994).
To act as its own lexicographer, a patentee must “clearly set
forth a definition of the disputed claim term” other than its plain
and ordinary meaning. It is not enough for a patentee to simply
disclose a single embodiment or use a word in the same manner
in all embodiments, the patentee must “clearly express an
intent” to redefine the term.

Thorner v. Sony Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
2012) (citations omitted).
Moreover, at the hearing, Owner undercut its argument that the
Specification refers to “unobtrusive” only in conjunction with the wallpaper
embodiment. Specification column 3, lines 20-40 states:
According to one aspect of the invention, an attention
manager engages the peripheral attention of a person in the
vicinity of a display device of an apparatus by acquiring one
or more sets of content data from a content providing system
and selectively displaying on the display device, in an
unobtrusive manner that does not distract a user of the
apparatus from a primary interaction with the apparatus, an
image or images generated from the set of content data.
According to a further aspect of the invention, the selective
display of the image or images begins automatically after
detection of an idle period of predetermined duration (the
"screen saver embodiment"). This aspect can be
implemented, for example, using the screen saver API
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(application program interface) that is part of many operating
systems. According to another further aspect of the
invention, the selective display of an image or images occurs
while the user is engaged in a primary interaction with the
apparatus, which primary interaction can result in the display
of an image or images in addition to the image or
images generated from the set of content data (the "wallpaper
embodiment"). (emphasis added).
Referring to Specification col. 3, ll. 20-40, Owner stated: “I would say in
this summary location within the specification they were a little bit less
precise, a little bit sloppy here” and “that it might seem less precise or even
possibly contradictory.” Tr. 34:14-15, 20-21. “My point is simply that at
best it’s ambiguous.” Tr. 36:15.
Accordingly, we conclude that this part of the Specification suggests
that the term “unobtrusive” applies to both the screensaver and wallpaper
embodiments.
Requester also points to originally filed, but later canceled, claims 19
and 20 which recited “a system for engaging the peripheral attention of a
person” comprising “means for selectively displaying on the display device,
in an unobtrusive manner” (claim 19) and “means for detecting an idle
period of predetermined duration” (claim 20, dependent from claim 19).
App. Br. 14. Requester contends that “originally filed claims 19 and 20
provide further evidence that the ‘unobtrusive’ limitation encompasses both
screensaver and wallpaper embodiments.” Reb. Br. 9. The Examiner gave
“little weight” to originally filed claims 19 and 20 because they “are non-
existent.” ACP 10.
Requester argues, and we agree, that originally filed claims are part of
the original disclosure. Reb. Br. 9, citing MPEP § 2163.05. See also 35
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U.S.C. § 112, second paragraph (“the specification shall conclude with one
or more claims”); In re Benno, 768 F.2d 1340, 1346 (Fed. Cir. 1985)
(“claims [are] technically part of the ‘specification,’ 35 USC 112, 2d par.”).
Owner points out that claims 19 and 20 did not recite “content display
systems.” Nevertheless, originally filed claims 19 and 20, while not
dispositive standing alone, add to the evidence that the Specification does
not exclude the screensaver embodiment from the claimed “unobtrusive”
limitation.
Requester further contends that issued (but apparently not originally
filed) claims 5 and 6, canceled during reexamination, also support its
contention regarding the screensaver embodiment. App. Br. 13-14.
Requester also contends that the prosecution history of the ‘314 Patent’s
parent application (08/620,641) further supports its proposed claim
interpretation in this reexamination. App. Br. 14-15. We do not rely on
these arguments because our reviewing court instructs that prosecution
history is not applicable during proceedings before the USPTO when claims
can be amended. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
(“meaning of claims of issued patent [is] interpreted in light of specification,
prosecution history, prior art, and other claims[]. This is not the mode of
claim interpretation that is applicable during prosecution of a pending
application before the PTO.”) (citation omitted).
6

6
We do not believe that the Court’s recent decision in Tempo Lighting, Inc.
v. Tivoli, LLC, No. 2013-1140 (Fed. Cir. Feb. 10, 2014) has modified the
Court’s holding in Zletz. In Tempo Lighting, the Court affirmed the Board’s
reference to a definition of a claim term in the patent’s prosecution history.
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We are also not persuaded by the Owner’s explanations regarding
how the screensaver operates. Owner contends that
the claim language requires display in a manner that would not
distract a user from some activity (the primary interaction) that
may be occurring while the claimed images are displayed.
This requirement is plainly incompatible with a screensaver,
which by its very nature takes over an entire display screen and
effectively prevents interaction with the device until the
screensaver is terminated. Thus, the claim language itself
indicates that screensavers are not encompassed by this
limitation.

Resp. Br. 6.
We agree with Requester that “PO’s argument is inconsistent with the
specification, which explains that the screensaver is not distracting because
it displays information using the temporally ‘unused capacity’ of the
system.” Reb. Br. 6, citing Spec. col. 6, ll. 43-60.
The Owner’s explanation regarding how the screensaver embodiment
purportedly operates does not clarify the admittedly ambiguous nature of the
Specification and does not provide a clear definition of the “unobtrusive”
claim term.
Absent a clear indication in the disclosure that the claimed
“unobtrusive manner” is directed only to the wallpaper embodiment, absent
reference to or provision of evidence which indicates that one of ordinary
skill in the art would understand the term to be limited to the wallpaper

We conclude that neither canceled claims 5 and 6 nor the prosecution history
of the parent application provides a definition of the claim term at issue here.
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embodiment, and the fact that claims 19 and 20 in the original disclosure
included the screensaver embodiment, we conclude that the claim term
“unobtrusive manner” includes the screensaver embodiment.
The Examiner finds that “the Kjorsvik disclosure is limited to
screensavers.” ACP 13 (emphasis omitted). Owner agrees that Kjorsvik
discloses screensavers. Resp. Br. 11 (“all parties agree that Kjorsvik’s
system discloses only screensavers.”). The Examiner has withdrawn the
Examiner-Initiated rejections of claims 1, 3, 7, 9, 10, 12, 13, and 15 over
Kjorsvik solely based on the incorrect conclusion that the claims do not
include an unobtrusive screensaver embodiment. ACP 13.
Because we conclude that claim 1 includes an unobtrusive screensaver
and that Kjorsvik teaches the “unobtrusive” screensaver limitation, we
further conclude that the Examiner erred and we therefore reverse the
Examiner’s decision to withdraw the Examiner-Initiated rejection of claims
1, 3, 7, 9, 10, 12, 13, and 15 as obvious over Kjorsvik.
Requester’s Proposed Rejection Of Claims 1, 3, 7, 9, 10, 12, 13, And 15
As Anticipated By Kjorsvik
The Request provides an explanation of Kjorsvik, explains how it
contends that Kjorsvik discloses all the limitations of the above-listed
claims, and provides a claim chart showing how it contends Kjorsvik
anticipates claim 1. Request 25-41, 56-61.
The Examiner’s reasons for not adopting Requester’s proposed
rejections of the above-listed claims based on Kjorsvik are set forth on pages
6, 7, 34, and 35 of the NFOA. The ACP adopts the NFOA reasons for not
rejecting claims 1, 3, 5, 7, 9, 10, 12, 13, and 15. See ACP 4.

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without the content data being aggregated at a common
physical location remote from the content display system
prior to be being provided to the content display system
Fig. 1 of Kjorsvik illustrates a plurality of network personal
computers 12, 14, and 16 and a network server PC 18. Col. 2, ll. 30-35.
Each network PC includes a messenger module (Fig. 2; col. 2, ll. 43-45) that
creates a presentation that is displayed on the screens of the network PCs.
Fig. 2 also shows an administration module 26 which can be loaded into and
executed from any PC in the network. Kjorsvik col. 2, ll. 51-52. Therefore,
one of the Kjorsvik PCs may have both a messenger module and an
administration module. Requester equates the claimed “content display
system” to a network PC having both the administration module and a
messenger module and the screen associated with the network PC as the
claimed “display device.” Request 26-27.
The administration module can communicate with external sources,
including other network servers having presentation information, as well as
other outside sources of data and images. Col. 2, ll. 58-62. This enables the
one administration module for the system to obtain or provide presentations
directly from external sources, so as to eliminate the need for composing
them within the system.” Col. 4, ll. 19-21.
Requester contends that Kjorsvik’s external network servers and
external administration modules acting as content providers meet the
limitation “without the content data being aggregated at a common physical
location remote from the content display system prior to being provided to
the content display system” (the “aggregation” limitation). Request 31. The
Examiner does not, however, directly address Requester’s contention that
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Kjorsvik’s external sources are content providers that are remote at different
physical locations and do not themselves aggregate their respective content
data.
Instead, the Examiner incorrectly concludes that Kjorsvik does not
meet this limitation based on the finding that Kjorsvik discloses content data
(presentations) are aggregated at a common physical location (the system
database on the network server 18) prior to being provided to the content
display system (such as an individual network PC 12, 14, or 16). NFOA 6.
Requester contends that the “aggregation” limitation can be met by a
system that does not aggregate content data or by a system that aggregates
data locally after it is received by the content display system. App. Br. 21.
In Kjorsvik, even though the data may be aggregated at network server 18,
the data provided by the external sources are not aggregated before they
reach network server 18. Claim 1 does not require that the data must never
be aggregated within the system. Instead, claim 1 requires only that, at some
point that is remote from the content display system, the content data is not
aggregated. As Requester states, “[t]he negative ‘aggregation’ limitation
does not preclude all forms of aggregation of content data. . . . Thus, the
claims do not prevent aggregation (either local or remote) after the content
data is provided to the content display system.” Id. In addition, Requester
contends, “[a]ny storage of the content on the system database 24 in
Kjorsvik occurs after content is acquired by (provided to) the content
display system.” App. Br. 25. Owner agrees that “[n]othing in the claims
(or the specification) . . . forbids local aggregation of data at the content
display system.” Resp. Br. 10.
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We find that this limitation is met because the content data provided
by the external sources is not aggregated by, or at, the external sources and
that aggregation at the network server 18 does not preclude this limitation
from being met by the external sources.
the analyses of “content display system” by Requester that were not
considered by the Examiner

On August 25, 2011, Requester responded to the Examiner’s refusal
to reject claim 1 as anticipated by Kjorsvik by filing Comments
(“Comments”). The Examiner concluded that the Comments were not
persuasive because they did not comply with 37 C.F.R. § 1.947. ACP 14,
20. More specifically, the Examiner concluded that Requester’s initially
presented proposed rejections contended that Kjorsvik’s administration
module anticipated the claimed content display system in claims 1, 3, 10,
and 13 and that Kjorsvik’s messenger module anticipated the claimed
content display system in claim 7; but, according to the Examiner, the
Comments argued a materially different anticipation rejection because the
Comments contended that the content display system is anticipated by a
combination of the administration module, system database, and messenger
modules. ACP 14, 20.
Requester contends that the Examiner’s refusal to consider these
Comments was improper, the Comments should have been considered (App.
Br. 19-20), and that even if the Comments were improper, the Examiner did
not follow proper PTO procedure regarding them. App. Br. 20.
We do not consider this procedural argument by Requester because it
is a petitionable, and not an appealable, matter. We do not find Requester’s
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line of argument to raise any issue that can be decided on appeal. The
actions of the Examiner in such a matter are not within our purview. In re
Watkinson, 900 F.2d 230, 232-33 (Fed. Cir. 1990) (The Board has no
jurisdiction for matters within the discretion of the examiner and not
tantamount to a rejection of claims). Procedural matters, such as the
propriety of the Examiner not to consider Requester’s Comments, should
have been raised by way of timely petition. Because we have jurisdiction
over an appeal from the final decision favorable to patentability under 35
U.S.C. §§ 134(c) and 315(b), but not over such petitionable matters, the time
period for raising such matters having long elapsed, we decline to consider
Requester’s arguments. As such, we make no findings of fact or judgment
with respect these actions of the Examiner.
We therefore do not consider the part of the Appeal Brief that relies
upon the arguments found by the Examiner not to have complied with
§ 1.947 because the arguments rely upon a content display system
comprising a combination of the administration module, messenger module,
and system database. See App. Br. 22-26.
the respective content provider may provide scheduling instructions
tailored to the set of content data to control at least one of the
duration, sequencing, and timing of the display of said image or images
The Examiner finds in the NFOA that Kjorsvik does not disclose this
“scheduling” limitation. NFOA 7, 35. The Examiner concludes that the
Requester’s follow-up Comments regarding the “scheduling” limitation
“stem from the materially different proposed anticipation rejection discussed
above” and were therefore not persuasive. ACP 20. For the reasons we
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pointed out above, the Examiner’s refusal to consider the Comments is not
appealable.
Citing In re Johnston, 435 F.3d 1381, 1384 (Fed. Cir. 2006),
Requester contends that because the entire “scheduling” limitation is written
as a permissive limitation, no scheduling instruction needs to be provided by
any content provider for any set of content data. App. Br. 27. We agree
with Requester because Johnston held that optional elements do not narrow
the claim because they can always be omitted. Even assuming that the
“scheduling” limitation narrows the claims, Requester provides an
explanation as to how Kjorsvik anticipates it. App. Br. 27-28.
As Requester points out (Reb. Br. 12 n. 9), Owner’s Respondent Brief
does not dispute Requester’s arguments regarding the “scheduling”
limitation. “Any arguments or authorities not included in the brief permitted
under this section or §§ 41.68 and 41.71 will be refused consideration by the
Board, unless good cause is shown.” 37 C.F.R. § 41.67(c)(1)(vii).
Accordingly, we reverse the Examiner’s refusal to adopt Requester’s
proposed rejection of (1) claim 1; (2) claims 3, 7, 10 and 13 having similar
limitations; and (3) claims 9, 12, and 15 not argued separately with
particularity by Owner.
The Examiner-Initiated Rejection And/Or The Proposed Rejection Of Claims
2, 4, 6
7
, 8, 11, And 14 As Obvious Over Kjorsvik In View Of Salm

The Request proposed rejections of dependent claims 2, 4, 6, 8, 11,
and 14 as obvious over Kjorsvik and Salm. Request 94-97. In the NFOA,
the Examiner initially recognized that Requester had proposed rejections

7
As indicated above, claim 6 was canceled following the NFOA.
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using that combination of references (NFOA 2); but then referred to such
rejections as Examiner-Initiated rejections. NFOA 3, 4, 8, 13, 18, 23, 28,
33.
The Examiner refused to adopt the proposed rejections of these
dependent claims for the same reasons that the Examiner did not adopt the
proposed rejections of claims 1, 3, 5, 7, 9, 10, 12, 13, and 15 as anticipated
by Kjorsvik. NFOA 35 (“For at least these reasons, proposed rejections (1)-
(2)
8
are not adopted.” See also ACP 14-21 grouping proposed rejections of
claims 2, 4, 6, 8, 11, and 14 (Group (2) listed at ACP 3) with proposed
rejections of claims 1, 3, 5, 7, 9, 10, 12, 13, and 15 (Group 1 listed at ACP
3).
The ACP also refers to the obviousness Kjorsvik/Salm rejections of
these dependent claims as Examiner-Initiated. ACP 6, 13, the latter page
referring to “the Examiner-Initiated rejections of claims 1-4 and 7-15 over
Kjorsvik, alone or in combination with Salm.” (emphasis omitted). The
Examiner withdrew the “Examiner-Initiated” rejections of these dependent
claims for the same reasons that the Examiner withdrew the Examiner-
Initiated rejections of claims 1, 3, 7, 9, 10, 12, 13 and 15. ACP 12.
Regardless of the origin of the proposed rejections of dependent
claims 2, 4, 8, 11, and 14, Owner does not argue their patentability
separately with particularity. Resp. Br. 13 (“Kjorsvik simply does not
disclose all limitations of the independent claims, and Salm . . . fail[s] to
supplement these deficiencies.”

8
We assume that the Examiner’s reference to “rejections (1)-(2)” were
intended to refer to listings (A) and (B) earlier at NFOA 2.
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Accordingly, we reverse the Examiner’s refusal to reject claims 2, 4,
8, 11, and 14 as obvious over Kjorsvik and Salm.
The Proposed Rejections of claims 16-31 As
Obvious Over Kjorsvik In View of Owner’s Admitted Prior Art
In response to Owner’s adding new claims 16-31, Requester’s
Comments added proposed rejections of newly added claims 16-31 as
obvious over Kjorsvik in view of Owner’s Admitted Prior Art (“AAPA”).
See Comments 30 and its attached Appendix-Claim Chart; ACP 3
identifying this proposed rejection as Group (6). The Examiner refused to
adopt these proposed rejections for the reasons set forth for not adopting
Group (1) (proposed anticipation rejection of claims 1, 3, 5, 7, 9, 10, 12, 13,
and 15 over Kjorsvik) and Group (2) (proposed rejection of claims 2, 4, 6, 8,
11, and 14 over Kjorsvik and Salm). ACP 3-4.
Owner contends that “none of 3PR’s [proposed] rejections provide
any explanation or motivation for modifying Kjorsvik to eliminate remote
aggregation or to use wallpaper, but instead rely on impermissible
hindsight.” Resp. Br. 13. Owner’s argument regarding the elimination of
remote aggregation is not persuasive because Requester does not rely on the
AAPA to teach such elimination. Instead, as discussed above, Requester
relies on Kjorsvik to teach the aggregation limitation. Owner’s argument
regarding an explanation or motivation to use wallpaper is also not
persuasive because Requester’s Comments state that “[a] person of ordinary
skill in the art could have substituted the screen saver embodiments of
Kjorsvik with the wallpaper embodiment of AAPA” and “the results of the
substitution would have been predictable.” Comments 30. Requester’s
Comments also state that “[a] person of ordinary skill in the art would have
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been motivated to combine Kjorsvik with the wallpaper embodiment of
AAPA to achieve the incentive of obtaining a greater share of the user’s
attention” and that the “incentive would have prompted a person of ordinary
skill in the art to add the wallpaper of the AAPA to the screen saver
disclosed in Kjorsvik.” Id. Accord Crovella Decl. ¶ 46. We note that
Owner does not provide any expert evidence that contradicts the Crovella
Declaration.
We conclude that Requester has provided rational bases for
combining Kjorsvik and the AAPA and that Owner’s counter-arguments are
not persuasive.
Therefore, we reverse the Examiner’s refusal to reject claims 16-31 as
obvious over Kjorsvik and AAPA.

The Proposed Rejection Of Claims 1-4 and 7-31 Based on Rakavy
The Proposed Rejection Of Claims 1, 3, 7, 9, 10, 12, 13,
And 15-31 As Anticipated By Rakavy
Claims 1, 3, 7, 9, 10, 12, 13, and 15
In the NFOA, the Examiner concludes that Rakavy does not disclose,
and therefore, does not anticipate, the “aggregation” limitation. NFOA 36-
37, referring to Group (3), which we assume is intended to refer to Group
(C) listed at NFOA 2. The ACP adopts this refusal. ACP 21 (“The
proposed rejections over Rakavy were not adopted for the reasons set for in
the non-final action. (pgs. 36-37).”) (emphases omitted).
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whether Rakavy discloses and therefore
anticipates the “aggregation” limitation
Rakavy “relates generally to advertisement computer display
systems.” Col. 1, ll. 7-8. It has a Local Computer 500 which includes a
display device 513. See Figs. 1, 2; col. 4, ll. 5-7, 47-49. Fig. 4 illustrates a
functional block diagram of Local Computer 500, which includes an
Advertisements Display Manager 210, a User Preference and
Advertisements Database 230, and an Advertisements Feeder 250. Col. 4, ll.
11-14; col. 7, ll. 30-38. The Advertisements Display Manager 210 is
responsible for selecting and displaying Advertisements 50 from the User
Preference and Advertisements Database 230 (shown as Interad Database
230 in Fig. 4). The Advertisements Feeder 250 adds new Advertisements 50
to the User Preference and Advertisements Database 230. Col. 7, ll. 44-49;
col. 12, ll. 6-8. Advertisements 50 preferably are provided from the Internet
through the Internet Feeder 270. However, the Advertisements Feeder 250
is not dependent on the type of advertisement source and may receive
Advertisements 50 from other sources such as commercial on-line services,
via other feeder mechanisms and other types of polite agents, as shown by
references 271 and 272 in Fig. 4. Col. 12, ll. 8-15.
The system preferably includes at least one Advertising System
Server 600. Two of the roles of the Advertising System Server 600 are to
store Advertisements 50 and transfer the Advertisements 50 to the Local
Computer 500. Figs. 1, 4; col. 5, ll. 31-35. Accordingly, Advertising
System 600 is not part of Local Computer 500. See Resp. Br. 15; Reb. Br.
17-18 and Requester’s annotated Rakavy Fig. 4 at Reb. Br. 18.
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The Examiner finds that Rakavy discloses the Advertisements Feeder
250 adds new advertisements to the Advertisement Database 230 and that
the Advertisements Display Manager 210 selects and displays
advertisements 50 from the Advertisements Database 230. Consequently,
the Examiner concludes that Rakavy does not anticipate this limitation
because it discloses the content data (advertisements) are aggregated at a
common physical location (Advertisements Database 230) prior to being
provided to the content display system (Local Computer 500). NFOA 36-
37.
Claim 1 recites “without the content data being aggregated at a
common physical location [that is] remote from the content display system
prior to being provided to the content display system” (emphasis added).
But, as Requester points out, Advertisements Database 230 is a component
of Local Computer 500 (the content display system). App. Br. 30-31.
Owner agrees that “[t]he interad database 230 of Rakavy may be located
locally (on local computer 500).” Resp. Br. 15 n. 19. We agree with
Requester that Advertisements Database 230 “cannot be said to aggregate
data remote from the very same computer it is part of and ‘prior to’ that
same computer receiving the content data” (App. Br. 31). We therefore
conclude that the Examiner erroneously concluded that aggregation at
Advertisements Database 230 prevents Rakavy from meeting this limitation.
Alternatively, Owner contends that the operation of Advertising
System Server 600 precludes Rakavy from disclosing this limitation because
Advertising Server 600 stores multiple ads from multiple advertisers so that
the ads are aggregated. Resp. Br. 14-15, including n.19. As Requester
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points out, however, Owner’s position assumes that Local Computer 500
communicates with only one Advertising System Server 600 and therefore
Owner assumes that Rakavy is only capable of performing remote
aggregation. Reb. Br. 16-17.
Rakavy, however, discloses multiple independent content providers.
First, Rakavy states its system “preferably includes at least one Advertising
System Server 600,” col. 5, ll. 31-32 (emphasis added); also, “[i]n an
alternative embodiment of the present invention, the selected advertisement
may be stored on any one of the plurality of advertising system servers,” col.
5, ll. 54-56; “the architecture optionally allows for a plurality of advertising
system servers,” col. 6, ll. 13-15. See Reb. Br. 17.
Second, “Advertisements Feeder 250 is not dependent on the type of
advertisement source and may receive Advertisements 50 from other
sources, such as commercial on-line services, via other feeder mechanisms
and other types of polite agents, as shown by references 271 and 272,
respectively, in Fig. 4.” Col. 12, ll. 10-15. Reb. Br. 17.
We therefore agree with Requester that “[b]ecause local computer 500
can either access content (i.e., Advertisements 50) from ‘other sources’ or
connect to multiple servers 600, the local computer 500 of Rakavy acquires
content from multiple independent content providers (e.g., multiple servers
600) without the content being first remotely aggregated. Thus, Rakavy
discloses the ‘without remote aggregation’ limitation.” Reb. Br. 17.
Accordingly, we reverse the Examiner’s refusal to adopt the proposed
rejection of claims 1, 3, 7, 9, 10, 12, 13, and 15 as anticipated by Rakavy.
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Claims 16-31
In response to Owner’s adding new claims 16-31, Requester’s
Comments added proposed rejections of them as anticipated by Rakavy. See
Comments 29 and its attached Appendix-Claim Chart; ACP 3 identifying
this proposed rejection as Group (8). The Examiner refused to adopt these
proposed rejections for the reasons set forth for not adopting Group (3)
(proposed anticipation rejection of claims 1, 3, 5, 7, 9, 10, 12, 13, and 15 as
anticipated by Rakavy). ACP 3-4.
Owner relies upon the same arguments regarding this Group (8)
proposed rejection as it presented regarding the Group (3) proposed
rejection. For the same reasons, therefore, we reverse the Examiner’s
refusal to adopt Requester’s proposed rejection of claims 16-31 as
anticipated by Rakavy.

The Examiner’s Sua Sponte Determination That Claims
1, 3, 5, 7, 9, 10, 12, 13, and 15 Are Not Obvious Over Rakavy
The Examiner concludes that Rakavy does not make the
“aggregation” limitation obvious. NFOA 37. Requester has not proposed an
obviousness rejection of these claims based on Rakavy, standing alone.
Although the Examiner agrees that Requester “alleges [the
aggregation] limitation is anticipated by Rakavy” and “does not rely on a
secondary reference to teach this limitation,” (NFOA 37, emphasis omitted),
the Examiner nevertheless concludes that it would not have been obvious to
modify Rakavy so that the content data is not aggregated at the common
physical location designated as database 230. NFOA 37. Owner does not
provide any persuasive argument in support of the Examiner’s non-
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obviousness conclusion. See Resp. Br. 14 (“Rakavy fails to disclose the
without remote aggregation limitation, and thus cannot anticipate or render
obvious the appealed claims.”); Resp. Br. 15 (“Thus Rakavy fails to
anticipate or render obvious claims 1-4 and 7-31.”).
We do not consider whether the Examiner’s sua sponte obviousness
analysis based on Rakavy is correct because Requester did not propose such
a rejection and because, as discussed above, we agree that Rakavy
anticipates the aggregation limitation. In re Gleave, 560 F.3d 1331, 1338
(Fed. Cir. 2009).
The Proposed Rejection Of Claims 1, 3, 7, 9, 10, 12, 13, And
15-31 As Obvious Over Rakavy and Kjorsvik
The Examiner concluded in the NFOA that the proposed rejection that
relies upon a combination of Rakavy and Kjorsvik fails to set forth a prima
facie case of obviousness as required by Graham v. John Deere Co., 383
U.S. 1 (1966). NFOA 37-39.
In the ACP, the Examiner incorporates the reasons for not adopting
the proposed rejections for the reasons set forth only in pages 36-37 of the
NFOA. We therefore conclude that the Examiner has withdrawn the refusal
to adopt the proposed combined Rakavy/Kjorsvik rejection based upon a
purported failure to comply with Graham’s requirements. See ACP 21.
Requester nevertheless explains why it believes the Examiner’s Graham
analysis is wrong. App. Br. 36-38. Owner neither contends that Requester
failed to comply with Graham’s requirements nor contradicts Requester’s
explanation. Instead, Owner generally contends, without persuasive
explanation, that Requester does not “provide any explanation or motivation
for modifying Rakavy to eliminate its remote aggregation, but instead rely
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on impermissible hindsight” (Resp. Br. 15) and does not “provide[] any
explanation or motivation for modifying Rakavy or Kjorsvik to eliminate
their remote aggregation, but instead rely on impermissible hindsight.” Id.
We therefore adopt Requester’s explanation regarding why the
Examiner’s Graham analysis is wrong and we reverse the Examiner’s
refusal to adopt Requester’s proposed rejection of the claims based on
Kjorsvik in view of Rakavy.
The Proposed Rejections of Claims 2, 4, 8, 11, and 14
As Obvious Over Rakavy and Salm
The Request proposed rejections of dependent claims 2, 4, 8, 11, and
14 as obvious over Rakavy and Salm. Request 122-124. The Examiner
refused to adopt the proposed rejections of these dependent claims for the
same reasons that the Examiner did not adopt the other rejections based on
Rakavy. See NFOA 37; ACP 21. Owner does not argue the patentability of
these claims based on the proposed Rakavy/Salm combination separately
with particularity. See Resp. Br. 14-15.
Accordingly, we reverse the Examiner’s refusal to reject claims 2, 4,
8, 11, and 14 as obvious over Rakavy and Salm.
The Examiner’s New Reasons For Not Adopting
Any Of The Proposed Rejections Based On Rakavy
The ACP adds a new reason for not adopting the proposed rejections.
The Examiner concludes that, even though Rakavy includes a wallpaper
embodiment, Requester and its expert Dr. Crovella present proposed
rejections directed only to the screensaver embodiment (and not the
wallpaper embodiment), which, the Examiner had previously concluded,
was outside the scope of the claims. ACP 21-22. Because the Examiner
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concludes that the claims do not encompass the screensaver embodiment, the
Examiner concludes that Requester’s proposed rejections are not persuasive.
Id. As we have concluded above, however, the claims do encompass the
screensaver embodiment.
Requester additionally contends that its proposed rejections were
based on both the wallpaper and screensaver embodiments. App. Br. 29-30.
Owner does not persuasively dispute Requester’s contention. See Resp. Br.
14 (“Regardless of whether the Examiner’s statement about wallpaper was
correct, Rakavy fails to disclose the without remote aggregation limitation.”)
(emphasis omitted). See also Reb. Br. 16 (“PO did not dispute that Rakavy
discloses wallpaper in its Respondent’s Brief, nor did PO provide any
evidence to support the Examiner’s procedural reason for refusing to
consider Rakavy.”).
We therefore conclude that the Examiner erred in concluding that
Requester did not rely on Rakavy’s wallpaper embodiment, in concluding
that the claims were limited to the wallpaper embodiment to the exclusion of
the screensaver embodiment, and consequently in refusing to adopt the
proposed rejections based on Rakavy.
Accordingly, we reverse the Examiner’s refusal to adopt all of the
proposed rejections based on Rakavy for this additional reason.
CONCLUSIONS
The Examiner erred in withdrawing the Examiner-Initiated rejections
and erred in refusing to adopt all of Requester’s proposed rejections.
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DECISION
The Examiner’s withdrawal of the Examiner-Initiated rejections and
the Examiner’s refusal to adopt all of Requester’s proposed rejections are
reversed and we enter the following new grounds of rejection under 37
C.F.R. 41.77(b):
A. Claims 1, 3, 7, 9, 10, 12, 13, and 15 are rejected as anticipated
by Kjorsvik.
B. Claims 1, 3, 7, 9, 19, 12, 13, and 15 are rejected as obvious over
Kjorsvik.
C. Claims 2, 4, 8, 11, and 14 are rejected as obvious over Kjorsvik
and Salm.
D. Claims 16-31 are rejected as obvious over Kjorsvik and
Owner’s Admitted Prior Art.
E. Claims 1, 3, 7, 9, 10, 12, 13, and 15-31 are rejected as
anticipated by Rakavy.
F. Claims 2, 4, 8, 11, and 14 are rejected as obvious over Rakavy
and Salm.
G. Claims 1, 3, 7, 9, 10, 12, 13, and 15-31 are rejected over
Rakavy and Kjorsvik.
REVERSED
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that "[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review." Correspondingly, no portion of the decision is final for
purposes of judicial review. A requester may also request rehearing under
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37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record.
Any request to reopen prosecution before the examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the "claims so rejected."
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted.
A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board's opinion reflecting its
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decision to reject the claims and the patent owner's response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the patent owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The examiner, after the Board's entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board's rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments
and reply submitted by the owner and/or requester under 37 C.F.R.
§ 41.77(e) for reconsideration and issuance of a new decision by the Board
as provided by 37 C.F.R. § 41.77(f).
Requests for extensions of time in this proceeding are governed by 37
C.F.R. §§ 1.956 and 41.79(e).

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ack
PATENT OWNER:

EDELL, SHAPIRO & FINNAN, LLC
1901 RESEARCH BOULEVARD, SUITE 400
ROCKVILLE, MD 20850

THIRD PARTY REQUESTER:

STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, D.C. 20005-3934