11768892 (P.T.A.B. Jan. 31, 2017)

Ex Parte Hartwell

Patent Trial and Appeal BoardJan 31, 2017

11768892 (P.T.A.B. Jan. 31, 2017)

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. 11/768,892 06/26/2007 Joshua Hartwell 09685.0045-00000 3817 22852 7590 02/02/2017 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER LIAO, HSINCHUN ART UNIT PAPER NUMBER 2649 NOTIFICATION DATE DELIVERY MODE 02/02/2017 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): regional-desk @ finnegan. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSHUA HARTWELL Appeal 2016-001779 Application 11/768,8921 Technology Center 2600 Before JOHNNY A. KUMAR, CATHERINE SHIANG, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 15—19 and 32—35, which constitute all the claims pending in this application. Claims 1—14 and 20-31 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. We have reviewed Appellant’s arguments in the Appeal Brief and Reply Brief, and the Examiner’s response to Appellant’s arguments. We concur with Appellant’s argument that the Examiner erred in rejecting 1 Appellant identifies GOSUB 60, Inc. as the real party in interest. App. Br. 3. Appeal 2016-001779 Application 11/768,892 independent claim 15 under 35 U.S.C. § 102(b) as being anticipated by Willis2 because Willis does not disclose, either expressly or inherently, the limitation “checking what updated video-game content to send based on one of the factors including a type of the mobile communication device, a telecom service associated with the mobile communication device, and a service provider of the telecom service,” as recited in claim 15. App. Br. 7— 10; Reply Br. 2—3. In finding that Willis inherently discloses “checking what updated video-game content to send based on ... a type of mobile communication device,” the Examiner states the following: Willis discloses “determine ad content to provide to the game console and an appropriate ADSP [advertisement service provider] for delivering of the ad content” (Willis Fig. 3 Item 304 paragraph 0034). Willis discloses “Examples of mobile video game platforms include N-Gage, from Nokia, SONY PSP, and Gizmondo. The geolocation of the mobile video game platform is optionally changed at any time including during game play” (Willis paragraph 0035). Therefore, Willis’ arrangement provides advertising content to video games running in different mobile devices and different platforms. As explained in the office action, the content of software update is inherently adapted to/based on a type of mobile communication device/platform (e.g. i-phone or android mobile device). Otherwise, the mobile device would not be able to display the updated content properly. Ans. 2—3. We are persuaded by Appellant’s arguments that the Examiner errs in finding Willis anticipates claim 15. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or 2 US 2006/0136297 Al; published June 22, 2006. 2 Appeal 2016-001779 Application 11/768,892 inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). “[AJnticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation . . . .” Trans clean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont'l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA1981)). Here, Appellant argues, and we agree, “Willis discloses that advertising content is sent based on the physical geographic location of the gamer.” Reply Br. 2 (citing Willis Tflf 29—32). We also agree with Appellant’s argument that the portion of Willis cited by the Examiner in the Answer makes clear that Willis’ system “determin[es] advertising content to provide to the advertising enabled gaming platform, based on the determined location”—not based on the console type, as the Office appears to contend.” Id. (citing Willis Fig. 3 (item 304)). Appellant also argues, and we agree, “[njothing in Willis supports the [Examiner’s finding] that the updated content is ‘inherently adapted to/based on a type of mobile communication device/platform.’” Id. at 3. As Appellant further argues, “even if Willis’ content were adapted prior to display on a mobile communication device, that content could be adapted by the mobile communication device, rather than by a separate device that provides or uploads the updated content to the mobile communication device, as required by Appellant’s claims.” Id. Thus, for the reasons argued by Appellant, we agree that “the claimed 3 Appeal 2016-001779 Application 11/768,892 subject matter not explicit in Willis also does not ‘necessarily flow[] from the teachings of that reference.” Id. Accordingly, we do not sustain the rejection of claims 15—17 and 33—35 under 35 U.S.C. § 102(b), or the rejection of dependent claims 18, 19, and 32 under 35 U.S.C. § 103(a) because the Examiner relies on Willis in the same manner discussed above in the context of claim 15 and does not rely on the additional reference in any manner that remedies the deficiencies of the underlying anticipation rejection. DECISION We reverse the Examiner’s decision rejecting claims 15—19 and 32— 35. REVERSED 4