Ex Parte Lynn et al

Patent Trial and Appeal Board

Dec 5, 2016

10915975 (P.T.A.B. Dec. 5, 2016)

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.
10/915,975 08/11/2004 Scott Lynn 10364-030US1
(ADK1.003)
9762
12256 7590
Adknowledge, Inc.
4600 Madison Ave.
FL 10
Kansas City, MO 64112
12/07/2016 EXAMINER
BILGRAMI, ASGHAR H
ART UNIT PAPER NUMBER
2645
NOTIFICATION DATE DELIVERY MODE
12/07/2016 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):
ip @ adknowledge. com
csrinivasan @ adknowledge. com
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT LYNN, SHANE BRADY, and JOHN LINDEN 1
Appeal 2015-004546
Application 10/915,975
Technology Center 2600
Before KRISTEN L. DROESCH, JOHN A. EVANS, and SCOTT E. BAIN,
Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1, 3, 4, 8—11, 13—16, 18, 19, 22—26, 28—31, 33, 34, 38—
41, 43—47, 49, 50, 53, 55, 58-61, 63, 66-69, 71, 72, 7A-77, and 79-96.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants indicate the real party-in-interest is Adknowledge, Inc. Br. 3.
2 Claims 2, 5-7, 12, 17, 20, 21, 27, 32, 35-37, 42, 48, 51, 52, 54, 56, 57, 62,
64, 65, 70, 73, and 78 have been cancelled.
Appeal 2015-004546
Application 10/915,975
BACKGROUND
The disclosed invention relates to generating time relevant dynamic
content for electronic mail, i.e., e-mail. See Spec. 2—7; Abstract.
Representative claims 1 and 55, reproduced from the Claims
Appendix of the Appeal Brief, read as follows (disputed limitations in
italics)'.
1. A method for providing, via a network, time-relevant
content into electronic communications comprising:
sending an electronic communication to a recipient over
the network, the electronic communication including a content
request, that is automatically transmitted from the recipient over
the network when the electronic communication is opened;
receiving the content request that was automatically
transmitted from the recipient when the recipient opened the
electronic communication;
responding to the content request including generating
content for the opened electronic communication by applying at
least one predetermined rule or policy to the content request at
the time the content request is received, whereby the content
may be different each time the electronic communication is
opened;
converting the content into an image associated with the
content', and
providing the image associated with the content to the
opened electronic communication,
wherein the content request includes at least one
keyword, and generating the content for the opened electronic
communication includes extracting the at least one keyword
from the content request, and obtaining the content for the
opened electronic communication based on the at least one
keyword.
55. A system for providing content to electronic
communications over a network comprising:
a) a first server linked to the network configured for
procuring content for electronic communications by:
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Application 10/915,975
sending an electronic communication to a recipient
over the network, the electronic communication including a
content request that includes at least one keyword and is
automatically transmitted from the recipient over the network
when the electronic communication is opened;
receiving the content request, that was
automatically transmitted from the recipient of the electronic
communication when the recipient opened the electronic
communication;
generating content for the opened electronic
communication, by processes including:
responding to the receipt of the content request;
and
obtaining the content from at least one source
based on the at least one keyword obtained from the content
request, the content including data, that upon being activated,
provides a browsing application associated with the opened
electronic communication, with at least one uniform resource
locator for at least one target web site, whereby the content may
be different each time the electronic communication is opened;
and
b) an imaging server in data communication with the first
server configured for providing the content for the electronic
communications by: converting the content into an image
associated with the content and providing the image associated
with the content including the activatable data for the opened
electronic communication, the image including an activatable
portion from which the activatable data is activated.
REJECTIONS
Claims 1, 3, 4, 8-11, 13-16, 18, 19, 22-26, 28-31, 33, 34, 38—41, 43-
47, 49, 50, 53, 55, 58-61, 63, 66-69, 71, 72, 7A-77, and 79-93 stand
rejected under the non-statutory doctrine of obviousness-type double
patenting as unpatentable over Application 12/647,749, now US 8,626,845
B2. See Final Act. 2—6.
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Claims 1, 3, 4, 8-11, 13-16, 18, 19, 22-26, 28-31, 33, 34, 38—41, 43-
47, 49, 50, 53, 69, 66—69, 79-88, and 90-96 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sharma (US 2002/0087631 Al; July 4, 2002),
Tucciarone et al. (US 2004/0122730 Al; June 24, 2004) (“Tucciarone”), and
Matsuura et al. (US 7,346,659 B2; Mar. 18, 2008) (“Matsuura”). See Final
Act. 7-18, 23-26.
Claims 55, 58—61, 63, 71, 72, 74—77, and 89 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Sharma and Matsuura. See Final
Act. 19-23.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Brief and the Answer. We are not persuaded of error by
Appellants’ arguments. We agree with and adopt as our own the Examiner’s
findings and conclusions of law. We highlight and address specific findings
and arguments below for emphasis.
Double Patenting
The Examiner rejected claims 1, 3, 4, 8—11, 13—16, 18, 19, 22—26, 28—
31, 33, 34, 38-41, 43—47, 49, 50, 53, 55, 58-61, 63, 66-69, 71, 72, 7A-77,
and 79—93 under the non-statutory doctrine of obviousness-type double
patenting as unpatentable over Application 12/647,749, now US 8,626,845
B2. See Final Act. 2—6. Appellants do not present arguments addressing the
double patenting rejection. See Br. 13—19; Ans. 3. Under our procedural
rules, an appeal is presumed to be taken from the rejection of all of the
claims under rejection unless cancelled by an entered amendment. See
37 C.F.R. § 41.31(c). Therefore, we sustain pro forma the rejection of
claims 1, 3, 4, 8-11, 13-16, 18, 19, 22-26, 28-31, 33, 34, 38—41, 43—47, 49,
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50, 53, 55, 58—61, 63, 66—69, 71, 72, 74—77, and 79—93 under the non-
statutory doctrine of obviousness-type double patenting as unpatentable over
Application 12/647,749, now US 8,626,845 B2, because Appellants do not
present any argument addressing this rejection.
Obviousness — Claims 1, 3, 4, 8—11, 13—16, 18, 19, 22—26, 28-31, 33, 34,
38-41. 43^47, 49. 50. 53. 69. 66-69. 79-88. and 90-96
Appellants argue that Sharma does not teach “the content request
includes at least one keyword, and generating the content for the opened
electronic communication includes extracting the at least one keyword from
the content request, and obtaining the content for the opened electronic
communication based on the at least one keyword,” as recited in claims 1
and 31, and recited similarly in claim 16. See Br. 14—15. Appellants
contend “the present invention is directed to obtaining content in accordance
with the at least one keyword, where the content [is] provided over [a]
network to the center of the content request.” Id. at 15. Appellants argue
“[t]he ‘converting’ of claims 1 and 3 [ 1 ] and the ‘responding’ of claim 16
[are] performed not on the machine that requests the content, but on another
machine communicated to over a network.” Id. Appellants assert that
Sharma teaches a modification program that sits on top of an existing e-mail
client in which “two images form a single image when displayed a[t] the
recipient (opened) e-mail message.” Id. at 14. Appellants emphasize that in
Sharma the modifications are performed at the client. See id. at 14—15.
We are not persuaded by Appellants’ argument because, as pointed
out by the Examiner (see Ans. 4), Appellants’ arguments are not
commensurate in scope with the claim limitations. As the Examiner finds
(see id.), claims 1,16, and 31 do not recite that the generating, obtaining,
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and converting of content requires the content to be performed at another
device and provided over a network. Appellants also do not direct us to
claim language that precludes the generating, obtaining, and converting of
content to be performed at an e-mail client.
Appellants further argue that Sharma does not teach or suggest
“converting the content into an image associated with the content,” as
recited in claims 1,16, and 31. See Br. 15. Appellants contend that Sharma
instead “utilizes a banner server . . . that fetches a stored prerendered image
of a selected advertisement, and sends this prerendered image, in the form of
a graphic, from storage to the recipient’s computer,” where it is “displayed
(as a banner 22) in an e-mail message field image 20b of the recipient’s e-
mail.” Id. (citing Sharma 143, Fig. 4).
We are not persuaded by Appellants’ argument because, as pointed
out by the Examiner (see Ans. 5), the Examiner relies on Matsuura for
teaching or suggesting the disputed limitation. For these same reasons we
are not persuaded by Appellants’ argument that Tucciarone does not teach
the disputed limitations. See Br. 16—17.
Related to the previous argument, Appellants argue that Matsuura also
does not teach or suggest “converting the content into an image associated
with the content,” as recited in claims 1,16, and 31, and recited similarly in
independent claims 45 and 94. See Br. 15—17. Appellants argue that
Matsuura does not teach that the converting is performed in accordance with
at least one keyword. See id. at 16—17. Appellants assert that Matsuura
teaches converting portions of an e-mail into a web format, in accordance
with the capabilities of the device on which the images are to be displayed.
See id. Appellants also argue that there would be no motivation to combine
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Matsuura with Sharma and Tucciarone because Sharma is directed to a client
based solution for combining images on a device, and content identifiers and
keywords are not communicated to a server to retrieve the images to be
displayed. See id. at 16.
Appellants’ arguments are not persuasive because, as pointed out by
the Examiner (see Ans. 12) they are not commensurate in scope with the
claim limitations. As explained by the Examiner, the claims do not recite
that the “converting” is performed in accordance with at least one keyword.
See id. Appellants’ arguments regarding motivation to combine also are not
commensurate in scope with the limitations of claims 1, 16, 31, 45, and 94
because these claims do not require communication to a server, nor preclude
a client based solution.
Lastly, we find no support in the record for Appellants’ arguments
regarding motivation to combine. It is well settled that mere attorney
argument, unsupported by factual evidence, is entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence). Appellants do not address sufficiently the Examiner’s articulated
reasoning for combining the teachings of Sharma, Tucciarone, and
Matsuura—“for providing time relevant content into electronic
communications as disclosed by Sharma in order to make the content
provisioning into an electronic communication more robust and reliable,”
and “for providing time relevant content into electronic communications as
disclosed by Sharma and Matsuura in order to streamline the advertising
functionality from the perspective of multiple advertisers resulting in an
improved business model for providing advertise[mentjs to the consumer.”
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Final Act. 9-10. Accordingly, we are not persuaded of error in the
Examiner’s rationale for combining the references.
Regarding independent claims 45 and 94, Appellants argue that
Tucciarone does not teach or suggest “obtaining content associated with
content providers for the at least one keyword in an order based on a
predetermined priority of the content providers at the time the content is
obtained,” as recited in claim 45, and “generating content for the opened
electronic communication by applying at least one predetermined rule or
policy to the content request at the time the content request is received,” as
recited in claim 94. SeeBr. 17. Appellants contend that the Examiner’s
citation to paragraphs 19 and 20 of Tucciarone do not mention that the
eMessaging delivered offerings are in any kind of priority order at the time
the content is arranged. See id.
We are not persuaded by Appellants’ arguments. As the Examiner
finds, Tucciarone teaches that advertisers, under certain agreed-upon
procedures, may post their most current advertising messages in the primary
e-mail interface. The Examiner further finds, and we agree, the foregoing
description in Tucciarone teaches or suggests an order based on a
predetermined priority of the content providers at the time the content is
obtained, and applying at least one predetermined rule or policy to the
content request at the time the content request is received, as recited in
Appellants’ claims. See Final Act. 24—25 (citing Tucciarone ]Hf 19-20);
Ans. 7, 10 (citing Tucciarone Tflf 19-20). We also agree with the Examiner’s
additional findings that the application of rules policy and the prioritization
of one content provider over another is taught or suggested by steps 18 and
19G of Tucciarone’s Table A. Ans. 11 (citing Tucciarone Table A (p. 18)).
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Appellants further contend that independent claims 66 and 82 recite
similar features to those of claims 1,16, and 31, and the Examiner’s
rejections are erroneous for the same reasons as claims 1,16, and 31. See
Br. 17—18. Appellants do not present substantive arguments addressing
dependent claims 3, 4, 8—11, 13—15, 18, 19, 22—26, 28—30, 33, 34, 38-41,
43, 44, 46, 47, 49, 50, 53, 67-69, 79-81, 83-88, and 95-96. See id. at 18.
Accordingly, for all of the foregoing reasons, Appellants do not persuade us
of error in the Examiner’s determination that claims 1, 3, 4, 8—11, 13—16, 18,
19, 22-26, 28-31, 33, 34, 38-41, 43^17, 49, 50, 53, 69, 66-69, 79-88, and
90—96 are unpatentable over Sharma, Tucciarone, and Matsuura.
Obviousness — Claims 55, 58—61, 63, 71, 72, 74—77, and 89-93
Appellants contend that the references do not teach or suggest, “an
imaging server in data communication with the first server configured for
providing the content for the electronic communications by: converting the
content into an image associated with the content. . .,” as recited in
independent claim 55, and recited similarly in independent claim 71. See Br.
18. Appellants contend that Sharma fails to teach or suggest any server
configured for converting the content into an image associated with the
content. See id. Appellants further argue that since Sharma uses
prerendered images the claimed imaging server is not needed. See id.
Appellants argue that Matsuura does not teach or suggest that the
“converting” is performed in accordance with at least one keyword. See id.
Appellants’ arguments are not persuasive because, as pointed out by
the Examiner (see Ans. 16—17), the Examiner relies on Matsuura for
teaching or suggesting the disputed limitations, not Sharma. See Final Act.
21. Appellant’s argument that Matsuura does not teach or suggest the
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converting is performed in accordance with at least one keyword is not
persuasive because it is not commensurate in scope with the claim
limitations. Claims 55 and 71 do not recite that the converting step is
performed in accordance with at least one keyword. Appellants’ arguments
addressing the teachings of Tucciarone (see Br. 18) are not applicable to the
rejection of claims 55 and 71 because the Examiner’s rejection is based on
the teachings of Sharma and Matsuura. See Final Act. 19-22.
For all these reasons, Appellants do not persuader us of error in the
Examiner’s rejection of claims 55 and 71 as unpatentable over Sharma and
Matsuura. Appellants do not present separate substantive arguments
addressing dependent claims 58—61, 63, 72, 74—77, and 89-93. See Br. 19.
Accordingly, for the same reasons as claims 55 and 71, Appellants do not
persuade us of error in the Examiner’s rejection of claims 58—61, 63, 72, 74—
77, and 89—93 are unpatentable over Sharma and Matsuura.
DECISION
We AFFIRM the rejections of claims 1,3,4, 8—11, 13—16, 18, 19, 22—
26, 28-31, 33, 34, 38-41, 43^17, 49, 50, 53, 55, 58-61, 63, 66-69, 71, 72,
74—77, and 79-96.
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
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