Ex Parte Miller et alDownload PDFPatent Trials and Appeals BoardJun 25, 201913604302 - (D) (P.T.A.B. Jun. 25, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/604,302 09/05/2012 20995 7590 06/27/2019 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 FIRST NAMED INVENTOR David Miller 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. DMLLR.OOlAUS 7498 EXAMINER BEKERMAN,MICHAEL ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 06/27/2019 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): j ayna.cartee@knobbe.com efiling@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID MILLER and MICHAL SCHWARTZ Appeal2017-011574 Application 13/604,302 Technology Center 3600 Before RAMA G. ELLURU, NABEEL U. KHAN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. Appeal2017-011574 Application 13/604,302 STATEMENT OF THE CASE Appellants' invention is directed to a system and method for generating a database of data items indicative of synchronized actions and retrieving the data items. Spec. ,r 2. Claim 1, reproduced below, is representative of the claimed subject matter: 1. A method of generating a database of data items indicative of synchronized actions forming a storyboard, the method comprising: determining a set of devices for execution of the storyboard, wherein at least one of the devices comprises packaging of a consumable consumer product, and wherein the storyboard relates to promotion of the consumer product; generating the storyboard via a processor, the storyboard comprising a set of actions for the devices to perform individually or by a subset of the devices, wherein the actions are interrelated and form a message for communication to an audience; generating data items via the processor, the data items corresponding to the actions of the storyboard, wherein at least a portion of the data items include time synchronization information for the actions; and storing the data items and the time synchronization information relating to the storyboard in the database via the processor. REJECTIONS Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Claims 1-20 stand rejected under pre-Al A 35 U.S.C. § 103(a) as being unpatentable over the combination of Wilson et al. (US 7,697,925 B 1; 2 Appeal2017-011574 Application 13/604,302 issued Apr. 13, 2010) ("Wilson") and Griffiths et al. (US 2006/0139928 Al; published June 29, 2006) ("Griffiths"). ANALYSIS 35 U.S.C. § 101 Rejection An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). 3 Appeal2017-011574 Application 13/604,302 If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The PTO recently published revised guidance on the application of § 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum"). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or 4 Appeal2017-011574 Application 13/604,302 ( 4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum, 84 Fed. Reg. at 52-57. Furthermore, the Memorandum "extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se)": (a) Mathematical concepts-mathematical relationships, mathematical formulas or equations, mathematical calculations; (b) Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and ( c) Mental processes----concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Id. at 52 (footnotes omitted). USPTO Memorandum, Step 2A, Prong 1 The Examiner determines the claims are directed to "constructing a promotional presentation" and "targeting or advertising," which is a fundamental economic practice and/ or a [certain] method of organizing human activities." Final Act. 3--4 ( citing SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx. 950 (Fed. Cir. 2014), Cyberfone Systems, LLC v. CNN Interactive Grp, Inc., 558 F. App'x 988 (Fed. Cir. 5 Appeal2017-011574 Application 13/604,302 2014), and Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014); see also Ans. 4--5 (citing Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), Affinity Labs. of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266 (Fed. Cir. 2016)). Appellants argue the Examiner has not met the "notice and analysis burden" because none of the fact patterns in cases cited by the Examiner "match generating and coordinating advertising actions among multiple electronic packaging products or the limitations of the pending claims" and two of the three cases are non-precedential. App. Br. 19; see Reply Br. 6-7. Appellants further argue "none of the items in the categories of 'fundamental economic practice' or 'method of organizing human activity' align with Appellants' amended claims." App. Br. 19. We are not persuaded by Appellants' arguments. The USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of§ 132. Id. Here, and as further set forth below, the Examiner has clearly articulated the reasons why the claims are not patent- eligible under § 101 under the Alice/Mayo framework. Appellants' Specification describes a message, for example, an advertisement, that comprises a storyboard. Spec. ,r 22. The storyboard "may define actions, content, routines, outcomes that define a story 6 Appeal2017-011574 Application 13/604,302 according to a set of different actions to provide a unified presentation of a message." Spec. ,r 3. The presentation may be used to, for example ( and as recited in the claims), promote a product. Spec. ,r,r 3, 68, 80, 88, and 91. Independent claim 1 recites, inter alia, steps for determining a set of devices for execution of the storyboard relating to promotion of a consumer product, generating the storyboard, generating data items corresponding to the actions of the storyboard, including time synchronization information, and storing the data items. See App. Br. 25. Independent claims 16 and 17 recite commensurate limitations in the context of "computer program product" claims. Independent claims 18, 19, and 20 are also "computer program product" claims and recite limitations to retrieve the data items, determine time synchronization information, communicate the data items to the devices, and perform the actions by the devices. App. Br. 28. We agree with the Examiner that the claims recite advertising and/or constructing a promotional presentation, and are, therefore, directed to certain methods of organizing human activity, and, thus, to an abstract idea under the guidelines in the Memorandum. See Memorandum, 84 Fed. Reg. at 52 ( describing "[ c ]ertain methods of organizing human activity ... commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations") ( emphasis added); Affinity Labs. of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016) ("we hold that the concept of delivering user-selected media content to portable devices is an abstract idea"); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369-70 (Fed. Cir. 2015) (the practice of tailoring advertising to individual customers is a "'fundamental ... practice 7 Appeal2017-011574 Application 13/604,302 long prevalent in our system'"); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--715 (Fed. Cir. 2014) ("showing an advertisement before delivering free content" is an abstract idea). Appellants essentially argue that the claims at issue are not identical to the claims in the cases cited by the Examiner, and, therefore, the Examiner has mischaracterized the claims. See App. Br. 19, Reply Br. 6-7. However, the claims do not have to be identical to those previously found ineligible. See Memorandum, 84 Fed. Reg. at 52 ( explaining that the guidance "extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter.") Accordingly, Appellants have not sufficiently argued why the claims do not recite an abstract idea, specifically certain methods of organizing human activity. USPTO Memorandum, Step 2A, Prong 2 In determining whether the claims are "directed to" the identified abstract idea, we next consider whether the claims recite additional elements that integrate the judicial exception into a practical application. 1 We discern no additional element ( or combination of elements) recited in the claims that 1 We acknowledge that some of the considerations at Step 2A, Prong Two, properly may be evaluated under Step 2 of Alice (Step 2B of the Office guidance). For purposes of maintaining consistent treatment within the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office guidance). See Memorandum, 84 Fed. Reg. at 55 n.25, 27-32. 8 Appeal2017-011574 Application 13/604,302 integrates the judicial exception into a practical application. See Memorandum, 84 Fed. Reg. at 54--55. The Examiner determines "the computer processor, and the steps performed thereon, do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only other element in the claims beside the abstract ideas identified above is the computer processor." Final Act. 4. The Examiner determines the limitations are "merely instructions to implement the abstract idea on a computer." Final Act. 3. Appellants argue that, like the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014), "the features described in Appellant's claims are not analogous to any business practice that is, or can be, performed without the use of computers." App. Br. 21; see Reply Br. 7-8. According to Appellants, the claims "provide methods and devices for generating a database or implementing the database in order to generate and implement (e.g., present) a storyboard (e.g., set of one or more coordinated and/ or synchronized actions) performed by a consumer product device" which "present a discrete solution to a problem that cannot be solved with pencil and paper, and which arises due to the nature of attempting to present an advertisement through synchronized actions of a group of consumer product devices." App. Br. 21. Appellants argue the "application also describes the problem with '[k ]nown advertisement systems using presentations, like movies, picture sequences or other multimedia content, which are presented on presentation devices,' is that they 'do not involve or immerse the consumer of an advertised consumer 9 Appeal2017-011574 Application 13/604,302 device' and that 'the consumer and/ or the consumer device do not become part of the advertisement or the underlying storyboard."' Reply Br. 8. We are not persuaded by Appellants' arguments. We find no indication in the Specification, nor do Appellants direct us to any indication, that the operations recited by the claims invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components ( e.g., processor, database, computer readable storage medium, module) to perform generic computer functions ( analyzing, storing, retrieving, and performing an action). See DDR Holdings, 773 F.3d at 1256 ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent- eligible."); see Final Act. 3----4; Ans. 6---- 7. The claims merely add generic computer components (e.g., processor, database, computer readable storage medium, module) to support the abstract idea, which is insufficient to integrate the judicial exception into a practical application. l\1oreover, we agree with the Examiner that the invention is "merely us[ing] computer technology to perfonn the act of providing messages on a consumer product." See Ans. 6. Appellants argue the claims are "directed to a unique computerized approach in generating a database of synchronized actions for multiple packaging devices to perform to promote a consumer product." App. Br. 20. Appellants contend the claims parallel those in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). App. Br. 20. Appellants further argue the claims are directed to an improvement in that "the method/system determines a set of devices for execution of the 10 Appeal2017-011574 Application 13/604,302 storyboard, generates the storyboard comprising actions for devices to perform to communicate a message to an audience, generate data items comprising synchronization information for actions to perform, and storing the data items and synchronization information in a database." App. Br. 20. Appellants also argue "improvements in the computer-related technology of synchronizing of activities between the multiple devices and creating immersive effects by the multiple devices are generated by the claimed methods and systems." App. Br. 20; see Reply Br. 7. We disagree the claims here are like those in McRO. In 1Vf cRO, the Federal Circuit addressed daims directed to "[a] method for automatically animating lip synchronization and facial expression of three-dimensional characters." 837 F.3d at 1307. The claimed improvement in lvicRO "allow[ed] computers to produce 'accurate and realistic lip synchronization and facial expressions in animated characters' that previously could only be produced by human animators ... through 'the use of rules, rather than artists, to set the morph weights and transitions between phonernes. '" 837 F .3d at 1313. The court reviewed the specification of the patent at issue and found that, rather than invoking the computer merely as a tool, "[ c ]laim 1 of the [asserted] patent is focused on a specific asserted improvement in computer animation." Id. at 1314. The court found that the plain focus of the claim was on an improvement to computer functionality itself~ not on econornic or other tasks for which a computer is used in its ordinmy capacity. Id. at 1315. Unlike in A1cRO, the daims here do not recite specific rules that improve computer animation techniques or some other technology. Instead, the claims recite generic computer operations, in which a computer is used 11 Appeal2017-011574 Application 13/604,302 in its ordinary capacity, for analyzing/generating information, storing information, retrieving information, and performing an action. For example, instead of presenting any specific n1les for determining a set of devices for execution of the storyboard, generating a storyboard, generating the data items, storing the data items, retrieving the data items, communicating the data items, and performing the set of actions, the claims only generally recite the foregoing limitations. In explaining the improvement, Appellants essentially do nothing more than recite the claim language (App. Br. 20), and, therefore, have not sufficiently explained how the claims constitute an improvernent to computer functionality. In the Reply Brief, Appellants argue "the claimed invention relates to improvements in technofogical processes, including integration of Inten1et of Things (IoT) devices ... [ and] such integration and coordination provides for immersive experiences for consumers." Reply Br. 7. However, this argument still does not sufficiently explain how the claims constitute an improvement to computer functionality. vVe agree with the Examiner that any improvements are directed to the underlying abstract idea as opposed to improvements to the functionality of the computer. Ans. 6. For these reasons, we are not persuaded of error in the Examiner's determination that the claims are directed to an abstract idea. USPTO Memorandum, Step 2B Tun1ing to step 2 of the Alice/A1ayo framework, we look to whether the claims: (a) add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, or (b) simply append well-understood, routine, conventional activities previously 12 Appeal2017-011574 Application 13/604,302 known to the industry, specified at a high level of generality, to the judicial exception. l\!Iemorandum, 84 Fed. Reg. at 56. The Examiner determines the limitations "require no more than a generic computer to perform generic computer functions that are we11- understood, routine and conventional activities previously known to the industry." Final Act. 3; see also Final Act. 4. Appellants recite certain limitations in claims 1, 18, and various dependent claims and argue, without further persuasive reasoning, that these steps are "significantly more" than the abstract idea. App. Br. 21-22; Reply Br. 8-9. Appellants' arguments are not persuasive. Appellants' cfaims do not recite specific limitations (or a combination of limitations) that are not well- understood, routine, and conventional. See Final Act. 3----4. For example, the claimed "processor," "database," "module," and "computer readable storage medium" are described at a high level of generality and perform generic functions that are well-understood, routine, and conventional. See, e.g. Spec. ,-r,r 70, 78, 114-119, Fig. 7. Such generic disclosures do not amount to "significantly more" than the judicial exception. See Elec. Power Grp., , 830 F.3d at 1355 ("Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf: conventional computer, network, and display technology for gathering, sending, and presenting the desired information"); buyS1AFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends the infonnation over a network-with no further specification-is not even arguably inventive"); Alice, 573 U.S. at 224----26 (receiving, storing, sending information over networks insufficient to add an inventive concept); In re 13 Appeal2017-011574 Application 13/604,302 Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (" Absent a possible narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ... those functions can be achieved by any general purpose computer without special programrning"). Accordingly, Appellants have not adequately explained how the claims are performed such that they are not routine, conventional functions of a generic computer. The claims at issue do not require any nonconventional computer components, or even a "non-conventional and non-generic arrangement of known, conventional pieces," but 1nerely call for performance of the cfaimed information receiving, processing, and displaying "on a set of generic computer components." Bascom Global internet Servs., Inc. v .. 4T&TA1obility LLC, 827 F.3d 1341, 1349----1352 (Fed. Cir. 2016). Accordingly, for the foregoing reasons we sustain the Examiner's 35 U.S.C. § 101 rejection of claims 1----20. 35 U.S.C § 103(a) Rejections Issue 1: Did the Examiner err in finding the combination of Wilson and Griffiths teaches or suggests "determining a set of devices for execution of the storyboard, wherein at least one of the devices comprises packaging of a consumable consumer product, and wherein the storyboard relates to promotion of the consumer product," as recited in independent claim l and commensurately recited in independent claims 16 and 17? The Exarniner relies on Wilson to teach or suggest "determining a set of devices for execution of the storyboard" and Griffiths to teach or suggest "wherein at least one of the devices comprises packaging of a consumable 14 Appeal2017-011574 Application 13/604,302 consumer product, and wherein the storyboard relates to promotion of the consumer product." Final Act. 5----6 (citing \Vilson, 6:13---43, Griffiths, ,-rir 68, 85-89). Appellants argue \Vil son "fails to make any mention of 'detennining a set of devices for execution of a storyboard,"' and "never teaches how to determine devices that will execute the storyboard," but instead teaches "merely having the user join an 'event sequence c01Tesponding to a predetermined gathering and including at least one timed action' that was generated based on 'expected user participation."' App. Br. 13-14; see Reply Br. 3. Appellants argue "that such determining can only apply to the single device that the user is accessing," and "is not 'a set of devices."' Reply Br. 4. \Ve are not persuaded by Appellants' arguments and agree with the Examiner's findings and conclusions. See Final Act. 5----12; Ans. 2----4. Appellants do not constnie the limitation "determining a set of devices for execution of the storyboard," nor do they identify any portion of the Specification that defines the limitation. Although the Specification does not provide an explicit definition, it generally describes "determining a set of devices for execution of the storyboard" in various places. See, e.g., Spec. ii 59 ("[ t]he underlying different actions to be executed ... can be made dependent on the identified presence of recognized identifiable consumer devices); ,-r 60 ("the presence of a consumer device, with an identifier IDS, is detected in order to select 760 a presentation scenario); ,-r 63 ("detection of the presence of a consumer device is managed via a back channel); ,-r 75 ("device detection module ... may be configured to receive information from the devices ... via the communication module ... via a network"); ,-r 15 Appeal2017-011574 Application 13/604,302 76 C'[b]ased on the information from the device detection module ... the storyboard generation module ... may generate a storyboard based on the types and capabilities defined by the device detection module"); i179 ("[t]he processing module ... may further receive user input for defining the storyboard and/or detennining devices available"); ir 97 (the system "may include detection means for detecting the presence of a consumer device and selection means for selecting an advertisement presentation scenario based on at least one detected consumer device"); ir 106 (a back channel "can be further used to detect the presence of a consumer device and to select an advertisement presentation scenario"); i1 107 ("information about the status of one or more consumer devices can be transmitted using the back channel in order to allow to select a given scenario which relates to such device status"). \Vilson is generally directed to the production of a synchronized light show by a plurality of individuals at a gathering, such as a community event, using their personal wireless cellular devices. 'Nilson Abstract, l :29-34. Wilson's event server stores at least one event sequence con-esponding to a predeten11ined gathering and that includes at least one timed action. Wilson Abstract "[T]he light show is created using venue infon11ation, expected user participation, and the desired light, sound, and timing effects that are creatively identified during the development." \Vilson, 7:8----1 L "For each light show being uploaded [to the event server], authorized users are identified .... Based on the identification, the light show event is added to a download list for each authorized user." \Vilson, 7:18-21. Then, when a user logs on to the system and is authenticated, "the event server presents available events and the application program if needed to the authenticated 16 Appeal2017-011574 Application 13/604,302 user," and the authenticated user can make a selection. 'Nilson, 7:23----27. Wilson describes that audience rnernbers [at a stadium event J are invited to participate in the light show using their personal wireless devices such as data-enabled phones, wireless-enabled PDAs, or smart phones. In advance of the show time, the customer connects to the wireless data network to sign up for Hght show services in step 60. If not already present on the device, the user downloads the light show application program in step 61 and makes the proper selections from the available events from the event server in step 62 to select the event being attended. \Vilson, 6: 14---23. Based on the selected event, if the light show is location- sensitive, the user's position may be located by GPS or, alternatively, the user may manually enter a location, such as a seat location. Wilson, 6:28- 43. The light show may also be group-sensitive, and the user can select a subgroup. Wilson, 6:44---47. Once the start time is reached, "the light show is initiated and the preloaded visual output is shown on the display screen." Wilson, 6:54----56. To achieve location or subgroup based effects, "different versions of the event sequence must be executed by different users in different areas of the venue." \Vilson, 4:60-62, 5:18-20. We agree with the Examiner that the claim does not preclude sorne user participation or input See Ans. 2. Rather, as set forth above, .Appellants' Specification generally describes detecting the presence or status of a device, which may be accomplished with user input. Appellants have not persuaded us that 'Nilson's disclosure that a user may sign up to participate in a light show, including, optionally, the user's location and subgroup information, does not teach or suggest "deterrnining a set of devices for execution of the storyboard." For example, because different 17 Appeal2017-011574 Application 13/604,302 users in different areas of the venue execute different versions of the event sequence, Wilson determines a set of devices for execution of the storyboard. l\tioreover, \Vilson also describes identifying authorized users and adding the Hght show to a downfoad list that rnay be selected by each authorized user, (\Vilson, 7: 18----27), which also teaches or suggests "detennining a set of devices for execution of a storyboard." Accordingly, we are not persuaded the Examiner erred. Issue 2: Did the Examiner err in combining 'Nilson and Griffiths? '--' Appellants argue "the Examiner rnerely provides conclusory statements regarding a reason to rnodify \Vilson and Griffiths in stating the combination would be obvious to 'add incentive to purchase the consumer product due to the distinctive interactive packaging."' App. Br. 16. Appellants argue the Examiner "fails to provide sufficient explanation of the reason to combine \Vilson and Griffiths" and "provides no basis for how the proposed combination would result in 'add[ed] incentive to purchase the consumer product due to the distinctive interactive packaging' nor what/how respective features would be combined." _App. Br. 17. In support of its arguments, _Appellants cite to the Declaration of l\!1r. Brook ("Brook Declaration") dated October 13, 2016. 2 App. Br. 14---15. Appellants contend "the Brook Declaration does provide explanation and analysis as to why the references would not be combined." Reply Br. 4. Appellants further argue "there is no teaching or suggestion in either reference hinting that the functionality described in one reference could 2 H does not appear that a copy of the Brook Declaration was included in the Evidence Appendix to the Appeal Brief. 18 Appeal2017-011574 Application 13/604,302 beneficially be included in the other or would even be desirable to include the other. Specifically, there is no discussion of any reason to combine the disclosure of \Vil son with the disclosure of Griffiths in either reference." App. Br. 17; see Reply Br. 5. Appellants argue the references "are each directed to solving different problems." App. Br. 16; see also App. Br. 18. Appellants further argue ''there is no mention in Wilson regarding the 'packaging' of devices used for participating the light show displays, instead only describing components of the 'personal wireless handset 10. "' App. Br. 1 7. With respect to Griffiths, Appellants argue "Griffiths is silent regarding any requirement to have the products interact with other devices in its vicinity to participate in an associated and coordinated set of actions." App. Br. 17. Appellants further argue "Griffiths fails to disclose any processor or controller and thus, would not and could not be combined with the programmable and downloadable light shows disclosed in Wilson by one of skill in the art." App. Br. 17; see also Reply Br. 5. Appellants' arguments are not persuasive. The Examiner relies on Griffiths to teach or suggest "wherein at least one of the devices comprises packaging of a consumable consumer product, and wherein the storyboard relates to promotion of the consumer product." Final Act. 6. The Examiner finds "Griffiths teaches consumable consumer product packaging (bottle) that communicates wirelessly with other packaging to put on a show ... that is meant to promote (advertise) the consumer product." Final Act. 6 ( citing Griffiths, ,r,r 68, 85-89). The Examiner explains Wilson teaches "that a different device other than a cell phone may be used to generate the display . . . [ and] Wilson is used at a venue during an event such as a sporting event, in which concessions are typically sold." Final Act. 11 ( citing Wilson, 3: 15- 19 Appeal2017-011574 Application 13/604,302 18 ("[t]he user may also participate in the light show using an external light display device 16 to project color elements of the light show either instead of or in addition to display 11 on the handset 1 O"). The Examiner determines "[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to execute the storyboard of Wilson using any configuration of device appearance, including one shaped as the packaging of a consumer product. This would add incentive to purchase the consumer product due to the distinctive interactive packaging." Final Act. 6. In addition, the Examiner found the Brook Declaration was insufficient to overcome the rejection. Final Act. 8-10; Ans. 3; November 1, 2016 Advisory Action at 2. Griffiths generally describes a container, such as a bottle, that provides an output signal, such as a visual indicator like a light, to the consumer upon opening or otherwise handling the container. Griffiths, Abstract, ,-rir 4, 6. Griffiths explains that this will provide an incentive to the consurner to buy the product, and that manufacturers may use the visual enhancement for "product promotion, advertising, point of sale, competition based campaigns and general marketing purposes." Griffiths, ilil 42, 68. As one example, Griffiths describes that "during a sporting event, bottles consumed within a specific venue could be made to illuminate or flash every time a particular sports team scores." Griffiths, il 85. Griffiths also describes that the activating event for the visual enhancement could be "proximity of two or more bottles of the same type within a defined range." Griffiths, ,-r 89. Griffiths explains "[s]uch activation would encourage customers to buy the same brands of beer when they are out in a group of friends i.e. it is a way of increasing the volume sold of a particular brand. 20 Appeal2017-011574 Application 13/604,302 The bottles are designed so that if several bottles are held close together, one of the bottles may glow a specific color if it is a 'winning' bottle indicating the customer has won a prize." Griffiths, ,I 89. The Examiner's modification of Wilson with Griffiths results in a user participating in 'Nilson's light show using Griffiths' container, rather than \Vi1son's personal cellular device. As the Examiner explains, Wilson suggests using devices instead ofor in addition to the display on the personal cellular device to paiiicipate in the light show. Final Act 11. We note that Griffiths also provides that the activation signal for the container can be by means of a mobile te1ephone or personal digital assistant. Griffiths, ,I 84. \Ve further note that, contrary to Appellants' arguments, Griffiths teaches the container interacting with other devices in its vicinity. See Griffiths, il 89. Moreover, we find the Examiner's reasoning that such a combination would provide incentive for the user to purchase the consumer product aligns with Griffiths' disclosure, as well as \Vilson's disclosure that a different device may be used to participate in the light show. Accordingly, we find the Examiner provides articulated reasoning with rational underpinnings to combine the references and Appellants' arguments fail to apprise us of any en-or in that reasoning. Thus, Appellants' argument is not persuasive. l\!Ioreover, we disagree with Appellants that the Brook Declaration "provide[s] explanation and analysis as to why the references would not be combined." Reply Br. 4; see Ans. 8-10. Rather, we agree with the Examiner that the Brook Declaration is insufficient to overcome the rejections. Ans. 3. Appellants rely on paragraphs 9----12 of the Brook Declaration. App. Br. 15. Paragraph 9 states that Mr. Brook disagrees with 21 Appeal2017-011574 Application 13/604,302 the Examiner's conclusions. Paragraph 10 describes Wilson's teachings and Appellants' invention. Paragraph 11, which Appellants cite in its entirety in the Appeal Brief (App. Br. 15), states: 11. In my experience, Wilson's teachings would not be combined by one of skill in the art with the teachings of Griffiths. Wilson is directed to synchronizing activities between of synchronized light shows coordinated by "[a]n event server stores at least one event sequence corresponding to a predetermined gathering" and timed action that "is downloadable by the plurality of personal wireless cellular devices" for activation according to the event sequence would not be combined with Griffiths teachings of a container that provides "an output signal, which may be a significant visual or other sensory indication to a consumer on opening, or other handling." Accordingly I do not believe that one of skill in the art would combine the teachings of Wilson with that of Griffiths. One of skill in the art would not look at synchronized light shows on cellular handsets of users at a gathering to combine with a container with a light or sound generator. As shown, the first and last sentences mere1y state l\,fr. Brook's conclusions, while the middle sentence simply describes what \Vilson and Griffiths teach and perfunctorily states that they "would not be combined." In other words, there is no reasoning or explanation as to why one of ordinary skill in the art would not combine 'Nilson and Griffiths, or any reasoning or explanation rebutting the Examiner's findings and conclusions. Accordingly, we are not persuade the Examiner erred. Therefore, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of claims 1----20. DECISION The Examiner's 35 U.S.C. § 101 rejection of claims 1-20 is affirmed. 22 Appeal2017-011574 Application 13/604,302 The Examiner's 35 U.S.C. § 103(a) rejection of claims 1-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED 23 Copy with citationCopy as parenthetical citation