Ex Parte Petersen et alDownload PDFPatent Trial and Appeal BoardFeb 12, 201613052970 (P.T.A.B. Feb. 12, 2016) Copy Citation 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. 13/052,970 03/21/2011 Antony Petersen 40205/02901 7432 30636 7590 02/12/2016 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 EXAMINER SONG, DAEHO D ART UNIT PAPER NUMBER 2141 MAIL DATE DELIVERY MODE 02/12/2016 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 ____________________ Ex parte ANTONY PETERSEN, MATTHEW MAHONY, BASIL HAFEZ, A. MICHAEL CURTES, and DAVID CUNHA ____________________ Appeal 2014-004688 Application 13/052,970 Technology Center 2100 ____________________ Before CARLA M. KRIVAK, ADAM J. PYONIN, and AARON W. MOORE, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1–5 and 7–16. Claim 6 has been canceled. See App. Br. 11–13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2014-004688 Application 13/052,970 2 STATEMENT OF THE CASE Introduction Appellants’ disclosure is directed to “a system and interface for generating a graphical representation on a mobile device such that consumers can view advertisements interspersed with other applications.” Abstract. Claims 1 and 16 are independent. Claim 1 is reproduced below for reference (with emphasis added): 1. A method, executed on a computer, for providing a graphical presentation on a mobile device, the method comprising: receiving by a computer, a master list of one or more content applications, each content application being associated with a displayable graphic; receiving, by the computer, indications of one of selections of one or more content applications from the master list and selection criteria for selecting one or more content applications from the master list; generating, by the computer, a filtered production list comprising a subset of the content applications from the master list including one of selected content applications and content applications meeting the selection criteria, the filtered production list including at least one advertisement and at least one mobile device application; and transmitting to a mobile device associated with the computer the content applications in the filtered production list and the displayable graphics associated with the content applications in the filtered production list in combination with a displayable graphic for the at least one advertisement. References and Rejections1 Claims 1–5 and 7–16 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Final Act. 3. 1 The Examiner withdrew the rejection of claims 1–5 and 7–16 under 35 U.S.C. § 112, first paragraph (Final Act. 2). See Ans. 2. Appeal 2014-004688 Application 13/052,970 3 Claims 1 and 7–16 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Brown (US 2010/0088367 A1; Apr. 8, 2010). Final Act. 4. Claims 2–4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Wasko (US 2011/0061010 A1; Mar. 10, 2011). Final Act. 7. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Wood (US 2005/0132331 A1; June 16, 2005). Final Act. 9. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner erred. We adopt the Examiner’s findings and conclusions (see Final Act. 3–11; Ans. 3–5) as our own, and we add the following primarily for emphasis. A. Indefiniteness Rejection Independent claims 1 and 16 recite “selecting one or more content applications from the master list” and generating a filtered production list with the selected one or more applications, the “filtered production list including at least one advertisement and at least one mobile device application.” Appellants contend the Examiner’s indefiniteness rejection is in error because “claim 1 recites that more than one content application may be selected. Accordingly, it is clear how an operation may generate a filtered production list including two items.” App. Br. 6. Although we agree with Appellants that “more than one content application may be selected” (emphasis added), we are not persuaded the Examiner erred. Id. The Examiner correctly notes that the scope of the Appeal 2014-004688 Application 13/052,970 4 claim recitation “selecting one or more” includes selecting one item. Final Act. 3. Accordingly, we agree with the Examiner that “it is unclear how the steps of an operation are accomplished in terms of selecting one item from a master list to make a filtered list with two items, which may [be] assume[d] to include an unselected item from a master list.” Ans. 3. We thus sustain the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of independent claims 1 and 16, as well as claims 2–5 and 7–15 which depend upon claim 1. B. Anticipation Rejection Appellants argue the Examiner erred in finding Brown anticipates the limitations of independent claim 1 because, although Brown describes a list of applications, “Brown does not disclose or suggest [the] list is to also include any advertisement. The cited paragraph of Brown in which the Examiner asserts discloses an advertisement is not an actual advertisement. In contrast, it is a descriptor of the approved application which is included in the list.” App. Br. 7–8; see also Reply Br. 4. We give claims their broadest reasonable interpretation consistent with the specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Here, we note that, although Appellants’ Specification does not provide a narrowing definition of the term “advertisement,” the Specification describes how a production list can contain “at least one content application 213 representing a mobile device application and at least one content application representing an advertisement.” Spec. ¶ 22. Appellants’ Specification further describes how “the content application representing the advertisement can provide, for example, a link to an advertiser’s website” and “the content application Appeal 2014-004688 Application 13/052,970 5 representing the mobile device application can provide, for example, a link to a web-based application, [or] another mobile device application.” Id. We agree with the Examiner that Brown broadly but reasonably discloses the disputed limitation. See Ans. 4; see also Brown Fig. 1 and ¶¶ 25, 38. That is, the recited “filtered production list” is tantamount to Brown’s list of applications, because Brown discloses the list can include both applications having images or a “browser link” to marketing (i.e., an advertisement) and applications having a link to download an approved application (i.e., a mobile device application). See Brown ¶ 29 (stating “the mobile wireless communications device [will] . . . download and install a mobile device application selected from the list”) and ¶ 38 (stating the “list of application descriptors contain[s], for example: application name . . . [and] an optional browser link . . . pointing to the application binaries . . . [or] additional marketing and/or pricing information”). Accordingly, we are not persuaded the Examiner erred in finding Brown anticipates independent claim 1, or claims 2–5 and 7–16, which are not separately argued with particularity. See App. Br. 8, 9. DECISION We affirm the Examiner’s rejections of claims 1–5 and 7–16. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation