Ex Parte Petersen et al

Patent Trial and Appeal Board

Feb 12, 2016

13052970 (P.T.A.B. Feb. 12, 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.
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.

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Application 13/052,970

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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.
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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
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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
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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