Ex Parte Ramer et alDownload PDFPatent Trial and Appeal BoardJun 28, 201613235459 (P.T.A.B. Jun. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/235,459 09/18/2011 130011 7590 06/30/2016 Shook, Hardy & Bacon L.L.P. (AOL Inc.) Intellectual Property Department 2555 Grand Blvd. Kansas City, MO 64108-2613 FIRST NAMED INVENTOR Jorey Ramer 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. AOLI.246025 9215 EXAMINER FELTEN, DANIELS ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 06/30/2016 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): IPDOCKET@SHB.COM IPRCDKT@SHB.COM tquick@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOREY RAMER, ADAM SOROCA, DENNIS DOUGHTY, and NEAL J. KARASIC Appeal2014-004623 Application 13/235,459 Technology Center 3600 Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and AMEE A. SHAH, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-18, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. Appeal2014-004623 Application 13/235,459 THE INVENTION The Appellants' claimed invention is directed to exclusivity bidding for mobile sponsored content (Spec., para. 3). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A system for exclusivity bidding for mobile sponsored content, the system comprising one or more computers having computer readable mediums having stored thereon instructions which, when executed by one or more processors of the one or more computers, causes the system to perform the steps of: (a) receiving a bid for an exclusive sponsored content item to be presented on a plurality of mobile communication facilities, the bid including: (i) an amount; and (ii) at least one exclusivity characteristic relating to a transaction as recorded via use of each of the mobile communication facilities by respective users thereof; and (iii) a selection of a model of mobile communication facility; (b) matching the at least one exclusivity characteristic with the exclusive sponsored content item based at least in part on a relevancy; and ( c) transmitting the exclusive sponsored content item only to the plurality of mobile communication facilities of the selected model. THE REJECTION The following rejection is before us for review: Claims 1-18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Libes (US 2006/0242017 Al, pub. Oct. 26, 2006) and Hudda (US 2001/0049636 Al, pub. Dec. 6, 2001). 2 Appeal2014-004623 Application 13/235,459 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 1 Additionally we find the following relevant definitions for "selection" and "select. "2 "Selection," in relevant definitions, is "1. a selecting or being selected" and "2a). a person or thing chosen." "Select," in a relevant definition, is "1. chosen in preference to." ANALYSIS The Appellants argue that the rejection of claim 1 is improper because the prior art does not disclose the claim limitation drawn to "a selection of a model of mobile communication facility" (App. Br. 4 ). The Appellants have also argued that the combined teachings fail to suggest the claimed invention (App. Br. 5). In contrast, the Examiner has determined that "at least one model of mobile communication facility is being used and is therefore being selected by Libes's invention to perform bidding and matching functions" (Ans. 5, 6). We agree with the Appellants. Here the cited claim limitation requires specifically "a selection of a model of mobile communication facility" (emphasis added). Here, the selection of a model of mobile 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 2 The following definitions are found in Webster's New World Dictionary, Third College Edition, 1988, Simon and Schuster at pages 1216. 3 Appeal2014-004623 Application 13/235,459 communication facility is also brought to light in the claim limitation which requires "transmitting the ... content ... only to the plurality of mobile communication facilities of the selected model" (emphasis added). Here, in the rejection of record, there has been no specific citation to Libes to show a specific "selection of a model of mobile communication facility". The distribution in Libes has not been shown to be a "selection" of a specific "model of mobile communication facility," but rather a distribution to all those targeted. Thus, the argued claim limitation has not been disclosed in the rejection of record. Regardless, we have reviewed the rejection of record and determine that it lacks articulated reasoning with rational underpinnings to show that the cited combination would have been obvious to meet the limitations of claim 1. For these reasons the rejection of claim 1 and its dependent claims is not sustained. Claim 10 contains similar limitations and the rejection of this claim and its dependent claims is not sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims as listed in the Rejection section above. DECISION The Examiner's rejection of claims 1-18 is reversed. REVERSED 4 Copy with citationCopy as parenthetical citation