Ex Parte Rothschild

Patent Trial and Appeal Board

Feb 25, 2016

12772989 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121772,989 05/03/2010 Leigh M. Rothschild
12896 7590 02/29/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
8153-0011 (CRGP-6) 4990
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
ptomail@iplawpro.com
scott.paul@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEIGH M. ROTHSCHILD
Appeal2013-010224 1
Application 12/772,989
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1-10. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to distributing advertising content to a
wireless mobile device. Spec. para. 2.
1 The Appellants identify SRR Patent Holdings, LLC as the real party in
interest. Br. 1.
Appeal2013-010224
Application 12/772,989
Claim 1 is illustrative:
1. A content delivery method for providing advertising
content to a vehicle, comprising:
retrieving a profile of an end user operating the vehicle;
receiving a selection of content for wireless delivery to a
playback device disposed in the vehicle;
identifying advertising content corresponding to the
retrieved profile; and
transmitting the identified advertising content and the
selection of content for playback in the playback device
disposed in the vehicle, wherein
a ratio of the identified advertising content to the
selection of content is determined based upon a profile of a trip
specified for the vehicle.
Claims 1-10 are rejected under 35 U.S.C. § 112, first paragraph, for
lack of enablement.
Claims 1-10 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
Claims 1, 3---6, and 8-10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shahraray (US 2010/0023544 Al, pub. Jan. 28, 2010) and
Des Jardins (US 8,103,546 Bl, iss. Jan. 24, 2012).
Claims 2 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Shahraray, Des Jardins, and Banga (US 2008/0262901 Al, pub. Oct.
23, 2008).
We AFFIRM.
2
Appeal2013-010224
Application 12/772,989
ANALYSIS
Rejection of Claims 1-10 under 35 U.S.C. § 112, first paragraph
We are persuaded by Appellant's argument that the Examiner fails to
address adequately the issue of whether one skilled in the art can make and
use the invention without undue experimentation, i.e., whether certain claim
limitations are sufficiently enabled. Br. 4--5. The main limitation at issue is
"a ratio of the identified advertising content to the selection of content is
determined based upon a profile of a trip specified for the vehicle," as
recited in each of independent claims 1 and 6. The Examiner also sets forth
analyses for limitations recited in claims 2, 3, 5, 7, 8, and 10; however, they
are directed to the same issue as above concerning the recited ratios.
Whether a specification complies with the requirements of 35 U.S.C.
§ 112, first paragraph, is a question of fact. See Regents of Univ. of Cal. v.
Eli Lilly and Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997) (citing Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). Whether the
requirements of Section 112, first paragraph, are met depends on whether the
specification conveys with reasonable clarity to those skilled in the art that,
as of the filing date sought, an applicant was in possession of the invention
as now claimed. See, e.g., Vas-Cath Inc., 935 F.2d at 1563---64.
An inquiry into whether a skilled artisan can make or use the
invention without undue experimentation must, as an initial matter, consider
the level of skill of the ordinary artisan, and whether, although not explicitly
disclosed, the ordinary artisan would have known how to perform the steps
of the invention without undue experimentation. Factors which must be
considered in determining whether a disclosure would require undue
experimentation include (1) the quantity of experimentation necessary, (2)
3
Appeal2013-010224
Application 12/772,989
the amount of direction or guidance presented, (3) the presence or absence of
working examples, ( 4) the nature of the invention, ( 5) the state of the prior
art, (6) the relative skill of those in the art, (7) the predictability or
unpredictability of the art, and (8) the breadth of the claims. See In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (citing Ex parte Forman, 230
USPQ 546, 547 (BPAI 1986)). This analysis of Wands factors was not
articulated sufficiently by the Examiner for any of the claims.
In addition, the Specification describes the following:
The ratio further can be determined according to information
pertinent to the location of the vehicle including the temporal
length of the intended trip (as provided to navigation system),
the ergonomics of the driver (where body sensors in the
vehicles seat measure the comfort level of the driver or other
occupants of the vehicle), the time of day, the temperature
inside the vehicle and external weather conditions.
Para. 11. The above-cited portion of the Specification discloses that the
temporal length of a trip is related to the ratio. Though precisely how a trip
length affects the ratio is not provided, we are persuaded that the skilled
artisan would understand that a long or short trip may affect the numeric
ratio, leading to it being a larger or smaller ratio. Even without disclosing a
mathematical algorithm, the ordinary artisan would understand the concept
of varying the ratio based on, for example, a length of a trip. Rather than
omitting a description in the original Disclosure, because the Appellant does
not limit the way the ratio is determined, the claims are interpreted broadly
to encompass virtually any manner of basing the ratio on a trip profile.
For this reason, the Examiner has failed to establish a prima facie case
that the requirements of Section 112, first paragraph, are not met, and we are
persuaded further that the Specification has provided an adequate disclosure
4
Appeal2013-010224
Application 12/772,989
to meet the requirements of Section 112, first paragraph. As a result, we will
not sustain this rejection.
Indefiniteness Rejection
We are persuaded by Appellant's argument that the claims are not
indefinite. Br. 6. The Examiner's rejection of the claim on the basis that "a
ratio of the identified advertising content to the selection of content is
determined based upon external conditions" is unclear. Ans. 8. This
language, however, does not appear in any claim. Claims cannot be said to
be unclear based on language not recited in the claims.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). "All words in a claim must be considered in judging the
patentability of that claim against the prior art. If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious - the claim becomes indefinite." In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970).
The Examiner has thus not advanced a prima facie case of
indefiniteness, because it is not clear that the actual, recited words of the
claims have been considered in this rejection. For this reason, we will not
sustain the rejection under 35 U.S.C. § 112, second paragraph, as indefinite.
In addition, because Appellant has not limited the manner in which a
ratio is based on a trip profile, this means that the Appellant is broadly
5
Appeal2013-010224
Application 12/772,989
claiming a wide range of ways to base the ratio on a trip profile. "Breadth is
not indefiniteness." In re Gardner, 427 F.2d 786, 788 (1970).
Rejection of Claims l, 3-6, and 8-10 under 35U.S.C.§103(a)
Appellant argues that claims 3---6 and 8-10 stand or fall together with
claim 1, so we address claim 1. Br. 12.
We are not persuaded by Appellant's argument that neither Shahraray
nor Des Jardins teaches maintaining a ratio based upon a trip profile. Br.
12-14.
Shahraray discloses selecting advertising content based on a trip
profile, in that ads inserted into distributed content "may include a furniture
store advertising to everyone within a half mile radius that all loveseats are
55% off until 5:00 pm. More complex advertising media content for a
business like a downtown lunch restaurant may advertise coupons to
individuals at lunchtime heading in the direction of the restaurant." Para. 30.
Shahraray further discloses "users who are driving from Los Angeles to Las
Vegas on I-15 may be highly susceptible to advertisements on gambling."
Para. 5. Shahraray thus discloses a trip profile affecting content.
Des Jardins discloses "a ratio of time a user receives dynamic
advertising to the time the user receives programming media content."
Col. 1, 11. 26-29. Des J ardins discloses "providers of the content may desire
the ability to define the ratio .... " Col. 1, 11. 47-51. Des Jardins discloses
basing the ratio value on any of a number of factors, including "an owner of
the one or more programming media segments selected by the user." Col. 2,
11. 9-17. The ordinary artisan may recognize that an advertising sponsor of
content may wish to affect the ratio based on a location of a potential
6
Appeal2013-010224
Application 12/772,989
customer, as disclosed in Shahraray (para. 30), such that adding in an
advertisement for a furniture store or restaurant a user will be near will
increase the ratio based on a trip profile, as claimed. We note that the level
of detail disclosed in Des Jardins concerning how the ratio is calculated is
commensurate in scope with the level of detail disclosed in the Specification
as to how the claimed ratio is calculated.
We are not persuaded by Appellant's argument that the Examiner has
failed to articulate a rational basis for the combination. Br. 13. The
Examiner has set forth a combination of references that meet the claim
language, and articulated a reasoning for the combination based on a
motivation to keep the user's attention by not having a ratio of advertising so
high that the user stops listening to the content and advertising at issue.
Answer 9-10; see also Final Act. 10. The modification rationale advanced
by the Examiner comes directly from Des Jardins. Id. Appellant has not
shown persuasively error in the combination.
We are also not persuaded by Appellant's argument that Des J ardins
is not analogous art, and thus cannot be properly combined with Shahraray.
Br. 14--16.
Whether a reference in the prior art is "analogous" is a fact question.
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v.
Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir.), cert. denied, 481 U.S.
1052 (1987)). Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. Id. (citing In re
7
Appeal2013-010224
Application 12/772,989
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); Jn re Wood, 599 F.2d 1032,
1036 (CCP A 1979)). Shahraray is directed to adapting content in media
distribution. Para. 4. Des Jardins is directed to coupling advertising with
dynamic media content distribution. Col. 1, 11. 16-19. Both Shahraray and
Des Jardins are, thus, in the same field of endeavor as Appellant's claimed
invention, advertising in distributed media content, such that the
combination of Shahraray and Des Jardins is appropriate.
For these reasons, we will sustain the rejection of claims 1, 3---6, and
8-10 under 35 U.S.C. § 103(a).
Rejection ofclaims 2 and 7 under 35 U.S.C. § 103(a)
Appellant argues claims 2 and 7 only by asserting that the addition of
the Banga reference fails to cure alleged deficiencies in the combination of
Shahraray and Des J ardins at claim 1. Br. 16-1 7. Because we find no
shortcoming in the rejection of claim 1, we will sustain the rejection of
claims 2 and 7 for the same reasons.
DECISION
We REVERSE the rejections of claims 1-10 under the first and
second paragraphs of 35 U.S.C. § 112.
We AFFIRM the rejections of claims 1-10 under 35 U.S.C. § 103(a).
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
8