Ex Parte Slutsky et al

Patent Trial and Appeal Board

Jan 17, 2017

13248937 (P.T.A.B. Jan. 17, 2017)

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.
13/248,937 09/29/2011 Bradley A. SLUTSKY 111415 7583
23696 7590 01/19/2017
OTTAT mMM TNmRPORATFD
EXAMINER
5775 MOREHOUSE DR.
SAN DIEGO, CA 92121
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
01/19/2017 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):
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADLEY A. SLUTSKY and FRANK T. YOUNG
Appeal 2015-0010361
Application 13/248,9372
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—48. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed June 25,
2014) and the Examiner’s Answer (“Ans.,” mailed August 14, 2014) and
Final Office Action (“Final Act.,” mailed May 20, 2014).
2 Appellants identify QUALCOMM Incorporated as the real party in
interest. Br. 2.
Appeal 2015-001036
Application 13/248,937
CLAIMED INVENTION
Appellants’ claimed invention relates to “[a] method and system for
interactively promoting the sale of a product or service” (Spec. 17).
Claims 1, 13, 25, and 37 are the independent claims on appeal.
Claim 1, reproduced below with added bracketed notations, is illustrative of
the subject matter on appeal:
1. A method for interactively promoting the sale of a
product or service, the method comprising:
[(a)] capturing by a camera an image of a consumer;
[(b)] conducting by a controller coupled to the camera a
biometric scan of the image;
[(c)] recognizing by at least one recognition module
coupled to the controller at least one biometric of the consumer
from the biometric scan;
[(d)] determining by the controller if the at least one
biometric of the consumer is associated with at least one of
browsing history, purchase history, and preference data of the
consumer, wherein the browsing history, the purchase history,
and the preference data are associated with the consumer;
[(e)] if the at least one biometric of the consumer is
associated with the at least one of browsing history, purchase
history, and preference data of the consumer, displaying
advertising images on a display device coupled to the controller,
the advertising images comprising at least one image of the
consumer augmented with a product or service, wherein the
advertising images comprise moving video images of the
consumer augmented with a product or service that track the
movement of the consumer viewing the display device; and
[(f)] receiving input corresponding to at least one
command from a consumer for augmenting physical features of
the image of the consumer augmented with a product or service.
2
Appeal 2015-001036
Application 13/248,937
REJECTIONS
Claims 1-5, 9, 10, 12-17, 21, 22, 24-29, 33, 34, 36-41, 45, 46, and 48
are rejected under 35 U.S.C. § 103(a) as unpatentable over Pieper
(US 2008/0163054 Al, pub. July 3, 2008), Denimarck
(US 2003/0018522 Al, pub. Jan. 23, 2003), and Lennon (US 6,624,843 B2,
iss. Sept. 23, 2003).
Claims 6, 18, 30, and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pieper, Denimarck, Lennon, and Arrasvuori
(US 2009/0061901 Al, pub. Mar. 5, 2009).
Claims 7, 8, 19, 20, 31, 32, 43, and 44, are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pieper, Denimarck, Lennon, Arrasvuori, and
Hansen (US 2008/0161113 Al, pub. July 3, 2008).
ANALYSIS
Independent Claims 1, 13, 25, and 37 and Dependent Claims 2—5, 9, 10, 12,
14-17, 21, 22, 24, 26-29, 33, 34, 36, 38-41, 45, 46, and 48
Appellants argue claims 1—5, 9, 10, 12—17, 21, 22, 24—29, 33, 34, 36—
41, 45, 46, and 48 as a group (Br. 7—15). We select independent claim 1 as
representative. The remaining claims stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because none of the cited
references, individually or in combination, discloses or suggests “displaying
advertising images ... of the consumer augmented with a product or service,
wherein the advertising images comprise moving video images of the
consumer augmented with a product or service that track the movement of
the consumer viewing the display device,” as recited in claim 1 (Br. 7—15).
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Appeal 2015-001036
Application 13/248,937
During examination before the U.S. Patent and Trademark Office (the
“USPTO”), claims are given their broadest reasonable interpretation
consistent with the specification. In re Abbott Diabetes Care, Inc., 696 F.3d
1142, 1148 (Fed. Cir. 2012); In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir.
1983). Moreover, conditional steps employed in a method claim need not be
found in the prior art if, under the broadest reasonable interpretation, the
method need not invoke those steps. See Ex Parte Schulhauser, No. 2013-
007847, 2016 WL 6277792 (PTAB April 28, 2016) (precedential).
Here, the “displaying” step that Appellants maintain is not disclosed
or suggested by the cited references is a conditional method step, and is
performed only “if the at least one biometric of the consumer is associated
with the at least one of browsing history, purchase history, and preference
data of the consumer.” The broadest reasonable interpretation of claim 1
includes situations that fail to satisfy this condition precedent, and in those
situations, the disputed conditional method step is not performed.
See Schulhauser, 2016 WL 6277792, at *3—6 (concluding the broadest
reasonable interpretation of a claim encompassed situations in which
conditional method steps “need not be reached”).
Because the broadest reasonable interpretation of claim 1 does not
require performing the conditional “displaying” step at issue, the Examiner
is not required to present evidence of the obviousness of this step.
See Schulhauser, 2016 WL 6277792, at *4 (“The Examiner did not need to
present evidence of the obviousness of the remaining method steps of
claim 1 that are not required to be performed under a broadest reasonable
interpretation of the claim.”).
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Appeal 2015-001036
Application 13/248,937
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner’s rejection
of claims 2-5, 9, 10, 12-17, 21, 22, 2A-29, 33, 34, 36-41, 45, 46, and 48,
which fall with claim l.3
Dependent Claims 6—8, 18—20, 30—32, and 42—44
Appellants do not present any arguments in support of the
patentability of dependent claims 6—8, 18—20, 30—32, and 42-44 except to
assert that the additional references relied on in rejecting the claims do not
cure the deficiency in the rejection of independent claims 1,13, 25, and 37,
and that the claims are allowable based on their respective dependence from
claims 1, 13, 25, and 37 (Br. 15—18).
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting independent claims 1, 13, 25, and 37. Therefore,
we sustain the Examiner’s rejection of dependent claims 6—8, 18—20, 30—32,
and 42^44 under 35 U.S.C. § 103(a).
3 We note that the Examiner found that Pieper and Lennon disclose the
argued aspect of the claimed method step of claim 1 (Final Act. 5—7). Even
assuming, for the sake of argument, that the Examiner’s findings with
respect to the disputed method step are erroneous, we cannot agree that the
Examiner erred in rejecting claim 1 under § 103(a) because, as set forth
above, the Examiner was not required to provide evidence of the
obviousness of this step. See Schulhauser, 2016 WL 6277792, at *3—6. The
Examiner concluded that the combination of Pieper, Denimarck, and Lennon
discloses or suggests the remaining limitations of claim 1; Appellants have
not challenged this conclusion or its underlying findings.
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Appeal 2015-001036
Application 13/248,937
DECISION
The Examiner’s rejections of claims 1—48 under 35 U.S.C. § 103(a)
are affirmed.
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
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