Ex Parte Steelberg et al

Patent Trial and Appeal Board

Feb 17, 2017

12586438 (P.T.A.B. Feb. 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.
12/586,438 09/22/2009 Ryan Steelberg VTONE.006.02 8056
95508 7590
One LLP
4000 MacArthur Blvd.
East Tower, Suite 500
Newport Beach, CA 92660
EXAMINER
CHAUDHURI, ANITA
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
02/22/2017 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):
IPdocke ting @ onellp. com
onellpdocketing @ onellp. com
P AIRgroup @ onellp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN STEELBERG
and CHAD STEELBERG
Appeal 2016-003600
Application 12/586,438
Technology Center 2100
Before KRISTEN L. DROESCH, JOHNNY A. KUMAR, and
NORMAN H. BEAMER, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-003600
Application 12/586,438
Exemplary Claim
Exemplary claim 1 reads as follows:
1. A computer-implemented multi-step approval engine for
approving a creative that includes at least one content,
comprising:
a creative generator executable on a computing processor
having a graphical user interface through which a user interacts
with said creative generator, wherein the user requests at least
one content stored on a non-transitory computer-readable data
storage device communicatively coupled to the processor, the
content not previously associated with the user for inclusion in
a creative to be generated via said creative generator;
a content provision rules engine executable on the
processor, including:
a first plurality of rules stored on the storable device and
executable on the processor, asserted by an owner of the
requested at least one content to govern inclusion of the content
in the creative, wherein ones of the first plurality of rules
includes a minimum price;
a second plurality of rules stored on the storable device
and executable on the processor, asserted by the owner of the
requested content to review the creative subsequent to inclusion
of the requested content in the creative pursuant to the first
plurality of rules;
a content provision interface by which the owner of the
requested content interacts to assert at least the second plurality
of rules;
whereby said approval engine approves the creative
including the requested content in accordance with a
satisfaction of the first plurality of rules and the second
plurality of rules.
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Appeal 2016-003600
Application 12/586,438
Rejections
Claims 1—20 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 2.
Claims 1—20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 3.
Claims 1—10 and 14—20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yruski (US 2007/0130012 Al, June 7, 2007) and
Armstrong (US 2002/0087352 Al, July 4, 2002). Final Act. 3—8.
Claims 11—13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Armstrong, Yruski, and Collins (US 2008/0249855 Al,
Oct. 9, 2008). Final Act. 8—9.
ANALYSIS
Rejection of claims 1—20 under 35 U.S.C. § 112, first paragraph
The Examiner rejected claims 1—20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner finds:
The Specification does not disclose “computer-
implemented” multi-step approval engine. It discloses neither a
creative generator nor content provision rules engine being
“executable on a computing processor”. It does not disclose
any content that is stored on “a non-transitory computer-
readable data storage”. In addition, it does not disclose that
rules are “stored on the storable device and executable on the
processor”.
Final Act. 2.
The Appellants contend:
Although not explicitly recited in the specification of the
application, it is easily recognizable by those of ordinary skill in
the pertinent arts that the claimed approval engine, when
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Appeal 2016-003600
Application 12/586,438
performing the claimed functionality as disclosed in the
application, is implemented on a computer, and it is beyond
reasonable dispute that such a computer must necessarily
comprise at least a processor coupled to a storage device. As
such, those elements were inherent in the application as filed.
Br. 3 (emphasis added).
We disagree with Appellants’ contention that the Examiner erred in
finding the Specification fails to demonstrate Appellants had possession of a
“creative generator,” “rules engine executable on the processor,” “rules
stored on the storable device and executable on the processor,” as claimed.
We have reviewed the Appellants’ arguments and Appellants’
Specification and we are not persuaded of error in the Examiner’s rationale
to support the rejection. Accordingly, we sustain the Examiner’s rejection of
claims 1—20 under 35 U.S.C. § 112, first paragraph.
Rejection of claims 1—20 under 35 U.S.C. § 101
The Examiner rejected claims 1—20 rejected under 35 U.S.C. § 101
“because the claimed invention is directed to non-statutory subject matter
since the ‘computer-implemented multi-step approval engine’ can be
software only.” Final Act. 3.
Because Appellants advance no arguments on appeal traversing the
non-statutory subject matter rejection, we pro forma sustain the Examiner’s
rejection of claims 1—20 on the ground of non-statutory subject matter.
Prior art rejections
The Examiner rejected claims 1—10 and 14—20 under 35 U.S.C. § 103
over Yruski and Armstrong. The Examiner also rejected claims 11—13
under § 103 using Yruski, Armstrong, and Collins.
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Appeal 2016-003600
Application 12/586,438
Because Appellants do not contest the merits of the obviousness
rejections, we pro forma sustain the Examiner’s rejections on the grounds of
obviousness.
DECISION
The Examiner’s rejections of claims 1—20 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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