Ex Parte Stoulil

Patent Trial and Appeal Board

Dec 21, 2016

13016821 (P.T.A.B. Dec. 21, 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.
170176.401 5330
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
13/016,821 01/28/2011 Ryan Stoulil
500 7590 12/22/2016
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
12/22/2016 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 RYAN STOULIL
Appeal 2014-007517
Application 13/016,8211
Technology Center 3600
Before ANTON W. FETTING, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s rejection of claims 1—38. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates “to systems, devices, methods,
processes and computer programs related to targeted advertising on
food/beverage preparation or dispensing machines.” (Spec. 7,11. 22—24.)
1 According to Appellant, the real party in interest is Break Room
Media LLC. (Appeal Br. 1.)
Appeal 2014-007517
Application 13/016,821
Claims 1, 25, 30, and 37 are the independent claims on appeal.
Claim 1 is illustrative. It recites (emphasis added):
1. A method for providing advertising in a system for
advertising on a beverage preparation and dispensing machine,
the method comprising:
receiving input, by the system for advertising on a
beverage preparation and dispensing machine, from a user or
from a device of the user, wherein the system includes a
computer processor and a non-transitory memory coupled to the
computer processor;
automatically selecting, by the system for advertising on a
beverage preparation and dispensing machine, media to be
presented to the user based on the received input;
electronically presenting, by the system for advertising on
a beverage preparation and dispensing machine, the selected
media;
automatically activating, by the system for advertising on
a beverage preparation and dispensing machine, operation of one
or more beverage preparation or dispensing mechanisms, or a
displaying of a beverage selection menu, causing the operation
or displaying to occur at least partially concurrently with the
electronically presenting the selected media;
associating, by the system for advertising on a beverage
preparation and dispensing machine, a beverage dispensing
cycle of the beverage preparation or dispensing mechanisms
with compensation for the presenting of the selected media; and
recording, by the system for advertising on a beverage
preparation and dispensing machine, information regarding the
association between the beverage dispensing cycle of the
beverage preparation or dispensing mechanisms and the
compensation for the presenting of the selected media.
REJECTIONS
Claims 1—5, 12, 13, 25—27, 30, 34, 35, and 37 are rejected under 35
U.S.C. § 103(a) as unpatentable over Illingworth (US 2007/0100696 Al,
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Application 13/016,821
pub. May 3, 2007), Con (US 2003/0079612 Al, pub. May 1, 2003), and
Black (US 2002/0138433 Al, pub. Sept. 26, 2002).
Claims 6—10, 18, 19, 36, and 38 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Illingworth, Con, Black, and Official Notice.
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Illingworth, Con, Black, and Rossides (US 2005/0096977 Al, pub.
May 5, 2005).
Claims 14—16, 22—24, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Illingworth, Con, Black, and Cameron (US
2003/0055735 Al, pub. Mar. 20, 2003).
Claims 17, 20, 21, 28, 29, 31, and 32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Illingworth, Con, Black, and Hall (US
7,107,231 Bl, iss. Sept. 12, 2006).
ANALYSIS
Appellant argues the patentability of claim 1. Appellant does not
present separate arguments for independent claims 25, 30, and 37. Instead,
Appellant argues that “[ajlthough the language of claims 25—38 is not
identical to that of claims 2—24, the nonobviousness of claims 25—38 will be
apparent in view of the . . . discussion [of claim 1].” (App. Br. 12.)
Claims 1—36
Appellant argues that “there is no mention in Black, or in any of the
references relied on by the Examiner, of an association between the
beverage dispensing cycle and compensation for the presenting of the
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selected media, let alone recording of any information regarding this
association.” {Id. at 11.)
The Examiner finds that
Illingworth discloses a method for presenting ads to users who
purchase food and drink from a vending machine. Black,
however, discloses a method associated with an advertising
terminal that stores a record of the ads that were displayed in
order to receive compensation from the advertisers whose ads
were presented. (Paragraph 51). Therefore, as stated above, it is
the combination of these references that renders the limitation
obvious.
(Answer 14.) Regardless, Appellant argues, “neither of these alleged
teaching disclose [sic] ‘recording . . . information regarding the association
between the beverage dispensing cycle of the beverage preparation or
dispensing mechanisms and the compensation for the presenting of the
selected media. (Reply Br. 21.)
Claim 1 recites “associating, by the system for advertising on a
beverage preparation and dispensing machine, a beverage dispensing cycle
of the beverage preparation or dispensing mechanisms with compensation
for the presenting of the selected media.”
Black discloses an automated teller machine application that “stores a
record of which advertisements were displayed so that the ATM network
owner can charge for displaying the advertisements.” (Black 151.) Thus,
the cited portion of Black discloses recording which ads were displayed.
Additionally, Black discloses that the selected advertisements are displayed
“when the ATM ... is not being used.” {Id.) In short, Black discloses
recording which advertisements were displayed when the machine was not
in use. The Examiner does not indicate where Black discloses associating a
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usage cycle of the ATM with the presenting of an advertisement. It follows
that the Examiner also does not indicate where Black discloses recording
information regarding the association. Nor has the Examiner sufficiently
explained why it would have been obvious, in view of the cited art, to
associate a usage cycle with compensation for presenting the advertisement
or recording the association.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 1 under § 103. Independent claims 25 and 30 contain similar language
and for similar reasons, we are persuaded that the Examiner erred in
rejecting claims 25 and 30 under § 103. Dependent claims 2—24 depend
from claim 1, dependent claims 26—29 depend from claim 25, and dependent
claims 31—36 depend from claim 30. For the reasons discussed above, we
are also persuaded that the Examiner erred in rejecting dependent claims 2—
24,26-29, and 31-36.
Claims 37 and 38
Independent claim 37 does not contain the associating and recording
limitations discussed above. Claim 37 recites:
37. A method for providing advertising in a system for
advertising on a beverage preparation and dispensing machine,
the method comprising:
receiving input, by the system for advertising on a
beverage preparation and dispensing machine, indicative of a
beverage selection from a user or from a device of the user,
wherein the system includes a computer processor and a non-
transitory memory coupled to the computer processor;
automatically selecting, by the system for advertising on a
beverage preparation and dispensing machine, media to be
presented to the user based on the beverage selection;
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Application 13/016,821
electronically presenting, by the system for advertising on
a beverage preparation and dispensing machine, the selected
media;
automatically activating, by the system for advertising on
a beverage preparation and dispensing machine, operation of one
or more beverage preparation or dispensing mechanisms, or
displaying of a beverage selection menu, and causing the
operation or displaying to occur at least partially concurrently
with the electronically presenting the selected media.
Appellant argues that “none of the references relied upon by the
Examiner teach or suggest a ‘system for advertising on a beverage
preparation and dispensing machine” as recited in claim 1(Reply
Br. 16.) But the Examiner relies on a combination of the references. (See
Final Action 3—4.) “[0]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Moreover, Con discloses “[a]n apparatus for preparing and vending
beverages based on selections input by consumers.” (Con, Abstract.)
Additionally, we note that “on a beverage preparation and dispensing
machine” simply states an intended use for the claimed invention. “An
intended use or purpose usually will not limit the scope of the claim because
such statements usually do no more than define a context in which the
invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). That is the case here,
i.e., the phrase merely defines the context in which the invention is intended
to operate. Therefore, the phrase “on a beverage preparation and dispensing
machine” does not limit the scope of the claim.
Appellant also argues that in neither Illingworth nor Con “does the
system cause operation of any beverage preparation or dispensing (or
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displaying of a beverage selection menu) to occur concurrently with
presenting the media that was selected based on user input.” (Appeal
Br. 11.)
Once again we note that the Examiner relies on the combination of the
references. (See Final Action 3.) In relevant part, the Examiner finds:
Illingworth fails to explicitly disclose a method
comprising automatically activating one or more consumable
item preparation or dispensing mechanisms, or a consumable
item selection menu, at least partially concurrently with the
electronically presenting the selected media.
Con, however, discloses a method in which one or more
beverage preparation and dispensing mechanisms are
automatically activated on a beverage preparation/dispensing
machine, and wherein information regarding the beverage
preparation is displayed to the user. (Fig. 4; Abstract; Paragraphs
11—12 and 14—15).
(Id.) Specifically, Con discloses “receiving the beverage selections entered
by a consumer . . . [and] displaying to the consumer the beverage
preparation process” on one or more displays, i.e., displaying the preparation
process information concurrently with operation of the beverage preparation
mechanism. (See Con, || 14, 50, Fig. 4.)
With regard to Appellant’s argument that “the Examiner has failed to
present a sufficient suggestion or motivation to combine the relied-upon
references, we disagree. The Examiner determines that it would have been
obvious to one of ordinary skill in the art “to [combine Con with
Illingworth] in order to provide a means of presenting revenue-generating
advertisements to users of a vending and/or beverage preparation machines.”
(Final Action 3.) The Examiner also determines that one of ordinary skill in
the art “would have been motivated to [combine Black with Illingworth] in
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order to establish a means for billing, accounting, and generation of revenue
when providing the ads to user of vending machines.” {Id. at 4.) The
Examiner further determines that it would have been obvious to combine the
references “since the claimed invention is merely a combination of old
elements, and in the combination each element merely would have
performed the same function as it did separately” and “that the results of the
combination were predictable.” {Id.) Therefore, we are not persuaded that
the Examiner failed to present a sufficient suggestion or motivation to
combine the references.
In view of the above, Appellant has not persuasively argued why the
Examiner erred in determining that the combination of Illingworth and Con
discloses causing the operation of the beverage preparation to occur at least
partially concurrently with the electronically presenting the selected media.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 37 under § 103.
Claim 38 depends from claim 37. Claim 38 recites: “The method of
claim 37 wherein the automatically selecting media to be presented to the
user is also based on a user selection regarding types of media.”
In rejecting claim 38 under § 103, the Examiner takes Official Notice
“that it is well-established in the art for a user to choose the media format in
which they prefer to receive ads.” (Final Action 9.)
Appellant argues:
In rejecting dependent claims 6-10, 18-19, 36 and 38, the
Examiner attempts to take Official Notice of “it is well-
established in the art for an advertising system to record an
occurrence of the delivery of the ad ... it is well-established in
the art for an advertising system to automatically compensate and
notify an advertising entity when an ad is delivered ... it is well-
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established in the art for an advertising system to communicate
information regarding the ad delivery and user to whom the ad
was delivered ... it is well-established in the art for a vending
machine to display a subset of beverage or food choice menu
selections and to receive input that includes media topics or a
selection of food and beverages ... it is well-established in the
art for a user to choose the media format in which they prefer to
receive ads” (pages 7—9 of the Office Action).
Applicant submits that such factual assertions are not
capable of such instant and unquestionable demonstration as to
defy dispute and does not agree that such factual assertions are
properly based upon common knowledge.
(Appeal Br. 12.)
A challenge to Official Notice must “contain adequate information or
argument so that on its face it creates a reasonable doubt regarding the
circumstances justifying” the Examiner’s Notice of what is well-established
in the art. See In re Boon, 439 F.2d 724, 728 (CCPA 1971.) “To adequately
traverse such a finding, an applicant must specifically point out the supposed
errors in the examiner’s action, which would include stating why the noticed
fact is not considered to be common knowledge or well-known in the art.”
(MPEP § 2144.03(C).)
In this case, Appellant presents a general argument regarding five
separate Official Notices taken by the Examiner. Appellant does not
specifically point out why it is not “well-established in the art for a user to
choose the media format in which they prefer to receive ads.” (See Appeal
Br. 12; see also Reply Br. 32.) Therefore, we are not persuaded that the
Examiner erred in rejecting claim 38 under § 103.
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DECISION
The Examiner’s rejections of claims 1—36 under 35 U.S.C. § 103(a)
are reversed.
The Examiner’s rejections of claims 37 and 38 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)(2013).
AFFIRMED-IN-PART
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