Life Impact Solutions, LLCDownload PDFPatent Trials and Appeals BoardOct 4, 20212021001354 (P.T.A.B. Oct. 4, 2021) Copy Citation 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. 14/804,075 07/20/2015 Aaron Horvath 103135.0002US1 7305 24392 7590 10/04/2021 FISH IP LAW, LLP 2603 Main Street Suite 1000 Irvine, CA 92614 EXAMINER BRANDENBURG, WILLIAM A ART UNIT PAPER NUMBER 3600 NOTIFICATION DATE DELIVERY MODE 10/04/2021 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): Patents@fishiplaw.com rfish@fishiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte AARON HORVATH ____________ Appeal 2021-001354 Application 14/804,075 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and AMEE A. SHAH, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Aaron Horvath (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 12–19, which constitute all pending claims before us for review.1,2 We have jurisdiction under 35 U.S.C. § 6(b). A video hearing was held on September 28, 2021. We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Life Impact Solutions, LLC.” Appeal Br. 2. 2 Claims 1–11 and 20–29 are canceled. Id. at 11–12. Appeal 2021-001354 Application 14/804,075 2 Sole Independent Claim on Appeal 12. A method of enabling a social media user to brand an image taken by the user with a branding element made available to the user by a business, and distribute the branded image to contacts of the user, the method comprising the steps of: a) using a location based advertising system to register the business, a designated geographic location, and the branding element; and b) providing the user with a software application, executable upon a portable computing device of the user to: i) determine a current location of the user; ii) utilize the current location to download the branding element from the geographic location based advertisement system; iii) produce a branded image by dynamically combining the downloaded branding element with the image; and iv) share the branded image through a social media account of the user; c) wherein the image taken by the user is an image taken with the user’s portable computing device; d) wherein the action of the user in sharing the branded advertisement message is free to the business; and e) wherein step (b)(iii) is executed regardless of any content of the image, in that if the current location of the user is within the registered business geographic location, then the image selected by the user is used to produce the branded image. Appeal Br. 11, Claims App. Rejection3 Claims 12–19 are rejected under 35 U.S.C. § 103 as being unpatentable over Oberbrunner et al. (US 2015/0294367 A1, pub. Oct. 15, 3 The rejection of claims 12–19 under 35 U.S.C. § 101 is withdrawn. Ans. 3. Appeal 2021-001354 Application 14/804,075 3 2015) (hereinafter “Ober”) and Benyamin (US 2013/0290091 A1, pub. Oct. 31, 2013). OPINION Appellant contends that “Ober always requires that it is the server (and not the user) that combines the branding and advertising messaging with the user-created images.” Reply Br.4 4. Appellant argues that “[t]here is simply no teaching, suggestion, or motivation in Ober for the client/user’s device to satisfy claim 12 by combining the downloaded branding with a user-created image.” Id. at 5; see also Appeal Br. 8–9. We disagree that Ober always requires server side processing for combining a branding element with a user created image because paragraph 9 of Ober expressly discloses with italics added: In some examples, content is merged with ad media using ‘client side processing.’ In these examples, the client receives the ad media and merges the ad media with user-generated media. For example, the ad media may take the form of a semi- transparent logo, frame, or identifying mark that the client can composite onto the user-generated media, using e.g. any standard compositing operator, such as OVER, PLUS, or SCREEN. The client can then send the final composited media to the server or directly to a sharing service. See Non-Final Act. 20 (citing Ober paras. 9, 14, 15). Paragraph 14 of Ober discloses that “[s]oftware on the client device enables recording, storage, modification, uploading, and sharing of media.” Ober describes that the user or client device can merge ad media with user content using standard 4 The Reply Brief lacks page numbers. We designate page 1 as the page that includes the heading “APPELLANT’S REPLY UNDER 37 CFR § 41.41” and number the remaining pages in the Reply Brief consecutively therefrom. Appeal 2021-001354 Application 14/804,075 4 compositing software and send the final image directly to a sharing service. Id. paras. 9, 14. As the Examiner correctly observes, Ober’s teachings are not limited to server side processing and, contrary to Appellant’s contention (Ans. 6), do not require server input for combining a branding element and a user-generated image. Ober describes at least two separate embodiments, one where the user is in control of producing and sending the final image to a sharing service (client side processing) which the Examiner relies on in paragraphs 9 and 14, and one where the server is in control of producing a branded image and sending it to a sharing service which Appellant focuses on. Accordingly, we sustain the rejection of independent claim 12 under 35 U.S.C. § 103. For the same reasons, we also sustain the rejection of claims 13–19, which depend from claim 12 and are not argued separately. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 12–19 103 Ober, Benyamin 12–19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation