SKYSCANNER LIMITED

Patent Trials and Appeals Board

Feb 3, 2021

2019005934 (P.T.A.B. Feb. 3, 2021)

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.
14/034,919 09/24/2013 Ori Zaltzman 365513.00011 5898
78905 7590 02/03/2021
Saul Ewing Arnstein & Lehr LLP (Philadelphia)
Attn: Patent Docket Clerk
Centre Square West
1500 Market Street, 38th Floor
Philadelphia, PA 19102-2186
EXAMINER
LHYMN, SARAH
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
02/03/2021 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@saul.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ORI ZALTZMAN and TRAVIS KATZ
Appeal 2019-005934
Application 14/034,919
Technology Center 2600
Before CARL W. WHITEHEAD JR., MICHAEL J. ENGLE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–10, 12–17, 20–22, and 24–28, which are all of the
claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Skyscanner Limited as the real party
in interest. Appeal Br. 2.
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Application 14/034,919

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TECHNOLOGY
The application relates to “the creation of digital postcards” on a
mobile phone. Spec. ¶ 2, claim 1.
ILLUSTRATIVE CLAIM
Claim 1 is illustrative and reproduced below:
1. A method for generating a digital postcard on a mobile phone
including a screen, and uploading the digital postcard from the
mobile phone, the method comprising:
receiving on the mobile phone a selection of an image
from a user;
accessing location data associated with the image, the
location data describing a location at which the image was
captured;
identifying one or more candidate locations located within
a threshold distance of the location described by the location
data;
receiving on the mobile phone a selection of a candidate
location from the user;
accessing location information associated with the
selected location;
receiving on the mobile phone screen, from the user, a
selection of an image modification scheme from a plurality of
image modification schemes, each of the plurality of image
modification schemes identifying a plurality of image locations
within boundaries of an image for overlaying text and, for each
identified image location, an associated category of location
data;
generating on the mobile phone a digital postcard by, for
each image location of the plurality of image locations identified
by the selected image modification scheme:
identifying a category of location data associated
with the image location;
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automatically selecting a portion of the accessed
location information that corresponds to the identified
category of location data associated with the image
location, the selected portion of the accessed location
information comprising textual content; and
overlaying the textual content of the selected
portion of the accessed location information at the image
location within the image such that the textual content is
displayed when the digital postcard is displayed on the
mobile phone screen; and
uploading the digital postcard from the mobile phone to a
digital postcard database hosted on a server.
REFERENCES
The Examiner relies on the following references as prior art:
Name Reference Date
Baltrunas Context-Aware Places of Interest Recommendations for Mobile Users 2011
Beletski US 2009/0143977 A1 June 4, 2009
Berger US 2011/0283210 A1 Nov. 17, 2011
Edwards US 2012/0254261 A1 Oct. 4, 2012
Tsitoukis US 2007/0247666 A1 Oct. 25, 2007
REJECTIONS
The Examiner makes the following rejections under 35 U.S.C.
§ 103(a):
Claims References Final Act.
1–10, 12, 13, 15,
17, 20–22, 24–28
Beletski, Berger, Tsitoukis,
Edwards 4–5
14, 16 Beletski, Berger, Tsitoukis, Edwards, Baltrunas 36
ISSUES
1. Did the Examiner err in finding a person of ordinary skill in the
art would have combined Beletski, Berger, and Tsitoukis for claim 1?
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2. Did the Examiner err in finding Berger teaches or suggests
“displaying a total number of digital postcards,” as recited in claim 26?
3. Did the Examiner err in finding a person of ordinary skill in the
art would have had reason to combine Tsitoukis and Edwards with respect to
the “travel website” recited in claim 27?
ANALYSIS
Claim 1
First, Appellant argues that it would not have been obvious to
combine Beletski’s mobile phone with Tsitoukis’ postcards or Berger’s
image modification or textual content “because the mobile phone display of
Beletski would have been too small” to read reliably. Appeal Br. 13, 16;
Reply Br. 3, 6–9.
We are not persuaded by Appellant’s arguments. Contrary to
Appellant’s arguments (Reply Br. 6–9), Beletski discloses that the
device 212 shown in Figures 5–11 can be a “smart phone, mobile telephone,
[or] cellular telephone (cell phone).” Beletski ¶ 21. We agree with the
Examiner that “the mobile screen of Beletski is clearly capable of holding
and displaying a great deal of information . . . for the digital travel guide
application of Beletski.” Ans. 6. For example, Figure 5 depicts five buttons
for previous trips and one button for a new trip. Beletski ¶ 42. Figure 8A
depicts a variety of user interface buttons on the bottom and top of the
screen. Id. ¶ 45. Figure 8B depicts a textual information overlay. Id. The
Examiner finds, and we agree, that “one of ordinary skill in the art would
have reasonably understood that the mobile screen of Beletski, already
taught to have a robust method for generating digital travel guides, could
also reasonably be modified in view of the applied references to also create
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digital postcards,” such as those taught in Tsitoukis. Ans. 4. As the
Supreme Court has said, “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007). Appellant’s rigid requirement that any combination
use exactly the same font size and exactly the same buttons shown in the
figures of each current reference is not consistent with KSR.
For similar reasons, we are not persuaded by Appellant’s argument
that “[t]he proposed modification by the Examiner changes the principle of
operation of Berger, because the selection of an image modification scheme
in Berger . . . would have been suitable for use on a desktop computer, but
they would have been unsuitable for use on a mobile phone screen.” Appeal
Br. 19. “The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, beyond
bodily incorporation, Appellant gives no reason why a person of ordinary
skill in the art would have been discouraged from incorporating Berger’s
techniques, such as those shown in Figure 7d, into a mobile phone.
Appellant also argues that “Tsitoukis is not analogous art for the
mobile phone screen-related disclosures of Beletski.” Appeal Br. 23.
However, we agree with the Examiner that the test for analogous art
compares a reference “to the claimed invention,” not to other references. In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (“A reference qualifies as
prior art for an obviousness determination under § 103 only when it is
analogous to the claimed invention.”); Ans. 7. We further agree with the
Examiner that “Tsitoukis is both from the same field of endeavor as
Appellant (digital postcards), and reasonably pertinent to the problem faced
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by the inventor.” Ans. 7. Although Appellant attempts to narrow the field
of endeavor to only generating digital postcards “on a mobile phone” (Reply
Br. 11), the Federal Circuit has held that the field of endeavor should not be
so limited: “The field of endeavor of a patent is not limited to the specific
point of novelty, the narrowest possible conception of the field, or the
particular focus within a given field.” Unwired Planet, LLC v. Google Inc.,
841 F.3d 995, 1001 (Fed. Cir. 2016). Moreover, even if we did adopt
Appellant’s overly narrow field of endeavor, the techniques for creating a
digital postcard on a kiosk still would have been reasonably pertinent to
creating a digital postcard on a mobile phone as the desired end product (i.e.,
a digital postcard) would be identical. Ans. 7.
Accordingly, we sustain the Examiner’s rejections of claim 1, and
claims 2–10, 12–17, 20–22, 24, 25, and 28, which Appellant argues are
patentable for similar reasons. See Appeal Br. 26, 29; 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 26
First, Appellant argues that “the Examiner’s argumentation relates to
postcard templates, whereas dependent Claim 26 relates to postcards.”
Appeal Br. 27 (emphasis added). According to Appellant, a “postcard
template is a starting point for creating a postcard, which may be used in a
design process,” whereas a “postcard of Claim 26 is a finished postcard,
which is no longer subject to a design process.” Id.
We are not persuaded by Appellant’s argument. The claims and the
rest of the Specification never use the term “template,” and Appellant has
not directed us to any support for such an interpretation. To the contrary, the
Specification uses the term “postcard” in referring to previews with different
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image modification schemes. E.g., Spec. ¶ 36 (“The preview 320 of the
digital postcard in the embodiment of Fig. 3a illustrates the modification of
the image according to the Lush image modification scheme”). Similarly,
when tourists buy small pictures to mail to friends and family, those pictures
are referred to as “postcards” even though they have not yet been “finished”
with an address, message, and stamp. We also note that Tsitoukis teaches
“[t]he templates may include stock images and/or text” rather than being
customized. Tsitoukis ¶¶ 39, 54. Thus, Appellant fails to provide any
patentable distinction between claim 26’s “postcard” and what Tsitoukis
discloses. E.g., Tsitoukis Figs. 2–3.
Second, Appellant argues that none of the references disclose
“displaying a total number of digital postcards” for a particular location.
Appeal Br. 27. According to Appellant, “Tsitoukis teaches that postcards
are created one at a time, e.g., in Figures 2 and 3.” Id.
The Examiner relies on a combination of Tsitoukis and Berger for this
claim. Final Act. 33; Ans. 7–8. “Basically modifying the concept that
Berger teaches (displaying each of the additional templates, i.e. a total
number of additional templates), with postcard templates (Tsitoukis)
corresponding to the selected candidate location (Tsitoukis and/or suggested
by Berger), would have been obvious and predictable to one of ordinary skill
in the art.” Final Act. 3.
We are not persuaded by Appellant’s argument. One of the figures in
Tsitoukis cited by Appellant expressly shows the number of each postcard.
Tsitoukis Fig. 2 (displaying “1” through “6” under each image for a total of
6 images). Berger similarly discloses showing the total number of pictures.
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E.g., Berger Fig. 9a (“All (140)”).2 To the extent Appellant is arguing that
the combination would show a total number of “postcard templates” rather
than “postcards,” we are not persuaded for the reasons discussed above.
Accordingly, we sustain the Examiner’s rejection of claim 26.
Claim 27
Dependent claim 27 recites the “digital postcard” database is
associated with “a travel website.”
Appellant argues that “the only specific website examples provided”
in Tsitoukis “are photo development facilities” such as “dotphoto.com,
ofoto.com or snapfish.com,” which “do not teach or suggest a travel
website.” Appeal Br. 28. Further, “Edwards fails to disclose digital
postcards.” Id. “Accordingly, there is no motivation to combine Tsitoukis
with Edwards.” Id.
We are not persuaded by Appellant’s arguments. The Examiner relies
on Edwards to teach a “travel website,” not Tsitoukis. Final Act. 34.
Similarly, the Examiner relies on Tsitoukis to teach a “digital postcard,” not
Edwards. Id. Moreover, as both Appellant and the Examiner note,
Tsitoukis’ invention “provides a device and system capable of distributing
such postcard images . . . in electronic form, e.g., . . . by posting the postcard
image on a website” and provides specific examples of “photo development
facility” websites “such as dotphoto.com, ofoto.com or snapfish.com.”
Tsitoukis ¶¶ 26, 71. Tsitoukis also discloses using postcards for travel. E.g.,
id. ¶ 13 (“a postcard depicting the locale of an individual tourist’s trip may

2 Though not relied upon by the Examiner for this limitation, we also note
that Beletski’s Figures 8A through 10B similarly show a total number in “0
of 6 selected” or “1 of 6 selected.”
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be sent by an individual tourist”), Figs. 2–3 (creating a postcard for Jamaica
Hotel saying “Wish you were here - Jamaica is beautiful”). The Examiner
has set forth reasons for the proposed combination, yet Appellant has given
no reason why a person of ordinary skill in the art would have thought a
digital postcard on a “travel” website rather than a “photo development
facility” website would be structurally any different or their combination
otherwise non-obvious, particularly when Tsitoukis’ digital postcards were
already travel-oriented. Thus, Appellant does not persuade us of error in the
Examiner’s determination that “[m]odifying the travel service website of
Edwards[] to include the travel postcard services and functionality of
Tsitoukis . . . would have been obvious and predictable to one of ordinary
skill in the art.” Final Act. 34.
Accordingly, we sustain the Examiner’s rejection of claim 27.
OUTCOME
The following table summarizes the outcome of each rejection:
Claims Rejected 35 U.S.C. § References Affirmed Reversed
1–10, 12, 13, 15,
17, 20–22, 24–28
103(a) Beletski, Berger,
Tsitoukis, Edwards
1–10, 12, 13,
15, 17, 20–22,
24–28

14, 16 103(a) Beletski, Berger,
Tsitoukis, Edwards,
Baltrunas
14, 16
Overall
Outcome
1–10, 12–17,
20–22, 24–28

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TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).
AFFIRMED