Visio Media, Inc.

Patent Trials and Appeals Board

Nov 10, 2021

2021001410 (P.T.A.B. Nov. 10, 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.
14/327,257 07/09/2014 Fouad EL-MASRI 00058-0001-01000 4692
108449 7590 11/10/2021
Bookoff McAndrews, PLLC
2020 K Street NW
Suite 400
Washington, DC 20006
EXAMINER
SUMMERS, KIERSTEN V
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
11/10/2021 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):
KRoss@bomcip.com
eofficeaction@appcoll.com
usptomail@bomcip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FOUAD EL-MASRI, BOAZ LAU, and BRUCE JOHNSON
____________

Appeal 2021-001410
Application 14/327,257
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.

MEDLOCK, 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, 3, 4, 6, 7, 9, 10, 12, 14–17, 19–25, 27, 28, 30–32, and
35. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed August 20, 2020) and Reply Brief (“Reply Br.,” filed December 21,
2020), the Examiner’s Answer (“Ans.,” mailed October 20, 2020) and Non-
Final Office Action (“Non-Final Act.,” mailed May 21, 2020). Appellant
identifies Vertical City Inc. as the real party in interest (Appeal Br. 2).
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CLAIMED INVENTION
The Specification states, “particular embodiments of the present
disclosure relate to systems and methods for providing digital information
and advertising in an elevator using the internet to update a display in the
elevator based on elevator passenger data that [are] identified and analyzed”
(Spec. ¶ 2).
Claims 1, 14, 22, and 35 are the independent claims on appeal.
Claim 1, reproduced below with bracketed notations added, is illustrative of
the claimed subject matter:
1. A computer-implemented method for providing
information in a defined space, the method comprising:
[(a)] receiving, by at least one processor, data related to
one or more individuals in the defined space, wherein at least
some of the received data is obtained by a camera in the defined
space, the camera sensing a presence of the one or more
individuals in the defined space and obtaining the data by
obtaining images of the one or more individuals in the defined
space, at least some of the received data is a MAC address
received from a device associated with the one or more
individuals, and at least some of the received data is obtained by
a microphone in the defined space;
[(b)] wherein the defined space is contained within an
elevator cab powered by an uninterrupted elevator electric
circuit, the elevator cab being movable through an elevator shaft
of a building, and the at least one processor is connected to at
least one client server, an elevator cab on-board server positioned
on or within the elevator cab, and a display unit, the client server
is electrically connected to the uninterrupted elevator electric
circuit, and the client server is disposed in an elevator control
room in the building;
[(c)] wherein the display unit is configured to: display on
a screen of the display unit instructions to tap the screen with an
electronic device, and display SMS numbers on the screen and
instructions to send a text message to the SMS numbers;
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[(d)] identifying, using the at least one processor, the one
or more individuals based on the received data;
[(e)] creating, using the at least one processor, a unique
identifier for each individual identified in the defined space;
[(f)] identifying, for each individual identified in the
defined space using the at least one processor, one or more
brands associated with the identified individual based on visual
representations of the one or more brands within the received
data, wherein the visual representations include images of
clothing worn by the identified individual and of accessories
carried by the identified individual, and identifying the one or
more brands associated with the identified individual also
includes determining respective brands of products discussed by
the identified individual using data obtained by the microphone;
[(g)] associating, for each individual identified in the
defined space using the at least one processor, the one or more
identified brands with the unique identifier of the individual,
wherein the identifying one or more brands step, and the
associating the one or more identified brands step, is repeated
each time the individual is identified within the elevator cab over
a course of multiple trips in the elevator cab such that each brand
identified as being associated with the identified individual at
any point is associated with the unique identifier of the
individual;
[(h)] determining, using the at least one processor, the
information to provide as a function of the identification of the
one or more individuals and the one or more identified brands
associated with the unique identifiers of the one or more
individuals in the defined space, wherein the information is
selectively determined from a library of content, and wherein the
step of determining the information is performed subsequently to
the steps of: (a) identifying, using the at least one processor, the
one or more individuals based on the received data; (b) creating,
using the at least one processor, a unique identifier for each
individual identified in the defined space; (c) identifying, for
each individual identified in the defined space using the at least
one processor, one or more brands associated with the identified
individual based on the received data; and (d) associating, for
each individual identified in the defined space using the at least
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one processor, the one or more identified brands with the unique
identifier of the individual;
[(i)] providing the information to the one or more
individuals by graphically displaying images on the display unit,
wherein, when multiple individuals having a previously assigned
unique identifier are in the elevator cab, information relevant to
a highest percentage of the one or more individuals is provided,
and upon tapping of the screen with the electronic device to
enable a Near Field Communication link, or upon a user texting
one of the SMS numbers, additional information pertaining to the
information displayed on the screen is displayed on the electronic
device of the user by automatically opening a URL on the
electronic device of the user, wherein providing the information
to the one or more individuals also includes determining a topic
of discussion amongst individuals within the elevator cab via the
microphone and the at least one processor, wherein the provided
information is selected based on the determined topic of
discussion;
[(j)] after providing the information to the one or more
individuals, determining via a motion detector and the at least
one processor, a hand gesture from the one or more individuals,
and after determining that the hand gesture has been made,
providing additional information on the display unit about
previously-displayed information based on the determination
that the hand gesture has been made.
REJECTION2
Claims 1, 3, 4, 6, 7, 9, 10, 12, 14–17, 19–25, 27, 28, 30–32, and 35 are
rejected under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement.

2 The Examiner has withdrawn the rejection of claims 21, 27, and 28 under
35 U.S.C. § 112(d) (Ans. 3).
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DISCUSSION
Legal Principles
Section 112(a) of the Patent Laws reads, in part, “[t]he specification
shall contain a written description of the invention.” 35 U.S.C. § 112(a).
The purpose of this written description requirement is to “ensure that the
scope of the right to exclude, as set forth in the claims, does not overreach
the scope of the inventor’s contribution to the field of art as described in the
patent specification.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1353–54 (Fed. Cir. 2010) (citation omitted). The requirement, thus,
“ensures that the public receives a meaningful disclosure in exchange for
being excluded from practicing an invention for a period of time.” Id.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail such that one skilled in the
art can reasonably conclude that the inventor had possession of the claimed
subject matter at the time the application was filed. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991). In particular, the
specification must describe the claimed invention in a manner
understandable to a person of ordinary skill in the art and show that the
inventor actually invented the claimed invention. Id.; see also Ariad,
598 F.3d at 1351; Examining Computer-Implemented Functional Claim
Limitations for Compliance with 35 U.S.C. 112, 84 Fed. Reg. 57, 61–62
(Jan. 7, 2019) (the “2019 § 112 Guidelines”). The written description
requirement does not demand any particular form of disclosure; however,
“a description that merely renders the invention obvious does not satisfy the
requirement.” Ariad, 598 F.3d at 1352 (citation omitted).
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Analysis
Here, in rejecting the pending claims under 35 U.S.C. § 112(a), the
Examiner noted that the claims recite “identifying a brand based on camera
data, determining a topic of discussion via a microphone, and determining a
hand gesture” (Non-Final Act. 19). And, quoting portions of claims 1, 6, 14,
21, 22, 27, and 35 and of paragraphs 37, 42, 49, 50, 51, 53, 58, and 64 of the
Specification, the Examiner determined that the pending claims are properly
rejected as failing to comply with the written description requirement
because although the Specification describes that “the system takes inputs
and produces outputs,” the Specification “does not describe the actual
processing to make the determination,” i.e., to identify the brands associated
with the individuals in the defined space, to determine a topic of discussion
amongst the individuals, or to determine a hand gesture from one or more of
the individuals (id. at 19–28).
We are not persuaded, as an initial matter, by Appellant’s argument
that the Examiner has failed to establish a prima facie case of unpatentability
(Appeal Br. 11–14). The Federal Circuit has observed repeatedly that “the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The court has, thus, held that the USPTO “satisfies its initial burden of
production by ‘adequately explain[ing] the shortcomings it perceives so that
the applicant is properly notified and able to respond.”’ In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (quoting Hyatt, 492 F.3d at 1369–70). Thus,
what is required of the Office is that it sets forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
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notice requirement of 35 U.S.C. § 132. Id.; see also Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990) (“Section 132 is violated when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.”). Here, the Examiner did
precisely what § 132 requires. And, in doing so, the Examiner established a
prima facie case of unpatentability.
Identifying a Brand based on Camera Data
Each of independent claims 1, 14, 22, and 35 calls for identifying one
or more brands associated with one or more individuals in a defined space
based on received data obtained by a camera (see, e.g., steps (a) and (f), as
recited in claim 1). Appellant argues that the rejection of these claims under
35 U.S.C. § 112(a) is improper, and that the Specification provides sufficient
written description support for these limitations at least in paragraphs 49, 50,
51, and 53 (Appeal Br. 15–19).
Referencing paragraph 49, Appellant notes that the Specification
describes that brand recognition may occur based on “logo detection,
determining unique brand patterns, or determining brand designs”; and
Appellant asserts that these are “particular techniques by which the claimed
methods and systems reach the desired result (i.e., identifying a brand) from
input data (e.g., image data)” (Appeal Br. 15–16). Appellant maintains that
paragraphs 50 and 51 describe other exemplary techniques for identifying a
brand (id. at 17–18 (noting that paragraph 50 states that brands may be
associated with individuals based on learning algorithms or pre-set rules);
19 (noting that paragraph 51 describes that “when a previous profile exists
for a user, there [sic] stored brand preferences along with any new data
revealing brand preference may be utilized to determine the one or more
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brands associated with the individual”)) and that paragraph 53 provides
“specific use cases demonstrating implementations of techniques” disclosed
in paragraphs 49–51 (id. at 19).
Responding to Appellant’s arguments, the Examiner observes, and we
agree, that the Specification merely describes the desired output, i.e., a
brand; there is no mention in the Specification of “how the system gets from
(a) the camera data to the unique brand pattern, i.e.[,] a brand, or (b) from
the camera data to the brand design, i.e.[,] a brand, or (c) from the camera
data to detection of a logo, i.e.[,] a brand” (Ans. 6; see also Non-Final Act.
3–4).
Appellant maintains that “a person of ordinary skill in image
processing art would understand a ‘logo detection’ to be an adequate ‘step’
in identifying data” (Appeal Br. 17). And Appellant explains that “[t]he step
may be performed by, for example, employing any generically used and
widely available text detecting functions/tools, such as optical character
recognition (OCR)” (id.).
Appellant argues, “the brand identification function is ‘described with
sufficient detail so that one of ordinary skill in the art would understand how
the inventor intended the function to be performed,’ [e.g., using well-known
and widely available text detecting tools,] fully complying with the
standards under 35 U.S.C. 112(a)” (Appeal Br. 17). Yet, as the Examiner
observes, it is not enough that one skilled in the art could write a program to
achieve the claimed function; the Specification must explain how the
inventor intends to achieve the claimed function to satisfy the written
description requirement. Vasudevan Software, Inc. v. MicroStrategy, Inc.,
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782 F.3d 671, 681–83 (Fed. Cir. 2015); see also 2019 § 112 Guidelines,
84 Fed. Reg. at 62.
Here, we agree with the Examiner that the Specification does not
describe any algorithm or steps for identifying a brand based on camera data.
As such, we agree with the Examiner that Appellant has not demonstrated
that the Specification provides the requisite written description support.
Therefore, we sustain the Examiner’s rejection of claims 1, 3, 4, 6, 7, 9, 10,
12, 14–17, 19–25, 27, 28, 30–32, and 35 under 35 U.S.C. § 112(a) on this
basis.
Determining a Topic of Discussion via a Microphone
Appellant maintains that the Examiner additionally erred in rejecting
the claims under 35 U.S.C. § 112(a) on the ground that Specification fails to
provide adequate written description support for “determining a topic of
discussion amongst individuals within the elevator cab via the microphone
and the at least one processor,” as called for in independent claims 1 and 35
(Appeal Br. 20–22). And Appellant argues that the requisite written
description support can be found in paragraphs 64 and 65 of Appellant’s
Specification (id.).
In this regard, Appellant notes that paragraph 64 states “regarding
determining a topic of discussion, word or context recognition may be used
to determine what [sic] the topic of discussion or if a particular word is
stated” (Appeal Br. 20). Appellant asserts that “[t]o one of ordinary skill in
audio processing arts, ‘word recognition’ and ‘context recognition’ are
processes widely known as specific techniques employed for speech-to-text
recognition”; therefore, according to Appellant, “‘word recognition’ and
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‘context recognition’ clearly convey adequate ‘steps’ by which a ‘topic of
discussion’ may be determined via a microphone” (id. at 20–21).
Here again, we agree with the Examiner that although a person of
ordinary skill in the art, based on the present disclosure, might well be able
to write a program to achieve the claimed function, the Specification does
not “provide a disclosure of the computer and algorithm in sufficient detail
to demonstrate . . . that the inventor[s] possessed the invention,” including
“determining a topic of discussion via the microphone and the at least one
processor,” at the time the present application was filed (Ans. 13). For
example, “[t]here is no mention in the [S]pecification for how the system
gets from audio data from a microphone to word or context recognition” (id.
at 10). “[A]t best Appellant’s specification either (1) teaches a desired
output or (2) alternatively discusses using a general field of speech
recognition, not an algorithm or steps/procedure to understand how the
inventor intended the function to be performed” (id. at 13).
In view of the foregoing, we sustain the Examiner’s rejection, under
35 U.S.C. § 112(a), of independent claims 1 and 35, and their respective
dependent claims, on this additional basis.
Determining a Hand Gesture
Appellant further argues that the Examiner erred in rejecting the
claims under 35 U.S.C. § 112(a) on the ground that Specification fails to
provide adequate written description support for “determining via a motion
detector and the at least one processor, a hand gesture from the one or more
individuals,” as called for in independent claims 1 and 35; and Appellant
maintains that the requisite written description support can be found in
paragraphs 37 and 58 of the Specification (Appeal Br. 23–24).
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Paragraph 58 discloses that “[i]n some embodiments, an individual in
an elevator cab may be able to interact with the displayed information on
EDU [i.e., elevator display unit] 230,” and describes that once advertising
content is displayed, “Motion Control Adapters may be utilized to interpret
hand gestures by occupants of the elevator cab. For example, hand gestures
may be used to spin a virtual wheel to see what kind of discount coupon they
might receive.” Paragraph 37 similarly discloses that the elevator display
units “may . . . contain motion control technology such a motion control
adapter which allows for interactivity between any displayed advertisement
and a person in the elevator cab.”
Responding to Appellant’s argument, the Examiner acknowledges that
the Specification discloses that “‘EDUs [i.e., elevator display units] 230 and
240 may . . . contain motion control technology such a motion control
adapter’ as a way to interpret hand gestures by occupants of the elevator
cab” (Ans. 15). But, the Examiner notes that there is no further description
in the Specification, and remarks that “after a search of the prior art[, motion
control adapter] is not a well-known term of motion technology. So it’s
unclear as to whether this adapter is hardware, software, or some
combination” (id.).
We are not persuaded, on the present record, that the Examiner erred
in determining that the Specification lacks sufficient description (e.g., an
algorithm or a description of steps and/or a procedure for “determining via a
motion detector and the at least one processor, a hand gesture from the one
or more individuals”) to demonstrate that the inventors were in possession of
the claimed invention, including “determining via a motion detector and the
at least one processor, a hand gesture from the one or more individuals,” at
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the time this application was filed. Therefore, we sustain the Examiner’s
rejection, under 35 U.S.C. § 112(a), of independent claims 1 and 35, and
their respective dependent claims, on this further basis.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 6,
7, 9, 10,
12, 14–17,
19–25, 27,
28, 30–32,
35
112(a) Written
Description
1, 3, 4, 6,
7, 9, 10,
12, 14–17,
19–25, 27,
28, 30–32,
35

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