Vungle, Inc.Download PDFPatent Trials and Appeals BoardDec 24, 20202020003477 (P.T.A.B. Dec. 24, 2020) 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. 14/677,945 04/02/2015 Daniel Kang 9444P011 1051 151312 7590 12/24/2020 Vungle, Inc./ JWMH 7501 Village Square Drive, Suite 206 Castle Pines, CO 80108 EXAMINER CROSS, MICHAEL J ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 12/24/2020 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): deborah.higham@jwmhlaw.com eofficeaction@appcoll.com jeremy.schweigert@jwmhlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DANIEL KANG and BEN BEAR ____________ Appeal 2020-003477 Application 14/677,945 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and JAMES P. CALVE, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Vungle Inc. (Appeal Br. 3). Appeal 2020-003477 Application 14/677,945 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to systems and methods for providing advertising services to devices (Spec., para 3). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A system for improved ad selection, comprising: a storage medium to store one or more software programs; an adaptive decision unit coupled to the storage medium, the adaptive decision unit including or being coupled to processing logic that is configured to execute instructions of at least one adaptive decision algorithm to: obtain data of an advertisement (ad) engagement history for a user to indicate engagement with a video ad in-app on a wireless device of the user and device attributes of the wireless device including tracking volume settings of the user during the ad engagement when the user views the video ad, and application (app) engagement history for the user including a level or degree of virality or influence for influencing other users to install an application in response to the user installing the application on the wireless device of the user when making an ad selection decision; and determine an ad selection decision for at least one relevant video ad served in-app to the wireless device of the user based on the data of the ad engagement history for the user including volume settings of the user of the wireless device, device information including a network connection for the wireless device, and the app engagement history for the user for the ad selection decision. Appeal Br. (Claims Appendix 1). THE REJECTION The following rejection is before us for review: Claims 1–22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Chan (US 2011/0264522 A1, published October 27, 2011), Guinn (US 2015/0012344 A1, published January 8, 2015), Dides (US 2015/0302458 Appeal 2020-003477 Application 14/677,945 3 A1, published October 22, 2015), and Park (US 2013/0325573 A1, published December 5, 2013). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence2. ANALYSIS The Appellant argues that the rejection of claim 1 is improper because the references of record fail to disclose all the limitations of the claim, and also because the combination of the references uses impermissible hindsight and would not have been obvious (Appeal Br. 9–16, Reply Br. 2–5). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 5–8, Ans. 3–5). We agree with the Appellant. Here, even taking the cited prior art to disclose the argued claim limitations we determine that the rationale set forth in the rejection of record to combine the references would not have been obvious. The Appellant has specifically argued that the combination of the references of Chan, Guinn, Dides, and Parks lacks proper motivation for the combination and would not have been obvious (Appeal Br. 14–16, Reply Br. 5). We agree with the Appellant in this regard. Here, Chan at para. 46 does disclose an advertisement generation process based on targeting a user’s 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent and Trademark Office). Appeal 2020-003477 Application 14/677,945 4 demographic, geographic, and social information and a ranking. Chan at para. 53 discloses selection of advertisements based on historical interactions. Guinn at para. 47 discloses a method of interacting with ads to unlock game enhancements. Dides at para. 65 discloses determining user interest in ads by monitoring if the volume on the advertisement is increased or decreased. Parks at para. 104 discloses displaying the most viral distributions on the screen. While we agree that the cited prior art has disclosed these elements, we do not agree that the cited combination of references here would have been obvious. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Supreme Court at 418 noted that in an obviousness analysis that“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”. In this case, the cited rejection of record requires the teachings of Chan, Guinn, Dides, and Parks to be modified to meet the limitations of claim 1 and here we determine that the cited combination would not have been obvious. Here, the rejection of record lacks articulated reasoning with rational underpinnings without impermissible hindsight to sustain the rejection. In particular, the inclusion of Guinn in the combination with the other references of Chan, Dides and Parks lacks articulated reasoning and rational underpinnings without impermissible hindsight. Chan does disclose an advertisement generation process based on targeting a user’s data; Dides does discloses monitoring ad volume as an indicator of interest; and Parks discloses displaying viral distributions. However, Guinn’s disclosure of unlocking content for a game based on an advertisement within the cited Appeal 2020-003477 Application 14/677,945 5 rationale for the rejection would not have been obvious to one of ordinary skill in the art without impermissible hindsight. Accordingly, the rejection of independent claim 1 and its dependent claims is not sustained. The remaining independent claims 8, 15, and 20 are drawn to similar subject matter and the rejection of these claims and their dependent claims is not sustained as well. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims 1–22 under 35 U.S.C. § 103(a) as unpatentable over Chan, Guinn, Dides, and Park. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–22 103(a) Chan, Guinn, Dides, Park 1–22 REVERSED Copy with citationCopy as parenthetical citation