Boyd, John E.

Patent Trials and Appeals Board

Nov 1, 2019

11975521 - (D) (P.T.A.B. Nov. 1, 2019)

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.
11/975,521 10/19/2007 John E. Boyd 534935 (P10796USC1) 8331
77970 7590 11/01/2019
Polsinelli -- Apple Inc.
c/o Polsinelli PC
1661 Page Mill Road
Suite A
Palo Alto, CA 94304
EXAMINER
OSMAN BILAL AHME, AFAF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
11/01/2019 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):
Apple@Polsinelli.com
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN E. BOYD
____________

Appeal 2018-007888
Application 11/975,521
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, 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
final rejection of claims 1–25. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Our decision references Appellant’s First Supplemental
Appeal Brief (“First Supp. Appeal Br.,” filed November 22, 2017), Second
Supplemental Appeal Brief (“Second Supp. Appeal Br.,” filed January 19,
2018), and Reply Brief (“Reply Br.,” filed August 1, 2018), and the
Examiner’s Answer (“Ans.,” mailed June 4, 2018) and Final Office Action
(“Final Act.,” mailed April 6, 2017). Appellant identifies Apple Inc. as the
real party in interest. Second Supp. Appeal Br. 3.
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CLAIMED INVENTION
Appellant’s claimed invention relates to “improved systems and
methods for delivering targeted information such as targeted advertisements
to one or more individuals” and more specifically “to improved advertising
devices such as billboards and audio announcement systems and the like and
methods of using the same” (Spec. 6:13–17).
Claims 1, 14, and 16 are the independent claims on appeal. Claim 1,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
1. An electronic device comprising:
a communication element configured for delivering a
targeted advertisement to a display device adapted to display
the targeted advertisement within an advertising range;
a receiver configured for receiving a plurality of signals
emitted from respective emitters within a range of the device;
and
a processor adapted to:
first identify a plurality of consumer profiles
corresponding to the plurality of signals within the range;
first select a particular consumer profile from the
plurality of consumer profiles as a profile of highest
relevance relative to others of the consumer profiles; and
second select, based on the particular consumer
profile selected from the plurality of consumer profiles,
the targeted advertisement for delivery to the display
device;
wherein the communication element delivers the selected
target advertisement of display within the advertisement range
by the display device;
wherein the communication element is not structurally
connected to the respective emitters, and the emitters are not
structurally connected to the display device;
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wherein the highest relevance reflects that the particular
consumer profile indicates (a) a positive response to a
previously-targeted advertisement or (b) a financial condition
superior to other financial conditions within the plurality of
consumer profiles.
WITHDRAWN REJECTIONS
Claims 1–25 were rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more (Final Act. 4–6). The
Examiner withdrew the § 101 rejection as to claims 1–20 (Ans. 3). Yet, it
appears that the Examiner intended to withdraw this rejection as to all
claims, as there is no discernible reason to reject claims 21–25 separately
from independent claim 1, from which claims 21–25 depend. We, therefore,
treat this rejection as withdrawn as to all of claims 1–25.
Claims 1, 14, and 16 were rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement,
inter alia, on the ground that the Specification does not provide the requisite
support for the recitation that “the emitters are not structurally connected to
the display device” (Final Act. 6–7). The Examiner withdrew this rejection
as to claims 1 and 16 (Ans. 3). It is apparent that the Examiner intended to
withdraw this rejection as to claim 14 as well, because, as Appellant points
out (Second Supp. Appeal Br. 12), claim 14 does not contain the limitation
that prompted the rejection. We, therefore, treat this § 112, first paragraph,
rejection regarding the “emitters” limitation as withdrawn as to all claims.2
Claims 1, 14, and 16 were rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly

2 A separate rejection of claims 1–25 under § 112, first paragraph, is before
us on appeal, as discussed below.
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claim the subject matter that Appellant regards as the invention because “it
is unclear what Applicant is referring to by wherein the communication
element . . . and the emitters are not structurally connected to the display
device” (Final Act. 8). The Examiner withdrew this rejection as to claims 1
and 16 (Ans. 3). The Examiner apparently intended to withdraw this
rejection as to claim 14 as well, because, as Appellant points out (Second
Supp. Appeal Br. 15), claim 14 does not contain the limitation that prompted
the rejection. We, therefore, treat this rejection as withdrawn as to all
claims.
REJECTIONS BEFORE US ON APPEAL
Claims 1–25 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.3
Claims 1–25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Herz et al. (US 6,571,279 B1, issued May 27, 2003) (“Herz”) and
Owensby (US 2002/0077130 A1, published June 20, 2002).

ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is

3 The Examiner’s rejection identifies claims 1–20 as rejected on this basis
(Final Act. 7). Claims 21–25 depend from rejected independent claim 1.
Thus, if independent claim 1 is properly rejected as failing to comply with
the written description requirement, then dependent claims 21–25 also are
properly rejected for the same reasons. Accordingly, we treat the
Examiner’s omission of claims 21–25 as inadvertent and we treat this
rejection as applying to claims 1–25.
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assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But, the specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, the inventors were
in possession of the claimed invention. See id.
The Examiner maintains here that the Specification lacks written
description support for the limitations, “first select a particular consumer
profile from the plurality of consumer profiles as a profile of highest
relevance relative to others of the consumer profiles” and “wherein the
highest relevance reflects that the particular consumer profile indicates (a) a
positive response to a previously-targeted advertisement or (b) a financial
condition superior to other financial conditions within the plurality of
consumer profiles” as recited in independent claim 1, and similarly recited in
independent claims 14 and 16 (Final Act. 7–8; see also Ans. 4–9).4 In
support of the rejection, the Examiner cites In re Hayes Microcomputer
Products, Inc. Patent Litigation, 982 F.2d 1527, 1533–34 (Fed. Cir. 1992)
(id.). According to the Examiner, the requisite support for the identified
limitations is lacking because the Specification does not provide “the
algorithm that performs the claimed ‘first select a particular consumer

4 Independent claim 16 recites “selecting, via a processor, a particular
consumer profile from the plurality of consumer profiles as a profile of
highest relevance to others of the consumer profiles” but does not further
recite “wherein the highest relevance reflects . . . .” (see First Supp. Appeal
Br. 29 (Claims Appendix)).
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profile . . . as a profile of highest relevance relative to others of the
consumer profiles’” (see Final Act. 7–8; see also Ans. 7).
The Specification describes that the invention provides a “system
for . . . advertising products and services to target individuals using relevant
information relating to the individuals to select the targeted advertisements”
(Spec. 9:4–6). The Specification, thus, discloses, with reference to Figure 1,
that a receiver 101 (of the type capable of receiving identifying signals
emitted from devices such as cellular telephones) receives or “listens” for
identifying signals emitted by one or more individuals; receiver 101 then
communicates, via an ad/consumer association processor 102, with a
consumer profile database 103 to retrieve consumer profiles corresponding
to the identified signals (id. at 15: 1–7). The consumer profile information,
in turn, is used to select a target advertisement from an advertisement
database 104 (id. at 15: 8–10).
The Specification describes that, in one embodiment, the target
advertisement is selected “based on the signal which has the most relevant or
‘attractive’ consumer profile” (id. at 15:23 – 16:1). And the Specification
further explains that the most attractive consumer profile can be determined
based on “a consumer profile which indicates the highest value advertising,
such as a high net worth individual with a strong consumer record (e.g.,
profile indicates the individual purchased a product after being exposed to a
targeted advertisement in the past)” (id. at 16:1–5).
Based on the foregoing disclosure, we agree with Appellant that the
Specification provides the requisite written description support such that a
person skilled in the art would understand that Appellant was in possession
of the claimed invention, including “select[ing] a particular consumer profile
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from the plurality of consumer profiles as a profile of highest relevance
relative to others of the consumer” and the requirement that “the highest
relevance reflects that the particular consumer profile indicates (a) a positive
response to a previously-targeted advertisement or (b) a financial condition
superior to other financial conditions within the plurality of consumer
profiles,” at the time the application was filed (see Second Supp. Appeal
Br. 12–14; Reply Br. 2–6). More specifically, we find that the Specification
provides sufficient evidence that the inventor was in possession of the
claimed functionality at the time of filing. See Vasudevan Software, Inc. v.
MicroStrategy, Inc., 782 F.3d 671, 683 (Fed. Cir. 2015) (“The more telling
question is whether the specification shows possession by the inventor of
how [the claimed function] is achieved.”). In particular, a person of ordinary
skill in the art, on reviewing the Specification, would understand that the
inventor was in possession of ranking the relevance of consumer profiles
using a ranking function, including ranking profiles based on “(a) a positive
response to a previously-targeted advertisement” (as evidenced by the
disclosure of “the individual purchased a product after being exposed to a
targeted advertisement in the past” as a relevance criterion (Spec. 16:4–5))
and “(b) a financial condition superior to other financial conditions within
the plurality of consumer profiles” (as evidenced by the disclosure of the net
worth of the individual as a relevance criterion (id. at 16:3–4)).
Therefore, we do not sustain the Examiner’s rejection of claims 1–25
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
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Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1, 14, and 16 under 35 U.S.C. § 103(a) because
Hertz, on which the Examiner relies, does not disclose or suggest
“select[ing] a particular consumer profile from the plurality of consumer
profiles as a profile of highest relevance relative to others of the consumer
profiles,” as recited in claim 1, and similarly recited in claims 14 and 16
(Second Supp. Appeal Br. 22; see also Reply Br. 6–8).
As Appellant points out (Second Supp. Appeal Br. 22), the Examiner
found, in the Final Office Action, that Herz discloses “select[ing] a
particular consumer profile from the plurality of consumer profiles” (Final
Act. 9). But, the Examiner did not address the further requirement that the
selected consumer profile is “a profile of highest relevance relative to others
of the consumer profiles.”
Responding to Appellant’s arguments in the Answer, the Examiner
finds that Herz discloses the argued limitation in column 4, lines 36–67
(Ans. 10–11 (reproducing the cited portion of Herz without explanation)).
Yet, although Herz discloses the use of user profiles in the automatic
selection of advertisements on a billboard, we find nothing in the cited
portion of Herz that discloses or suggests selecting a profile of highest
relevance relative to others, as required by independent claims 1, 14, and 16.
Herz discloses an advertising system that includes user profiles that
can be used to select advertisements for display on a billboard (Herz, 4:36–
5:3). The cited portion of Herz, thus, describes, for example, that “[i]f the
user profiles contain information about users’ buying habits, then the
billboard operator can run a voting algorithm on the collected user profiles
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to determine the characteristics of the present user audience to select a
revised set of advertisements to be transmitted to the display” (id. at 4:53–
58). But, we find no disclosure or suggestion there of selecting or otherwise
identifying a profile of highest relevance relative to the other profiles, as
called for in the independent claims. And the Examiner does not explain, for
example, how the voting algorithm discussed in Herz might meet the argued
limitation.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 14, and 16 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner’s rejection of dependent
claims 2–13, 15, and 17–25. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) (“dependent claims are nonobvious if the independent claims from
which they depend are nonobvious”).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–25 112, first
paragraph
Written
Description
1–25
1–25 103 Herz, Owensby 1–25
Overall
Outcome
1–25

REVERSED