Ex Parte Flinchem et al

Patent Trial and Appeal Board

Apr 7, 2016

12862992 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/862,992 08/25/2010 Edward P. Flinchem
23524 7590 04/11/2016
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
088245-5852 5058
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
04/11/2016 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD P. FLINCHEM and WILLIAM L. VALENTI
Appeal2013-011050
Application 12/862,992 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, MEREDITH C. PETRA VICK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
PETRA VICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Edward P. Flinchem and William L. Valenti (Appellants) seek our
review under 35 U.S.C. § 134 of the final rejection of claims 1-20. We have
jurisdiction under 35 U.S.C. § 6 (b ).
SUMMARY OF DECISION
We REVERSE.2
1 The real party in interest, identified by Appellants, is Integic Technologies
LLC. App. Br. 3.
2 Our decision will make reference to the Final Rejection ("Final Act.,"
mailed June 1, 2012), Appellants' Appeal Brief ("App. Br.," filed Feb. 14,
Appeal2013-011050
Application 12/862,992
THE INVENTION
The invention tracks the number of times an ad, inside shared content,
is viewed in a peer-to-peer file sharing system. Spec. i-f 13.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system comprising:
a server compnsmg:
a processor; and
a memory having instructions stored thereon that,
if executed by the processor, cause the server to
perform operations comprising:
receiving, from a mobile computing device,
a request for content;
transmitting, in response to the request, the
content to the mobile computing device, wherein
the content includes an advertisement; and
monitoring an exposure of the advertisement
based on an identifier; and
the mobile computing device comprising:
a processor; and
a memory having instructions stored thereon that,
if executed by the processor, cause the mobile
computing device to perform operations
compnsmg:
storing an indication of whether the content
has been previously presented on the mobile
computing device; and
2013), Appellants' Reply Brief ("Reply Br.," filed Sept. 9, 2013), and
Examiner's Answer (Ans.," mailed July 18, 2013).
2
Appeal2013-011050
Application 12/862,992
only in response to the content being
presented for the first time on the mobile
computing device, transmitting the identifier to the
server in response to a presentation of the content
by the mobile computing device, wherein the
identifier indicates whether the content is
presented on the mobile computing device for the
first time.
THE EVIDENCE
The Examiner relies upon the following as evidence of
unpatentability:
Natsuno
Snyder
Carrozzi
van der Riet
US 2002/0165773 Al
US 2006/0282316 Al
US 2006/0287871 Al
US 7,158,943 B2
THE REJECTION
The following rejection is before us for review:
Nov. 7, 2002
Dec. 14, 2006
Dec. 21, 2006
Jan.2,2007
claims 1-20 are rejected under 35 USC§ 103(a) as being unpatentable over
van der Riet, Natsuno, Carrozzi, and Snyder.
ISSUES
The first issue is whether claim 1-20 are unpatentable over van der
Riet, Natsuno, Carrozzi, and Snyder. Specifically, whether the combination
of prior art teaches
only in response to the content being presented for the first time
on the mobile computing device, transmitting the identifier to
the server in response to a presentation of the content by the
mobile computing device, wherein the identifier indicates
3
Appeal2013-011050
Application 12/862,992
whether the content is presented on the mobile computing
device for the first time
as required by independent claims 1 and 11.
ANALYSIS
Obviousness
Section 103(a) forbids issuance of a patent when "the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); see KSR, 550
U.S. at 407 ("While the sequence of these questions might be reordered in
any particular case, the [Graham] factors continue to define the inquiry that
controls.").
i. Independent Claims 1 and 11
Appellants argue that the prior art does not disclose
only in response to the content being presented for the first time
on the mobile computing device, transmitting the identifier to
the server in response to a presentation of the content by the
mobile computing device, wherein the identifier indicates
4
Appeal2013-011050
Application 12/862,992
whether the content is presented on the mobile computing
device for the first time
recited by independent claim 1. App. Br. 8. Independent claim 11 requires
a corresponding limitation.
The Examiner relies upon Carrozzi to teach transmitting an identifier
to the server only in response to the content being presented for the first time
as required by the claims. See App. Br. 14--15. The Examiner cites
paragraphs 21, 27, 29, 34, 40, 48, and 49 of Carrozzi. Final Act. 5. Carrozzi
discloses a system that makes contributions to charities based upon revenue
generated by a user's online activity. Carrozzi, Abstract, i-fi-f l--4. Carrozzi
tracks the contribution by identifying when a user clicks on an advertiser's
listing or on a CPM (cost per 1,000 impressions), CPA (cost per action),
CPC (cost per click), and CPS (cost per sale) basis. Id. at i-fi-120, 34; see also
id. at i-fi-1 40, 48--49 (describing ways of tracking user activity). The cited
paragraphs of Carrozzi, however, do not teach tracking the contribution only
in response to the content being presented for the first time.
It appears that the Examiner did not consider the limitation "only in
response to the content being presented for the first time," as required by
claims 1 and 11, when determining that Carrozzi teaches the limitation at
issue. The Examiner states that because of "lack of enablement in the
specification the [claim limitation at issue has] been interpreted as 'in
response to the content being presented on the mobile computing device,
transmitting the identifier to the server in response to a presentation of the
content by the mobile computing device."' Ans. 12. 3 Thus, it appears that
3 Although the Examiner alleges that claims 1-20 lacks sufficient
enablement in the Specification in response to the Appellants' arguments
5
Appeal2013-011050
Application 12/862,992
the Examiner has read the limitation "only in response to the content being
presented for the first time" out of the claims, because of an alleged lack of
enablement. However, "[a]ll words in a claim must be considered in judging
the patentability of that claim against the prior art." In re Wilson, 424 F.2d
1382, 1385 (CCPA 1970); see also Manual of Patent Examining Practice§
2143.03 (the Examiner is required to consider all the limitations of the
claims).
We, therefore, determine that the Examiner fails to establish a prima
facie showing of obviousness in rejecting claims 1 and 11.
ii. Dependent Claims 2-10 and 12-20
Claims 2-10 and 12-20 depend from claims 1 and 11. If an
independent claim is nonobvious under 35 U.S.C. § 103, then any claim
depending therefrom is nonobvious. In re Fine, 837 F.2d 1071, 1073 (Fed.
Cir. 1988). We, therefore, determine that the Examiner fails to establish a
primafacie showing of obviousness in rejecting claims 2-10 and 12-20.
DECISION
The decision of the Examiner to reject claims 1-20 is REVERSED.
(Final Act. 5; Ans. 9-10), neither the Final Rejection nor the Examiner's
Answers rejects claims 1-20 under 35 U.S.C. § 112(a). Appellants dispute
Examiner's allegation and point to paragraph 28 of the Specification, which
discloses that Figure 4 "shows a process for recording when a user plays an
advertisement associated with a content file at the first time it is presented to
a user and not at subsequent times," as support for the limitation. App.
Br.11.
6
Appeal2013-011050
Application 12/862,992
REVERSED
7