Ex Parte Freitas et al

Patent Trial and Appeal Board

Dec 3, 2012

09794082 (P.T.A.B. Dec. 3, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte NATHANIAL X. FREITAS, SHANE CONNEELY,
WILL MEYER, and JONATHAN OAKES
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Appeal 2010-010563
Application 09/794,082
Technology Center 2400
________________

Before ALLEN R. MacDONALD, KALYAN K. DESHPANDE, and
LARRY J. HUME, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 9, 10, 13, 15, 17, 18, 31-33, 35, 36, 53, 55-58, and 60-64. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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STATEMENT OF THE CASE
1

The Invention
“The present invention relates to wireless software applications. More
particularly, the present invention relates to advertising applications for use
in wireless software applications.” Spec. p. 1, ll. 10-12 (“FIELD OF THE
INVENTION”). In another aspect of the invention:
[A] method of managing advertising content in a wireless
environment is provided wherein a transmission is received
from a wireless device at a wireless server. Information about
the wireless device is determined from the transmission and a
data file to be transmitted to the wireless device is selected
based upon the information determined about the wireless
device. The data file is then transmitted to the wireless device.
The data file includes data representative of an advertisement
and rules for displaying said advertisement.
Spec. p. 4, ll. 3-10.
Exemplary Claims
Exemplary independent claim 9 on appeal reads as follows (emphasis
added to contested limitations):
9. A method of delivering advertisement content to a
wireless device the method comprising:
determining a geographic location of the wireless device from
wireless data sent from the wireless device;

1
Throughout this Decision, we refer to the Appeal Brief (“App. Br.” filed
Jan. 11, 2010); the Reply Brief (“Reply Br.” filed Jul. 30, 2010); the
originally-filed Specification (“Spec.” filed on Feb. 28, 2001); the Final
Office Action (“FOA” mailed June 25, 2009); and the Examiner’s Answer
(“Ans.” mailed Mar. 24, 2010.)
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determining from a wireless communication with the wireless
device a type of the wireless device;
selecting advertisement data to be transmitted to the wireless
device based at least in part on the geographic location of the
wireless device and the type of the wireless device; and
sending the advertisement data to the wireless data
2
in order to
enable a processor to generate an advertisement display on the
wireless device using the advertisement data.

Exemplary independent claim 53 on appeal reads as follows
(emphasis added to contested limitations):
53. A method for delivering advertisement content to a
mobile wireless device, the method comprising:
determining a geographic location of the wireless device when
the wireless device communicates with a network;
responsive to the wireless device communicating with the
network, selecting advertisement data for the wireless device
based on the determined geographic location;
sending the advertisement data to the wireless device; and
communicating instructions to the wireless device to cause an
advertisement content generated at least in part from the
advertisement data to be displayed in a messaging view of a
messaging application on the wireless device.

Exemplary independent claim 60 on appeal reads as follows
(emphasis added to contested limitations):
60. The method of claim 55, wherein communicating
instructions to the wireless device includes communicating

2
If further prosecution of this application should ensue, we point out that it
appears that the phrase “wireless data” may have been intended to be
“wireless device” in the amendment to the claims made on Dec. 29, 2006.
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instructions that cause the advertisement content to appear
with an inbox header or with an email message generated by
the email application.

Prior Art
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stewart 6,259,405 B1 Jul. 10, 2001
Wolfe 6,397,246 B1 May 28, 2002
Lehman 6,581,025 B2 Jun. 17, 2003
De Boor 6,675,204 B2 Jan. 6, 2004
Rejections on Appeal
A. The Examiner has rejected claims 9-10, 13, 31-32, and 61-63
under 35 U.S.C § 112, 2
nd
paragraph, as being indefinite. (Ans. 3).
B. The Examiner has rejected claims 9, 31-32, 61-63, 15, 17-18,
33, 35-36, 64, 53, 55, 60, and 56-58 are under 35 U.S.C § 103(a) as being
unpatentable over Stewart in view of De Boor. (Ans. 4).
C. The Examiner has rejected claim 10 under 35 U.S.C § 103(a) as
being unpatentable over Stewart and De Boor in view of Lehman. (Ans. 8).
D. The Examiner has rejected claim 13 under 35 U.S.C § 103(a) as
being unpatentable over Stewart and De Boor in view of Wolfe. (Ans. 9).
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. 37 C.F.R. § 41.37(c)(1)(vii)(2010).
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GROUPING OF CLAIMS
Based upon Appellants’ arguments against the final rejections, the
separate arguments for patentability set forth with respect to certain claims
(App. Br. 9-15; Reply Br. 3-5), and pursuant to our authority under 37
C.F.R. § 41.37(c)(1)(vii), we select the following representative claims to
decide this appeal in accordance with those arguments and rejections:
§112, ¶2 Indefiniteness Rejection
1. Claim 9: Appellants argue the § 112, ¶2 indefiniteness
rejection of claim 9 such that claims 10, 13, 31-32, and 61-63 stand or fall
together with independent claim 9. (See App. Br. 7-8; Reply Br. 2-3).
§ 103(a) Unpatentability Rejections
2. Claim 9: The unpatentability rejection of claim 9 is argued,
and claims 10, 13, 15, 18, 35, 36, and 64 stand or fall together with
independent claim 9. (See App. Br. 9-11, 15; Reply Br. 3-4).
3. Claim 17: Claim 17 is separately argued, and claim 33 stands
or falls with dependent claim 17. (See App. Br. 12-13).
4. Claim 31: Claim 31 is separately argued, and claim 32 stands
or falls with dependent claim 31. (See App. Br. 11-12).
5. Claim 53: Claim 53 is separately argued, and claims 55-58
stand or fall together with independent claim 53. (See App. Br. 13-14;
Reply Br. 5).
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6. Claim 60: Claim 60 is separately argued. (See App. Br. 14-
15).
ISSUES AND ANALYSIS
1. 35 U.S.C. § 112, 2
nd
paragraph: Claims 9-10, 13, 31-32, and 61-63
Appellants’ Contentions
The Examiner states that the scope of claim 9 is unclear because “[i]t
is not seen how the type of a wireless device would have any effect on
selecting advertisement data to be transmitted to and displayed on the
wireless device,” (Ans. 3) and that “[t]he paragraphs [cited by Appellants as
providing support] fail to . . . teach the relationship between advertisement
data and device type . . . [and] further fail to provide the answer as to how
advertisement data is selected based on device type so that scope of the
rejected claims is clear.” (Ans. 10). In response, Appellants contend that
paragraphs [0020], [0030], [0031], and [0036] adequately convey the
intended meaning of the limitation at issue, and also provide an exemplary
embodiment of the relationship between advertisement data and device type
(App. Br. 7-8; Reply Br. 2-3).
Appellants also contend that the claims are not limited to a specific
methodology or process for determining device types, and “the fact that
claim 9 may embody various methods of determining the device type does
not render claim 9 indefinite. (Reply Br. 2).
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Issue 1
Did the Examiner err in finding that the limitation of “selecting
advertisement data to be transmitted to the wireless device based at least in
part on . . . the type of the wireless device,” as recited in independent claim
9, is indefinite?
Analysis
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with the Examiner’s
conclusions with respect to the indefiniteness of claims 9-10, 13, 31-32, and
61-63, and we agree with Appellants’ arguments that claim 9 is definite,
particularly since an exemplary embodiment of the limitation at issue was
set forth with sufficient specificity in Appellants’ Specification (e.g., see
Spec. at p. 6:12-19, p. 9:8-20, p. 10:13-19, and p. 11:3-9).
We find that the claim scope is definite in light of this disclosure, and
that the Examiner’s response to arguments, i.e., “[i]t is not clear and it is not
seen how the type of wireless device would have any effect on selecting
advertisement data,” and “[t]he paragraphs further fail to provide the answer
as to how advertisement data is selected based on device type so that scope
of the rejected claims is clear” (Ans. 10), are not persuasive.
Therefore, we cannot sustain the Examiner’s indefiniteness rejection
of claims 9-10, 13, 31-32, and 61-63.
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2. 35 U.S.C. § 103(a): Claims 9, 10, 13, 15, 18, 35, 36, and 64
Appellants’ Contentions
Appellants contend that:
The present rejection is improper because neither Stewart nor
De Boor, alone or in any combination, discloses, teaches, or
suggests determining a type of a wireless device and selecting
advertisement data to be transmitted to the wireless device
based on the type of wireless device, as provided by claim 9.
App. Br. 10.
In addition, Appellants contend that:
Basing targeted advertising on either a known geographic
location of a mobile user (MU), or demographic information of
a user of the MU, as in Stewart, does not amount to a teaching
or suggestion of determining a type of a wireless device and
selecting advertisement data based on the type of wireless
device, as provided by claim 9.
Id. (emphasis omitted).
Appellants further contend that:
[N]one of the cited portions of De Boor disclose, teach, or
suggest determining a type of a wireless device and selecting
advertisement data based on the type of wireless device, as
provided by claim 9. Rather, the cited portions of De Boor
relate to “establishing configuration settings,” Abstract, lines 5-
6; displaying HTML data “based on variables or configuration
settings of the device,” col. 7, lines 29-32; obtaining
“configuration settings” for a device either locally or remotely,
col. 10, lines 54-60; controlling the operation and configuration
of the wireless communication device, col. 11, lines 12-14;
setting configuration settings of a wireless communication
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device, col. 12, lines 1-2; and configuring selected functions of
a wireless device to be privilege-sensitive, col. 17, lines 33-35.
As indicated above, none of these portions teach or suggest
determining a type of a wireless device and selecting
advertisement data based on the type of wireless device.
App. Br. 11.
Issue 2
Did the Examiner err in finding that the combination of Stewart and
De Boor teach or suggest a method which includes, inter alia, “determining
. . . a type of the wireless device; selecting advertisement data to be
transmitted to the wireless device based at least in part on . . . the type of the
wireless device,” as recited in independent claim 9?
Analysis
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner has erred. We disagree with the Examiner’s
conclusions with respect to the unpatentability of claims 9, 10, 13, 15, 18,
35, 36, and 64, and we agree with Appellants’ arguments that claims 9 and
15 are not rendered obvious over the combination of Stewart and De Boor
(App. Br. 9-11. Reply Br. 2-4).
In particular, we find that, contrary to the Examiner’s assertions, the
cited art does not teach or suggest “determining . . . a type of the wireless
device,” and further does not teach or suggest “selecting advertisement data
to be transmitted to the wireless device based at least in part on . . . the type
of the wireless device,” as recited in independent claim 9.
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Accordingly, having found at least one error in the Examiner’s
rejection, we cannot sustain the rejection of claims 9, 10, 13, 15, 18, 35, 36,
and 61-64.
3. 35 U.S.C. § 103(a): Claims 17 and 33
Issue 3
Notwithstanding separate arguments for patentability provided by
Appellants with respect to claims 17 and 33, we find that the rejection of
these claims turns on Issue 2, supra, such that we need not reach a
conclusion on the separate arguments.
Analysis
Since claims 17 and 33 ultimately depend upon independent claim 15
and Issue 2, discussed, supra, we cannot sustain the rejection of claims 17
and 33 since the limitations of independent claim 15 from which these
claims depend are not taught or suggested by the combination of Stewart and
De Boor.
4. 35 U.S.C. § 103(a): Claims 31 and 32
Issue 4
Notwithstanding separate arguments for patentability provided by
Appellants with respect to claims 31 and 32, we find that the rejection of
these claims turns on Issue 2, supra, such that we need not reach a
conclusion on the separate arguments.
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Analysis
Since claims 31 and 32 ultimately depend upon independent claim 9
and Issue 2, discussed, supra, we cannot sustain the rejection of claims 31
and 32 since the limitations of independent claim 9 from which these claims
depend are not taught or suggested by the combination of Stewart and
De Boor.
5. 35 U.S.C. § 103(a): Claims 53 and 55-58
Appellants’ Contentions
Appellants contend that “Stewart discloses that a geographic-based
network may provide advertising content based on a location of a device . . .
[but] does not disclose that the advertising content is displayed in a
messaging view of a messaging application on a wireless device, as provided
by claim 53.” App. Br. 14.
Appellants further contend that:
De Boor similarly fails to teach or suggest this feature, as De
Boor discloses an “advert content handler 114a” that “chooses
which advertisement page to display when the wireless
communication device is idle.” Col. 13, lines 63-67. Thus,
De Boor in fact teaches away from displaying advertisement
content in a messaging view of a messaging application on a
wireless device, because De Boor teaches that the
advertisement page is displayed “when the wireless
communication device is idle.”
App. Br. 14 (emphasis omitted).
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In addition, Appellants contend that the Examiner erred in his finding
that both Stewart and Boor teach that messages and advertisements are
displayed with each other on the same screen. App. Br. 14.
Appellants further contend that:
[T]he present application provides an explanation of a
“messaging view of an email application,” at least at paragraphs
0041-0042 and Figures 4-5 discussed therein. Furthermore,
neither reference discloses, teaches, or suggests
“communicating instructions to the wireless device to cause an
advertisement content generated at least in part from the
advertisement data to be displayed in a messaging view of a
messaging application on the wireless device,” as provided by
claim 53.
Reply Br. 5 (emphasis omitted).
Finally, Appellants contend that, “rather than teaching that
advertisement data is displayed in a messaging view of a messaging
application, as in claim 1, Stewart teaches that an advertisement page is
displayed ‘when the wireless communications device 100 is idle.’” Id.
Issue 5
Did the Examiner err in finding that the combination of Stewart and
De Boor teach or suggest a method which includes, inter alia, “selecting
advertisement data for the wireless device based on the determined
geographic location . . . and communicating instructions to the wireless
device to cause an advertisement content generated at least in part from the
advertisement data to be displayed in a messaging view of a messaging
application on the wireless device,” as recited in independent claim 53?
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Analysis
We disagree with Appellants’ conclusions with respect to claim 53,
and we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
and rebuttals set forth by the Examiner in the Examiner’s Answer (Ans. 4-6,
12-13) in response to Appellants’ Arguments (App. Br. 13-14; Reply Br. 5).
However, we highlight and address specific findings and arguments
regarding claim 53 for emphasis as follows.
In particular, we concur with the Examiner’s finding that the
combination of Stewart with De Boor teaches or suggests “selecting
advertisement data for the wireless device based on the determined
geographic location . . . and communicating instructions to the wireless
device to cause an advertisement content generated at least in part from the
advertisement data to be displayed in a messaging view of a messaging
application on the wireless device,” as recited in independent claim 53.
Further in this regard, and even assuming, arguendo, that Appellants’
Specification defines the recited “messaging view of a messaging
application” as argued by Appellants (see Reply Br. 5), we find that this
definition encompasses the email (messaging) application taught by Stewart
(Stewart at col. 4:27-32). Therefore, we agree with the Examiner’s finding
that Stewart teaches the limitation regarding display “in a messaging view of
a messaging application on the wireless device.” We further agree with the
Examiner that advertisement data can be displayed on Stewart’s device.
(Ans. 12-13, and see Stewart at col. 4:27-32). Finally, we find that Stewart
teaches or suggests “selecting advertisement data . . . for the wireless device
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based on the determined geographic location,” as recited in claim 53
(Stewart at col. 3:50-56).
As for Appellants’ argument that De Boor teaches away from the
claimed invention, we disagree. We find nothing in claim 53 that would
preclude performing the claimed method while the device (e.g., the device of
De Boor) is in an “idle state.” Thus, Appellants’ “teaches away” argument
is not commensurate with the scope of the claim.
Accordingly, we find Appellants’ arguments to be unpersuasive, and
we therefore sustain the Examiner’s rejection of claims 53 and 55-58.
6. 35 U.S.C. § 103(a): Claim 60
Appellants’ Contentions
Appellants contend that “Appellants have found no portion(s) of
Stewart that support the Examiner’s assertion that in Stewart, “displaying of
advertisement data is integrated with the display of other applications such
as emails or messaging.” App. Br. 15
Issue 6
Did the Examiner err in finding that the combination of Stewart and
De Boor teach or suggest a method wherein, inter alia, “communicating
instructions to the wireless device includes communicating instructions that
cause the advertisement content to appear with an inbox header or with an
email message generated by the email application,” as recited in dependent
claim 60?
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Analysis
We disagree with Appellants’ conclusions with respect to claim 60,
and we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
and rebuttals set forth by the Examiner in the Examiner’s Answer (Ans. 7,
13) in response to Appellants’ Arguments (App. Br. 14-15). However, we
highlight and address specific findings and arguments regarding claim 60 for
emphasis as follows.

As for the Examiner’s invocation of “well-known” features in the art,
this is a new ground of rejection in the Answer brought about by Appellants’
appeal of the rejection of claim 60. Appellants’ Reply Brief does not
traverse or otherwise respond to the Examiner’s new ground of rejection
which asserted that the claimed features were well-known. Accordingly,
these features are considered to be well-known in the prior art.
Accordingly, we find Appellants’ arguments to be unpersuasive, and
we therefore sustain the Examiner’s rejection of claim 60.

CONCLUSIONS
A. The Examiner erred in the indefiniteness rejection of claims 9-
10, 13, 31-32, and 61-63 under 35 U.S.C. § 112, 2
nd
paragraph, and we
cannot sustain the rejection.
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B. The Examiner erred in the unpatentability rejections of claims
9, 10, 13, 15, 17, 18, 31-33, 35, 36, and 61-64 under 35 U.S.C § 103(a), and
we cannot sustain the rejections.
C. Appellants have not convinced us that the Examiner erred with
respect to the unpatentability rejection of claims 53, 55-58, and 60 under 35
U.S.C § 103(a), and we therefore sustain the rejection.
DECISION
A. The decision of the Examiner to reject claims 9-10, 13, 31-32,
and 61-63 as being indefinite is reversed.
B. The decision of the Examiner to reject claims 9, 10, 13, 15, 17,
18, 31-33, 35, 36, and 61-64 as being unpatentable is reversed.
C. The decision of the Examiner to reject claims 53, 55-58, and 60
as being unpatentable is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

ELD