Ex Parte Urban et al

Patent Trial and Appeal Board

Aug 8, 2017

13211079 (P.T.A.B. Aug. 8, 2017)

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.
13/211,079 08/16/2011 William Eugene Urban 028548-9001-US01 3412
1131 7590 08/10/2017
MICHAEL BEST & FRIEDRICH LLP (Chi)
444 West Lake Street
Suite 3200
Chicago, IL 60606
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
08/10/2017 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):
chiipdocket @ michaelbest. com
llczech@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM EUGENE URBAN and
SHAWN THOMAS TOMOVICK
Appeal 2016-0023051
Application 13/211,079
Technology Center 3600
Before: MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the Final Rejection of claims 23 40. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to network-based digital signage
systems. Spec. 12.
1 The Appellants identify “DigSig, Inc.” as the real party in interest. Appeal
Br. 2.
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Application 13/211,079
Claim 23 is illustrative:
23. A method of operating a digital signage system, the method
comprising:
receiving, by a controller, information defining a plurality
of display devices, wherein the information includes an identifier
of each of the plurality of display devices, an owner associated
with each of the plurality of display devices, and a display price
for each of the plurality of display devices, wherein the display
price is a rate for displaying content on a specific display device;
storing, by the controller, the information in a database;
receiving, by the controller, a search request from a user;
querying, by the controller, the database to identify a
subset of the plurality of display devices matching the search
request;
displaying, by the controller, the subset of the plurality of
display devices to the user, wherein displaying the subset of the
plurality of display devices includes displaying the display price
associated with at least one display device included in the subset
based on the database;
receiving, by the controller, a selection and content from
the user, the selection indicating a selected display device from
the displayed subset of the plurality of display devices;
based on the selection, automatically identifying, by the
controller, an owner of the selected display device based on the
database;
based on the selection, generating and sending, by the
controller, an email message to the owner of the selected display
device, the email message including a request to display the
content on the selected display device;
allowing, by the controller, the owner to accept or reject
the request;
when the owner rejects the request, transmitting, by the
controller, an email message to the user notifying the user of the
rejection;
when the owner accepts the request, automatically, by the
controller, processing a payment from an account associated with
the user to an account associated with the owner based on the
display price stored in the database for the selected display
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device and allowing the owner to download the content to the
selected display device, add the content to a playlist for the
display device, and display the content on the selected display
device according to the playlist.
Claims 23 40 are rejected under 35U.S.C. § 101 as reciting ineligible
subject matter in the form of an abstract idea.
Claims 23 40 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Wolinsky (US 7,742,950 B2, iss. June 22, 2010) and Official Notice.
We AFFIRM.
ANALYSIS
Rejection under 35 U.S.C. ft101
The Appellants argue claims 23 40 together as a group. Appeal Br. 9.
We select claim 23 as representative. See 37 C.F.R. § 41.37(c)(l)(iv). For
the reasons set forth below, we are not persuaded by the Appellants’
argument that the claims are “necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks.” Appeal Br. 9—10.
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Alice Corp. Pty. Ltd. v. CIS
BankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 77—78 (2012)). In accordance with
that framework, we first determine whether the claim is “directed to” a
patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 (“On their face,
the claims before us are drawn to the concept of intermediated settlement,
i.e., the use of a third party to mitigate settlement risk.”); Bilski v. Kappos,
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561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application
explain the basic concept of hedging, or protecting against risk.”); Diamond
v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing respondents’ claims
according to the above statements from our cases, we think that a physical
and chemical process for molding precision synthetic rubber products falls
within the § 101 categories of possibly patentable subject matter.”); Parker
v. Flook, 437 U.S. 584, 594—95 (1978) (“Respondent’s application simply
provides a new and presumably better method for calculating alarm limit
values.”); Gottschalkv. Benson, 409 U.S. 63, 64 (1972) (“They claimed a
method for converting binary-coded decimal (BCD) numerals into pure
binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 182 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 67.
Claim 23 recites receiving and storing price and related information,
receiving a query and searching the stored information to answer the query,
communicating the answer to the requestor making the query, receiving a
selection from the requestor based on the answer to the query,
communicating the selection to a third party, and either forwarding to the
requestor a refusal from the third party, or processing payment from the
requestor to the third party, along with forwarding content for display to the
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third party. As alluded to by the Examiner, this appears to be the same
process long employed for operating advertising on billboards, with a
billboard replaced by a “display device,” and with the additional requirement
to communicate via e-mail and with the involvement of a “controller.”
Ans. 3—5.
The Specification does not define or describe the claimed “controller,”
but describes that every “user interface 40 includes a controller 41,” where
[t]he user interface 40 can be a computer, a personal digital
assistance (“PDA”), a telephone, or any other device that allows
users 25 to access their accounts 30 on the network system 15 via
the Internet or any other communication network. Every user
interface 40 includes a controller 41 (e.g., a processor of a
computer, not shown in Fig. 1).
Spec. ]fl8 (emphases added). In further non-limiting manner, the
Specification describes that “the invention is not limited in its application to
the details of construction and the arrangement of components described
herein or illustrated in the drawings. The invention is capable of other
embodiments and of being practiced or carried out in various ways.” Id.
114.
A controller, thus, could be a computer processor, but we construe the
claims as broadly encompass other types of “controller.” As a result, we
rely on the ordinary and customary meaning of “controller” as “one that
controls.” American Heritage® Dictionary of the English Language,
Fifth Edition, 2016 (last retrieved at
http://www.thefreedictionary.com/controller on July 20, 2017). The claimed
controller, therefore, encompasses a person who controls the inventory of
“display devices.”
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The Specification describes that the “display device 45 can be a
television screen, a monitor, or any other type of screen that can
electronically display different types of content.” Spec. 118. The “display
device” is, thus, an electronic display.
Setting aside for the moment the claim’s requirements for the use of e-
mail, an electronic display, and “allowing the owner to download the content
to the selected display device,” the remainder of the claim is directed to a
process for finding acceptable displays for an interested party, and selling
display space if there is a match. As noted by the Examiner, this is a
fundamental economic practice in, for example, the billboard advertising
industry, that has long been practiced where billboard displays have been
available for rent, where a broker acts in between renters and owners.
Ans. 5. As also noted by the Examiner, the process of finding acceptable
displays and selling display space, as claimed, also concerns the
organization of human behavior in the process of making displays available
for rent, by reciting specific steps taken by the person who is the controller
of the process, as well as the requestor and owner of the display. Ans. 3—5.
Therefore, we are persuaded that independent claim 23 is directed to an
abstract idea.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
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Claim 23 recites the use of e-mail, and electronic display device. The
electronic display device is utilized in the claim only as an output device, to
which content is “downloaded” and displayed (“allowing the owner to
download the content to the selected display device, add the content to a
playlist for the display device, and display the content on the selected
display device according to the playlist”). This is merely an output step, and
is considered insignificant extra-solution activity. “Flook stands for the
proposition that the prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.’”
Bilski, 561 U.S. at 610—11 (quoting Diamond, 450 U.S. at 191—92).
As to the requirement for the use of e-mail to communicate, we note
that e-mail is a basic function of generic computers. “[AJfter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible. The bare fact that a
computer exists in the physical rather than purely conceptual realm is beside
the point.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014) (internal citations and quotation marks omitted).
Therefore, the claims are not “deeply rooted in computer technology,”
as argued, because they require only the use of a generic computer and
electronic output device, along with a process that can be performed by
humans using, for example, information stored on paper.
Nothing in the claims purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
134 S. Ct. at 2359. Nor do claims solve a problem unique to the Internet.
See DDR Holdings, 773 F.3d at 1257.
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We, therefore, conclude that claims 23 40 are directed to an abstract
idea, and nothing in the claim transforms them into patent-eligible subject
matter.
In addition to the use of e-mail and an electronic display device,
which we have already addressed, the Appellants additionally argue that
processing payments cannot be done mentally. Reply Br. 5. We disagree,
because “processing a payment” encompasses the person who is the
“controller” accepting cash as payment for the use of the display device.
This is also an aspect of the fundamental economic practice of managing an
inventory of display devices for rent, and we are persuaded that this is a
human-implemented step long practiced in our system of commerce.
We have considered the Appellants’ additional arguments, but are
unpersuaded by them in light of the analysis set forth above. See Appeal Br.
9-15; Reply Br. 2-5.
For these reasons, we sustain the rejection of claims 23 40 under
35 U.S.C. § 101 as disclosing an abstract idea.
Rejection of Independent Claims 23 and 40 under 35 U.S.C. § 103(a)
The Appellants argue independent claims 23 and 40 together as a
group. Appeal Br. 27. We select claim 23 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv).
We begin with two general arguments about alleged shortcomings in
Wolinsky, which are based on language that is not recited in the claims. We
are, for example, unpersuaded by the Appellants’ argument that “Wolinsky
fails to teach or suggest allowing any type of interaction between
subscribers.” Appeal Br. 17. The argument fails because it is not
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commensurate with the scope of the claim, in that the claims do not recite
any “subscribers,” nor any interaction between the “user” who requests
display pricing, other than with the “controller,” and, through the
“controller,” the owner.
We also are not persuaded by the Appellants’ argument that
“Wolinsky clearly fails to teach or suggest an ‘open’ marketplace as recited
in the pending claims.” Appeal Br. 19—20, 26. The argument fails, again,
because it is not commensurate with the scope of the claim, as the claims do
not recite an “open” marketplace as a requirement. In addition, the
Specification does not describe an “open marketplace.”
The Appellants next argue alleged shortcomings in the use of price
information in Wolinsky, asserting that
while Wolinsky uses the term “pricing,” Wolinsky fails to teach
or suggest (1) that the “pricing” is display rates for individual
display devices, (2) that the “pricing” is provided to a user in
response to a user-initiated query for display devices, or (3) that
the “pricing” is used to automatically process a payment between
a party requesting display of content and the owner of the display
device where the content is displayed.
Appeal Br. 19; see also id. at 21—24. We are unpersuaded by the
Appellants’ arguments. To an extent, the argument is one of ipsissimis
verbis, asserting that because Wolinsky does not explicitly disclose
individual prices for individual devices, the ordinary artisan would not know
that “pricing,” generically, would encompass price granularity to the level of
a single device.
Wolinsky discloses “the scheduling/transmission user interface 5604
may include pricing to be provided to the subscribers 204 and 206 in a
dynamic fashion as the subscribers 204 and 206 define the content to be
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broadcast.” Wolinsky, col. 80,11. 15—19. Because Wolinsky provides that
the user interface “allows the subscribers 204 and 206 to establish times,
locations, and/or visual appliances 308 for the content being maintained by
the library to be broadcast” {id. at col. 79,11. 61—64), the providing of price
information is in response to a user query about display devices selected.
In addition, we are persuaded that the ordinary artisan would have
recognized that providing a price for each display unit, and billing, or taking
payment, for the quoted price for each unit, would be a normal and expected
way a system would have worked when providing meaningful pricing
information to enable decisions about displaying content on available
devices. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In
making the obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”). It is a common practice in our system of commerce to price
components individually, or grouped, or both. Thus, even if Wolinsky were
interpreted to disclose only group pricing, which we do not, we are
persuaded that pricing at the individual-unit level would have been a well-
known variation.
We also are unpersuaded by the Appellants’ arguments the
Examiner’s use of Official Notice was traversed, by pointing out that the
claims recite subject matter outside of the scope of Official Notice, and that
the primary reference teaches away from the officially-noticed facts. Appeal
Br. 20. For example, the Appellants reference a response from January 8,
2015, where “the Applicant rebutted each instance of Official Notice by
setting forth that the claims recite more than the ‘facts’ of which the
Examiner took Official Notice” and “that Wolinsky teaches away from all of
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the Officially Noticed ‘facts.’” Appeal Br. 20 (citing Appellants’ Response,
filed Jan. 8, 2015 (“January 2015 Response”)).
Our reviewing court has held that an adequate traverse to an
Examiner’s finding of Official Notice must “contain adequate information or
argument” to create on its face “a reasonable doubt regarding the
circumstances justifying the . . . notice” of what is well known to an
ordinarily skilled artisan. In re Boon, 439 F.2d 724, 728 (CCPA 1971). “To
adequately traverse such a finding [of Official Notice], an applicant must
specifically point out the supposed errors in the [EJxaminer’s action, which
would include stating why the noticed fact is not considered to be common
knowledge or well-known in the art.” MPEP § 2144.03(C). See also
37 C.F.R. § 1.111(b). Here, and in the January 2015 Response, the
Appellants have not set forth any information or arguments as to why the
Officially Noticed facts were not well known. Instead, the arguments
focused on claim language beyond what was within the scope of the facts
noticed, or attacks on the primary reference. As such, the Examiner’s taking
of Official Notice has not been properly traversed, and the facts so noticed
are deemed to be admitted prior art. Id.
The Appellants argue that Wolinsky does not disclose approving a
request to display specific content on a specific display device. Appeal
Br. 25. We are unpersuaded by the Appellants’ argument. Wolinsky
discloses submitting content (col. 38,1. 67 to col. 39,1. 2) to an approver for
approval (col. 40,11. 57—58), and that the approver may approve the content
(col. 41,11. 44-47). We are unpersuaded that the ordinary artisan would not
have recognized that a single display device was also contemplated here, as
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Wolinsky does not limit its method to only approve content for display on a
group of display devices. See KSR, 550 U.S. at 418.
We are not persuaded by the Appellants’ argument that Wolinsky,
according to the Appellants, fails to disclose the use of e-mail to
communicate between users. Appeal Br. 25. Wolinsky discloses “[i]n
notifying the approvers, the system may utilize e-mail or other
communication means about the new scheduled record(s) awaiting
approval.” Wolinsky col. 40,1. 67 to col 41,1. 2.
We are also unpersuaded by the Appellants’ argument that “Wolinsky
makes no mention whatsoever of notifying a user of a rejection of a
request.” Appeal Br. 25—27. Wolinsky discloses the user may display
unapproved requests to submit to an approver (id. at col. 41,11. 35—43), and
that requests with schedule conflicts are communicated to the user (id. at
col. 41,11. 54—56). We are unpersuaded that the ordinary artisan would not
have recognized that requests that are not approved also would be
communicated, just as other request states are reported directly to a user.
See KSR, 550 U.S. at 418.
In addition, rather than relying on Wolinsky for this claim language,
the Examiner took Official Notice that it is old and well-known “to notify
requestors of the status of their requests, such as whether the request was
accepted, rejected, or had other problems that precluded it from being
presented to the approver.” Answer 11—12. We concluded, above, this
finding of fact has not been shown to be in error.
For these reasons, we sustain the rejection of independent claims 23
and 40 under 35 U.S.C. § 103(a).
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Rejection of Dependent Claims 24 and 25 under 35 U.S.C. § 103(a)
Dependent claim 24 recites “receiving a proposed price from the user,
wherein the proposed price is different than the display price for the selected
display device stored in the database, and including the proposed price in the
request.”
Claim 24 was introduced by amendment filed March 24, 2014. In
rejecting the claim language in the Action mailed September 8, 2014, the
Examiner indicates “Official Notice is taken that it was old and well known
at the time of the invention for advertisers and publishers (owners of the
display devices) to negotiate the price for displaying the advertisement on
the display device.” Non-Final Act. 15, Sept. 8, 2014. In response to the
rejection, the Appellants argued:
Applicant traverses the Examiner’s assertion of Official
Notice. The Examiner has not provided evidentiary support for
such an assertion and particular, Applicant notes that Claims 24-
25 recite providing a proposed price as part of a user-
initiated request for display of specific content on a specific
display device. If the Examiner desires to continue to reject
Claims 24-25, the Examiner must provide evidentiary support
that shows the claimed price proposal used as part of a device­
specific request for display of content within a display
management system. In particular, Applicant is not claiming
allowing price negotiation in the abstract but recites allowing a
proposed price to be included to a specific request for displaying
content within an “open” marketplace and using the proposed
price when performing automatic payment processing.
Appellants’ Remarks 25, filed Jan. 8, 2015.
As with claim 23, the Appellants have not set forth any information or
arguments as to why the Officially Noticed facts were not well known. As
such, the Examiner’s taking of Official Notice has not been properly
traversed, and is considered admitted prior art.
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We have considered the Appellants’ remaining arguments, and
determine that they are unpersuasive, because they are essentially the same
arguments advanced above for independent claim 23.
For these reasons, we sustain the rejection of dependent claim 24
under 35 U.S.C. § 103(a), as well as dependent claim 25 that was not
separately argued with specificity.
Rejection of Dependent Claim 26 under 35 U.S.C. § 103(a)
Dependent claim 26 recites “receiving at least a portion of the
information defining a plurality of display devices stored in the database
based on a profile associated with the owner on at least one social network.”
We are unpersuaded that Wolinsky teaches away from the claimed
limitation, because “Wolinsky’s system is a ‘closed system,’ it is unlikely
that information stored in a user’s social network would be usable for a
profile in the ‘closed’ system.” Appeal Br. 29—30.
The term “social network” is not defined, limited, or described in the
Appellants’ Specification. We construe it broadly as a set of linked users.
Wolinsky discloses a system that links users through the system, in that
the system management packages 705 and 752 of the service
provider server 702 and local server 304, respectively, are
utilized to communicate information, such as scheduling and/or
system management information, via the network 220 to enable
subscribers 204 and 206 to utilize the content management and
distribution services provided by the service provider 202.
Wolinsky, col. 20,11. 3—10 (emphasis omitted). Wolinsky discloses profile
information is stored from users, in that users enter “facility information”
that the system stores. Id. at col. 30,11. 45—53. Wolinsky, thus, discloses
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information from profiles on a social network is used, thus, meeting the
claim language.
For this reason, we sustain the rejection of dependent claim 26 under
35 U.S.C. § 103(a).
Rejection of Dependent Claim 27 under 35 U.S.C. ft 103(a)
The Appellants argue the Examiner erred in the use of Official Notice
to reject claim 27. As with claim 23, the Appellants have not set forth any
information or arguments as to why the Officially Noticed facts were not
well known. See Appellants’ Remarks 27—28, filed Jan. 8, 2015. As such,
the Examiner’s taking of Official Notice has not been properly traversed.
We have considered the Appellants’ remaining arguments and
determine that they are unpersuasive, because they are essentially the same
arguments advanced for independent claim 23.
For these reasons, we sustain the rejection of dependent claim 27
under 35 U.S.C. § 103(a).
Rejection of Dependent Claims 28 and 29 under 35 U.S.C. § 103(a)
Claim 28 recites “wherein generating and sending the email message
to the owner of the selected display device includes attaching the content to
the email message.” Claim 29 recites “wherein generating and sending the
email message to the owner of the selected display device includes adding a
link to the email message for downloading the content.”
We are not persuaded by the Appellants’ argument that the Examiner
applies impermissible hindsight, and improperly modifies Wolinsky to
conclude it would be obvious to use email attachments or links within an
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email, because Wolinsky instead stores content in a shared database for
access by all users. Appeal Br. 31—32. The Examiner correctly points out
that, inasmuch as Wolinsky discloses using email for communications (see
Wolinsky col. 40,1. 67 to col. 41,1. 2), it would be “obvious that the email
message could either include the records themselves or links to where the
records are stored. This would be a design choice made by the system
administrator and could be based on such criteria as the size or number of
records to be approved.” Answer 18. In providing content to an approving
owner, there are a limited number of choices to enable this communication,
including attachments, links, downloading, a shared database, and physical
delivery such as via a postal system. We are unpersuaded that providing
attachments or links to content would not have been recognized by the
ordinary artisan as normal manners to communicate content files.
For this reason we sustain the rejection of dependent claims 28 and 29
under 35 U.S.C. § 103(a).
Rejection of Dependent Claim 30 under 35 U.S.C. ft 103(a)
Dependent claim 30 recites:
wherein allowing the owner to download the content to the
selected display device when the owner accepts the request
includes automatically downloading the content to the selected
display device and automatically processing the payment from
the account associated with the user to the account associated
with the owner when the automatic download completes
successfully.
We are persuaded by the Appellants’ argument that Wolinsky does
not disclose automatically processing a payment in response to a particular
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event, as claimed. Appeal Br. 32—33. The Examiner’s response is to focus
only on the “timing” aspect of the claim, asserting
it is obvious that the payment would not be processed until the
advertisement (content) has at least been downloaded to the
display device in order to prevent the advertiser from being
charged if the display device could not receive the advertisement
to display (e.g. the network goes down, the display device’s
memory was full, etc.). However, the timing of the processing
of the payment would be a design decision agreed upon by the
parties involved, and thus, is giving little, if any, patentable
weight.
Answer 19. The cited sections of Wolinsky fail to disclose any automated
process. See Wolinsky col. 76,11. 36—65 and col. 81,11. 53—56. The
Examiner, thus, has not addressed the full scope of the claim language, at
least in part because no automated downloading and payment is set forth in
the cited sections.
For this reason, we do not sustain the rejection of dependent claim 30
under 35 U.S.C. § 103(a).
Rejection of Dependent Claim 31 under 35 U.S.C. ft 103(a)
Dependent claim 31 recites “further comprising automatically
generating and sending an email message to the user when the automatic
download completes successfully.”
We are persuaded by the Appellants’ argument of error by the
Examiner on the basis that “merely providing usage information to a user is
not the same as automatically notifying a user when the user’s requested
content was successfully downloaded to the user’s requested display
device.” Appeal Br. 33. The Examiner, citing Wolinsky column 76,
lines 36—65, speculates that “Wolinsky reports the usage to the user
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(subscriber 206) via email, i.e. after the download has been successfully
completed.” Answer 19. The cited portion of Wolinsky, however, is silent
on sending an email report after a successful download.
For this reason we do not sustain the rejection of dependent claim 31
under 35 U.S.C. § 103(a).
Rejection of Dependent Claim 32 under 35 U.S.C. ft 103(a)
Dependent claim 32 recites “automatically cancelling the request
when the owner does not accept or reject the request with a predetermined
period of time.”
In rejecting claim 32, the Examiner finds the language is not disclosed
by Wolinsky, but nevertheless determines that it is obvious, to cancel
requests after a certain time passes, “in order to eliminate requests whose
requested display time had passed.” Answer 20.
We are persuaded by the Appellants’ argument that because Wolinsky
“fails to disclose providing a requested display time for content submitted
for approval,” the Examiner appears to be using impermissible hindsight.
Appeal Br. 34. There may be other reasons for not canceling a request that
remains pending past a predetermined interval after submission, such as to
enable reuse of the request, or for auditing purposes. The Examiner has not
sufficiently established the obviousness of the claimed step.
For this reason, we do not sustain the rejection of dependent claim 32
under 35 U.S.C. § 103(a).
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Appeal 2016-002305
Application 13/211,079
Rejection of Claims 33-39 under 35 U.S.C. § 103(a)
Claim 33 recites “receiving an address from the owner, the address
associated with the selected display device and automatically determining
additional location information for the selected display device based on the
address.”
We are persuaded by the Appellants’ argument that asserts error on
the part of the Examiner, because “the Examiner merely cites to portions of
Wolinsky that disclose receiving different types of information from a user
and fails to cite to any support in Wolinsky for automatically generated
additional information based on the user-entered information.” Appeal
Br. 35. The Examiner cites Wolinsky, column 31, lines 23—27 and 51—54,
and column 32, lines 37-44 (Answer 20), but each of these citations disclose
only a user entering information, without any automatic determining, as
claimed. The Examiner has, thus, failed to support adequately the
conclusion of obviousness.
For this reason, we do not sustain the rejection of dependent claim 33
under 35 U.S.C. § 103(a), nor of claims 34—39 that depend, directly or
indirectly, from claim 33.
DECISION
We AFFIRM the rejection of claims 23^40 under 35 U.S.C. § 101.
We AFFIRM the rejection of claims 23—29 and 40 under 35 U.S.C.
§ 103(a).
We REVERSE the rejection of claims 30-39 under 35 U.S.C.
§ 103(a).
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Appeal 2016-002305
Application 13/211,079
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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