Ex Parte Winter et al

Patent Trial and Appeal Board

Oct 23, 2017

12892203 (P.T.A.B. Oct. 23, 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.
12/892,203 09/28/2010 Richard Winter 67368-1 1824
24256 7590 10/24/2017
DINSMORE & SHOHL LLP
255 East Fifth Street, Suite 1900
CINCINNATI, OH 45202
EXAMINER
KURIEN, CHRISTEN A
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
10/24/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD WINTER, THOMAS F. JUNG, and
PREDRAQ DOZGIC KRPAN
____________

Appeal 2016-005035
Application 12/892,203
Technology Center 2400
____________

Before ROBERT E. NAPPI, JUSTIN BUSCH, and JASON M. REPKO,
Administrative Patent Judges.

REPKO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–21. App. Br. 4.2 An oral hearing was held on
September 19, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellants identify the real party in interest as Richard Winter, Thomas F.
Jung, and Predraq Krpan. App. Br. 2.
2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed December 17, 2014, (2) the Appeal Brief (“App. Br.”) filed
September 15, 2015, (3) the Examiner’s Answer (“Ans.”) mailed February
11, 2016, and (4) the Reply Brief (“Reply Br.”) filed April 11, 2016.
Appeal 2016-005035
Application 12/892,203

2
THE INVENTION
Appellants’ invention displays targeted messages to patrons of a
business, residence, or enterprise. Spec. ¶ 2. Businesses often install a
television in the waiting room to entertain customers. Id. ¶ 3. According to
the Specification, the invention addresses the need to incorporate content
with proprietary targeted messages in the display. Id. ¶ 5. One embodiment
can base the targeted messages on inventory data, such as in-stock articles or
available services. Id. ¶ 7.
Claim 1 is reproduced below:
1. A media control player comprising:
a central processing unit;
a graphics processing unit;
an audio/video input;
an audio/video output;
a memory device comprising executable instructions that, when
executed by the central processing unit, causes the media
control player to:
access an inventory system to determine a plurality
of in-stock articles;
retrieving sales data corresponding to a viewer
within a viewing area of the display device, wherein the
sales data includes one or more previous purchases by the
viewer that are indicative of preferences of the viewer;
compare the sales data corresponding to the viewer
with the plurality of presently in-stock articles to select at
least one presently in-stock article of the plurality of
presently in-stock articles, wherein the selected at least
one presently in-stock article corresponds with the
preferences of the viewer;
receive a proprietary targeted advertisement
referring to the selected at least one presently in-stock
article from a proprietary targeted message source;
receive broadcast content from a broadcast source;
and
Appeal 2016-005035
Application 12/892,203

3
instruct the graphics processing unit to combine
the proprietary targeted advertisement and the broadcast
content into a merged output signal, and provide the
merged output signal to the display device through the
audio/video output such that the proprietary targeted
advertisement is displayed in at least a message region of
the display device and the broadcast content is displayed
in a broadcast content region of the display device.

THE REJECTIONS
The Examiner relies on the following as evidence:
Carlile US 2002/0016967 Al Feb. 7, 2002
Huber et al. US 2002/0120935 Al Aug. 29, 2002
Yu US 2004/0117819 A1 June 17, 2004
Ludvig et al. US 2005/0204381 Al Sept. 15, 2005
Duri et al. US 2006/0036485 A1 Feb. 16, 2006
Grubbs et al. US 2007/0061838 Al Mar. 15, 2007
Ergen et al. US 2009/0172724 A1 July 2, 2009

Claims 1–3, 5–13, and 15–17 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Yu, Ergen, Duri, Ludvig, and Carlile. Final Act. 3–11.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Yu, Ergen, Duri, Ludvig, Carlile, and Huber. Final Act. 11.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Yu, Ergen, Duri, Ludvig, Carlile,3 and Grubbs. Final Act. 12.
Claims 18–21 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Yu, Ergen, Duri, Ludvig, Grubbs, and Huber. Final Act. 12–17.

3 The Examiner omits Carlile from the heading in the rejection of claim 14
without further explanation. Final Act. 12. Because claim 14 depends from
claim 12, which is rejected using the Carlile reference (id. at 3), we treat the
rejection of claim 14 as including Carlile as well.
Appeal 2016-005035
Application 12/892,203

4

THE REJECTION OVER YU, ERGEN, DURI, LUDVIG, AND CARLILE
In rejecting independent claims 1 and 12 over Yu, Ergen, Duri,
Ludvig, and Carlile, the Examiner finds that Carlile retrieves and compares
the recited sales data to select an in-stock article. Final Act. 5 (citing Carlile
Abstract, ¶ 32); see also Final Act. 7–10 (rejecting claim 12).
Appellants argue that Carlile does not offer in-stock articles based on
sales data. App. Br. 20. According to Appellants, Carlile presents disease
and treatment information to patients in a waiting room, which does not use
sales data or compare sales data to in-stock articles. Id. at 20–21.
Appellants’ argument (id.) presents us with the following issue: Does
Carlile teach or suggest comparing sales data corresponding to the viewer
with presently in-stock articles to select an article, as recited in claims 1 and
12? We agree that the Examiner did err in finding that Carlile teaches or
suggests this feature.
In particular, the Specification discloses that sales data can represent
previous purchases. Spec. ¶ 41. For example, a car dealership’s sales data
may store a customer’s past vehicle purchases, including information about
vehicle model, options, parts, or services. Id.
By contrast, Carlile shows videos to patients waiting to see a
physician. Carlile ¶ 32, Abstract, cited in Final Act. 5. Carlile’s
programming is intended to help the patient think about the origin or
etiology of a disease or disorder. Carlile ¶ 32. The type of programming is
based on whether it is the patient’s original or succeeding visit. Id.
Although Carlile’s videos are based on some information about the
patient, the Examiner has not shown that Carlile uses anything that can be
Appeal 2016-005035
Application 12/892,203

5
construed as the recited “sales data.” See Final Act. 5. Rather, Carlile’s
information relates to office visits (Carlile ¶ 32) and Carlile selects videos
based on the patient’s interests (Carlile ¶ 27). In fact, Carlile cautions that
the advertiser’s need to sell products may conflict with the best treatment for
the patient. Id. ¶ 27. Overall, Carlile’s objective is to inform the patient,
rather than sell them products. See id., cited in Ans. 4. Therefore, we agree
that Carlile does not teach or suggest offering in-stock products based on
sales data. App. Br. 20–21.
Because the Examiner does not rely on Yu, Ergen, Duri, or Ludvig to
teach the limitation missing from Carlile, the Examiner’s error regarding
Carlile is dispositive. See Final Act. 3–6, 7–10. So, we need not reach
Appellants’ remaining arguments. See App. Br. 14–23; Reply Br. 2–6.
Therefore, we do not sustain the Examiner’s rejection of independent
claims 1 and 12. For similar reasons, we also do not sustain the rejection of
dependent claims 2–11 and 13–17.

THE REJECTIONS OVER YU, ERGEN, DURI, LUDVIG, CARLILE
WITH HUBER OR GRUBBS
The Examiner rejects claims 4 and 14 as being obvious over the
combination discussed above in addition to Huber and Grubbs. Final
Act. 11–12. The Examiner, however, does not rely on the additional
references to cure the deficiency discussed above. See id. Accordingly, we
do not sustain the Examiner’s rejections of claims 4 and 14 for the reasons
that we discussed in connection with claims 1 and 12.

Appeal 2016-005035
Application 12/892,203

6
THE REJECTION OVER YU, ERGEN, DURI, LUDVIG, GRUBBS, AND
HUBER
Claim 18 recites, in part, an “inventory system” and a remote server
operable to “receive inventory data corresponding to a plurality of in-stock
vehicles from the inventory system.”
“inventory system”
The Examiner finds that Duri teaches the recited inventory system and
the step of receiving the inventory data from the inventory system. Ans. 3.
According to the Examiner, Duri determines which products are near the
customer and stores data about the products. Id.
Appellants argue that the cited references do not teach an inventory
system for the reasons discussed in connection with claims 1 and 12.
App. Br. 23. In the arguments related to claims 1 and 12, Appellants (1)
argue that it is unreasonable to interpret a customer viewing articles on a
shelf or interrogating RFID tags on those products as “accessing an
inventory system,” and (2) further point out that “claims 1 and 12 do not
recite ‘inventory data.’” Id. at 17–18. Yet claim 18 does not recite
“accessing an inventory system,” but does, in fact, recite “inventory data.”
Therefore, Appellants’ arguments regarding the inventory system recited in
claims 1 and 12 (id. at 16–18) are not commensurate with claim 18’s scope.
Nor do these arguments squarely address the Examiner’s reasoning
regarding the features specific to claim 18—e.g., “receiving inventory data,”
not “accessing an inventory system.” For at least these reasons, Appellants’
arguments regarding claim 18’s inventory system (id. at 16–18, 23) are
unpersuasive.
Moreover, the Examiner’s interpretation of claim 18’s inventory
system and corresponding inventory data (Final Act. 13–14) is reasonable.
Appeal 2016-005035
Application 12/892,203

7
In particular, Duri teaches a product database that records the data about
products sold by the retailer. Duri ¶ 29, cited in Final Act. 14. Duri further
teaches identifying products near the customer. See, e.g., Duri Fig. 6, step
630, cited in Final Act. 14. For instance, Duri affixes RFID tags to “each
unit of a given product.” Duri ¶ 19. Duri explains that, by affixing tags to
individual units, “pricing and inventory may be applied at any level.” Id.
(emphasis added). Because the tags are affixed to in-stock products, we
agree that—like the recited inventory data—the data from Duri’s RFID tags
correspond to in-stock products in the store’s inventory. See id. In this way,
Duri’s RFID tags and database, collectively, correspond to the recited
inventory system because the inventory data can be received from this
system. See Final Act. 13–14.
Regarding claims 1 and 12, Appellants also contend that Ergen does
not access an inventory system. App. Br. 14–15; Reply Br. 2–3. For the
same reason discussed regarding Duri, Appellants’ arguments regarding the
inventory system recited in claims 1 and 12 are not commensurate with the
scope of claim 18. Nor do these arguments squarely address the Examiner’s
reasoning regarding the features specific to claim 18’s inventory system.
Therefore, Appellants’ arguments regarding Ergen and claim 18’s inventory
system (App. Br. 14–15; Reply Br. 2–3) are unpersuasive. And because the
Examiner relies on Duri to teach receiving inventory data from an inventory
system, as recited in claim 18, we need not reach the issue of whether Ergen
teaches this limitation. See Final Act. 13–14.
“a plurality of in-stock vehicles”
Appellants argue that Huber does not teach the recited inventory data
corresponding to in-stock vehicles. App. Br. 24. According to Appellants,
Appeal 2016-005035
Application 12/892,203

8
Huber’s advertisements are for vehicle services and accessories, not actual
vehicles. Id. at 25 (citing Huber ¶ 31). Appellants contend that Huber
merely evaluates the availability of different versions and varieties of
products and services. Reply Br. 7 (citing Huber ¶ 16). In Appellants’ view,
Huber’s evaluation does not involve receiving inventory data and selecting a
vehicle. Reply Br. 7.
The Examiner, however, relies on Huber for teaching a system that
tracks sales and inventory for tailored advertisements based on information
about vehicles. See Ans. 6. We find that the Examiner’s reliance on Huber
for this limited purpose is reasonable. For instance, Huber’s system
maintains information about a consumer’s vehicle. See Huber ¶ 31
(“Advertisement type may also reflect vehicle information wherein
advertisements are tailored to the consumer’s vehicle.”). Such information
can include a truck’s color and model. See id. Huber also tracks purchase
history and when a vehicle is due for service. See id. On this record, we
agree with the Examiner’s finding that Huber at least suggests receiving data
corresponding to vehicles in a system that tailors advertisements. Ans. 8.
Essentially, the Examiner proposes substituting one type of product
data for another. See Final Act. 16. That is, instead of using data about
socks (Duri ¶ 19), the Examiner proposes using inventory data about
vehicles. See Final Act. 16. In the obviousness rationale, the Examiner
proposes using the vehicle data to improve targeted advertisements, just as
Huber does. Compare Final Act. 16 with Huber ¶ 31. So, the Examiner’s
proposed enhancement predictably uses the prior art elements according to
their established functions, and involves a creative step well within the skill
level of ordinary artisans. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
Appeal 2016-005035
Application 12/892,203

9
417, 421 (2007). On this record, we are unpersuaded that the Examiner
erred in concluding that inventory data corresponding to the recited plurality
of in-stock vehicles would have been obvious in view of the cited references.
Final Act. 16.
To the extent that Appellants intend to incorporate arguments from the
Pre-Appeal Brief Conference Request filed June 16, 2015 (App. Br. 24), we
do not consider these arguments unless they are also found in the briefs. See
37 C.F.R. § 41.37(c)(iv) (“Except as provided for in §§ 41.41, 41.47 and
41.52, any arguments or authorities not included in the appeal brief will be
refused consideration by the Board for purposes of the present appeal.”).
The Examiner’s Rationale for Adding Duri
Appellants further argue that Duri is not properly combinable with
Yu, Ergen, Ludvig, Grubbs, and Huber for the reasons described in
connection with claims 1 and 12. App. Br. 23–24. This argument is
unpersuasive for several reasons. First, the Examiner did not rely on Grubbs
and Huber in rejecting claims 1 and 12. See Final Act. 3–6, 7–10. So,
Appellants’ arguments (App. Br. 22–23) do not address the combinability of
Duri with Grubbs and Huber in the rejection of claim 18. Second, the
Examiner did not rely on Carlile in rejecting claim 18. Therefore,
Appellants’ argument about Carlile’s medical office (App. Br. 22–23) is
irrelevant to claim 18’s rejection.
Nevertheless, we are unpersuaded by Appellants’ arguments (id.) to
the extent they apply to the combinability of Duri, Yu, Ergen, and Ludvig.
In particular, according to Appellants, one of ordinary skill looking to
broadcast targeted advertisements would not look to the teachings of Duri.
App. Br. 22. Appellants contend that Duri requires hundreds or thousands of
Appeal 2016-005035
Application 12/892,203

10
RFID tags. Id. Appellants also contend there would be no desire to display
Duri’s personalized pricing information with publically viewable displays
taught by Yu, Ergen, and Ludvig. Id.4 For example, Appellants argue that
publically displaying allergy information would embarrass the intended
audience. Id. at 22–23.
But the test for obviousness is not bodily incorporation. Moreover,
the Examiner is not proposing using every rule in Duri’s personalization
rulebase 500 in Figure 5. See Final Act. 14. Rather, Duri’s rulebase 500 has
rules that are unlikely to reveal anything about the customer to a wider
audience. See Duri Fig. 5. For instance, Duri displays discounts for product
B if the customer has product A in a cart. See Duri, Fig. 5, item 503. In
fact, Duri’s message is similar to the one shown in Yu, which shows the
message “25% off Today.” See Yu, Fig. 1(a). Therefore, we are
unpersuaded by the argument against the Examiner’s proposed combination
of Duri with Yu and the other references. See App.Br. 22–23.
Appellants also argue the number of references is excessive.
App. Br. 23. But the Examiner’s reliance on many references in a rejection
does not itself weigh against the obviousness of the claimed invention. See
In re Gorman, 933 F.2d 982 (Fed. Cir. 1991) (explaining that “[t]he
criterion, however, is not the number of references, but what they would
have meant to a person of ordinary skill in the field of the invention.”). Nor
are we persuaded that the Examiner has engaged in impermissible hindsight
reasoning here. See App. Br. 23. Rather, the Examiner explains that one of
ordinary skill in the art would have incorporated the additional information

4 Appellants also include Carlile in this argument, which was not relied upon
in the Examiner’s rejection of claim 18. App. Br. 22.
Appeal 2016-005035
Application 12/892,203

11
collected by Duri’s inventory system in the combination to better understand
the customer’s habits and improve the targeted advertisements.
Final Act. 14. This enhancement uses prior art elements predictably
according to their established functions. On this record, the weight of the
evidence favors the Examiner’s conclusion that the subject matter at issue
would have been obvious. See id.
Accordingly, we sustain the Examiner’s rejection of independent
claim 18 and dependent claims 19–21, which are not separately argued (see
App. Br. 26).

CONCLUSIONS
We reverse the Examiner’s rejection of claims 1–17 under
35 U.S.C. § 103.
We affirm the Examiner’s rejection of claims 18–21 under
35 U.S.C. § 103.

DECISION
We affirm-in-part the Examiner’s rejection of claims 1–21.

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