MODIFACE INC. (ASSIGNEE) et al.

Patent Trials and Appeals BoardJun 18, 2020

90014186 - (D) (P.T.A.B. Jun. 18, 2020)

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. 90/014,186 08/22/2018 9275400 7030-2 2077 22850 7590 06/18/2020 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER TARAE, CATHERINE MICHELLE ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/18/2020 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 MODIFACE INC. Patent Owner and Appellant ____________ Appeal 2020-004048 Reexamination Control 90/014,186 United States Patent US 9,275,400 B2 Technology Center 3900 ____________ Before JOHN A. JEFFERY, MARC S. HOFF, and MICHAEL J. ENGLE, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. §§ 134 and 306 the Examiner’s decision to reject claims 1, 21, and 22. We have jurisdiction under 35 U.S.C. §§ 134 and 306. We AFFIRM. 1 Appellant identifies the real party in interest as L’Oreal. Appeal Br. 1. Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 2 STATEMENT OF THE CASE This proceeding arose from a request for ex parte reexamination filed on August 22, 2018 of United States Patent 9,275,400 (“the ’400 patent”), issued to Aarabi on March 1, 2016. The ’400 patent describes a system for creating personalized advertisements. To this end, after receiving an uploaded facial photograph, facial features in the photograph are detected and analyzed, and personal information extracted from the analyzed facial features. The system then recommends an advertised product related to the extracted personal information. See Abstract. Claims 1, 21, and 22 are illustrative of the invention and reproduced below: 1. A method, executed in a computing device, of personalizing a product advertisement comprising: receiving, at the computing device, a digital product advertisement including therewithin a placeholder or a call to action for a photograph, wherein the placeholder or the call to action occupies a region displayed in the digital product advertisement that does not include a displayed photograph; receiving a facial photograph, the facial photograph including a plurality of facial features; detecting at least one facial feature of the plurality of facial features; modifying the at least one facial feature by simulating usage thereon of the product being advertised; replacing the at least one facial feature with the modified at least one facial feature to create a modified facial photograph; generating, as a personalized product advertisement, the modified facial photograph within the digital product advertisement; and providing the personalized product advertisement for display on a user interface to a consumer. Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 3 21. The method of claim 1, wherein the generating the modified facial photograph within the digital product advertisement includes displaying the unmodified upload facial photograph and the modified facial photograph adjacent to each other in the region previously occupied by the placeholder or the call to action. 22. The method of claim 1, wherein the digital product advertisement is a rich media advertisement configured to be embedded into a standard ad-sized unit of a website. THE REJECTIONS The Examiner rejected claims 1 and 22 under 35 U.S.C. § 102(b) as anticipated by Orpaz (US 2005/0203724 A1; Sept. 15, 2005). Ans. 4–6.2 The Examiner rejected claims 1 and 22 under 35 U.S.C. §§ 102(a) and (e) as anticipated by Peyrelevade (US 7,437,344 B2; Oct. 14, 2008). Ans. 7–9. The Examiner rejected claim 21 under 35 U.S.C. § 103 as unpatentable over Orpaz and Peyrelevade. Ans. 10–12. THE ANTICIPATION REJECTION OVER ORPAZ The Examiner finds that Orpaz discloses every recited element of independent claim 1 as well as a rich media advertisement configured to be embedded into a standard ad-sized unit of a website as recited in dependent claim 22—a standard unit that is said to be the generally rectangular shape in Orpaz’s Figure 3. Ans. 4–6. 2 Throughout this opinion, we refer to the Appeal Brief filed November 15, 2019 (“Appeal Br.”) and the Examiner’s Answer mailed February 27, 2020 (“Ans.”). Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 4 Appellant argues that because ordinarily skilled artisans would interpret the recited “ad-sized unit” of the website to conform to an accepted “standard,” a generally rectangular shape would not meet this requirement given the purpose of using such standards is to prevent unspecified generally rectangular shapes from being used by any software developer. Appeal Br. 5–8. ISSUE Under § 102, has the Examiner erred in rejecting claim 22 by finding that Orpaz discloses a rich media advertisement configured to be embedded into a standard ad-sized unit of a website (“the standard ad-sized unit limitation”)? ANALYSIS We begin by noting that the Examiner’s anticipation rejection of independent claim 1 is undisputed. Rather, the dispute before us centers on the Examiner’s anticipation rejection of dependent claim 22. As noted above, the key disputed limitation of claim 22 recites, in pertinent part, “a standard ad-sized unit of a website.” As the Examiner indicates (Ans. 6, 14), the ’400 patent does not define the term nor specify this standard unit with particularity by articulating its precise shape, dimensions, or other visual characteristics to distinguish it from other content areas. On page 3 of the Appeal Brief, Appellant cites (1) column 2, lines 30– 35; (2) column 4, lines 17–20; and (3) Figures 2 and 4 of the ’400 patent in Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 5 connection with the standard ad-sized unit limitation. As shown in Appellant’s Figure 2 reproduced below, the figure merely shows a square with the text “Standard sized Makeover ad, prompting the user to upload their photo.” Standard sized Makeover ad in Appellant’s Figure 2 Figure 4 of the ’400 patent, reproduced below, shows a rectangle enclosing three smaller rectangles corresponding to respective rich media advertisement examples regarding cosmetic makeup and weight loss. Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 6 Exemplary rich media advertisements in the ’400 patent’s Figure 4 Although both these figures show square and rectangular shapes, these figures and their associated descriptions do not articulate particular dimensions, parameters, or other visual characteristics that specify or otherwise define a standard ad-sized unit of a website as claimed. To the extent that Appellant contends that these figures somehow reflect or convey particular dimensions or sizes of standard ad-sized units of a website (see Appeal Br. 6–7), such arguments are unavailing, for it is well settled that patent figures generally are not drawn to scale and do not define the depicted elements’ precise proportions or sizes where, as here, the Specification is silent in that regard. See Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000) (“[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 7 on to show particular sizes if the specification is completely silent on the issue.”). Although Appellant’s disclosure informs our understanding of the recited “standard ad-sized unit of a website,” the term is not so limited, nor will we import the particular examples noted above into the claim. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (“[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace different subject matter than is illustrated in the specific embodiments in the specification.”) (citations and internal quotation marks omitted). We, therefore, construe the term “standard” with its plain meaning, namely “(of a size, measure, design, etc.) such as is regularly used or produced; not special or exceptional.” OXFORD DICTIONARY ON LEXICO.COM, https://www.lexico.com/en/definition/standard (last visited June 8, 2020). Given this definition of “standard” considered in light of Appellant’s disclosure, we see no error in the Examiner’s finding that the term “standard ad-sized unit of a website” includes generally rectangular shapes such as those in Orpaz’s Figure 3. See Ans. 6. That Orpaz (1) compares image dimensions with a predefined standard dimension, and (2) crops and rotates the image within a specified tolerance of a predetermined size and rotation in paragraph 45 as the Examiner indicates (Ans. 14) only bolsters the Examiner’s findings in this regard. Absent further evidence, Appellant’s unsupported contention that a generally rectangular shape would not meet Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 8 the recited standard (Appeal Br. 5–8) is unavailing and not commensurate with the scope of the claim that does not preclude Orpaz’s generally rectangular shapes. Therefore, we are not persuaded that the Examiner erred in rejecting claims 1 and 22 as anticipated by Orpaz. THE ANTICIPATION REJECTION OVER PEYRELEVADE The Examiner finds that Peyrelevade discloses every recited element of independent claim 1 as well as a rich media advertisement configured to be embedded into a standard ad-sized unit of a website as recited in dependent claim 22, a standard unit that is said to be the generally rectangular shape in Peyrelevade’s Figure 10. Ans. 7–9. Appellant argues that because ordinarily skilled artisans would interpret the recited “ad-sized unit” of the website to conform to an accepted “standard,” a generally rectangular shape would not meet this requirement given the purpose of using such standards is to prevent unspecified generally rectangular shapes from being used by any software developer. Appeal Br. 5–8. ISSUE Under § 102, has the Examiner erred in rejecting claim 22 by finding that Peyrelevade discloses a rich media advertisement configured to be embedded into a standard ad-sized unit of a website (“the standard ad-sized unit limitation”)? Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 9 ANALYSIS We begin by noting that the Examiner’s anticipation rejection of independent claim 1 is undisputed. Rather, as noted above, the dispute before us centers on the Examiner’s anticipation rejection of dependent claim 22. For reasons similar to those indicated above in connection with the anticipation rejection over Orpaz, we are also unpersuaded of error in the Examiner’s anticipation rejection of claim 22 over Peyrelevade. Given the above-noted definition of “standard” considered in light of Appellant’s disclosure, we see no error in the Examiner’s finding that the term “standard ad-sized unit of a website” includes generally rectangular shapes such as those in Peyrelevade’s Figures 10, 17, 19, and 22. See Ans. 9, 14–15 (citing these figures). Absent further evidence, Appellant’s contention that a generally rectangular shape would not meet the recited standard (Appeal Br. 5–8) is unavailing and not commensurate with the scope of the claim that does not preclude Peyrelevade’s generally rectangular shapes. Therefore, we are not persuaded that the Examiner erred in rejecting claims 1 and 22 as anticipated by Peyrelevade. THE OBVIOUSNESS REJECTION Regarding claim 21, the Examiner acknowledges that Orpaz does not display the unmodified upload facial photograph and the modified facial photograph adjacent to each other in the region previously occupied by the placeholder or call to action as claimed. Ans. 10. The Examiner, however, Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 10 cites Peyrelevade for teaching this feature in concluding that the claim would have been obvious. Ans. 10–12. Appellant argues that the Examiner failed to adduce fact-based evidence to support the interpretation that Orpaz, considered alone or combined with Peyrelevade, teaches or suggests claim 21’s limitations. Appeal Br. 4–5. According to Appellant, Peyrelevade’s “back button” in Figure 10 does not allow the user to see the recited unmodified and modified facial photographs adjacent each other in a specified region. Appeal Br. 5. ISSUE Under § 103, has the Examiner erred in rejecting claim 21 by finding that Orpaz and Peyrelevade collectively would have taught or suggested displaying the unmodified upload facial photograph and the modified facial photograph adjacent to each other in the region previously occupied by the placeholder or call to action (“the adjacent photograph display limitation”)? ANALYSIS On this record, we find no error in the Examiner’s reliance on the functionality in connection with Peyrelevade’s Figures 19, 20, and 22 for at least suggesting the adjacent photograph display limitation. Ans. 10–13. See, e.g., Peyrelevade col. 14, ll. 61–62 (noting that Figure 19 shows separate before and after images). Even assuming, without deciding, that Peyrelevade’s “back button” in Figure 10 does not allow the user to see the unmodified and modified facial photographs adjacent each other in a specified region as Appellant contends Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 11 (Appeal Br. 5), Appellant does not squarely address—let alone persuasively rebut—the Examiner’s additional reliance on the functionality in connection with Peyrelevade’s Figures 19, 20, and 22 for at least suggesting the adjacent photograph display limitation. Ans. 10–13. Nor does Appellant squarely address—let alone persuasively rebut— the Examiner’s finding that Peyrelevade’s Figure 22 shows unmodified and modified facial photographs adjacent each other in a display. See Ans. 13. As shown below, Peyrelevade’s Figure 22 shows an initial image U.130 and two images U.140 and U.150 adjacent each other, where the latter two images reflect simulations of one and two beauty products, respectively. Initial Image and Images Reflecting Beauty Product Simulations in Peyrelevade’s Figure 22 Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 12 As shown above, the initial image U.130 is shown adjacent images U.140 and U.150 that show simulations of beauty products on the initial image. This functionality would enable the user to compare visually the images before and after the simulation side-by-side to assess the simulation’s effect on the initial, unmodified image quickly and easily. Providing such functionality in connection with that of Orpaz to display the unmodified and modified images in a previously-occupied placeholder or call-to-action region as the Examiner proposes is a creative step that uses prior art elements predictably according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). To the extent that Appellant contends that providing this side-by-side display of unmodified and modified images in a previously-occupied placeholder or call to action region as the Examiner proposes would have been uniquely challenging or otherwise beyond the level of ordinarily skilled artisans (see Appeal Br. 4–5), there is no persuasive evidence on this record to substantiate such a contention. Therefore, we are not persuaded that the Examiner erred in rejecting claim 21. CONCLUSION The Examiner’s decision rejecting claims 1, 21, and 22 is affirmed. Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 13 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 22 102(b) Orpaz 1, 22 1, 22 102(a), (e) Peyrelevade 1, 22 21 103 Orpaz, Peyrelevade 21 Overall Outcome 1, 21, 22 REQUESTS FOR EXTENSIONS OF TIME Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED cdc Appeal 2020-004048 Reexamination Control 90/014,186 Patent US 9,275,400 B2 14 PATENT OWNER: OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 Duke Street Alexandria, VA 22314 THIRD PARTY REQUESTER: SAGE PATENT GROUP - REEXAM P.O. Box 30789 Raleigh, NC 27622-0789 Notice of References Cited Application/Control No. Applicant(s)/Patent Under Patent Appeal No. Examiner Art Unit Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.