Swisscom AG

Patent Trials and Appeals Board

Oct 7, 2021

2020004721 (P.T.A.B. Oct. 7, 2021)

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.
16/109,518 08/22/2018 Rudolf Ritter 24337US05 3515
23446 7590 10/07/2021
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
PENG, HSIUNGFEI
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
10/07/2021 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUDOLF RITTER and ERIC LAUPER

Appeal 2020-004721
Application 16/109,518
Technology Center 2400
____________

Before ROBERT E. NAPPI, CARL L. SILVERMAN, and
NORMAN H. BEAMER, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–40, which constitute all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as
Swisscom AG, a Swiss company headquartered in Worblaufen, Switzerland.
Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s disclosure is directed to distribution of picture objects.
Abstr., Spec. 1:10–17, 2:10–14, Fig. 1.
Claim 21 is exemplary of the invention and reads as follows
(emphases added):
21. A system for communication, the system
comprising
a display unit operable to display visual information to a
user according to a level of interest in a location;
a retinal scanner operable to determine a direction of view
of at least one eye of the user with respect to the display unit by
detecting a position of a pupil;
a detector operable to measure a duration and a frequency
with which the location is viewed by the user, wherein the
location is considered viewed based on the direction of view of
the at least one eye of the user, and wherein the level of interest in
the location is based on a duration of time the location is viewed
and a frequency with which the location is viewed; and
a control unit operable to capture a visual object at the
location according the level of interest in the location.
Appeal Br. 17 (Claims Appendix).
REFERENCES AND REJECTIONS
The prior art relied upon by the Examiner is:

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Name Reference Date
Mann US 4,034,401 July 5, 1977
Cannon US 6,286,005 B1 Sept. 4, 2001
Flickner et al.2 US 6,577,329 B1 June 10, 2003

Claims 21–28 and 37–40 stand rejected under 35 U.S.C. § 103 as
unpatentable over Flickner and Cannon. Final Act. 3–8.
Claims 29–36 stand rejected under 35 U.S.C. § 103 as unpatentable
over Flickner and Mann. Final Act. 8–11.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief and the Reply Brief that the Examiner has
erred, as well as the Examiner’s response to Appellant’s arguments in the
Appeal Brief. Arguments which Appellant could have made, but did not
make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). On the
record before us, we are unpersuaded the Examiner has erred. We adopt as
our own the findings, conclusions, and reasons set forth in the rejections
from which the appeal is taken and in the Examiner’s Answer, and provide
the following for highlighting and emphases.

2 The Examiner notes Flickner incorporates additional references: (1) U.S.
Pat. No. 4,536,670 to Hutchinson, issued June 6, 1989 and entitled “Eye
Movement Detector”; (2) U.S. Pat. No. 4,950,069 to Hutchinson, issued
Aug. 21, 1990 and entitled “Eye Movement Detector With Improved
Calibration and Speed”; and (3) U.S. Pat. No. 4,595,990 to Garwin et al.,
issued June 17, 1986 and entitled “Eye Controlled Information Transfer.”
Also, although the invention’s gaze tracking apparatus 2 may be a custom
product, a commercially available product may be used instead, such as the
EyeTrac Series 4000 product by Applied Science Labs, or the EyeGaze
system by LC Technologies, Inc. See Final Act. 3; Flickner 3:16–30.
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The § 103 Rejection of Claims 21–28 and 37–40
In the Final Action, the Examiner finds the combination of the
teachings of Flickner, Hutchinson, Garwin, and Cannon teaches the
limitations of representative claim 21. Final Act. 3–4 (citing Flickner 1:59–
2:20, 3:5–60, 6:39–45, 10:47–53; Hutchinson 3:40–48, 5:1–40; 7:56–8:9,
9:5–14, 10:13–58, 21:3–16, Figs. 1–4; Garwin 3:43–46, 4:29–62, 7:10–17,
Fig. 2; Cannon 35:22–32).
In particular, the Examiner finds
Flickner further discloses the system generates relevance
feedback based on whether the user is paying attention to certain
ticker items. Accordingly, the system “learns” the user’s
particular interests (see Col 10 lines 3-9); therefore, it would
have been obvious to include a control unit operable to capture a
visual object at the location according the level of interest in the
location such that the system “learns” the user’s particular
interests, and the system “adaptively” provides information
regarding such interests to the user, thus produce more effective
targeting results.

Id. at 4.
Appellant argues the Examiner errs in finding Flickner or Hutchinson
each teaches the following claim 21 limitation “a control unit operable to
capture a visual object at the location according the level of interest in the
location” (also referred to as “disputed limitation”). Appeal Br. 4–7.
Regarding Flickner, Appellant argues Flickner’s ability to learn a
user’s particular interests from ticker items (e.g.,
information/advertisements) does not require “a control unit operable to
capture a visual object at the location according the level of interest in the
location” because Flickner already knows exactly what
information/advertisement (alleged “visual object”) is on the screen at a
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particular location during any particular time. Id. at 5 (citing Flickner 10:3–
9). Appellant argues, even if the “information being displayed by the ticker
display” is the alleged “visual object at the location,” a third party knows
that the user is interested in the alleged “visual object at the location,”
Flickner lacks “a control unit operable to capture” the alleged “visual object
at the location.” Id.
Regarding Hutchinson, Appellant argues the Examiner makes a
completely new argument that, in an uncited patent (Hutchinson),
monitoring of a person’s eyes as they stare is equivalent to “captur[ing] a
visual object at the location” in which that person/user has “a level of
interest” as claimed. Appeal Br. 6–7 (emphases omitted) (citing Advisory
Act. 2). According to Appellant, Hutchinson’s measurement of where and
for how long a person stares is not equivalent to “captur[ing] a visual object
at the location” in which that person/user has “a level of interest” as
claimed. Id. at 7. Appellant argues Hutchinson’s measurement of how long
a person stares requires the monitoring is of a person/user’s eyes, however,
the claimed “visual object” is what the person/user actually sees. Id.
In the Answer, the Examiner finds Flickner discloses, as in the
description of the related art, that currently there is no way of knowing
whether the user is viewing the ticker display, or whether the information
being displayed by the ticker display has relevance to the user. Ans. 13
(citing Flickner 1:38–43). The Examiner finds, in view of these problems,
Flickner provides a system for viewing information and data which is user-
interactive, the system can determine whether the user is viewing the ticker
display, and, if so, whether the information being displayed by the ticker
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display has relevance to the user. Id. (citing Flickner 1:47–54). The
Examiner refers to Flickner and finds
Further, the present invention provides a hassle-free way of
providing relevance feedback for the information being
displayed and can automatically change the amount and type of
information being displayed to a particular user. Thus, the system
is adaptive to the user’s interests and preferences, and thereby
advertisers and the like can capitalize on or change the
information being displayed to the particular user (see Col 2 lines
10- 20).

Id. (quoting Flickner 2:10–20).
The Examiner finds, from the context of the disclosures described
above, Flickner either teaches the feature of “capture a visual object at the
location” as claimed or renders the claimed feature to be obvious so as
advertisers and the like can capitalize on or change the information being
displayed to the particular user. Ans. 13.
The Examiner finds Hutchinson is incorporated by reference and is
part of Flickner’s disclosure. Ans. 13; see also note 2 of this Decision. The
Examiner finds Hutchinson presents alternative evidence for “capturing a
visual object at the location,” for instance, capturing an icon at the location
of on the screen. Id. at 14 (citing Hutchinson 7:57–68).
In the Reply Brief (page 3), Appellant provides a Table that
summarizes the Examiner’s findings in the Answer regarding “capture a
visual object” and Appellant’s arguments why these findings are irrelevant,
as set forth below.
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Appellant’s Summary of Examiner’s findings regarding “capture a
visual object” and Appellant’s arguments why these findings are irrelevant.

Appellant argues the Examiner errs in finding Hutchinson teaches
“capture a visual object” because Hutchinson never mentions that an icon is
ever captured. Id. at 5. According to Appellant, Hutchinson already has the
icon and does not need to capture it. Id. Appellant argues Hutchinson’s
system to sense, locate and follow the movement of a user’s eyes is used to
determine the position of a user’s eyes and where they are looking. Id.
(citing Hutchinson 7:57–68).
The EA alleges that Flickner discloses: Even if the alleged disclosure is accurate, it
is irrelevant to the claims because:
“a system for viewing information and data
which is user-interactive”
Flickner’s system does not capture the alleged
visual object (Flickner’s information and
data). Rather, Flickner’s system provides
information and data that is viewed by a user.
“the system can determine whether the user is
viewing the ticker display and, if so, whether
the information being displayed by the ticker
display has relevance to the user”
The viewing habits of Flickner’s user is not a
visual object.
“the present invention provides a hassle-free
way of providing relevance feedback for the
information being displayed”
Flickner’s relevance feedback is not a visual
object.
“the present invention ... can automatically
change the amount and type of information
being displayed to a particular user”
Flickner’s change of the amount and type of
the alleged visual object (Flickner’s
information) is not equivalent to “capture a
visual object” as claimed.
“the system is adaptive to the user’s interests
and preferences”
Flickner’s system adaptation is not equivalent
to “capture a visual object” as claimed.
“advertisers and the like can capitalize on or
change the information being displayed to the
particular user”
Flickner’s system does not capture the alleged
visual object (Flickner’s information being
displayed). Rather, Flickner’s system displays
the information.
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Appellant argues the Examiner errs in finding Flickner teaches
“determine a direction of view . . .” because Flickner’s eye movements lack
any information about a direction of such movements. Id. at 8–9.
In the Reply Brief regarding independent claim 29, Appellant
reiterates the Examiner errs because neither Flickner nor Hutchinson teaches
“capture a visual object.” Reply Br. 3–6. According to Appellant, the
Examiner fails to show that Flickner’s following the movement of a user’s
eyes is equivalent to “a device operable to capture a visual object.” Reply
Br. at 4–5. According to Appellant, Hutchinson does not cure the
deficiencies of Flickner. Id. at 5–7.
As discussed below, we are not persuaded by Appellant’s arguments.
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the Specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although we interpret
claims broadly but reasonably in light of the Specification, we nonetheless
must not import limitations from the Specification into the claims. See In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Our reviewing court
states that “the words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005) (en banc) (citation omitted). However, the broadest reasonable
interpretation differs from the broadest possible interpretation. In re Smith
Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). The correct inquiry in
giving a claim term its broadest reasonable interpretation in light of the
specification is “an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
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that is ‘consistent with the specification.’” Id. at 1382–83 (quoting In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
As stated by the Supreme Court, the Examiner’s obviousness
rejection must be based on:
[S]ome articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness . . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
Regarding “visual object,” Appellant does not persuasively identify a
definition or Specification citation that would exclude a ticker tape as a
visual object. Additionally, the Specification describes “[t]he picture
content of these picture objects concerns, for example, still pictures, e.g.,
digitized photos, graphics and/or text” and “moving pictures, for instance
video sequences.” Spec. 1:27–29. Regarding “capture,” Appellant does not
persuasively identify a definition or Specification citation that “capture”
only applies to an item that was previously unknown to the user. Regarding
“a control unit operable to capture,” Appellant does not persuasively identify
a definition or Specification citation that would exclude automatic control by
changing the amount and type of information being displayed. Additionally,
we note it appears that the Specification does not include the term “control
unit.”
Appellant’s arguments are based on unreasonably narrow claim
interpretations, and unreasonably narrow teachings of Flickner and
Hutchinson. For example, contrary to the Table presented by Appellant,
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supra, Flickner “captures” information in the ticker tape (“visual object”).
Flickner teaches use of viewing habits to determine relevance of the ticker
tape.
We agree with the Examiner’s findings that Flickner teaches a hassle-
free way of providing relevance feedback for the information being
displayed and can automatically change the amount and type of information
being displayed to a particular user. Ans. 13; Flickner 2:10–20.
Additionally, the system is adaptive to the user’s interests and preferences,
and thereby advertisers and the like can capitalize on or change the
information being displayed to the particular user. Id.
We agree Hutchinson is incorporated by reference into Flickner, and
Hutchinson additionally teaches utilizing eye movement and capturing an
icon at a location. Hutchinson 7:57–68.
We are not persuaded by Appellant’s arguments and agree, instead,
with the findings of the Examiner regarding the teachings of Flickner and
Hutchinson. Appellant’s arguments are not persuasive and frequently
constitute conclusory attorney arguments. Appellant’s arguments are based
on an unreasonably narrow claim interpretations and a narrow view of the
teachings of Flickner and Hutchinson as would be understood by one of
ordinary skill in the art in an obviousness inquiry.
On the record before us, we are not persuaded by Appellant’s
arguments because the Examiner provides sufficient evidence to support the
findings and conclusions. Therefore, on the record before us, we conclude
the Examiner does not err in rejecting claim 21 for obviousness, as well as
independent claim 29 and dependent claims 21, 24–26, 30, and 32–34 as
these claims are not argued separately.
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Independent claim 37 is set forth below
37. A system for wireless communication, the system
comprising:
a communication device operable to display visual
information associated with a command;
a retinal scanner operable to determine a direction of view of
a user of a mobile device by detecting a position of a pupil;
a detector operable to measure a duration and a frequency
with which a visual object is viewed by a user, wherein the visual
object is considered viewed based on a location of the visual object
with respect to the direction of view of at least one eye of the user;
and
a control unit operable to select the command according to
the duration and the frequency with which the visual object is
viewed by the user.

Appeal Br. 19–20 (Claims Appendix). (Emphases added).
Appellant argues the Examiner errs in finding Flickner and Cannon
teaches “display visual information associated with a command.” Appeal
Br. 7–9.
The Examiner finds Flickner teaches “associated with a command.”
Ans. 14–15. In particular, the Examiner finds
The recitation that “... the present invention provides a
hassle-free way of providing relevance feedback for the
information (i.e., such as ticker display as an advertisement)
being displayed can automatically change the amount and type
of information being displayed to a particular user” (see Flickner:
Col 2 lines 13-21) can be reasonably interpreted as an
advertisement (e.g., Flickner’s ticker information) is “associated
with” a “command”; i.e., “change the amount and type of
information being displayed to a particular user” as claimed.

Id. at 15.
In the Reply Brief, Appellant argues Flickner’s “information being
displayed” (e.g., an advertisement) is not associated with the alleged
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command, and because Flickner’s “information being displayed” is
automatically changed/varied (according to the alleged command), Flickner
cannot associate any particular advertisement with the command that
automatically changes such advertisement. Reply Br. 7.
As discussed supra, Appellant does not persuasively present a
definition of the term “command.” The ordinary meaning includes the
automatic command set forth in Flickner, and the icon capture and command
of Hutchinson. Flickner 2:10–20; Hutchinson 7:57–68.
In view of the above, we are not persuaded by Appellant’s arguments
regarding claim 37, and dependent claim 38 as this claim is not argued
separately.
Therefore, we sustain the rejections of claim 37, and dependent claim
38.
The § 103 Rejections of Dependent Claims 22, 23, 27, 28, 31, 35, 36,
39, and 40

Dependent claims 22, 23, 27, 28, 31, 35, 36, 39, and 40 depend
directly or indirectly from independent claims 21, 29, or 37, discussed supra.
Regarding Claim 22, the Examiner finds Flickner further discloses the
system is operable to transmit the direction of view information to a media
center, such as feedback the direction of view information to the system
equated to a media center). Final Act. 5 (citing Flickner 8:35–50, 9:65–
10:9).
Appellant argues Flickner tracks how long the user’s eyes are looking
at the headline but Flickner does not track “the direction of view” of the
user. Appeal Br. 10 (citing Flickner 8:35–50). According to Appellant, the
content of headlines being viewed in Flickner is known a priori, and the
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location of the headlines is always the ticker display. Id. Appellant argues,
therefore, Flickner has no reason to track “the direction of view” of the user.
Id.
In the Answer, the Examiner finds
Flickner indicates another object of the invention is to provide a
system which integrates eye-tracking technology; further
discloses a method for interactively displaying information,
includes a display for displaying items having different views, a
tracker for tracking a user’s eye movements while observing a
first view of information on the display, and a mechanism, based
on an output, from the tracker, for determining whether a current
view has relevance to the user (see Col I line 63 - Col 2 line 13).

Ans. 16–17.

In the Reply Brief, Appellant argues the Examiner’s findings assert
Flickner’s tracker is “for tracking a user’s eye movements,” but the
Examiner does not show that Flickner’s tracker is “operable to determine a
direction of view” as claimed because Flickner’s “eye movements” lack any
information about a direction such movements. Reply Br. 8–9.
We are not persuaded by Appellant’s argument because Flickner
teaches a method for interactively displaying information includes
displaying items having different views, tracking a user’s eye movements
while observing a first view of information on the display, and, based on the
tracking, determining whether a current view has relevance to the user.
Flickner 2:3–8).
Therefore, we sustain the rejection of claim 22.
Dependent claims 23 and 31 recite “the detector is operable to identify
the user.” Dependent claim 39 recites “the retinal scanner is operable to
identify the user.”
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The Examiner finds, for example, regarding claim 23, Flickner further
discloses the detector is operable to identify the user. Final Act. 5 (citing
Flickner 2:9–20, 6:39–45).
In the Appeal Brief, Appellant argues
Flickner tracks the user’s interests and preferences. However,
Flickner does not “identify the user.” Rather, Flickner is agnostic
to the identity of the user. Flickner fails to show that the identity
of the user can be determined according to the user’s interests
and preferences. For example, two different users may have
identical interests and preferences. Moreover, the very same user
may have different interests and preferences, e.g., depending on
mood, time of day, or level of alertness.

Appeal Br. 11 (emphases omitted).
In the Answer, the Examiner finds
Flickner discloses that the present invention provides a hassle-
free way of providing relevance feedback for the information
being displayed and can automatically change the amount and
type of information being displayed to a particular user. Thus,
the system is adaptive to the user’s interests and preferences, and
thereby advertisers and the like can capitalize on or change the
information being displayed to the particular user (see Col 2 lines
13-20). The disclosure clearly indicates a particular user is
identified.

Ans. 17.
In the Reply Brief, Appellant argues the Examiner’s finding that
Flickner discloses that “advertisers and the like can capitalize on or change
the information being displayed to the particular user” does not show that
Flickner’s advertisers are able to “identify the user” as claimed. Reply Br.
10. According to Appellant, Flickner’s particular user may be anonymous.
Id.
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We are not persuaded by Appellant’s arguments and agree, instead,
with the findings of the Examiner because the user information is utilized to
provide relevance feedback for a user that is identified as using the system.
Flickner 2:13–20.
Therefore, we sustain the rejection of dependent claims 23, 31, and
39.
Dependent claims 27, 28, 35, 36, and 40 respectively recite “the
retinal scanner is operable to communicate wirelessly with the detector,”
“the control unit is operable to communicate wirelessly with the detector,”
“the retinal scanner is operable to communicate wirelessly with the position
detector,” “the control unit is operable to communicate wirelessly with the
position detector and the retinal scanner,” and “the control unit is operable
to communicate wirelessly with the detector.” (Emphases added).
Appellant argues, for example regarding claim 27, the Examiner’s
findings are based on hindsight and fails to show that a local area network is
relevant to or related in any way to Flickner in view of Cannon. Appeal Br.
11; Reply Br. 11–12.
The Examiner finds, regarding claim 27
In response to applicant’s argument that the examiner’s
conclusion of obviousness is based upon improper hindsight
reasoning, it must be recognized that any judgment on
obviousness is in a sense necessarily a reconstruction based upon
hindsight reasoning. But so long as it takes into account only
knowledge which was within the level of ordinary skill at the
time the claimed invention was made, and does not include
knowledge gleaned only from the applicant’s disclosure, such a
reconstruction is proper. See In re McLaughlin, 443 F.2d 1392,
170 USPQ 209 (CCPA 1971). For example, one of ordinary skill
in the art would have recognized the benefits of wireless
transmission such as standard IEEE 802.11 for local area
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network (LAN) which provides the flexibility and convenience
over wired communication.

Ans. 18.
We are not persuaded by Appellant’s arguments because the
Examiner provides sufficient evidence, without impermissible hindsight, that
wireless transmission was available and provides flexibility and convenience
over wired communication, and this is not persuasively rebutted by
Appellant. Additionally, we note Flickner discusses the availability of
wireless as a communication type. Flickner 6:6–19, 9:6–19.
Therefore, we sustain the rejection of dependent claims 27, 28, 35, 36,
and 40.
In view of the above, we sustain the rejection of dependent claims 22,
23, 27, 28, 31, 35, 36, 39, and 40.

CONCLUSION
For the reasons stated above, we sustain the obviousness rejections of
claims 21–40.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–28, 37–
40
103 Flickner, Cannon 21–28,37–
40

29–36 103 Flickner, Mann 29–36
Overall
Outcome
21–40

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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).
See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED