Telephone and Data Systems, Inc.

Patent Trials and Appeals Board

Apr 2, 2021

2020003578 (P.T.A.B. Apr. 2, 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.
15/040,883 02/10/2016 Christopher Daniel Theisen 285948 9169
23460 7590 04/02/2021
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
ROBINSON, KYLE G
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHRISTOPHER DANIEL THEISEN and
JAMES MATTHEW TWIEG
__________

Appeal 2020-003578
Application 15/040,883
Technology Center 3600
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18. 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. Appellant identifies the real party in interest as Telephone
and Data Systems, Inc. See Appeal Brief (“Appeal Br.”) 1, filed Nov. 4,
2019.
Appeal 2020-003578
Application 15/040,883

2
CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to the field of automated
marketing materials generation, and more particularly . . . to integrated
systems for managing design and dissemination of marketing materials for
multi-outlet business enterprises.” Spec. ¶ 1. Claims 1, 3, and 5 are
independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A method for producing location-specific print media for
a multi-outlet enterprise, the method comprising:
providing, by a marketing media builder, a set of print
media design templates for the multi-outlet enterprise, wherein
the templates include a variable data fields [sic];
maintaining, by a location manager, a database containing
outlet-specific sets of location-specific information for
populating, on a location-specific basis, the variable data fields
of the set of print media design templates for the multi-outlet
enterprise;
generating, by the marketing media builder in response to
a request identifying a template and a particular location, a print
quality image file by populating the variable form fields[2] with
variable data for the particular location that is acquired by the
marketing media builder from the location manager via an inter-
application interface of the location manager;
performing, by a print-on-demand order management
system, the steps of:
receiving a request for generating a print job
specifying the print quality image file from the marketing
media builder,

2 We note that the phrase “the variable form fields” lacks antecedent support.
We understand, however, that Appellant is referring to the previously recited
“variable data fields.”
Appeal 2020-003578
Application 15/040,883

3
receiving a request for a particular output form for
printing a physical rendering of the print quality image
file, and
issuing an instructions [sic] and data to render a
physical print media output according to the print quality
image file and the particular output form; and
rendering, by a physical print media printer
according to the instructions and data, print media output
in physically tangible form.

THE REJECTIONS
I. Claims 10, 14, and 18 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
II. Claims 10, 14, and 18 stand rejected under 35 U.S.C. § 112(b) as
indefinite.
III. Claims 1, 3, 5, 7, 9–11, 13–15, 17, and 18 stand rejected under
35 U.S.C. § 103 as unpatentable over Orner (US 2008/0147553 A1,
published June 19, 2008), Poirier (US 2015/0301766 A1, published Oct. 22,
2015), and Cheung (US 5,175,854, issued Dec. 29, 1992).
IV. Claims 2, 4, and 6 stand rejected under 35 U.S.C. § 103 as
unpatentable over Orner, Poirier, Cheung, and Silverstein (US
2014/0143252 A1, published May 22, 2014).
V. Claims 8, 12, and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Orner, Poirier, Cheung, and Blumberg (US 2016/0247221
A1, published Aug. 25, 2016).

Appeal 2020-003578
Application 15/040,883

4
ANALYSIS
Rejections I and II – Written Description and Indefiniteness

Appellant states that “for purposes of this Appeal,” Appellant “does
not challenge” the rejections of claims 10, 14, and 18 for lack of written
description requirement or for indefiniteness. Appeal Br. 5; see also Reply
Br. 4.3
As the merits of these rejections are not contested, we summarily
affirm these rejections. See In re Berger, 279 F.3d 975 (Fed. Cir. 2002)
(Affirming the Board’s affirmance of an uncontested rejection, holding that
the appellant had waived the right to contest the rejection by not presenting
arguments on appeal to the Board); Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) (“the applicant can waive appeal of a ground of rejection”).

Rejection III – Obviousness over Orner, Poirier, and Cheung
Appellant does not offer arguments in favor of independent claims 3
and 5 or dependent claims 7, 9–11, 13–15, 17, and 18 separate from those
presented for independent claim 1. Appeal Br. 5–10. We select claim 1 as
the representative claim, and claims 3, 5, 7, 9–11, 13–15, 17, and 18 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2019).
In reference to claim 1, the Examiner finds that Orner discloses a
method for producing location-specific print media for a multi-outlet
enterprise, the method comprising the steps of (a) providing, by a marketing
media builder, a set of print media design templates for the multi-outlet
enterprise, wherein the templates include variable data fields (Final Act. 3–

3 Reply Brief (“Reply Br.”), filed Apr. 9, 2020.
Appeal 2020-003578
Application 15/040,883

5
44 (citing Orner ¶¶ 16–17)); (b) maintaining, by a location manager, a
database containing outlet-specific sets of location-specific information for
populating, on a location-specific basis, the variable data fields of the set of
print media design templates for the multi-outlet enterprise (id. at 4 (citing
Orner ¶¶ 17, 37)); and (c) generating, by the marketing media builder in
response to a request identifying a template and a particular location, a print
quality image file by populating the variable data fields with variable data
for the particular location that is acquired by the marketing media builder
from the location manager (id. (citing Orner ¶ 37)). The Examiner
acknowledges that Orner does not disclose that the location data is acquired
using an inter-application interface of the location manager. Final Act. 4.
The Examiner, however, finds that Cheung discloses this missing limitation.
Id. (citing Cheung 1:64–2:17). The Examiner concludes that it would have
been obvious to a skilled artisan to modify the method of Orner “to utilize an
inter-application interface system as taught by Cheung since it would
facilitate the transfer of data between applications.” Id. at 4–5 (citing
Cheung 1:8–13).5
Appellant contends that “Orner does not describe a database
containing outlet-specific sets of location-specific information.” Appeal Br.
5; see also Reply Br. 4–9. Appellant also contends that “Orner does not
mention, or even remotely suggest, ‘outlet’ information (i.e.[,] information
for particular outlets).” Appeal Br. 8; see also Reply Br. 4–9.

4 Final Office Action (“Final Act.”), dated Feb. 5, 2019.
5 The Examiner relies on Poirier for limitations other than those discussed
above. Final Act. 5.
Appeal 2020-003578
Application 15/040,883

6
These contentions are unpersuasive. Identical language between the
prior art and claims is not required to sustain a prior art rejection. In re
Skoner, 517 F.2d 947, 950 (CCPA 1975) (“Any other result would permit
the allowance of claims drawn to unpatentable subject matter merely
through the employment of descriptive language not chosen by the prior
art.”). The Examiner correctly responds that
Orner discloses a database containing localization data. [The]
localization data is stored as location data which is used in the
case of location specific versions of advertisements. (See at least
Para. [0037]). Further, . . . paragraph [0034] of Orner . . . states,
in part, “Embodiments of the invention provide an opportunity
within the advertising industry to automate and streamline the
cumbersome, costly process of localizing, personalizing, and
distributing print advertising to franchises or company-
owned locations.” Based on this, one of ordinary skill in the art
would surmise that the localization data of Orner is indeed
“outlet-specific” since the localization data is used for the ration
of location specific versions of advertisements specific to
franchises or company-owned locations.
Ans. 3–4.6 Appellant does not provide persuasive evidence or argument
apprising us of Examiner error.
Appellant next contends that
a proper reason cannot be established for one skilled in the art to
modify Orner’s teachings, in view of Cheung, in a way that
would result in Appellant’s claimed invention. Notably, neither
reference demonstrates awareness of any particularized
problem with Orner’s disclosed system that would provide a
need/incentive to modify Orner (in view of Cheung) in a way
that resulted in Appellant’s claimed “generating” operation
that is facilitated by an “inter-application interface” of the
location manager through which the marketing media
builder obtains outlet-specific information for populating

6 Examiner’s Answer (“Ans.”), dated Feb. 10, 2020.
Appeal 2020-003578
Application 15/040,883

7
location-specific variable form fields of marketing print
media.
Appeal Br. 5; see also Reply Br. 4–9. Appellant also contends that the
Examiner relies on improper hindsight in making the rejection. Reply Br. 4.
As noted above, the Examiner correctly concludes that it would have
been obvious to a skilled artisan to modify the method of Orner “to utilize an
inter-application interface system as taught by Cheung since it would
facilitate the transfer of data between applications.” Final Act. 4–5. Indeed,
Cheung discloses “an interface arrangement for interfacing between
applications to facilitate calling of applications while using other
applications and transfer of data between applications.” Cheung 1:10–13.
Appellant does not explain what “particularized problem” is solved by the
claimed subject matter that is different from the Examiner’s proffered reason
for the proposed modification. See Appeal Br. 5; see also Reply Br. 4–9.
As such, Appellant does not provide persuasive evidence or argument
apprising us of Examiner error.
Additionally, we note Appellant’s reiteration of paragraphs 31 and 46
of the Specification. Appeal Br. 7. However, the particulars of these
paragraphs are not recited in claim 1. “[L]imitations are not to be read into
the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993) (citation omitted). See also In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”).
Moreover, even assuming, for the sake of argument, that there are
different reasons for having an inter-application interface, Appellant’s
argument is unpersuasive because the Examiner’s reasoning for modifying
Orner’s method need not be the same as Appellant’s reason for having an
Appeal 2020-003578
Application 15/040,883

8
inter-application interface. “In determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. . . . . [A]ny need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007). In other words, that
the prior art has a different reason or motivation to combine is of no moment
as long as there is a sufficient reason to make the combination. See In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (citation omitted) (“[T]he
motivation in the prior art to combine the references does not have to be
identical to that of the applicant to establish obviousness.”). See also Ex
Parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.”).
Further, to the extent Appellant is arguing that there is absolutely no
need to use an inter-application interface, the Examiner explains that Orner’s
paragraph 17 discloses importing a database and Orner’s paragraph 37
discloses uploading localization data, which indicate that multiple
components are used such that there is a need to use an inter-application
interface between the multiple components for the transfer of data. See Ans.
4–5.
We also are not persuaded that the Examiner engaged in
impermissible hindsight when combining the teachings of the references.
See Reply Br. 4, 8. The Examiner cited specific teachings in Orner and
Cheung themselves, not Appellant’s disclosure, in support of the Examiner’s
Appeal 2020-003578
Application 15/040,883

9
articulated reasoning for combining Orner and Cheung as proposed in the
rejection. See Final Act. 4–5; see also Ans. 4–5. We further are not
persuaded of error, because Appellant has not made a showing that the
Examiner’s rationales were outside of the knowledge of an ordinarily skilled
artisan at the time the claimed invention was made, or were gleaned only
from Appellant’s disclosure. See Appeal Br. 14–17.
Appellant further argues that “Orner provides no description with
regard to how the localization data is maintained/accessed.” Appeal Br. 8
(emphasis added). This contention is also unpersuasive. Claim 1 does not
require any particular methodology of maintaining or accessing data from a
database. See re Van Geuns, 988 F.2d at 1184; In re Self, 671 F.2d at 1348.
Appellant argues that the Examiner “does not even identify which
components of the system depicted in FlG. 1 [of Orner] correspond to
Appellant’s specifically identified/componentized system elements.”
Appeal Br. 8.
The Examiner correctly responds that
Orner features a “design program”[7] which equates to the
“marketing media builder” in that it provides templates. Further,
Orner describes importing a database containing localization
data via an internet connection. [This] database equates to the
“location manager”. [P]aragraph [32 of Appellant’s
Specification] . . . states, in part “The location manager 140 is
a highly configurable, extensible database functionality . . . .”
This indicates that the location manager itself is a database.
Therefore, the imported database of Orner is equivalent to the
“location manager” of the instant application.

7 See Orner, ¶¶ 25, 26, 35.
Appeal 2020-003578
Application 15/040,883

10
Ans. 4; see also Final Act. 4 (citing to paragraphs 16, 17, 37, and 40 of
Orner to identify “components” of the method of claim 1). As such, we are
unpersuaded by Appellant’s general contention that the combination of cited
prior art does not disclose multiple components as recited in claim 1. See
Ans. 4–5 (explaining that Orner’s paragraph 17 discloses importing a
database and Orner’s paragraph 37 discloses uploading localization data,
which indicate that multiple components are used such that there is a need to
use an inter-application interface between the multiple components for
transfer of data).
In the Reply Brief, Appellant contends that Orner does not disclose
two separate applications that use an inter-application interface. Reply Br.
7.
This argument is unpersuasive in that it does not address the rejection
as set forth by the Examiner. The Examiner relies on the teachings of
Cheung, rather than Orner, for an inter-application, as discussed above. See
Final Act. 4–5. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
In summary, and based on the record presented, we sustain the
Examiner’s rejection of claim 1 as unpatentable over Orner, Poirier, and
Cheung. We further sustain the rejection of claims 3, 5, 7, 9–11, 13–15, 17,
and 18, which fall with claim 1.8

8 Appellant states that “for purposes of this appeal, [Appellant] does not
separately argue the patentability of the dependent claims 7, 9-11, 13-15 and
17-18. However, Appellant reserves the right to provide additional reasons
for distinguishing claims 7, 9-11, 13-15 and 17-18 from the teachings of the
prior art in the event that any further Office action recites new grounds for
rejecting claims 7, 9-11, 13-15 and 17-18, or any claim from which claims 7,
9-11, 13-15 and 17-18 depend.” Appeal Br. 10. However, for purposes of
Appeal 2020-003578
Application 15/040,883

11
Rejections IV and V – Obviousness over Orner, Poirier, Cheung and either
Silverstein or Blumberg

For these rejections, Appellant presents similar arguments as those
discussed above for claim 1. See Appeal Br. 10–11. As we find no
deficiencies in the Examiner’s rejection of independent claims 1, 3, and 5 as
unpatentable over Orner, Poirier, and Cheung, for the reasons discussed
above, we likewise sustain the Examiner’s rejections of claims 2, 4, 6, 8, 12,
and 16 as unpatentable over the various combinations of cited prior art.9
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
10, 14, 18 112(a) Written
Description
10, 14, 18
10, 14, 18 112(b) Indefiniteness 10, 14, 18
1, 3, 5, 7, 9–
11, 13–15,
17, 18
103 Orner, Poirier,
Cheung
1, 3, 5, 7,
9–11, 13–
15, 17, 18

2, 4, 6 103 Orner, Poirier,
Cheung,
Silverstein
2, 4, 6
8, 12, 16 103 Orner, Poirier,
Cheung, Blumberg
8, 12, 16
Overall
Outcome
1–18

the subject appeal, we note that arguments not made are waived. See 37
C.F.R. § 41.37(c)(1)(iv); In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir.
2011); Ex parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010
(precedential)).
9 See footnote 8 above.
Appeal 2020-003578
Application 15/040,883

12
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED