Telephone and Data Systems, Inc.Download PDFPatent Trials and Appeals BoardApr 2, 20212020003578 (P.T.A.B. Apr. 2, 2021) Copy Citation 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 Copy with citationCopy as parenthetical citation