NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE JOHN WIRTH, JR. AND TODD C. NELSON

______________________ 

2014-1075

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 10/277,162.

______________________ 

Decided: June 12, 2014

______________________ 

JEFFRY H. NELSON, Nixon & Vanderhye P.C., of Arlington, Virginia, argued for appellants. With him on the 

brief was SHERI L. GORDON. 

MOLLY R. SILFEN, Associate Solicitor, United States 

Patent and Trademark Office, of Alexandria, Virginia, 

argued for appellee. With her on the brief were NATHAN 

K. KELLEY, Deputy General Counsel for Intellectual 

Property Law and Solicitor and FRANCES M. LYNCH, 

Associate Solicitor.

______________________ 

Before O’MALLEY, REYNA, and HUGHES, Circuit Judges.

O’MALLEY, Circuit Judge.

Appellants John Wirth, Jr. and Todd C. Nelson appeal 

the August 21, 2013 opinion of the Patent Trial and 
2 IN RE: WIRTH

Appeal Board (“the Board”) finding claim 1 of United 

States Patent Application No. 10/277,162 (“’162 application”) invalid as obvious under 35 U.S.C. § 103(a).1 For 

the reasons set forth below, we affirm. 

DISCUSSION

The ’162 application describes a method for enticing 

customers to visit a merchant’s website by sending the 

customer a direct mailer or email that includes a personalized uniform resource locator (“URL”). ’162 application

at 19; claim 1. The personalized URL contains a suffix 

that consists of the customer’s name. Id. Once the customer enters the personalized URL in a web browser, the

webpage displays a custom promotional offer. Id. 

The examiner rejected claim 1 as obvious under 

§ 103(a) in light of U.S. Patent Nos. 5,792,972 (“’972 

patent”) and 6,014,634 (“’634 patent”).2 The Board first 

construed the claim term “name of the person in the 

group” to include “any type of personal identification, 

whether letters, numbers or combination thereof,” as 

disclosed by the ’972 patent. Ex parte John Wirth Jr., No. 

2011-006989, 2013 WL 2139792, at *2 (P.T.A.B. Apr. 10, 

2013). In the alternative, the Board found that, even if 

“name of the person in the group” is construed to include 

only letters, it would have been obvious to a person of 

ordinary skill in the art at the time to replace the numerical suffix disclosed in the ’972 patent with the customer’s 

1 Because Appellants filed the ‘162 application before March 16, 2013, the pre-Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 

(2011), version of § 103(a) applies. See 35 U.S.C. § 103(a) 

(2006); AIA, 125 Stat. at 293.

2 Appellants agreed that independent claims 1, 11, 

22, and 41 all rise and fall with claim 1.

 
IN RE: WIRTH 3

name.3 Id. The Board also found that the claim term 

“name of the person in the group” is non-functional descriptive matter under the printed matter doctrine. Id. 

Appellants timely appealed, and we have jurisdiction 

under 28 U.S.C. § 1295(a)(4)(A).

We agree with the Board’s obviousness conclusion. 

The use of a person’s name as a particularized suffix in a 

URL would have been obvious to a person of ordinary skill 

in the art from the ’972 patent’s disclosure of a unique 

personal identification number as a suffix in a URL.4 

While we question the expansiveness of the Board’s claim 

construction and disagree with the Board’s application of 

the printed matter doctrine here,5 we nevertheless affirm 

the Board’s judgment of invalidity. 

AFFIRMED

3 At oral argument, Appellants conceded that their 

claimed invention could be distinguished from the combination of the ’972 and ’634 patents solely based on the use 

of the customer’s name in the URL suffix, rather than a 

personal identification code consisting of numbers. Oral 

Argument Tr. 9:00-29, available at

http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20

14-1075.mp3 4 Appellants do not challenge the combination of 

the ’972 and ’634 patents.

5 Appellants conceded at oral argument that they 

must overcome each of the Board’s grounds for rejection. 

Oral Argument Tr. 1:18-26.