N OTE : This disposition is nonprecedential.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

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J EFFR Y H. N ELSON , Nixon & Vanderhye P.C., of A rlington, Virginia, argued for appellants. With him on the brief was S HERI L. G ORDON

.

M OLLY R. S ILFEN , Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia

, argued for appellee . With h er on the brief were N ATHAN K. K ELLEY , Deputy General Counsel for Intellectual Property Law and Solicitor and F RANCES M. L YNCH , Associate Solicitor.

______________________

Before O’M ALLEY , R EYNA , and H UGHES , Circuit Judges.

O’M ALLEY , Circuit Judge.
Appellants John Wirth, Jr. and Todd C. Nelson appeal the August 21, 2013 opinion of the Patent Trial andIN RE : WIRTH 2

Appeal Board (“the Board”) finding claim 1 of United States Patent Application No. 10/277,162 (“ ’ 162 applic ation”) invalid as obvious under 35 U.S.C. § 103(a)

. 1 For the reasons set forth below, we affirm

. D ISCUSSION

The ’162 a pplication describes a method for enticing
customers to visit a merchant’s website by sending the customer a direct mailer or email that includes a perso nalized 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 cu stomer e nters the personalized URL in a web browser

, the webpage displays a custom promotional offer. Id.

T he examiner rejected claim 1 as obvious under § 103 (a) in light of U.S. Patent No s . 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 ident ification, 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 be en obvious to a person of ordinary skill in the art at the time to replace the numer ical suffix disclosed in the ’972 patent with the customer ’s

1 Because Appellants filed the ‘ 162 application b efore March 16, 2013, the pre

- Leahy

- Smith America I nvents 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. T he Board also found that the claim term “name of the person in the group” is non

- functional d escriptive matter under the p rinted 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 obvio usness conclusion. The use of a person’s name a s 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 w e question the expansiveness of the Board’s claim construction and disagree with the Board’s application of the printed matter doc trine 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 comb ination 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 challeng e 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.