Federal Circuit disposition — 14-1075

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE JOHN WIRTH, JR. AND TODD C. NELSON
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2014-1075
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 10/277,162.
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Decided: June 12, 2014
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J EFFRY H. N ELSON, Nixon & Vanderhye P.C., of Ar-
lington, Virginia, argued for appellants. With him on the
brief was SHERI L. G ORDON.
MOLLY R. SILFEN, Associate Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With her 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.
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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

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IN RE: WIRTH 2
Appeal Board (“the Board”) finding claim 1 of United
States Patent Application No. 10/277,162 (“’162 applica-
tion”) invalid as obvious under 35 U.S.C. § 103(a).1 For
the reasons set forth below, we affirm.
D ISCUSSION
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 person-
alized 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 cus-
tomer 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 numeri-
cal suffix disclosed in the ’972 patent with the customer’s
1 Because Appellants filed the ‘162 application be-
fore March 16, 2013, the pre-Leahy-Smith America In-
vents 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.

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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 de-
scriptive 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 combi-
nation 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.

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