Ex Parte Andrade et al

Patent Trial and Appeal Board

Nov 14, 2016

09841644 (P.T.A.B. Nov. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
09/841,644 04/23/2001
71867 7590 11/16/2016
BANNER & WITCO FF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
David de Andrade
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
007412.01065 6427
EXAMINER
SALTARELLI, DOMINIC D
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
11/16/2016 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):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID DE ANDRADE
and RANJIT SAHOTA
Appeal2015-006755
Application 09/841,644
Technology Center 2400
Before JEFFREY S. SMITH, AARON W. MOORE, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-006755
Application 09/841,644
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1---6, 10, 11, 13, 20, 41, and 43-54, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
THE INVENTION
The application is directed to "[a] method and system ... for
automatic insertion of interactive television (TV) triggers into a broadcast
data stream." (Abstract.) Claim 1, reproduced below, is illustrative:
1. A method comprising:
receiving, at a computing device located at a distribution
point within a distribution network, a first transmission compris-
ing a video data stream, the first transmission being received
through the distribution network at the distribution point during
delivery of the video data stream from a source located remotely
from the computing device to a plurality of terminals;
recognizing, using the computing device in response to the
receiving, a pattern in the video data stream received in the first
transmission;
preparing, automatically in response to the recognizing, a
modified video data stream for at least one of the plurality ofter-
minals by inserting an interactive trigger associated with the pat-
tern into the video data stream; and
transmitting, in response to the preparing, from the computing
device via the distribution network for the at least one of the plu-
rality of terminals, a second transmission comprising the modi-
fied video data stream.
1 Appellants identify "TVW orks, LLC ... a subsidiary of Comcast
Corporation" as the real party in interest. (App. Br. 3.)
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Application 09/841,644
THE REFERENCES AND THE REJECTION
Claims 1---6, 10, 11, 13, 20, 41, and 43-54 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Sharir et al. (US 6,297,853 Bl;
issued Oct. 2, 2001) and Moore et al. (US 2001/0047298 Al; published Nov.
29, 2001). (See Final Act. 2-5.)
ANALYSIS
Claims 1, 3-6, 10, 11, 13, 20, 41, 43, 44, and 46--54
In the Final Office Action, the Examiner found that Sharir taught each
of the limitations of claim 1, except that "Sharir fails to disclose inserting the
advertisement ... comprises inserting an interactive trigger." (Final Act. 2-
3.) However, the Examiner further found that "Moore discloses inserting
interactive (user selectable, paragraph 0037) triggers into modified data
streams ( metadata that triggers the retrieval of an advertisement is embedded
into the media itself, paragraphs 0021 and 0039)" and that it would have
been obvious "to include inserting interactive triggers, as taught by Moore,
for the benefit of ensuring system providers can provide the most recent and
relevant advertising content regardless of when the user views the modified
data stream." (Id. at 4.)
Appellants argued after final that Moore was not usable as prior art
because the priority provisional application, Serial No. 60/193,948, "fails to
disclose the features in Moore relied on by the Office Action in rejecting the
claims." (July 14, 2014 "Request for Reconsideration" at 7.) The Examiner
responded that the '948 application "incorporates by reference 60/170,386,
which discloses the insertion of selectable URLs on page 11 lines 8-22 and
page 12 lines 9-28." (July 30, 2104 Advisory Action at 2.)
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Application 09/841,644
Appellants now argue that "[n]othing in [the] cited portions [of the
'386 provisional] disclose the alleged Moore selectable object in a media
stream that causes the set top box to retrieve an advertisement (e.g. from a
URL) in response to being selected." (App. Br. 8.)
The Examiner responds that "[t]he only feature thus missing [from
Sharir] is the act of associating an interactive trigger with an advertisement"
and that "[t]he cited provisional application (60/170,386) provides a
teaching in the prior art that it was known at the time to associate interactive
triggers with advertisements (60/170,386 pages 11-12, where the KOTV On-
Line advertisement is displayed and is a selectable object that retrieves the
KOTV On-Line content upon selection by a user)." (Ans. 2-3.)
We agree with the Examiner. Appellants acknowledge that Sharir
"discloses a TV center 30 that: (1) receives video ... of a live sporting event
in a stadium ... ; (2) identifies images of physical locations (e.g., a
billboard) in the stadium in the video frames of the video ... ; (3) substitutes
the images of the physical locations with substitute images of virtual
advertisements in the video frames ... ; and ( 4) broadcasts the video with
the substituted virtual images to subscribers." (App. Br. 5.) The difference
between Sharir and Appellants' claim 1 is "inserting an interactive trigger
associated with the pattern into the video data stream." Moore, however,
teaches the use of interactive advertisements, where the user may select an
advertisement to obtain additional content. (See '386 Provisional at 11-12
("The guide may also provide users with an opportunity to select an
advertisement 16 from any guide screen that includes selectable
advertisements, and to obtain information for the advertised program,
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Appeal2015-006755
Application 09/841,644
product, or service.").2) We agree with the Examiner that the combination
thus teaches or suggests inserting advertisements into video (as in Sharir)
and associating the advertisements with "interactive triggers" (as in Moore).
Appellants' argument that Moore does not disclose selectable objects "in a
video" is not persuasive because Sharir teaches the video, 3 and because
Appellants have not offered evidence or persuasive technical reasoning why
one of skill in the art could not have applied Moore's teachings regarding
selectable static advertisements to Sharir' s video advertisements. We further
agree with the Examiner that one rational motivation for the combination
would be to "provide the most recent and relevant advertising content
regardless of when the user views the modified data stream." (Final Act. 4.)
For these reasons, we sustain the rejections of claims 1, 3---6, 10, 11,
13, 20, 41, 43, 44, and 46-54.
Claims 2 and 45
Claim 2 adds to claim 1 recognizing, at one of the terminals, a second
pattern and inserting a second trigger. Claim 45 requires inserting a trigger
prior to transmitting the content to the terminal and inserting another trigger
after reception of the content by the terminal. Appellants argue that "Moore
does not disclose performing its process before and after transmission of the
2 Because Moore expressly incorporates the '948 provisional (see Moore
i-f 1) and the '948 provisional expressly incorporates the '386 provisional
(see '948 Provisional at 1), all of the subject matter of the '386 provisional is
part of Moore.
3 See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.").
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Application 09/841,644
media stream to the terminal." (App. Br. 10.) The Examiner responds with
reference to "the example provided in [the '386 Provisional] ... of
displaying an interactive advertisement for KOTV On-Line alongside
primary content." (Ans. 3.) We agree with Appellants that the cited
material fails to teach or suggest inserting triggers both before and after
receipt of the media at the terminal and, therefore, do not sustain the
rejections of claims 2 and 45.
DECISION
The rejection of claims 1, 3---6, 10, 11, 13, 20, 41, 43, 44, and 46-54 is
affirmed.
The rejection of claims 2 and 45 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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