Ex Parte Brassil et al

Board of Patent Appeals and Interferences

May 30, 2012

10838578 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/838,578 05/04/2004 John Thomas Brassil Brassil 5-2-8 5228
30594 7590 05/31/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
ALAM, MUSHFIKH I
ART UNIT PAPER NUMBER
2426
MAIL DATE DELIVERY MODE
05/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JOHN THOMAS BRASSIL,
SUKESH KUMAR GARG, and
HENNING GUNTHER SCHULZRINNE
________________

Appeal 2009-012265
Application 10/838,578
Technology Center 2400
___________________

Before THOMAS S. HAHN, BRUCE R. WINSOR, and
ANDREW CALDWELL, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants invoke our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Exemplary Claims
Appealed independent claims 1 and 5 are exemplary of Appellants’
claimed system and method for inserting an audio and/or video program into
a real time program (Spec. 1:3-6), and these claims read,
1. A program insertion system, comprising:
a primary program provider;
a first system for,
transmitting a primary program from the primary program
provider to subscribers, and
receiving and scheduling at least one request from a second
system for insertion of a secondary program during a pause in the
transmission of the primary program;
a secondary program provider for providing the secondary
program;
the second system for,
transmitting the secondary program from the secondary
program provider to the subscribers, and
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issuing scheduling requests to the first system to insert the
secondary program during the pause in the transmission of the
primary program; and
an insertion protocol governing, the scheduling of transmission of the
primary and secondary programs, and transfer of control between the
first and the second systems.
5. A method, comprising:
receiving program content from a content provider;
transmitting the program content from a first location over an
Internet to a destination;
sending a suspension signal from the first location to a second
location indicating that transmission of the program content is to be
suspended;
allowing an advertiser to send advertising from a second location
over the Internet to the destination, in response to the suspension
signal; and
resuming transmission of the program content from the first
location to the destination.
Rejections
1. Claims 1-5, 7, 8, and 14-17 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Zigmond (US 6,698,020 B1;
Feb. 24, 2004) (Final Action 2-6).
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2. Claims 6 and 13 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Zigmond, and Wright (US 4,404,589; Sep.
13, 1983) (Final Action 6-7).
3. Claims 9-12 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Zigmond, and Wine (US 6,434,319 B1; Aug. 13,
2002) (Final Action 7-8).
Issues
Has the Examiner erred under 35 U.S.C. § 102(e) by finding Zigmond
explicitly or inherently teaches;
1. A “second system for . . . issuing scheduling requests to [a] first
system to insert [a] secondary program during [a] pause in the
transmission of the primary program” as recited in claim 1 (App. Br.
11-15; Reply Br. 4-5); and/or
2. A method that “send[s] a suspension signal from the first location to a
second location indicating that transmission of the program content is
to be suspended” as recited in claim 5 (App. Br. 15-17; Reply Br. 5-
9)?

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ANALYSIS
Only arguments raised in Appellants’ Briefs have been considered.
Any other arguments, which Appellants could have made but did not raise in
the Briefs, are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
ANTICIPATION REJECTION
Claims 1-4
Appellants contend these claims are patentable because the
independent base claim 1 is patentable (App. Br. 15). Appellants’ argument
is that Zigmond fails to anticipate the claim 1 limitation identified in Issue 1
supra.
In the Response to Argument section of the Answer, the Examiner
does not repeat prior identified findings from Zigmond for the disputed
limitation (see Final Action 3), but, instead, identifies finding
Zigmond teaches where the ad source (62, second system)
schedules the advertisements “just-in-time” (col. 8, lines 7-11). These
advertisements (secondary program) will be scheduled to be inserted
into the video programming feed (first system) as a just-in-time
system. Thus, the second system does in fact, issue scheduling
requests to the first system in order [to] insert the secondary program.
The just-in-time scheduling system of Zigmond teaches this feature.
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(Ans. 10). In response, Appellants quoting from Zigmond at column 8, lines
7-11, which acknowledges that the reference teaches an “‘advertisement
source 62 [that] may be a just-in-time system for delivering advertisement
stream 64 to [an] ad insertion device’” (Reply Br. 4). Appellants, however,
contend the Examiner erred in finding Zigmond teaches scheduling and
argue,
The Examiner has merely taken a term that is disclosed only once in
the specification and applied the Examiner’s own meaning to the
term. Zigmond fails to disclose or suggest any scheduling for the
once mentioned “just-in-time” feature. The “just-in-time” feature is
only disclosed in col. 8, lines 7-11, with no actual description of the
feature other than reciting “just-in-time.”
(Reply Br. 5 (emphasis omitted)).
Appellants’ arguments are found unavailing because whether
Zigmond’s disclosure for “just-in-time” delivery of an advertisement stream
is made once or repeatedly, does not alter the disclosure, which is made
without retraction or modification. We also do not find persuasive evidence
of record that contradicts the Examiner’s finding that Zigmond necessarily
teaches scheduling delivery of an advertisement stream because of the
disclosed identification that there would be “just-in-time” delivery.
Consequently, we are not persuaded by Appellants’ above asserted
conclusion that “Zigmond fails to disclose or suggest any scheduling for the
once mentioned ‘just-in-time’ feature” (id.).
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For the forgoing reasons, we will sustain the rejection of independent
claim 1 and we, also, will sustain the rejection of dependent claims 2-4, not
separately argued.
Claims 5, 7, 8, and 14-17
Appellants contend these claims are patentable because independent
claim 5 is patentable (App. Br. 17). Appellants’ argument is that Zigmond
fails to anticipate the claim 5 limitation identified in Issue 2 supra.
Particularly, Appellants argue, “Zigmond . . . fails to disclose ‘sending a
suspension signal from the first location to a second location,’ as required by
claim 5” (App. Br. 16).
The Examiner responds by identifying Zigmond teaching a trigger
source 70 as part of a programming source 66 (first system) and that the
trigger source 70 controls a video switch 68 in an advertisement insertion
device 60 (Ans. 11; see Zigmond Fig. 4). Further, the Examiner identifies
that the Zigmond trigger signal is interpreted as a suspension signal sent
from the first system to control a second system (id.).
In the Reply Brief Appellants assert, “it is unclear what feature of
Zigmond the Examiner relies on to teach the ‘second location,’ of claim 5”
(Reply Br. 7). Appellants proceed to alternatively contend that Zigmond
fails to anticipate claim 5 irrespective of whether the Examiner relies on
advertising source 62 or advertising insertion device 60 (Reply Br. 7-8).
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Turning to claim 5, the disputed second location is recited as sending
advertising over the Internet to the destination. Appellants argue that the
claimed second location does not read on Zigmond’s advertisement insertion
device 60 because “advertisements are sent from the advertisement source
62” (Reply Br. 8). We disagree. Zigmond teaches that advertisements are
fed from advertisement source 62 to advertisement insertion device 60, and
that advertisement insertion device 60 transmits advertisements for display
(column 8, lines 29-54; Fig. 4). Thus, Zigmond’s advertisement insertion
device 60 transmits advertisements, and consequently, the recited second
location reads on Zigmond’s advertisement insertion device 60. Regarding
claim 5, the Examiner congruently finds that Zigmond’s “trigger source [70]
as part of the programming source 66 (first system) controls the switch [68]
in the advertisement insertion device 60 to allow the ad source to program[]
source[s] to be displayed to the viewer” (Ans. 11). We agree.
For the forgoing reasons, we will sustain the rejection of independent
claim 5 and we also will sustain the rejection of independent claims 14 and
15, not separately argued. Additionally, we will sustain the rejection of
dependent claims 7, 8, 16, and 17, not separately argued.
OBVIOUSNESS REJECTIONS
Appellants separately group rejected claims 6 and 13 (App. Br. 19;
Reply Br. 9) and claims 9-12 (App. Br. 19-20; Reply Br. 9), but merely
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contend patentability for all of these claims without particular arguments
directed to the relied on references other than assertions of patentability
generally premised on the above addressed arguments. Accordingly, we will
sustain the rejection of these claims. See 37 C.F.R. § 41.37(c)(1)(vii).
ORDER
The Examiner’s decision rejecting claims 1-17 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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