Ex Parte Geer et alDownload PDFPatent Trial and Appeal BoardJul 27, 201612902785 (P.T.A.B. Jul. 27, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 12/902,785 10/12/2010 Walter Geer III 40205/02101 2700 30636 7590 07/27/2016 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 EXAMINER MACASIANO, MARILYN G ART UNIT PAPER NUMBER 3688 MAIL DATE DELIVERY MODE 07/27/2016 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 PATENT TRIAL AND APPEAL BOARD ___________ Ex parte WALTER GEER III, ELLEN TO, SUZANNE MCDONNELL, ADAM SOLOMON, MARK FORTNER, and JASON WITT ___________ Appeal 2014-004779 Application 12/902,785 Technology Center 3600 ___________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and TARA L. HUTCHINGS, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Walter Geer III, Ellen To, Suzanne McDonnell, Adam Solomon, Mark Fortner, and Jason Witt (Appellants) seek review under 35 U.S.C. § 134 of a 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed October 24, 2013) and Reply Brief (“Reply Br.,” filed March 11, 2014), and the Examiner’s Answer (“Ans.,” mailed January 30, 2014), and Final Action (“Final Act.,” mailed June 4, 2013). Appeal 2014-004779 Application 12/902,785 2 final rejection of claims 1–14, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellants invented a way to integrate an advertising unit containing interactive residual areas and digital media content. Specification para. 2. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method for dynamic integration and presentation of advertising content and media content, the method comprising: [1] receiving, by a server computing device, a request for media content from a remote computing device; [2] providing, by the server computing device in response to the request, an interactive advertising unit comprising: [3] a first content layer including the requested media content and a media player; [4] a second content layer including the advertising content, wherein the advertising content comprises video content and website content; and [5] an integration module configured to: [6] display the video content to match the boundaries of the media player; Appeal 2014-004779 Application 12/902,785 3 [7] extend the display area of the video content beyond the boundaries of the media player; [8] reduce the display area of the video content after a period of time to match the boundaries of the media player; [9] display the website content in an area outside of the boundaries of the media player; and [10] display the requested media content in the media player; and [11] transmitting, by the server computing device, the interactive advertising unit for presentation on the remote computing device. The Examiner relies upon the following prior art: Moonka US 2008/0066107 A1 Mar. 13, 2008 Thomas US 2008/0209465 A1 Aug. 28, 2008 Wurster US 2009/0063280 A1 Mar. 5, 2009 Claims 1–14 stand provisionally rejected under the judicially created doctrine of obviousness type double patenting as claiming the patentably indistinguishable subject matter as another U.S. Patent. Claims 1–4, 10, 13, and 14 stand rejected under 35 U.S.C. § 102(e) as anticipated by Wurster. Claims 5 and 7–12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Wurster and Moonka. Appeal 2014-004779 Application 12/902,785 4 Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Wurster and Thomas. ISSUES The issues of obviousness turn primarily on whether Wurster performs its integration at the receiving device. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Wurster 01. Wurster is directed to the delivery of merged advertisement and content to mobile devices such as mobile phones. Wurster para. 2. 02. Wurster describes receiving a request to initiate delivery of content via a messaging services protocol to a mobile phone. In response to the request, the content is obtained as well as one or more advertisements associated with the request. Thereafter, the content and the one or more advertisements are converted into a baseline format. The baseline format content and the one or more baseline format advertisements are integrated to generate an integrated media file. The integrated media file is made to substantially conform to content delivery specifications for the mobile phone. Subsequently, delivery of a packet data unit Appeal 2014-004779 Application 12/902,785 5 encapsulating the integrated media file to the mobile phone via the messaging services protocol can be initiated. Wurster para. 6. ANALYSIS Claims 1–4, 10, 13, and 14 rejected under 35 U.S.C. § 102(e) as anticipated by Wurster Claims 5 and 7–12 rejected under 35 U.S.C. § 103(a) as unpatentable over Wurster and Moonka Claim 6 rejected under 35 U.S.C. § 103(a) as unpatentable over Wurster and Thomas Claim 1 is the only claim argued. We are persuaded by Appellants’ argument that in Wurster, no integration module is ever transmitted to the device which merely displays the content that has been fully integrated on the server side. Specifically, Wurster does not disclose or suggest an integration module as claimed as any of the functionalities of this module performed in the system of Wurster are not performed on the device providing the request as claimed. Reply Br. 2–3. All three independent claims recite either performing or providing the capacity to transmit a unit with three separate portions, viz., a media content layer, and advertising content layer, and an integration module with the logic to integrate and display the media and advertising in a recited manner. The Examiner finds that Wurster describes integrating and displaying the media and advertising in the recited manner (Final Act. 4–5), but not transmitting the content in the recited three separate portions. In response to Appellants’ arguments, the Examiner finds that any receiving device in Wurster necessarily reintegrates the packets as such data arrives in. Appeal 2014-004779 Application 12/902,785 6 Ans. 3–4. We agree, as far as this goes, but we fail to see the pertinence. Integrating packets of an already integrated message stream is not integrating the media and ads as recited in the claim. Whether Wurster performs such integration at the server is irrelevant absent some evidence that one of ordinary skill would have also thought to perform such integration at the receiving device as an alternative. Claims 1–14 rejected under the judicially created doctrine of obviousness type double patenting as claiming the patentably indistinguishable subject matter as another U.S. Patent Appellants do not contest this provisional rejection. However, as it is a provisional rejection only, and the Appellants filed a proper terminal disclaimer July 25, 2013, the facts supporting this provisional rejection no longer apply. Accordingly, we will not sustain this rejection. CONCLUSIONS OF LAW The provisional rejection of claims 1–14 under the judicially created doctrine of obviousness type double patenting as claiming the patentably indistinguishable subject matter as another U.S. Patent is improper. The rejection of claims 1–4, 10, 13, and 14 under 35 U.S.C. § 102(e) as anticipated by Wurster is improper. The rejection of claims 5 and 7–12 under 35 U.S.C. § 103(a) as unpatentable over Wurster and Moonka is improper. The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over Wurster and Thomas is improper. Appeal 2014-004779 Application 12/902,785 7 DECISION The rejection of claims 1–14 is reversed. REVERSED Copy with citationCopy as parenthetical citation