Ex Parte PAPAGEORGIOUDownload PDFPatent Trial and Appeal BoardMar 22, 201612128154 (P.T.A.B. Mar. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/128, 154 05/28/2008 63710 7590 03/24/2016 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 FIRST NAMED INVENTOR Antonio PAPAGEORGIOU 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. 07-2166 9789 EXAMINER HAMILTON, LALITA M ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 03/24/2016 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): patentdocketing@cantor.com lkorovich@cantor.com phowe@cantor.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTONIO PAP AGEORGIOU Appeal2013---005402 Application 12/128, 154 Technology Center 3600 Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and BRADLEY B. BAY AT, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Antonio Papageorgiou (Appellant) seeks review under 35 U.S.C. § 134of a final rejection of claims 1-24, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a way of distributing media and advertising content to remote devices. Specification 1:6-7. 1 Our decision will make reference to the Appellant's Appeal Brief ("Appeal Br.," filed September 26, 2012) and Reply Brief ("Reply Br.," filed March 4, Appeal2013-005402 Application 12/128, 154 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 system comprising: at least one computing device coupled over a communication network to a plurality of other devices; and at least one memory having instructions stored thereon which, when executed by the at least one computing device, direct the at least one computing device at least to: [1] receive a request for media content from a user of a first device; [2] receive a request for the media content from a user of a second device; [3] retrieve a media file associated with the media content requested by the first and the second users, wherein the media content comprises a first and second defined null space, the first and second defined null spaces at least partially overlapping in time during a playback of the media content; [ 4] retrieve data for a first, second, third, and fourth product placement, in which the first, second, third, and fourth product placements are each associated with different products; [5] mix, in response to the request from the user of the first device, 2013), and the Examiner's Answer ("Ans.," mailed January 4, 2013), and Final Action ("Final Act.," mailed May 27, 2011). 2 Appeal2013-005402 Application 12/128, 154 the media file and the data for the first and third product placements such that the first product placement appears in the media content disposed in at least a portion of the first defined null space and the third product placement appears in the media content disposed in at least a portion of the second defined null space; [ 6] mix in response to the request from the user of the second device the media file and data for the second and fourth product placement such that the second product placement appears in the media content disposed in at least a portion of the first defined null space and the fourth product placement appears in the media content disposed in at least a portion of the second defined null space; [7] communicate the media content with the first product placement data to the user of the first device; and [8] communicate the media content with the second product placement data to the user of the second device. The Examiner relies upon the following prior art: Troyansky US 2003/0028432 Al Feb. 6,2003 Claims 1-24 stand rejected under 35 U.S.C. § 102(e) as anticipated by Troyansky. Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Troyansky. 3 Appeal2013-005402 Application 12/128, 154 ISSUES The issues of anticipation and obviousness tum primarily on whether Troyansky describes two product placements appearing in (at least a portion of) two null spaces that overlap in time during playback of media content. 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 Troyansky 01. Troyansky is directed to customized placement of product- related material, known as product placement, in digital media. More specifically, Troyansky describes a specific digital media . . . . c ,..J 1 ,..J •• item, contammg a vanety 01 prouuct p1acement type auvertismg within, adapted and customized in real time so as to target several types of demographically distinct clients simultaneously. Troyansky para. 2. 02. The basic concept is based on first locating (off-line) slots where one or more product brands can be positioned, then producing two or more copies of the slot and embedding the two or more product brands (e.g., two or more brands of canned soft- drinks) in said slots. The copies may thereafter be packed in libraries or directories and stored on a storage device. A customized copy of the content that contains an optimized 4 Appeal2013-005402 Application 12/128, 154 sequence of brands, can thereafter be produced on-line by selecting the corresponding copies and embedding them in the content (e.g., by concatenating files of digital video). As a result, a sequence of alternating products placed within digital media content is created, which may create a distinction between copies of the same content title, as they are directed to a diverse target audience. Troyansky para. 18. ANALYSIS We are persuaded by the Appellant's argument that Troyansky fails to describe two product placements appearing in (at least a portion of) two null spaces that overlap in time during playback of media content. Appeal Br. 12-13. The Examiner finds that Troyansky discloses that two or more product brands may be embedded (para.18), which the Examiner is interpreting as third and fourth product placements. The Troyanksy [sic] reference does not provide a specific limit on the number of product placements that may be embedded. The content may be played at any time and can target several types of demographically distinct clients simultaneously (para.2). Therefore, the Examiner is interpreting Troyansky as reading onto the invention substantially as claimed. Ans. 9. Thus the Examiner finds that Troyansky described a system having the capacity to meet the claim limitations perhaps by manual intervention, but not that Troyansky did so by means of memory instructions or that one of ordinary skill would do so with Troyansky. "[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at 5 Appeal2013-005402 Application 12/128, 154 the claimed invention." Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed Cir 2015). The Examiner thus failed to present a prima facie case. CONCLUSIONS OF LAW The rejection of claims 1-24 under 35 U.S.C. § 102(e) as anticipated by Troyansky is improper. The rejection of claims 1-24 under 35 U.S.C. § 103(a) as unpatentable over Troyansky is improper. DECISION The rejection of claims 1-24 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation