14329779 - (R) (P.T.A.B. Apr. 17, 2020)

Amitabh Seth

Patent Trials and Appeals BoardApr 17, 2020

14329779 - (R) (P.T.A.B. Apr. 17, 2020)

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. 14/329,779 07/11/2014 Amitabh Seth 20004/101587US02 6002 81905 7590 04/17/2020 Hanley, Flight & Zimmerman, LLC (Nielsen) 150 S. Wacker Dr. Suite 2200 Chicago, IL 60606 EXAMINER DUONG, OANH ART UNIT PAPER NUMBER 2441 NOTIFICATION DATE DELIVERY MODE 04/17/2020 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): docketing@hfzlaw.com jflight@hfzlaw.com mhanley@hfzlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AMITABH SETH Appeal 2019-000744 Application 14/329,779 Technology Center 2400 Before ROBERT E. NAPPI, SCOTT E. BAIN, and MICHAEL T. CYGAN, Administrative Patent Judges. CYGAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52 on March 26, 2020 (hereinafter “Request”), requesting that we reconsider our Decision on Appeal of January 31, 2020 (hereinafter “Decision”). In the Decision, we affirmed the Examiner’s obviousness rejection under 35 U.S.C. §103 of claims 1–10 and 19–38. We reconsidered our Decision in light of Appellants’ Request for Rehearing. We maintain the rejection under 35 U.S.C. §103, as set forth in the Decision and further explained in this decision, and designate the rejection as a new ground of rejection. We GRANT rehearing and ENTER NEW GROUNDS OF REJECTION. Appeal 2019-000744 Application 14/329,779 2 CLAIMED SUBJECT MATTER Appellant’s arguments focus on the following language in claim 1: receiving at a client device a plurality of first network communications from at least a first server, the first network communications including a collector media object and a plurality of second media objects for presenting at the client device, the collector media object and the plurality of second media objects embedded in a webpage; based on a processor executing a first instruction in the collector media object presented at the client device, collecting a first characteristic of the collector media object and collecting second characteristics corresponding to the plurality of second media objects presented at the client device concurrently with the collector media object. . . . Appeal Br. 26 (Claims App.). Independent claims 24 and 34 recite a storage medium and apparatus, respectively, each having limitations commensurate in scope with claim 1. Id. at 28–29, 31–32. Dependent claims 2–10, 19–23, 25–33, and 35–38 each incorporate the limitations of their respective independent claims. Id. at 26– 32. Claims 11–18 were cancelled during prosecution. Id. at 28. REFERENCES Name Reference Date Blumenau US 6,108,637 Aug. 22, 2000 Heffernan et al. (Heffernan) US 2012/0158954 A1 June 21, 2012 Filed Sept. 21, 2011 Vass US 2013/0166520 A1 June 27, 2013 Filed Sept. 21, 2009 Sharon et al. (Sharon) US 9,508,011 B2 Nov. 29, 2016 Filed May 10, 2011 Appeal 2019-000744 Application 14/329,779 3 REJECTIONS Claims 1, 19, and 29 are rejected under 35 U.S.C. § 103 as being obvious over the combined teachings and suggestions of Blumenau and Vass. Claims 2–7, 9–10, 20–25, 27–28, 30–35 and 37–38 are rejected under 35 U.S.C. § 103 as being obvious over the combined teachings and suggestions of Blumenau, Vass, and Heffernan. Claims 8, 26, and 36 are rejected under 35 U.S.C. § 103 as being obvious over the combined teachings and suggestions of Blumenau, Vass, and Sharon. OPINION Appellant contends that the Decision should be designated as a new grounds of rejection because the Decision characterizes that claimed “collector media object” to be Blumenau’s “applet,” whereas the Examiner characterizes the same “collector media object” as Blumenau’s “content/webpage.” Request 2–5. Appellant further contends that neither Blumenau’s webpage nor Blumenau’s applet teaches or suggests the limitation, “based on a processor executing a first instruction in the collector media object presented at the client device, collecting a first characteristic of the collector media object.” Request 7–8. A. Obviousness Appellant’s first argument is that Blumenau’s “applet” does not teach or suggest an instruction to collect characteristics that is in any “media object” as set forth in the claims. Request 7; Appeal Br. 8. In determining whether Blumenau’s applet teaches the claimed instruction that is in a “media object,” we turn first to the Specification to understand the scope of Appeal 2019-000744 Application 14/329,779 4 the term “media object.” During prosecution, claim scope is determined “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am Acad. Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); see also In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007). The Specification describes the monitoring instructions as “tags” to media objects. Spec. ¶ 26 (“Example disclosed herein involve tagging media objects”); Spec. ¶ 28 (“tagged ads (media objects)” for which “a master tag in one of the media objects collects media object parameters”). The Specification further describes media objects as including the situation in which “a master tag having the instructions 206 and 208 is provided to the media object A 104a so that the media object A 104a can operate as a collector object.” Id. ¶ 38. The tagged media object may be a media player media object, which remains displayed while the media objects play within the player. Id.¶ 40. The instructions may be executed by an application that is presenting the media objects. Id. ¶ 42. Turning to the teachings of Blumenau, Blumenau describes the display of tagged content through “monitoring instructions and content [that] can be embodied by an applet that executes at the content display site.” Blumenau 25:13–15. The applet both displays the content, which may be media such as an advertisement, and monitors the display. Id. at 11:66–67; 19:32–40. The applet also establishes the size of the area displaying the content. Id. at 12:15–20. Appellant’s Specification describes Blumenau, stating, “Blumenau disclosed a technique wherein Internet media to be tracked is tagged with beacon instructions.” Spec. ¶ 18. Based upon Appellant’s Specification and the teachings of Blumenau, we are not persuaded of a distinction between Appellant’s “media object” Appeal 2019-000744 Application 14/329,779 5 and Blumenau’s “applet.” Blumenau’s applet, like Appellant’s media player media object, causes content to be displayed within a controlled area. Blumenau’s applet, like Appellant’s media player media object, contains content, instructions for displaying the content, and instructions for monitoring the content. Blumenau’s Internet media and Appellant’s media object are both described as being “tagged” with instructions. Based on the broadest reasonable construction of the claim in light of the Specification as interpreted by one having ordinary skill in the art, Blumenau teaches a media object (applet) having monitoring instructions therein. We next turn to Appellant’s specific arguments. Appellant argues that although Blumenau uses an applet having monitoring instructions, the applet is not a “media object” because although the applet enables the display of content, the applet is not the same thing as the content itself. Request 7 (citing Blumenau 10:63–65). However, as discussed supra, the Specification characterizes a media player that displays content therein as a media object. Spec. ¶¶ 40, 42. Blumenau’s applet forms a display area and causes display of media content therein. Blumenau 11:66–67; 12:15–20, 24–29, 33–36. Thus, our determination that Blumenau’s applet is a media object, having monitoring instructions therein, is consistent with the Specification, and as such, Appellant’s argument that Blumenau’s applet is not a media object is therefore not persuasive. Accordingly, we are not persuaded by Appellant’s argument. Appellant next argues that even if the applet is a media object, it does not monitor itself or collect characteristics of itself. Id. However, Blumenau describes that the monitoring instructions embodied in the applet may indicate that the applet has executed, thereby causing display of the content. Appeal 2019-000744 Application 14/329,779 6 Blumenau 13:36–40. Thus, Blumenau describes the applet monitoring, or collecting characteristics of, itself. Accordingly, we are not persuaded that Blumenau’s applet does not contain an instruction therein that causes collection of a first characteristic of the applet. For the above-described reasons, we are not persuaded that the Decision erred in determining claim 1 to be obvious over the applied combination of Blumenau and Vass. Appellant sets forth the same arguments against the rejections of claims 19 and 29. For the reasons set forth above for claim 1, we are not persuaded of error in the Examiner’s obviousness rejection of claims 19 and 29, or in the obviousness rejection of dependent claims 2–7, 9–10, 20–25, 27–28, 30–35, and 37–38 over Blumenau, Vass, and Heffernan, or in the Examiner’s obviousness rejection of claims 8, 26, and 36 over Blumenau, Vass, and Sharon. B. New Grounds of Rejection We turn to Appellant’s assertion that the Decision characterized the Blumenau reference in a manner that was neither contemplated nor advanced by the Examiner, and thus, not addressed by the Appellant. Appellant argues that the Appellant has not yet had an opportunity to respond to such a characterization, thereby raising an undesignated new ground of rejection in the Decision. Request at 6–7. The “ultimate criterion of whether a rejection is considered ‘new’ is whether appellants have had fair opportunity to react to the thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976). A rejection relying on the same statutory basis and same prior art references, may nevertheless raise a new ground of rejection, when the rejection relies on Appeal 2019-000744 Application 14/329,779 7 new facts or rationales not previously raised. See In re Leithem, 661 F.3d 1316, 100 USPQ2d 1155 (Fed. Cir. 2011). Appellant has characterized the Final Action as “not explicitly identify[ing] what in Blumenau . . . corresponds to the collector media object.” Appeal Br. 8. Appellant has characterized the Examiner’s Answer as identifying Blumenau’s “webpage/content” as corresponding to the collector media object. Reply Br. 3. The Decision identified Blumenau’s applet as the specific part of the webpage/content that corresponds to the collector media object. Decision 5–6. Appellants have persuaded us that the change in the identification of the collector media object relies on a rationale not previously raised in a manner that Appellants have had a fair opportunity to react to the thrust of the rejection. Accordingly, we designate the rejection of claims 1–10 and 19–38, as set forth in the Decision and further explained herein, as a new ground of rejection. CONCLUSION For the above-described reasons, we grant Appellant’s request for rehearing of, and designate new grounds of rejection under 35 U.S.C. §103 of, claims 1–10 and 19–38. Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § References Denied Granted 1, 19, 29 103 Blumenau, Vass 1, 19, 29 2–7, 9–10, 20–25, 27–28, 30–35, 37–38 103 Blumenau, Vass, Heffernan 2–7, 9–10, 20–25, 27–28, 30–35, 37– 38 8, 26, 36 103 Blumenau, Vass, Sharon 8, 26, 36 Appeal 2019-000744 Application 14/329,779 8 Overall Outcome 1–10, 19–38 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § References Affirmed Reversed New Grounds 1, 19, 29 103 Blumenau, Vass 1, 19, 29 1, 19, 29 2–7, 9– 10, 20– 25, 27– 28, 30– 35, 37– 38 103 Blumenau, Vass, Heffernan 2–7, 9– 10, 20– 25, 27– 28, 30– 35, 37– 38 2–7, 9– 10, 20– 25, 27– 28, 30– 35, 37– 38 8, 26, 36 103 Blumenau, Vass, Sharon 8, 26, 36 8, 26, 36 Overall Outcome 1–10, 19–38 1–10, 19–38 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . Appeal 2019-000744 Application 14/329,779 9 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . This decision has modified the original Decision so as to become, in effect, a new decision. Pursuant to 37 C.F.R. § 41.52(a)(1), Appellant is permitted to file request for rehearing of this decision under option (2) set forth above. This decision is deemed to incorporate the earlier opinion reflecting its decision for appeal. 37 C.F.R. § 41.52(a)(1). Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. GRANTED; 37 C.F.R. § 41.50(b)