2020001264 (P.T.A.B. May. 4, 2021)

Comcast Cable Communications Management, LLC

Patent Trials and Appeals BoardMay 4, 2021

2020001264 (P.T.A.B. May. 4, 2021)

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. 14/842,196 09/01/2015 John Carney 007412.03081 3453 71867 7590 05/04/2021 BANNER & WITCOFF , LTD ATTORNEYS FOR CLIENT NUMBER 007412 1100 13th STREET, N.W. SUITE 1200 WASHINGTON, DC 20005-4051 EXAMINER HICKS, CHARLES N ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 05/04/2021 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 JOHN CARNEY, DAVID DE ANDRADE, SITHAMPARA BABU NIRANJAN, DAVID BRANDYBERRY, LEON FRANZEN, LENA CHANE, MATT MARENGHI, PRAKASH HEDGE, ALEX CHUNG, VIVA CHU, GREG THOMSON, and RUTH DAWSON Appeal 2020-001264 Application 14/842,196 Technology Center 2400 ____________ Before JOHN A. JEFFERY, CATHERINE SHIANG, and NORMAN H. BEAMER, Administrative Patent Judges. BEAMER, Administrative Patent Judge. JEFFERY, Administrative Patent Judge, CONCURRING. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s non-final rejection of claims 21–27 and 41–53. Claims 1–20 and 28–40 are cancelled. We have jurisdiction over the pending rejected claims under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Comcast Cable Communications Management, LLC. (Appeal Br. 2.) Appeal 2020-001264 Application 14/842,196 2 THE INVENTION Appellant’s disclosed and claimed invention is directed to the construction, delivery and display of interactive TV content, including advertisements. (Abstract.) Independent claim 21, reproduced below, is illustrative of the subject matter on appeal: 21. A method comprising: transmitting, by a computing device to one or more user devices, advertising content; receiving information indicating user interaction with the advertising content; generating, based on the received information, a modified version of the advertising content; and transmitting, to the one or more user devices, the modified version of the advertising content. REJECTION The Examiner rejected claims 21–27 and 41–53 under 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. (Non-Final Act. 2.) ISSUE ON APPEAL Appellant’s arguments present the following dispositive issue:2 Whether the Examiner erred in finding that the claims failed to comply with the written description requirement. (Appeal Br. 3–7.) 2 Rather than reiterate the arguments of Appellant and the positions of the Examiner, we refer to the Appeal Brief (filed June 4, 2019); the Reply Brief (filed Dec. 2, 2019); the Non-Final Office Action (mailed Aug. 3, 2018); and the Examiner’s Answer (mailed Sept. 30, 2019) for the respective details. Appeal 2020-001264 Application 14/842,196 3 ANALYSIS In the Non-Final Rejection, the Examiner finds that “[t]he specification does not readily disclose generating the modified version of the advertising content and transmitting the modified advertisement.” Non- Final Act. 2. The first paragraph of pre-AIA 35 U.S.C. 112 requires that the “specification shall contain a written description of the invention. . . .” To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). In response to the Examiner’s rejection, Appellant cites the disclosures in the Specification of modifying “programmable elements,” including the ability to update those elements from default values, programming via dynamic execution of rules, and creating text strings. (Appeal Br. 3–5 (citing Spec. ¶¶ 43–44, 174).) Appellant further demonstrates that the Specification includes advertisements as examples of modifiable programmable elements. (Appeal Br. 5 (citing Spec. ¶¶ 41, 55, 185).) Appellant also cites the disclosures in the Specification of transmitting a modified version of the advertising content from servers to clients. (Appeal Br. 6–7 (citing Spec. ¶¶ 29–30, 34, 41, 44).) In the Answer, the Examiner stated that the Specification did not disclose that modifications to programmable elements were not based on received information, as required by claims 21 and 41, and that the Appeal 2020-001264 Application 14/842,196 4 requirements of claim 49 were not met because the specified steps were not performed by the same device. (Ans. 3–4.) In reply, Appellant objects that the Examiner brings in new grounds of rejection not previously articulated in the Office Action, and argues that it should not be considered. (Reply Br. 2.) However, this objection relates to petitionable subject matter under 37 C.F.R. § 1.181 and therefore is not before us since we lack jurisdiction over petitionable matters. See, e.g., MPEP § 706.01 (“[T]he Board will not hear or decide issues pertaining to objections and formal matters which are not properly before the Board.”); see also MPEP § 1201 (“The Board will not ordinarily hear a question that should be decided by the Director on petition . . . .”). Nonetheless, Appellant goes on to address the substance of the Examiner’s new arguments, citing the disclosures in the Specification of the ability to modify programmable elements, including advertisements, based on user interactions such as text input and click-throughs via a “back channel.” (Reply Br. 3–4 (citing Spec. ¶¶ 7, 41, 43–44, 53, 73, 75, 78–82, 181).) Regarding claim 49, Appellant cites the fact that set top box 12 preforms the required steps of the claim. (Reply Br. 5–6 (citing Spec. ¶¶ 21, 31, 40, 42–44, 75, 181).) Upon review of the portions of the Specification cited by Appellant, we agree that there is sufficient detail disclosed, such that one skilled in the art could reasonably conclude that the inventor had possession of the claimed invention. Therefore, we do not sustain the Examiner’s written description rejection. Appeal 2020-001264 Application 14/842,196 5 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 21–27, 41–53 112, first paragraph Written Description 21–27, 41–53 REVERSED Appeal 2020-001264 Application 14/842,196 6 JEFFERY, Administrative Patent Judge, CONCURRING. I join the majority in reversing the Examiner’s written description rejection—the sole rejection before us on appeal. I do note, however, the striking similarity, at least conceptually, between the claimed invention and that which the court held ineligible in Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015). Claim 21 in the present case recites, quite broadly, a method comprising (1) transmitting, by a computing device to one or more user devices, advertising content; (2) receiving information indicating user interaction with the advertising content; (3) generating, based on the received information, a modified version of the advertising content; and (4) transmitting, to the one or more user devices, the modified version of the advertising content. One of the patents at issue in Intellectual Ventures, namely U.S. Patent 7,603,382 (“’382 patent”), generally relates to customizing web page content as a function of navigation history and information known about the user. Intellectual Ventures, 792 F.3d at 1369. Claim 1 of that patent, which the court held ineligible under 35 U.S.C. § 101, recited a system for providing web pages accessed from a web site in a manner which presents the web pages tailored to an individual user, comprising an interactive interface configured to provide dynamic web site navigation data to the user, where the interactive interface comprised (1) a display depicting portions of the web site visited by the user as a function of the web site navigation data; and (2) a display depicting portions of the web site visited by the user as a function of the user’s personal characteristics. Id. (emphasis added). Appeal 2020-001264 Application 14/842,196 7 My emphasis above underscores that, in the ’382 patent, displayed content was tailored at least partly on the user’s navigation history—a history that reflected the user’s interaction with the web site. Despite this striking similarity to the claimed invention, I presume the Examiner considered Intellectual Ventures in concluding that the claimed invention here is eligible under § 101. I also presume that the Examiner considered the teachings of the ’382 patent in determining whether the claimed invention here is anticipated or rendered obvious over those teachings either alone or combined with other prior art. Notably, the ’382 patent’s effective filing date is before that of the present invention and, therefore, qualifies as prior art to the present application. I emphasize these presumptions because no eligibility or prior art rejections are before us: only the written description is at issue. But because this sole rejection is erroneous as the majority indicates, I join the majority in reversing that rejection.