Ex Parte Flickinger

Board of Patent Appeals and Interferences

Jun 10, 2009

09749255 (B.P.A.I. Jun. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GREGORY FLICKINGER
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Appeal 2009-000,850
Application 09/749,2551
Technology Center 2600
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Decided:2 June 10, 2009
____________________

Before KENNETH W. HAIRSTON, ROBERT E. NAPPI, and MARC S.
HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Prime Research Alliance E., Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000,850
Application 09/749,255

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 2-5, 10-12, and 28-42.3 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellant’s invention relates to a method and system whereby
television advertisements can be delivered in conjunction with and
correlated with advertisements that are presented to viewers in an Interactive
Program Guide (IPG) or Electronic Program Guide (EPG). Programming
ads and IPG ads are temporally linked and scheduled to be presented to the
appropriate target group in a variety of sequences that may enhance the
effectiveness of an advertising campaign (Spec. 5-6).
Claim 28 is exemplary:
28. A method of enhancing the effectiveness of IPG ads and programming
ads in a television network environment, the method comprising:
(a) storing an IPG ad queue, the IPG ad queue containing an ordered
list of IPG ads;
(b) storing a programming ad queue, the programming ad queue
containing an ordered list of programming ads to be inserted in a
programming avail;
(c) linking at least one IPG ad with at least one programming ad to
form at least one IPG-programming ad combination;
(d) displaying one or more IPG ads from the at least one IPG-
programming ad combination in the IPG when the IPG is invoked
immediately prior to or immediately subsequent to the display of a
programming ad in the programming avail, wherein the IPG ads are
displayed in accordance with the IPG ad queue; and
(e) reordering the IPG ad queue in accordance with the displayed
programming ad.

3 Claims 1, 6-9, and 13-27 have been cancelled.
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Application 09/749,255

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Esch US 5,283,639 Feb. 01, 1994
Hite US 6,002,393 Dec. 14, 1999
Alexander US 6,177,931 B1 Jan. 23, 2001
Boylan, III US 6,799,326 B2 Sep. 28, 2004
Hendricks US 6,738,978 B2 May 18, 2004

Claims 10, 12, 28-33, 38, and 40-42 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Alexander in view of Hite.
Claims 2, 3, 5, 34, 35, and 37 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Alexander in view of Hite and Hendricks.
Claims 4 and 36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Alexander in view of Hite, Hendricks, and Esch.
Claims 11 and 39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Alexander in view of Hite and Boylan.
Throughout this decision, we make reference to the Appeal Brief
(“Br.,” filed October 23, 2007), the Reply Brief (“Reply Br.,” filed April 4,
2008) and the Examiner’s Answer (“Ans.,” mailed February 5, 2008) for
their respective details.
ISSUES
Appellant argues that the Examiner has failed to establish a prima
facie case of obviousness, because none of the applied references teaches
storing an IPG (interactive program guide) ad queue containing an ordered
list of IPG ads, nor reordering the IPG ad queue in accordance with the
displayed programming ad (claim 28) or in accordance with the reordering
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Application 09/749,255

of the programming ad queue (claim 31) (App. Br. 13). The Examiner finds
that Alexander teaches the claimed “ordered list” because the ads of
Alexander, being stored in RAM, are inherently in “some” order, even a
random one (Ans. 13), and further finds that Alexander teaches reordering
the IPG ad queue (Ans. 14).
Appellant’s arguments present us with the following issues:
1. Has Appellant shown that the Examiner erred in finding that
Alexander teaches storing an IPG ad queue containing an ordered list of IPG
ads?
2. Has Appellant shown that the Examiner erred in finding that
Alexander teaches reordering the IPG ad queue in accordance with the
displayed programming ad (claim 28) or the reordering of the programming
ad queue (claim 31)?
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns a method and
system whereby television advertisements can be delivered in conjunction
with and correlated with advertisements that are presented to viewers in an
Interactive Program Guide (IPG) or Electronic Program Guide (EPG).
Programming ads and IPG ads are temporally linked and scheduled to be
presented to the appropriate target group in a variety of sequences that may
enhance the effectiveness of an advertising campaign (Spec. 5-6).
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Application 09/749,255

2. Ads to be displayed next in the IPG can be ordered and
prioritized according to a number of parameters, e.g., establishing a priority
linkage between programming and IPG ads (Spec. 13).
Alexander
3. Alexander teaches an Electronic Program Guide (EPG) that
includes a picture-in-picture (PIP) window and two Panel Ad Windows, as
well as program guide information (col. 3, ll. 6-9).
4. Alexander teaches that “[a]ds can rotate. For example, different
ads can appear each time the user enters the same page/section of the Guide.
There is no hard limit on the number of ads placed in rotation. Ads can be
assigned a priority with the ad of the highest priority being displayed the
first time a hard page or section is accessed. Then the second priority ad is
displayed the next time the user views this page and so forth” (col. 26, ll. 45-
51).
Hite
5. Hite teaches targeting TV advertisements to individual
customers. A command signal is sent to the display site commanding the
display of a selected advertisement selected for the individual consumer
(Abstract).
Hendricks
6. Hendricks teaches a network controller for a television delivery
system that provides all cable network monitoring and control of set top
terminals within the cable headend (col. 3, ll. 51-53).
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Esch
7. Esch teaches a communications distribution system which
allows customizing the video presentation at each ground terminal (col. 1, ll.
13-16).
Boylan
8. Boylan teaches a system in which local advertisements are
provided to interactive television program guides that are implemented on
the user television equipment associated with a television distribution
facility (col. 1, l. 66 – col. 2, l. 2).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “the
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.
ANALYSIS
CLAIMS 10, 12, 28-33, 38, AND 40-42
Both pending independent claims (claims 28 and 31) recite storing an
IPG (interactive program guide) ad queue, the IPG ad queue containing an
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ordered list of IPG ads, and reordering the IPG ad queue under specified
conditions.4
The Examiner finds that Alexander stores IPG ads in an ordered list
(Ans. 4). Responding to Appellant’s arguments, the Examiner admits that
Alexander is silent as to what type of order the ads are stored in (Ans. 5).
The Examiner reasons that because Alexander does teach that the ads are
stored in RAM, “Alexander inherently teaches that ads are stored in a
particular type of order (e.g. random, consecutive or by genre) by simply
teaching that the ads or (sic, are) stored in RAM” (Ans. 13). With respect to
the recitation of reordering the IPG ad queue, the Examiner finds that
Alexander “explicitly teaches reordering of IPG ad storage,” based on
assigned priority (Ans. 14).
We disagree with the Examiner’s position. While we agree with the
Examiner that Alexander does not disclose any type of order for storage of
the ads disclosed therein, it is incorrect to state that a “random” order
corresponds to the “ordered list” claimed. Were it possible to interpret a
random order as a species of “order” such that it could read on an ordered
list, the effect would be to read the word “random” completely out of the
claim. Appellant’s thesaurus citation (Reply Br. 3), indicating that “random”
is an antonym of “ordered,” is further evidence that “random” cannot
accurately be described as a species or kind of “order.” As Appellant further
notes (Reply Br. 3), the Specification discloses that “ads to be displayed next
in the IPG can be ordered and prioritized according to a number of

4 In claim 28, the IPG ad queue is reordered in accordance with the
displayed programming ad; in claim 31, the IPG ad queue is reordered in
accordance with a reordering of the programming ad queue.
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parameters” (FF 2). We agree with Appellant that this establishment of a
display order means that the ordered list recited in the claims is “specifically
not in a random order” (Reply Br. 3). Because we agree with the Examiner
that Alexander does not teach any type of order into which its ads are
categorized, and we agree with Appellant that something that is “random”
cannot fairly be characterized as being in any “order,” we agree with
Appellant that the Examiner erred in finding that Alexander teaches an IPG
ad queue containing an ordered list of IPG ads.
The Examiner further finds that Alexander teaches reordering of its
IPG ad storage at column 26, lines 30-56 (Ans. 14). We will assume for the
purposes of this section, without deciding, that reordering of IPG ad storage
is the same as reordering an IPG ad queue. The section of Alexander cited
by the Examiner discloses the rotation of Panel Ads in accordance with, for
example, an assigned priority. In Alexander, “the ad of the highest priority is
displayed the first time a hard page or section is accessed … the second
priority is displayed the next time the user views this page and so forth” (FF
4). Rotation is distinct from reordering, however, because rotation preserves
an initially established order of items, going from the first item in the
rotation, to the second, ultimately to the nth and back again to the first. In
the context of a queue, only the pointer indicating the “head” of the queue is
updated, to indicate what item in the rotation will be displayed next. In the
absence of a specific teaching that the order of rotation of items is changed,
then, we will not interpret a rotation through a plurality of items according to
an initially determined order to amount to a “reordering.” Accordingly, we
find that Alexander does not teach reordering of an IPG ad queue, as recited
in claims 28 and 31.
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Because Appellant has established error in the Examiner’s rejection,
we will not sustain the Examiner’s rejection of claims 28 and 31, as well as
claims 10, 12, 29, 30, 32, 33, 38, and 40-42 not separately argued, under 35
U.S.C. § 103.
CLAIMS 2, 3, 5, 34, 35, AND 37
We reverse supra the rejection of claims 28 and 31, from which these
claims depend. We have reviewed Hendricks and find that it does not
remedy the deficiencies of Alexander and Hite which we have noted. We
will therefore reverse the rejection of claims 2, 3, 5, 34, 35, and 37 under
§ 103 as being unpatentable over Alexander in view of Hite and Hendricks,
for the same reasons expressed supra with respect to claim 1.
CLAIMS 4 AND 36
We reverse supra the rejection of claims 28 and 31, from which
claims 4 and 36 depend, respectively. We have reviewed Hendricks and
Esch and find that they do not remedy the deficiencies of Alexander and
Hite which we have noted. We will therefore reverse the rejection of claims
4 and 36 under § 103 as being unpatentable over Alexander in view of Hite,
Hendricks, and Esch, for the same reasons expressed supra with respect to
claims 1 and 15.
CLAIMS 11 AND 39
We reverse supra the rejection of claims 28 and 31, from which
claims 11 and 39 depend, respectively. We have reviewed Boylan and find
that it does not remedy the deficiencies of Alexander and Hite which we
have noted. We will therefore reverse the rejection of claims 11 and 39
under § 103 as being unpatentable over Alexander in view of Hite and
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Boylan, for the same reasons expressed supra with respect to claims 28 and
31.
CONCLUSIONS OF LAW
1. Appellant has shown that the Examiner erred in finding that
Alexander teaches storing an IPG ad queue containing an ordered list of IPG
ads.
2. Appellant has shown that the Examiner erred in finding that
Alexander teaches reordering an IPG ad queue in accordance with the
displayed programming ad (claim 28) or the reordering of the programming
ad queue (claim 31).

ORDER
The Examiner’s rejection of claims 2-5, 10-12, and 28-42 is reversed.

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Appeal 2009-000,850
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REVERSED

ELD

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