Ex Parte Geer et al

Patent Trial and Appeal Board

Aug 31, 2016

12964166 (P.T.A.B. Aug. 31, 2016)

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.
12/964,166 12/09/2010 Walter Geer III 40205/02201 4259
30636 7590 08/31/2016
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
08/31/2016 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,
JASON WITT, and JOANNE LEVY
____________

Appeal 2014-005224
Application 12/964,1661
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 According to the Appellants, the real party in interest is Viacom
International Inc. Appeal Br. 2.
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Application 12/964,166

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ILLUSTRATIVE CLAIM
1. A method for dynamic integration and presentation of
advertising content and media content, the method comprising:
receiving, by a server computing device, a request for
media content from a remote computing device; and
providing, by the server computing device in response to
the request, an interactive advertising unit comprising:
a first content layer including the requested media
content, a media player, and website content;
a second content layer including the advertising
content, wherein the advertising content comprises video
content; and
an integration module configured to:
display the video content to match the
boundaries of the media player;
extend the display area of the video content
beyond the boundaries of the media player and
underneath the website content of the first content
layer;
reduce the display area of the video content
after a period of time to match the boundaries of
the media player; and
display the requested media content in the
media player.
CITED REFERENCES
The Examiner relies upon the following references:
Moonka et al. US 2008/0066107 A1 Mar. 13, 2008
(hereinafter “Moonka”)
Thomas et al. US 2008/0209465 A1 Aug. 28, 2008
(hereinafter “Thomas”)
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Application 12/964,166

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Wurster et al. US 2009/0063280 A1 Mar. 5, 2009
(hereinafter “Wurster”)
Wang US 2009/0163281 A1 June 25, 2009
REJECTIONS2
I. Claims 1–4, 8, 10, 13, and 14 are rejected under 35 U.S.C.
§ 102(e) as being anticipated by Wurster.
II. Claims 5, 9, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wurster and Moonka.
III. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wurster and Thomas.
IV. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Wurster and Wang.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.

2 In addition to Rejections I–IV, the Final Office Action also provisionally
rejects claims 1–14 on the ground of nonstatutory obviousness-type double
patenting as being unpatentable over claims 1–14 of copending Application
No. 12/902,785. Final Action 2–3. On July 24, 2013, the Appellants
submitted a Terminal Disclaimer in regard to Application No. 12/902,785.
Application No. 12/902,785 is the subject of a Decision on Appeal by
another panel of this Board. Ex parte Geer, Appeal 2014-004779 (PTAB
July 27, 2016). The Appellants do not raise the provisional rejection in this
Appeal. On the record before us, addressing the Examiner’s provisional
rejection would be premature. See Ex parte Moncla, Appeal 2009-006448,
95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). We therefore do not
reach the Examiner’s provisional obviousness-type double-patenting
rejection of claims 1–14.
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Application 12/964,166

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ANALYSIS
The Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(e) as being anticipated by Wurster, because Wurster
does not disclose the recited features of claim 1’s “integration module.”
Appeal Br. 4–6.
The Appellants’ argument turns upon the manner in which the
“providing” of the “integration module,” and the “interactive advertising
unit” of which it is a part, is accomplished according to claim 1. The
portions of claim 1 relevant to the present analysis recite (emphasis added):
receiving, by a server computing device, a request for
media content from a remote computing device; and
providing, by the server computing device in response to
the request, an interactive advertising unit comprising:
a first content layer including the requested media
content, a media player, and website content;
a second content layer including the advertising
content, wherein the advertising content comprises video
content; and
an integration module configured to:
display the video content to match the
boundaries of the media player;
extend the display area of the video content
beyond the boundaries of the media player and
underneath the website content of the first content
layer;
reduce the display area of the video content
after a period of time to match the boundaries of
the media player; and
display the requested media content in the
media player.
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The Appellants argue that claim 1’s “integration module” must be
transmitted to and executed on the “remote computing device.” Appeal
Br. 5–6; Reply Br. 3–4. Further, according to the Appellants, Wurster fails
to show these features, because, in Wurster, the “integration module” is not
transmitted to the remote device; instead, the functions of the “integration
module” are performed on Wurster’s server. Appeal Br. 5; Reply Br. 2–4.
According to the Examiner, claim 1 does not require transmitting the
“integration module” to the “remote computing device.” Adv. Act. 2.
Furthermore, the Examiner finds that Wurster teaches that “there is already”
equipment on the “remote computing device” (e.g., a mobile phone) that
reconstructs and reassembles messages containing an integrated media file
and, thus, performs the function of the “integration module.” Answer 3–4
(citing Wurster ¶¶ 30, 32–34, 38).
The Appellants dispute the Examiner’s finding regarding Wurster’s
teachings, contending that Wurster does not disclose a “remote computing
device” that performs the claimed functions of the “integration module”;
rather, the Appellants assert that Wurster generates a multimedia message in
its final form with all the functions of the “integration module” performed
on the server side before any transmission to a “remote computing device.”
Reply Br. 3–4. Moreover, the Appellants contend that if any equipment for
performing such functions “already” exists on the “remote computing
device” (as the Examiner finds), then the “server computing device” is not
“providing” such equipment per claim 1. Id. at 4.
Notwithstanding the teachings of Wurster, the rejection of claim 1 is
sustained, because (for the reasons set forth below) we agree with the
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Examiner’s determination (Adv. Act. 2) that claim 1 does not require the
“integration module” to be transmitted to the “remote computing device.”
The Appellants characterize claim 1 as stating that the “integration
module” is transmitted to (Appeal Br. 5; Reply Br. 3) or provided to
(Appeal Br. 5; Reply Br. 3–4) the “remote computing device,” or that the
“remote computing device” receives (Appeal Br. 5; Reply Br. 3) the
“integration module.” The Appellants also contend that claim 1 requires the
functions of the “integration module” to be executed on (Appeal Br. 5;
Reply Br. 3) or performed on (Reply Br. 3) the “remote computing device.”
Yet, claim 1 merely recites “providing, by the server computing
device . . . an interactive advertising unit comprising . . . an integration
module.” Claim 1 does not require the “integration module” to exist at any
particular location, let alone that it be transmitted to the “remote computing
device,” or be located there when performing its functions. Indeed, although
it is identified as the source of the recited “request for media content,” the
“remote computing device” is not otherwise described in claim 1, such that
the text of claim 1 does not support the Appellants’ interpretation that the
“integration module” must execute its functions on the “remote computing
device.” See Appeal Br. 6.
The Specification3 supports this construction of claim 1. Using
language similar to that appearing in the claim, the Specification describes
certain embodiments as “providing, by the server computing device . . . an
interactive advertising unit . . . includ[ing] . . . an integration module” (Spec.
¶ 7; see also id. ¶¶ 8, 9, 30). For one such embodiment, the Specification

3 Citations in this Decision refer to the Appellants’ Substitute Specification
dated April 20, 2011.
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also separately states that “server computing device 106 transmits the
interactive advertising unit 202 to the client computing device 102 for
presentation to a user” (id. ¶ 30) (emphasis added):
The server computing device 106 combines the advertising
content and the requested digital media content to provide an
interactive advertising unit 202. The server computing device
106 transmits the interactive advertising unit 202 to the client
computing device 102 for presentation to a user.
Thus, the Specification draws a distinction between expressions using the
word provide, on the one hand, which do not state a location for the
“interactive advertising unit” or “integration module” (id. ¶¶ 7–9, 30), and
expressions using the word transmit, on the other hand, which state refer to
the “interactive advertising unit” moving from one location to another — to
a “client computing device” (id. ¶¶ 30, 31), in particular. (The Specification
embodiments of paragraphs 30 and 31 do not refer to an “integration
module.”)
Furthermore, the Specification states that the described techniques
“can be implemented in a distributed computing system” (Spec. ¶ 54), thus
reinforcing the conclusion that the limitation of claim 1 in question should
not be construed to require the functions of the “integration module” to be
executed on the “remote computing device.”
Therefore, contrary to the Appellants’ argument (see Appeal Br. 5–6;
Reply Br. 3–4), the identified language of claim 1 (reciting “providing, by
the server computing device . . . an interactive advertising unit
comprising . . . an integration module”) does not require the “integration
module” to be transmitted to, or to perform its functions while located on,
the “remote computing device.”
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Accordingly, the Appellants’ argument that Wurster does not teach
the identified limitation of claim 1 (Appeal Br. 4–6; Reply Br. 2–4) is not
persuasive. The rejection of claim 1 as anticipated under 35 U.S.C. § 102(e)
is sustained.
Because the Appellants rely upon the same argument, in regard to
claims 2–4, 8, 10, 13, and 14 (Appeal Br. 6), the rejection of these claims as
anticipated under 35 U.S.C. § 102(e) is also sustained.
Finally, because the Appellants rely upon the same argument, in
regard to claims 5–7, 9, 11, and 12 (Appeal Br. 6–8), the rejections of these
claims as unpatentable under 35 U.S.C. § 103(a) are sustained.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–4, 8, 10, 13,
and 14 under 35 U.S.C. § 102(e).
We AFFIRM the Examiner’s decision rejecting claims 5–7, 9, 11, and
12 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED