Ex Parte Gordon et al

Board of Patent Appeals and Interferences

Nov 29, 2010

09792889 (B.P.A.I. Nov. 29, 2010)

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.
09/792,889 02/23/2001 Donald F. Gordon 60136.0159US01 9914
94140 7590 11/30/2010
Merchant & Gould - Cox
PO Box 2903
Minneapolis, MN 55402
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
11/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DONALD F. GORDON,
SADIK BAYRAKERI,
EDWARD A. LUDVIG, and
JOHN P. COMITO
____________

Appeal 2010-008267
Application 09/792,889
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-008267
Application 09/792,889

2
STATEMENT OF THE CASE
Donald F. Gordon, et al. (Appellants) seek our review under 35
U.S.C. § 134 (2002) of the final rejection of claims 1-3, 5-13, and 23. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.2

THE INVENTION
The invention relates to “communication systems ... [and more
specifically] to techniques for providing targeted advertisements and
multimedia contents in a server-centric system.” Specification 1:6-8.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for providing advertisements to a plurality of terminals,
comprising:
receiving a first set of advertisements;
receiving a second set of advertisements;
receiving a set of one or more background videos;
selecting advertisements for display at a screen of at least one
terminal in accordance with a terminal profile, wherein the terminal
profile is assigned by a filter icon selectable at the plurality of
terminals, wherein the filter icon allows viewers to select a category
of programming associated with the filter icon to be included in a
program listing provided to the plurality of terminals, and wherein

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 11, 2010) and Reply Brief (“Reply Br.,” filed May 19, 2010),
and the Examiner’s Answer (“Answer,” mailed Apr. 12, 2010).
Appeal 2010-008267
Application 09/792,889
3
when a viewer selects the filter icon at the screen of the at least one
terminal, the program listing, including the selected category, is
simultaneously displayed with the selected advertisements to the
viewer;
composing one or more videos having included therein at least
one background video and advertisements wherein advertisements
from the first and second sets are spatially arranged into the at least
one background video;
encoding the one or more composed videos in accordance with
a particular coding scheme;
multiplexing the one or more encoded videos into one or more
transport streams; and
transmitting the one or more transport streams to the plurality
of terminals.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Civanlar
Picco
Hendricks
US 5,691,768
US 6,029,045
US 6,738,978 B1
Nov. 25, 1997
Feb. 22, 2000
May 18, 2004
The following rejection is before us for review:
1. Claims 1-3, 5-13, and 23 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Picco, Hendricks, and Civanlar.

ISSUE
Did the Examiner err in rejecting claims 1-3, 5-13, and 23 under 35
U.S.C. §103(a) as being unpatentable over Picco, Hendricks, and Civanlar ?

Appeal 2010-008267
Application 09/792,889
4
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Examiner’s
Answer. Additional findings of fact may appear in the Analysis below.

ANALYSIS
The Appellants argue that the Examiner’s Answer fails to establish
that Hendricks and Civanlar disclose simultaneously displaying program
listing and selected advertisements when a user selects a filter. Reply Br. 1-
5.
We agree.
Independent method claim 1 calls for
selecting advertisements for display at a screen of at least one terminal
in accordance with a terminal profile, wherein the terminal profile is
assigned by a filter icon selectable at [a] plurality of terminals,
wherein the filter icon allows viewers to select a category of
programming associated with the filter icon to be included in a
program listing provided to the plurality of terminals, and wherein
when a viewer selects the filter icon at the screen of the at least one
terminal, the program listing, including the selected category, is
simultaneously displayed with the selected advertisements to the
viewer.
The other independent method claim 11 similarly calls for
selecting targeted contents from [a] first and second sets of contents
for display at a screen of [a] plurality of terminals in accordance with
a terminal profile, wherein the terminal profile is assigned by a filter
icon selectable at the plurality of terminals, wherein the filter icon is
used to select a category of programming associated with the filter
icon to be included in a program listing provided to the plurality of
terminals, and wherein when a viewer selects the filter icon at the
screen of the at least one terminal, the program listing, including the
selected category, is simultaneously displayed with the selected
advertisements to the viewer[.] (emphasis added)
Appeal 2010-008267
Application 09/792,889
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The subject matter of the method claims is limited such that advertisements
are provided to terminals via a step of selecting advertisements for display in
accordance with a terminal profile assigned by a filter icon selectable at the
terminals, the filter icon is such that it is used to select a category of
programming and, when selected, the program listing, including the selected
category, is simultaneously displayed with the selected advertisements to the
viewer.
The Examiner argued that the “displaying the program listing
simultaneously with the selected advertisements” are rendered obvious by
the combination of the prior art” (Answer 18) but specifically relies upon
Hendricks and Civanlar as showing the simultaneous display of program
listing and selected advertisements to the viewer.
According to the Examiner,
Hendrick's discloses a program schedule and ad schedule
(Figures 11, 12); that menu screens can be shown during
programming (Fig. 25, item 1200); and that advertising can be
programming (Fig. 20b). Therefore, Hendricks discloses that
advertising can be shown simultaneous with a menu of programming.
Additionally, Hendrick's further disclose presenting a
schedule/program listing (Figs. 29, 30a) and that advertisements can
be shown on a portion of the screen simultaneous with other
menu/program listing content being shown to the user (col 47, line 63-
col 48, line 5; col 47, line 40-col 48, line 5).
Additionally, Hendrick's discloses program overlay menus that
are overlayed of programming (col 44, lines 10-23). And, as noted
above, Hendrick's discloses that advertising can be programming.
Hence, Hendrick's discloses an overlay menu displayed simultaneous
with programming.
Additionally, [Civanlar] also discloses simultaneous display of
different video sources (col 1, lines 30-40; col 2, lines 10-20). And,
as noted above, both Picco and Hendricks' discloses presenting
content, program listing, and advertising.
Answer 26-27.
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Hendricks is directed to a method and apparatus for targeted
advertising. Beginning at line 34 of column 43, Hendricks describes a
system for “Targeted Advertising Using Menu System.” Part of the menu
system can be seen in Fig. 28a of Hendricks. It shows filter icons, e.g., a
movies icon. It has two functions. By clicking on an icon on the screen of
Fig. 28a, the Hendricks system brings up a program listing (see Fig. 30a –
which shows a list of “hit movies”). The icon also has the function of
selecting which videos to make available for viewing – see the specific
movies listed in Fig. 30a. That the videos listed in Fig. 30a are movies and
not advertisements, as the claim specifically calls for, is not of patentable
consequence because the difference between a movie and an advertisement
is one of content, amounting to a distinction in non-functional descriptive
material. Thus, Hendricks shows (a) assigning a filter icon (e.g., for movies)
on a screen, which icon has the function of providing a list of programming,
and (b) selecting content (e.g., movies) for display corresponding to the
assigned filter icon.
The question here is whether Hendricks’ filter icon, e.g., a movies
icon, when selected, causes the program listing (see Fig. 30a – which shows
a list of “hit movies”), including the selected category, to be simultaneously
displayed with the selected advertisements to the viewer (e.g., the specific
movies listed in Fig. 30a).
The Examiner directs attention to certain Figures in Hendricks, e.g.,
Fig. 20, in an attempt to show that Hendricks discloses the “simultaneous”
display of content, program listing, and advertisement. The Examiner also
points to Hendricks’ disclosure of program overlay menus that overlay
programming at col 44, lines 10-23. While Hendricks arguably shows
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Application 09/792,889
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various pieces of information on a screen, there is no indication in these
figures or in col 44, lines 10-23 that the various content, assuming they
would appear simultaneously to the viewer - overlayed or not, are
simultaneously displayed via a filter icon as the method claims require.
The Examiner also cites Hendricks column 47, line 63-column 48,
line 5; column 47, line 40-column 48, line 5, as showing simultaneous
display by disclosing the displaying a program listing and advertisements on
a portion of the screen. Hendricks column 47, line 40-column 48, line 5,
describes notification submenus for informing the user that a program
selection is about to be made. However, even if we construed the claimed
advertisements to reasonably broadly encompass Hendricks’ notifications, as
the Examiner appears to have done, Hendricks does not show the
notifications simultaneously displayed when the program listing is selected
via the filter icon as claimed. Hendricks column 47, line 63-column 48, line
5, discloses a notification submenu which allows an “operations center” or
“cable headend” to display other videos. Again, Hendricks does not show
the other videos simultaneously displayed when the program listing is
selected via the filter icon as claimed.
Finally, the Examiner relies on Civanlar. It relates to the decoding of
video signals. The Examiner states that Civanlar also discloses simultaneous
display of different video sources. But the question is not whether the prior
art shows simultaneously displaying of different types of information but a
filter icon such that it is used to select a category of programming and, when
selected, the program listing, including the selected category, is
simultaneously displayed with the selected advertisements to the viewer.
The Examiner has not shown that Civanlar discloses the method as claimed.
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Accordingly, we reverse the rejection as to method claims 1-3 and 5-
13.
We will affirm the rejection as to claim 23. The Appellants have not
addressed the merits of the rejection as it applies to the substance of claim
23. Claim 23 is not a method claim but an apparatus claim. See Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
(“apparatus claims cover what a device is, not what a device does. An
invention need not operate differently than the prior art to be patentable, but
need only be different.”) Accordingly, the argument challenging the
rejection on the ground that simultaneously displaying a program listing and
selected advertisements when a user selects a filter is not disclosed is not
dispositive of the patentability of claim 23 over the cited prior art.

DECISION
The decision of the Examiner to reject claims 1-3 and 5-13 is
reversed. The decision of the Examiner to reject claim 23 is affirmed.
Accordingly, the decision of the Examiner to reject claims 1-3, 5-13, and 23
is affirmed-in-part.

AFFIRMED-IN-PART

mev

MERCHANT & GOULD - COX
PO BOX 2903
MINNEAPOLIS MN 55402