Ex Parte Grubbs

Board of Patent Appeals and Interferences

Jan 30, 2012

11172044 (B.P.A.I. Jan. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ANDREW GRUBBS
____________________

Appeal 2009-011886
Application 11/172,044
Technology Center 2100

____________________

Before JOHN A. JEFFERY, DEBRA K. STEPHENS, ANDREW J.
DILLON, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL
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Appellant appeals under 35 U.S.C. § 134(a) (2002) from a final
rejection of claims 1-44. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Introduction
According to Appellant, the invention is directed to a media
presentation method that includes identifying a display capable of presenting
audio/video content. Established criteria can be used to select a media
production from available productions to be presented in sectors. The
selected media productions can be simultaneously presented within the
display. A broker can determine a set of media productions available for
selection and programmatically established criteria used for selecting media
productions. (Abstract).

STATEMENT OF THE CASE

Exemplary Claim
Claim 1 is an exemplary claim and is reproduced below:
1. A media presentation method comprising the steps of:

identifying a display capable of presenting audio/video content;

dividing a viewing area of said display into a plurality of
sectors;

for each sector, selecting a media production in accordance with
programmatically established criteria; and
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simultaneously presenting said selected media productions
within said display, wherein a broker determines a set of media
productions available for selection and establishes at least a
portion of said programmatically established criteria used in the
selecting step, wherein said broker does not commercially
distribute said media productions for presentation in non-
sectorized displays.

Prior Art
Beavers US 2004/0002049 A1 Jan. 1, 2004
Martin US 2005/0081155 A1 Apr. 14, 2005

Rejections
Claims 1-44 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martin and Beavers.
1

ISSUE
35 U.S.C. § 103(a): claims 1-44
Appellant asserts their invention is not obvious over Martin and
Beavers (App. Br. 13). Specifically, Appellant contends neither Martin nor
Beavers teaches the steps of (i) selecting a media production in accordance
with programmatically established criteria; (ii) (a) wherein the broker does
not commercially distribute the media productions for presentation in non-

1
Appellants argue the objection to the drawings should be withdrawn or
reversed due to an entered amendment. However, the objection relates to
petitionable subject matter under 37 C.F.R § 1.181 and the Board of Patent
Appeals and Interferences does not have the jurisdiction to review
petitionable matters.

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sectorized displays (claims 1 and 44) or (b) selling presentation space to
advertisers that permits advertisers that purchase presentation space to
display advertiser-specified content within at least one of said defined
sectors other than the sector associated with the audio/video media
production (claim 32) (App. Br. 13-14). Specifically, Appellant argues the
selection of a Teaching Assistant (TA) in Beavers is not selecting a set of
media productions (App. Br. 13). Appellant further argues Beavers does not
teach or suggest the broker does not commercially distribute the media
productions or suggest placing any limitations on distribution based on
sectorization of screens or that Martin requires the display to be sectorized
(App. Br. 13-14). Appellant also contends Beavers does not teach or suggest
selling presentation space to advertisers (App. Br. 13).
Appellant lastly asserts an ordinary artisan would not have been
motivated to modify Martin to incorporate the features of Beavers (App. Br.
13).
The Examiner finds the term “broker” may be broadly interpreted as a
human as well as other entities and the term “distribution” covers many
different scenarios (Ans. 17). The Examiner then maintains Appellant is
arguing the references individually (Ans. 17-18). Specifically, the Examiner
asserts incorporating a broker system of Beavers into Martin would have
been obvious to an ordinary artisan (Ans. 18). The Examiner further finds
the limitation “said broker does not commercially distribute the media
productions for presentation in non-sectorized displays” does not distinguish
the novel feature (id.). Moreover, the Examiner finds Beavers teaches
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distribution in a non-commercial environment and displaying specific media
in specific sectors is taught by Martin (Ans. 18-19).
In addition, the Examiner finds that Martin teaches a shopping module
which therefore suggests “selling presentation space to advertisers that
permits advertiser that purchase presentation space to display advertiser-
specified content within at least one of the defined sectors other than the
sector associated with the audio/video media production” (Ans. 19).

Issue: Has the Examiner erred in finding the combination of Martin
and Beavers would have taught or suggested “selecting a media production
in accordance with programmatically established criteria” and “wherein the
broker does not commercially distribute the media productions for
presentation in non-sectorized displays” (as recited in claims 1 and 44) or (b)
“selling presentation space to advertisers that permits advertisers that
purchase presentation space to display advertiser-specified content within at
least one of said defined sectors other than the sector associated with the
audio/video media production” (as recited in claim 32)?

ANALYSIS
We agree with and adopt the Examiner‟s findings and conclusion
(Ans. 4-19). We provide the following for additional support and emphasis.
We emphasize the Examiner is relying on the combination of the two
references.
We agree with the Examiner (Ans. 17-18) that the combination of
Martin and Beavers teaches or suggests a broker. We further agree that
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Beavers teaches or suggests a broker that distributes audio/visual data (Ans.
4-5). Moreover, we agree the broker does not commercially distribute said
media productions for presentation (Ans. 5; Ans. 18-19) and that Beavers
teaches or suggests distributing audio/video data to various sectorized
displays (Ans. 19). Thus, we agree with the Examiner‟s conclusion that the
combination of Martin and Beavers would have taught or suggested the
disputed limitation.
We also emphasize that Appellant has not defined “programmatically
established criteria” in their Specification. The Examiner has adopted a
broad but reasonable interpretation (Ans. 4-5) and Appellant has provided no
persuasive evidence or argument to rebut that interpretation. Thus, we agree
with the Examiner‟s findings.
We also note that “commercially” is non-functional descriptive matter
as this term adds no functionality to the distribution, i.e., it does not change
how the distribution is performed, but merely describes who the distribution
goes to. See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005)
(informative), aff‟d, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36). See
also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Ex parte Nehls, 88
USPQ2d 1883, 1887-90 (BPAI 2008) (precedential) (discussing non-
functional descriptive material).
Martin suggests a sector (e.g., “Shopping”) may display advertiser-
specified content as the sectors may be preconfigured (Ans. 19; see also pg.
5, [0037]). Thus, we find it within the skills of an ordinary artisan to
configure the sectorized display such that a sector(s) would have third party
specified content and that one might sell that access.
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We also emphasize the skilled artisan is “a person of ordinary
creativity, not an automaton.” See KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007). Appellant has presented no evidence that modifying
Martin to include the recited limitations in the independent as well as the
dependent claims was “uniquely challenging or difficult for one of ordinary
skill in the art” or “represented an unobvious step over the prior art.”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citations omitted).
Accordingly, the Examiner did not err in finding the combination of
Martin and Beavers would have taught or suggested the invention as recited
in claims 1, 32, and 44.
As to the dependent claims, claims 2-31 and 33-43, we agree with and
adopt the Examiner‟s findings and conclusions. We also provide the
following for support and emphasis, selecting example claims.
Several claims recite non-functional descriptive matter. For example,
in claim 3, “captive” as modifying both “location” and audience” is non-
functional descriptive matter and thus, is accorded no patentable weight.
Claims 4-8 and 15 also use this adjective as a non-functional descriptive
label. How data, audiences, locations, and individuals may be named does
not functionally change the underlying method utilizing the data, audience,
location, or individual. The steps of the method are the same regardless of
how the data, audience, location, and individual may be named. Merely
applying a label to the terms does not further limit the claimed invention
either functionally or structurally. The informational content of the data thus
represent non-functional descriptive material entitled to no weight in the
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patentability analysis. See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI
2005) (informative), aff‟d, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36).
Similarly, in claim 7, the label of “scheduling software” regarding the
type of application is a non-functional descriptive label. “Advertisements” is
also a non-functional descriptive label of the data being reserved or
presented – specifically it describes the content of the data (see e.g. claims
13 and 14). Indeed, we further note the type of information presented or
included in a sector (i.e., advertisement, weather, a current time, etc.) is non-
functional descriptive matter (see. e.g. claims 15, 16, and 17). Indeed, none
of these labels further limits the claimed invention either functionally or
structurally.
We also note that “the service” in claim 4 and “said service” recited in
claim 9 lack antecedent basis.
As to claim 11, we further emphasize that Figure 1 at least fairly
suggests the recited limitation, especially in light of the disclosure in Martin
as set forth by the Examiner (Ans. 24). Appellant argues that Martin does
not disclose the disputed limitation since the Figure is not drawn to scale
(App. Br. 28). The test for obviousness includes not only what is taught
(i.e., disclosed) by the Examiner‟s proffered combination of references, but
also what is suggested by the combination of references. Appellant fails to
address what would have been taught or suggested to an artisan by the
Examiner‟s proffered combination of references under § 103.
2

2
In evaluating references it is proper to take into account not only the
specific teachings of the references but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826 (CCPA 1968).
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Further, with respect to many of Appellant‟s arguments, we remind
Appellant that “when a patent „simply arranges old elements with each
performing the same function it had been known to perform‟ and yields no
more than one would expect from such an arrangement, the combination is
obvious.” KSR, 550 U.S. at 417 (citations omitted).
As further emphasis of our agreement with the Examiner‟s findings
and conclusions, we also note that based upon our review of the record, for
many of the dependent claims (e.g. claims 4, 6, 7, 8-10, 13- 16, 18, 19, 22,
33, 35, 36, 38- 41, and 43), we find Appellant has failed to present
substantive arguments supported with specific factual evidence of sufficient
character and weight to persuade us of error regarding the Examiner‟s legal
conclusion of obviousness for each representative claim on appeal.
Merely reciting the language of the claim is insufficient. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”). Indeed, Appellant recites the claim language, indicates the prior art
relied upon, contend the cited portion does not “mention” the claim
language, and asserts the rejection is improper and ought to be reversed.
Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7-8
(BPAI Aug. 10, 2009) (informative).
Thus, we find Appellant has failed to present substantive arguments
and supporting evidence persuasive of Examiner error. Arguments not made
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are waived. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011)(“we hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”).
CONCLUSION
Based on the record before us, we are not persuaded the Examiner has
erred in finding claims 1-44 are obvious over Martin and Beavers.
Accordingly, Appellant has not shown the Examiner erred in rejecting
claims 1-44 under 35 U.S.C. § 103(a) for obviousness over Martin and
Beavers.
DECISION
The Examiner‟s rejection of claims 1-44 under 35 U.S.C. § 103(a) as
being obvious over Martin and Beavers is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010).

AFFIRMED

ELD