Ex Parte Gupta

Board of Patent Appeals and Interferences

Jan 12, 2012

10955013 (B.P.A.I. Jan. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte AJAY GUPTA 8
___________ 9
10
Appeal 2010-008104 11
Application 10/955,013 12
Technology Center 3600 13
___________ 14
15
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17
JOSEPH A. FISCHETTI, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
21
Appeal 2010-008104
Application 10/955,013

2

STATEMENT OF THE CASE1 1
Ajay Gupta (Appellant) seeks review under 35 U.S.C. § 134 (2002) of a 2
final rejection of claims 31-46, the only claims pending in the application on 3
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 4
(2002). 5
The Appellant invented a way for a consumer to receive a consumer 6
credit in exchange for the printing of an advertiser-sponsored document 7
(Specification 2:3-5). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 31, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
31. A method comprising: 12
[1] receiving a print augmented television broadcast 13
signal comprising standard television content specific to the 14
standard television content at a receiver, 15
wherein the supplemental content specific to the 16
standard television content is included within one or 17
more non-content portions of the print augmented 18
television broadcast signal; 19
[2] demodulating, via a demodulator, the standard 20
television content from the print augmented television 21
broadcast signal for display on a television; 22
[3] demodulating, via the demodulator, the supplemental 23
content specific to the standard television content from the print 24
augmented television broadcast signal; 25

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed December 2, 2009) and the Examiner’s Answer (“Ans.,” mailed
February 19, 2010).
Appeal 2010-008104
Application 10/955,013

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[4] outputting the demodulated supplemental content 1
specific to the standard television content from an output port 2
of the television; 3
[5] receiving the demodulated supplemental content 4
specific to the standard television content at a content 5
processor; 6
[6] assembling, at the content processor, 7
the supplemental content specific to the standard 8
television content into one or more supplemental 9
documents specific to the standard television content, 10
wherein the one or more supplemental documents 11
specific to the standard television content each include 12
one or more advertisements; and 13
[7] providing the one or more supplemental documents 14
specific to the standard television content to a printer in 15
response to receiving a command from a remote control. 16
The Examiner relies upon the following prior art: 17
Von Kohorn US 5,249,044 Sep. 28, 1993
Hendricks US 5,990,927 Nov. 23, 1999
Claims 31-39 and 41-45 stand rejected under 35 U.S.C. § 102(b) as 18
anticipated by Von Kohorn. 19
Claims 40 and 46 stand rejected under 35 U.S.C. § 103(a) as 20
unpatentable over Von Kohorn and Hendricks. 21
ISSUES 22
The issues of anticipation and obviousness turn primarily on whether the 23
claims narrow the manner in which advertising is presented, the number of 24
housings in which a television circuitry is contained, and the manner in 25
which supplemental content is provided. 26
Appeal 2010-008104
Application 10/955,013

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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art - Von Kohorn 4
01. Von Kohorn is directed to generating product coupons by 5
broadcast to a television with an apparatus for receiving and 6
storing product information signals, for generating product 7
coupons, and for selectively displaying stored product information 8
signals on the television. The broadcast signals include product 9
information signals and television program signals. The television 10
can present the television program signals and product 11
information signals. The apparatus for receiving and storing 12
product information signals and for generating product coupons is 13
connected to the television. The system can also include a coupon 14
generating unit for selectively entering product information and 15
generating a product coupon having at least a portion of the 16
selectively entered product information recorded thereon. The 17
means for selectively displaying or otherwise presenting the stored 18
product information signals on the television is selectively 19
operable by individual members of the broadcast audience. Von 20
Kohorn 1:38 – 2:2. 21
02. Referring to FIG. 3, the viewer can present the coupon at a 22
redemption center or sales outlet for consideration such as 23
reduction in the purchase price of a product or a free prize. While 24
at home, the viewer can select a product in which the viewer is 25
Appeal 2010-008104
Application 10/955,013

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interested and, can use and activate the generating unit so as to 1
print a token or discount coupon specifying such product or 2
merchandise. Normally, the coupon will have printed on it a 3
product indicia line and a discount information line. These product 4
indicia and discount information lines can include coupon 5
redemption information such as places available for redemption, 6
time period for redemption, etc. Von Kohorn 4:61 – 5:6. 7
03. Coupons generated and dispensed by the units normally are 8
prenumbered, but the indicia or code may be provided as a 9
machine-readable code or a group of markings consisting of 10
numbers, letters, dots, dashes, regular and irregular shapes, codes, 11
symbols and, discrete, connected, and continuous configurations. 12
A "blind" prize payable in cash or merchandise to a shopper who 13
redeems one of the coupons in the course of the purchase of the 14
discounted merchandise may be awarded if the indicia on a 15
coupon matches indicia selected by the sponsor of the program. 16
The shopper will learn of such a "blind" prize having been won 17
only upon the redemption of the coupon, and so will help to attract 18
shoppers to stores to redeem coupons. Von Kohorn 5:31-51. 19
04. Von Kohorn’s apparatus could be provided as a single unit with a 20
television and/or VCR. Von Kohorn 12:48-50. 21
ANALYSIS 22
We are unpersuaded by the arguments that Von Kohorn does not (1) 23
provide advertisements in supplemental documents (Appeal Br. 9-11); (2) 24
output supplemental content from an output port of a television, and receive 25
Appeal 2010-008104
Application 10/955,013

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the supplemental content at a content processor (Appeal Br. 11-12); and (3) 1
insert supplemental content in non-content portions of a broadcast signal 2
(Appeal Br. 12-13). We adopt the Examiner’s findings of fact and analysis 3
at Answer 3-5 and 9-13, and reach similar legal conclusions. 4
In particular, we find that the claim does not restrict the form of 5
advertisement, which is non-functional descriptive material in any event. 6
Certainly Von Kohorn’s coupons would qualify as advertisements. 7
We also find that the claim does not narrow the structure of the recited 8
television. To the extent a television is simply a device that demodulates 9
television signals and presents the audio and visual output, whether the 10
circuitry for this is housed in a single housing or plural housings is 11
immaterial. The argument that a set top box which receives the television 12
signals that are displayed on a screen in a separate housing cannot read on 13
part of the recited television is not persuasive. In any event, Von Kohorn 14
describes a single unit embodiment. FF 04. 15
We also find that, contrary to the Appellant’s contention, claim 31 does 16
not recite “the supplemental content specific to the standard television 17
content is included within one or more non-content portions of the print 18
augmented television broadcast signal.” Thus this argument is inapplicable 19
to claim 31 and its dependent claims. As to claim 41, this claim does not 20
narrow the nature of the non-content signal portions. Von Kohorn’s 21
broadcast signals include product information signals and television program 22
signals. Thus, the product information signals are separate from the 23
television program, i.e. content, signals. 24
Appeal 2010-008104
Application 10/955,013

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As to the IDs in claims 32 and 42, the Examiner correctly found the 1
numbers appearing on the tickets to describe these IDs. Ans. 5-6; FF 02 and 2
03. The Appellant now argues lack of association with a sponsor, but the 3
very ticket itself provides the association between the sponsor contents and 4
the ticket number. 5
As to the argument regarding the credit received for forwarding page IDs 6
to a redemption center in claim 33, the claim does narrow the manner in 7
which this is done. Certainly, forwarding tickets as in Von Kohorn 8
inherently forwards the printed content, including IDs. Similarly, obtaining 9
a credit for plural tickets is a credit as a function of the number of IDs. 10
As to the argument regarding the location of the advertisement being 11
defined in meta data included in the supplemental content in claim 38, the 12
claim does not specify the nature of the meta data, and certainly the graphic 13
positioning data included in any graphics data format, including those 14
designed for printed graphics, would count as meta-data. 15
As to the argument regarding the one or more non-content portions of 16
the print augmented television broadcast signal are vertical blanking 17
intervals in claim 39, this is the part of the signal that those of ordinary skill 18
knew was available for such data in analog television signals, and thus this 19
form of encoding is necessarily inherent. Von Kohorn was filed in 1992, so 20
it clearly was oriented towards such analog signals. 21
CONCLUSIONS OF LAW 22
The rejection of claims 31-39 and 41-45 under 35 U.S.C. § 102(b) as 23
anticipated by Von Kohorn is proper. 24
Appeal 2010-008104
Application 10/955,013

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The rejection of claims 40 and 46 under 35 U.S.C. § 103(a) as 1
unpatentable over Von Kohorn and Hendricks is proper. 2
DECISION 3
The rejection of claims 31-46 is affirmed. 4
No time period for taking any subsequent action in connection with this 5
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 6
§ 1.136(a)(1)(iv) (2007). 7
8
AFFIRMED 9
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mls 13