Ex Parte Howcroft et al

Patent Trial and Appeal Board

Oct 31, 2017

11503517 (P.T.A.B. Oct. 31, 2017)

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.
11/503,517 08/11/2006 Jerald Robert Howcroft 2006-A0574_7785-1683 8992
92384 7590 10/31/2017
AT&T Legal Department - G&G
Attention: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
LANGHNOJA, KUNAL N
ART UNIT PAPER NUMBER
2423
MAIL DATE DELIVERY MODE
10/31/2017 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 JERALD ROBERT HOWCROFT,
THOMAS HINMAN ADAMS, and EDWARD A. WALTER
____________________

Appeal 2016-007547
Application 11/503,517
Technology Center 2400
____________________

Before MICHAEL J. STRAUSS, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
27–42 and 44. Claims 1–26 and 43 are canceled. We have jurisdiction over
the rejected claims under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to inserting advertisement data into an internet
protocol television network. Spec., Title. Claim 27, reproduced below, is
representative of the claimed subject matter:
27. A method for distributing advertising data from television
system, comprising:
if a request for home advertising data associated with a home
advertising server in a geographic area associated with a home
zone is received at a travel server in a geographic region
associated with a travel zone from a subscriber at a traveling
client device located in the travel zone, wherein the advertising
data is presented on the traveling client device, wherein the
traveling client device is associated with the home zone then,
sending to the traveling client device, in response to the
subscriber request for the home advertising data the home
advertising data from the home advertising server;
in a travel zone content video stream data on an end user device
on which the advertising data is presented to the subscriber in the
travel zone;
else if, the request for home advertising data is not sent from the
subscriber at the traveling client device, sending to the traveling
client device, advertising data for a local geographic region
associated with the travel zone in the travel zone content video
stream.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Bandera et al. US 6,332,127 B1 Dec. 18, 2001
Cristofalo US 2002/0166119 A1 Nov. 7, 2002

REJECTIONS
The Examiner made the following rejections:
Claims 27–42 and 44 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 5–6.
Claim 27 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention. Final Act. 6–7.
Claims 27–42 and 44 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cristofalo and Bandera. Final Act. 7–11.

OPINION
Appellants’ arguments are not persuasive of Examiner error. Instead
we adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Final Act. 2–11, Ans. 2–5) and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellants’ Appeal Brief (Ans. 6–10) and concur with the
conclusions reached by the Examiner. We highlight the following for
emphasis.

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35 U.S.C. § 112, first paragraph
Appellants’ Appeal Brief does not address the rejection under 35
U.S.C. § 112, first paragraph. Although Appellants’ Reply Brief asserts
these “rejections were previously addressed in Appellant[s’] Appeal Brief on
pages 6 ll. 21–24 through page 7 ll. 1–18” (Reply Br. 5), the referenced
section of the Brief does not mention the § 112 rejection or applicable
section of the statute. To the contrary, under the heading “[g]rounds of
rejection to be reviewed on appeal,” Appellants list only “35 USC 103(a)
Rejections.”1 App. Br. 4–5 (emphasis omitted). Appellants’ attempt to
rehabilitate the appeal by including argument for the first time in the Reply
Brief is ineffective. Optivus Tech., Inc. v. Ion Beam Applications S.A., 469
F.3d 978, 989 (Fed. Cir. 2006) (holding an argument raised for the first time
in the reply brief that could have been raised in the opening brief is waived);
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Nor
is the reply brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's rejections, but
were not.”). Accordingly, argument contesting the rejection under 35 U.S.C.
§ 112, first paragraph, is waived.2
Furthermore, even if it had been timely presented, Appellants’
argument is not persuasive of Examiner error. The Examiner finds the

1 We also encourage Appellants to use proper headings to avoid any similar
issues in the future. By regulation, “[e]ach ground of rejection contested by
appellant must be argued under a separate heading, and each heading shall
reasonably identify the ground of rejection being contested (e.g., by claim
number, statutory basis, and applied reference, if any).” 37 CFR
§ 41.37(c)(1)(iv). Here, Appellants’ “Argument” section does not contain
any heading identifying the ground of rejection being contested. App. Br. 6.
2 See MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(1)(iv) and 41.39(a)(1).

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Specification as filed does not disclose the invention as including insertion
of (i) home advertising data and (ii) local advertising data dependent upon
whether a request for home advertising data is sent from the subscriber.
Final Act. 5–6. Appellants, for the first time in the Reply Brief, contend the
rejection under 35 U.S.C. § 112, first paragraph, is improper, arguing
support for the disputed limitations “if a request for home advertising data
. . . is received . . ., sending . . . home advertising data” and “else if, the
request for home advertising data is not sent . . ., sending . . . advertising
data for a local geographic region” can be found at paragraph 29 of the
Specification. Reply Br. 5 (citing App. Br. pp. 6, ll. 21–24 and pp. 7, ll. 1–
18). We find such argument unpersuasive. In particular, paragraph 29 does
not disclose the request is optional or conditional, instead describing
“traveling client device 508 in a travel zone 503 issues a request to a travel
server 506 to receive home advertisement from the home advertisement
server 506 in the home zone 501.” That is, there is no disclosure supporting
an alternative situation wherein the request is not sent. Appellants
characterize the “else if” as “an inherent default” (Reply Br. 5), yet the
Federal Circuit has held that “while the description requirement does not
demand any particular form of disclosure, or that the specification recite the
claimed invention in haec verba, a description that merely renders the
invention obvious does not satisfy the requirement.” Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (citation
omitted). Accordingly, we sustain the rejection of claims 27–42 and 44
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.

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35 U.S.C. § 112, second paragraph
Appellants do not present argument contesting the rejection of claim
27 under 35 U.S.C. § 112, second paragraph. We nevertheless exercise our
discretion in reviewing the rejection. With respect to the Examiner’s
conclusion of insufficient antecedent basis for “the subscriber request”
recited by claim 27, we observe the claim describes “a request . . . from a
subscriber” thereby providing sufficient antecedent basis for the disputed
“subscriber request.” However, in connection with “the travel zone content
video stream” it is not clear if this stream is the same as the earlier recited “a
travel zone content video stream data” or whether, for example, the prior
phrase should be read as “in a travel zone content video stream[,] data” (i.e.,
the data is in a stream) such that “the travel zone content video stream”
refers only to the stream, not the data.3 Accordingly, we agree with the
Examiner in concluding “the travel zone content video stream” renders
claim 27 indefinite under 35 U.S.C. § 112, second paragraph.
35 U.S.C. § 103(a)
The Examiner finds Cristofalo’s user identification or user profile
information teaches or suggests the disputed request for home advertising
data. Ans. 9. According to the Examiner “the request originates with

3 In the event of further prosecution, the Examiner may also wish to
consider whether the phrase “in a travel zone content video stream data on
an end user device on which the advertising data is presented to the
subscriber in the travel zone” renders claim 27 indefinite because it is set off
from the “if” and “else if” statements by semi-colons yet is not an
independent method step.
In the event of further prosecution, the Examiner may also wish to
consider whether independent claims 33 and 39 are indefinite due to the
phrases “instructions to, if a request . . . then instructions to” and
“instructions to, . . . else if, the request . . . is not received, receiving.”
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identification of the travelling client device which itself request[s] content to
display, so broadly the request at the home server ultimately originates with
the client device.” Id. Appellants disagree, contending “Cristofalo sends
advertising data from the home server to an end user at the traveling client
device without requesting the home advertising data.” App. Br. 9. Thus,
according to Appellants, Cristofalo fails to teach sending home advertising
data from another region if requested by a subscriber at a traveling device as
required by claim 27. App. Br. 8–9. Appellants further contend Bandera
fails to cure the alleged deficiencies of Cristofalo, arguing “Bandera
discloses inserting advertising data for a geographic region” such that “the
combination of Cristofalo and Bandera is silent on sending home
advertising data from another region only if requested by a subscriber at a
traveling device.” App. Br. 10.
Appellants’ arguments are not persuasive of Examiner error. During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d
1393, 1404–05 (CCPA 1969). Because “applicants may amend claims to
narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee.” In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing Am. Acad., 367 F.3d at
1364).
Claim 27 does not require, in the absence of a subscriber request,
inhibiting sending, that home advertising not be sent, or advertising data for
a local geographic region instead be sent, only that advertising data for a
local geographic region be sent. That is, contrary to Appellants’ argument,
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claim 27 does not require that “the home advertising is sent . . . (i.e., pulled)
from the home advertising server only if the home advertising data is
requested by the traveling client device in the travel zone.” App. Br. 6
(emphasis added). Accordingly, Appellants’ arguments based on such an
interpretation are not commensurate in scope with the claim. See In re Self,
671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims
cannot be relied upon for patentability).
Furthermore, we disagree with Appellants concerning the scope of
Cristofalo’s teachings. In particular, as found by the Examiner, Cristofalo’s
user identification or user profile information is used to determine the
appropriate advertising information to be supplied to the user. Ans. 7. “The
local hub 102, as shown in FIG. 3, provides programming to a user located
at a reception site 110 outside of his or her home based upon user profile
information for that user or for a group of users.” Cristofalo ¶ 31; Ans. 7.
“A user profile, for example, may include information such as geographic
information” and “addresses,” and “[i]t is to be appreciated that any
information may be . . . provided by a user that can be utilized to create a
user profile.” Cristofalo ¶ 19; see also id. ¶ 30; Ans. 9. Therefore, we
disagree that “Cristofalo sends advertising data . . . without requesting the
home advertising data” (App. Br. 8) because, absent a profile associating a
user with a particular region (the “request”), home advertising data cannot
be identified and sent. Appellants do not persuasively explain why, under a
broad but reasonable interpretation of the disputed limitation, Cristofalo’s
user identification or user profile information fails to teach or suggest the
disputed request.
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Appellants’ argument that “Bandera is silent on sending home
advertising data from another region if requested by a subscriber at a
traveling device” (App. Br. 10) is unpersuasive because it fails to address the
Examiner’s findings. The Examiner finds Cristofalo, not the argued
Bandera, teaches or suggests the argued sending of home advertising data.
Final Act. 2–3, 7–8; Ans. 3–5. We further disagree with Appellants’
argument that “the combination of Cristofalo and Bandera is silent on
sending home advertising data from another region only if requested by a
subscriber at a traveling device” (App. Br. 10) both because such argument
is based on limitations not present in the claim (e.g., “only if”) and because,
as discussed above, Cristofalo’s user identification or user profile
information teaches or suggests the disputed request.
For the reasons discussed above, Appellants’ contentions in
connection with the rejection of independent claim 27 are unpersuasive of
Examiner error. Appellants provide similar arguments in connection with
the rejection of independent claims 33 and 39 which we find unpersuasive
for the same reasons. Accordingly, we sustain the rejection of independent
claims 27, 33, and 39 under 35 U.S.C. § 103(a) over Cristofalo and Bandera
together with the rejection of dependent claims 28–32, 34–38, 40–42 and 44
which are not argued separately with particularity.

DECISION
We affirm the Examiner’s decision to reject claims 27–42 and 44
under 35 U.S.C. § 112, first paragraph.
We affirm the Examiner’s decision to reject claim 27 under 35 U.S.C.
§ 112, second paragraph.
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We affirm the Examiner’s decision to reject claims 27–42 and 44
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)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED