Ex Parte Howe et al

Patent Trial and Appeal Board

Aug 30, 2016

11491502 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
111491,502
100692 7590
AOL Inc./Finnegan
FILING DATE
0712012006
09/01/2016
901 New York Ave., NW
Washington, DC 20001
FIRST NAMED INVENTOR
Karen N. Howe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10587.0219-00000 3513
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAREN N. HOWE, JENNIFER L. KOLAR,
and SRINIVASAN SUDANAGUNTA
Appeal2014-008060
Application 11/491,5021
Technology Center 3600
Before, JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
Final rejection of claims 1-19 and 21-55. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify AOL Inc., as the real party in interest. Appeal Br. 1.
2 Claim 20 has been cancelled. Final Act. 2.
Appeal2014-008060
Application 11/491,502
Claim 1 reproduced below, is representative of the subject matter on
appeal. Appeal Br. 24.
1 . A method in a computing system for presenting
advertising messages, the method comprising:
receiving free form user input, the free form user input
comprising one or more search terms;
identifying, with at least one processor, a playlist of
digital media files based on the one or more search terms;
generating, with the at least one processor, a uniform
resource locator associated with the playlist of digital media
files;
identifying a plurality of advertising messages based in
part on the one or more search terms;
concatenating the playlist of digital media files with the
plurality of advertising messages; and
sending, in response to a selection of the uniform
resource locator by the user, the concatenated playlist of
digital media files and plurality of advertising messages to
the user.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Swix et al.
(''Swix")
Riedl et al.
("Riedl")
Kazmi et al.
("Kazmi")
US 2004/0163101 Al
US 2005/0060742 Al
US 2008/0133701 Al
2
Aug. 19, 2004
Mar. 17, 2005
June 5, 2008
Appeal2014-008060
Application 11/491,502
The following rejections are before us for review.
1. Claim 53 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. § 112 (pre-
AIA), second paragraph.
2. Claims 1-3, 6, 9, 17-19, 23, 25, 47--49 and 52-55 are rejected under
pre-AIA 35 U.S.C. § 102(e) as being anticipated by Kazmi.
3. Claims 4--5, 14--16, 21-22, 26-28 and 50-51 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Kazmi and Swix.
4. Claims 7-8, 10-13, 24, 29-30, 33 and 36--46 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Kazmi and Riedl.
5. Claims 31-32 and 34--35 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Kazmi, Riedl and Swix.
ANALYSIS
35 U.S.C. § 102(e) Rejection
Each of independent claims 1, 1 7, and 4 7 recites in one form or
another, the steps of electronic advertising:
receiving free form user input, the free form user input
comprising one or more search terms;
identifying a plurality of advertising messages based in
part on the one or more search terms; ...
concatenating the playlist of digital media files with the
plurality of advertising messages;
The Examiner found concerning these limitations that:
This understanding is supported at the very least
by paragraphs [0044 ], [0068-70] and Fig. 2B of
Kazmi, which clearly recites that the playlists are
comprised of a plurality of media streams, and
each media stream contains a particular CG ad tag.
Thus, a plurality of media streams clearly indicates
3
Appeal2014-008060
Application 11/491,502
(Answer 7).
a "plurality of advertising messages" as claimed.
Furthermore, as the user enters keywords in a free
form search query, and those keywords correspond
to a particular Content Group (CG) description for
retrieving CG media streams, the Examiner
understands the CG ad tags in each media stream
are thus used to identify advertising messages, and
the particular referenced advertising message is
then presented in a concatenated form upon user
selection of the play list URL.
Appellants, however, argue that:
The Examiner's conclusion that Kazmis "'ad tags'
are used to identify a plurality of advertisements"
is contrary to the disclosure of Kazmi. The single
sentence of Kazmi that describes the "ad tag"
includes a brief parenthetical explanation: "Fields
contained in the Streams2 Table 214 include[ ... ]
ad tag (which specified where an advertisement is
to be inserted) [ .. . ]"Kazmi, i1 [0038] (emphasis
added); see also id. at i-f [0044] (mentioning but not
explaining "the CG ad tag"). Thus, at most, Kazmi
teaches a tag representing an empty placeholder
for an unidentified advertisement. Kazmi does not
explain how particular advertisements may be
identified, much less "identifying a plurality of
advertising messages," as recited in claim 1. No
description of any advertisement identification is
given in Kazmi and none is cited in the Final
Office Action or the Advisory Action.
(Appeal Br. 15).
We agree with Appellants. Kazmi discloses:
The Streams2 Table 214 also includes records
identifying each item of content, as identified by
the stream ID. Fields contained in the Streams2
4
Appeal2014-008060
Application 11/491,502
Table 214 include the stream type, such as
windows media player or real media player, title
of the content, author of the content, status of the
content, copyright notice for the content, URL
prefix, bite [sic] rate of the content, file name of
the content (as provided by the client 102), stream
format, such as windows media player or real
media player, ad tag (which specified where an
advertisement is to be inserted), start time (if the
Stream is a portion of the file), duration, and
expiration date.
Kazmi, para. 38.
Kazmi cannot anticipate independent claims 1, 17, and 4 7 because
Kazmi explicitly discloses that the CG ad tag, relied on by the Examiner as
being the claimed advertisement message (Answer 7), only "specifie[ s]
where an advertisement is to be inserted" (id.), and the claims require
concatenating actual "advertising messages". We find that because the CG
tag only notes where the "advertisement is to be inserted," it is merely a
marker of the future existence of an advertisement message. Thus, it cannot
satisfy an anticipation rejection which requires the present existence of an
advertising message.
Because claims 2-16, 18-19, 21-28, and 48-55 depend from one of
claims 1, 17, and 47, and because we cannot sustain the rejection of the
independent claims, the rejection of the dependent claims likewise cannot be
sustained.
35 U.S.C. § 103(a) Rejections
Claims 29 and 41 are rejected under 35 U.S.C. § 103(a). (Final
Act. 25). Appellants rely on the same arguments advanced for independent
5
Appeal2014-008060
Application 11/491,502
claims 1 and 1 7 to show non-obviousness of independent claims 29 and 41
concerning the limitation of "digital media files with the plurality of
advertising messages." (Appeal Br. 21 ). The Examiner found that "the CG
ad tags in each media stream are [] used to identify advertising messages ...
. " (Answer 7). We agree with this finding when applied in the context of
this, an obviousness rejection. Although claim 29 does use the term
"concatenate" which we find requires the present existence of an advertising
message, we find that one of ordinary skill in the art would understand that
identifying an advertisement by tag is the obvious variant of inserting the
entire message into the media files. Thus, we sustain the rejection of claim
29 under 35 U.S.C. § 103(a). We also affirm the rejection of dependent
claims 30-40 because Appellants have not challenged such with any
reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987)).
Concerning the rejection of independent claim 41, this claim does not
use the word "concatenate". Rather, the claim more broadly requires
"advertising messages for presentation", and advertising messages which
were "presented." Thus, we find that the CG ad tag in Kazmi meets the
"presented" requirement because we find that one of ordinary skill in the art
would have understood that the ad tag in Kazmi would ultimately result in
an advertising message being "presented" to a user. We also affirm the
rejection of dependent claims 42--46 because Appellants have not challenged
such with any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572
(Fed. Cir. 1987)).
6
Appeal2014-008060
Application 11/491,502
35 U.S.C. § 112 Second Paragraph Rejection
We will not sustain the rejection of claim 53 as being indefinite for
the reasons set forth by Appellants on page 13 of the Appeal Brief.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1-19, 21-28
and 47-55.
We conclude the Examiner did not err in rejecting claims 29-46.
DECISION
AFFIRMED-IN-PART
7