13621733 (P.T.A.B. Aug. 30, 2016)

Ex Parte Huber et al

Patent Trial and Appeal BoardAug 30, 2016

13621733 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/621,733 09/17/2012 Thomas Huber 44367 7590 09/01/2016 SCHWEGMAN LUNDBERG & WOESSNER/OPEN TV P.O. BOX 2938 MINNEAPOLIS, MN 55402-0938 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. 2050. l 83US 1 8061 EXAMINER OCAK,ADIL ART UNIT PAPER NUMBER 2426 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): uspto@slwip.com SLW@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS HUBER, THOMAS LEMMONS, IAN ZENON!, and DEBRA HENSGEN Appeal 2015-003683 Application 13/621,733 Technology Center 2400 Before JOHN P. PINKERTON, KAMRAN JIVANI, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-20, which constitute all claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellants identify OpenTV, Inc. as the real party in interest. App. Br. 2. Appeal2015-003683 Application 13/621,733 STATEMENT OF THE CASE Appellants' invention relates to interactive advertising in a video program. Spec. i-fi-12-3. Claim 1, reproduced below, is illustrative of the invention: 1. A method comprising: causing a video program and an interactive advertisement to be displayed to a user on a display screen, the interactive advertisement including an enhanced content activator that causes display of enhanced advertisement information that includes a plurality of triggers to access further information; detecting a first input from the user that indicates an activation of the enhanced content activator of the interactive advertisement; in response to the detecting of the first input that indicates the activation of the enhanced content activator by the user, provisioning enhanced advertisement information that includes the plurality of triggers to access further information; causing the enhanced advertisement information that includes the plurality of triggers to be displayed in combination with the video program and the interactive advertisement; receiving a second input from the user indicating a selection by the user of one trigger of the plurality of triggers included in the enhanced advertisement information displayed in combination with the video program and the interactive advertisement; and in response to the receiving the second input from the user indicating the selection of the one trigger, providing access to further content corresponding to the selected one trigger. App. Br. 12 (emphasis added). 2 Appeal2015-003683 Application 13/621,733 THE REJECTIONS ON APPEAL Claims 1-12, 16, and 18-20 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sahota (US 2002/0010928 Al; pub. Jan. 24, 2002) and Markel et al. (US 2002/0026637 Al; pub. Feb. 28, 2002) ("Markel"). Final Act. 6-17. Claims 13 and 15 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sahota, Markel, and Huber et al. (US 2002/0120935 Al; pub. Aug. 29, 2002) ("Huber"). Final Act. 17-18. Claims 14 and 17 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sahota, Markel, and Huat (US 2002/0133565 Al; pub. Sept. 19, 2002). Final Act. 18-20. ANALYSIS We have reviewed the Examiner's rejections in light of the arguments raised in the Briefs, on the record before us. For the reasons set forth below, we do not sustain the Examiner's rejections. Claim 1 Appellants argue the Examiner erred in finding the cited references teach an "interactive advertisement including an enhanced content activator that causes display of enhanced advertising information." App. Br. 8-9 (emphasis added). Appellants assert the word "including" means the enhanced content activator must be part of the interactive advertisement, and that this meaning is reinforced by the subsequent limitation "activation of the enhanced content activator of the interactive advertisement." Id. at 9 (emphasis added). The Examiner, in the Final Action, finds the recited enhanced content activator in Sahota's teaching of a "remote controller" or 3 Appeal2015-003683 Application 13/621,733 "infrared (IR) keyboard" (both physical devices). Final Act. 6; Sahota i120. Alternatively, the Examiner in the Answer states that if Appellants are correct in arguing the enhanced content activator cannot be a physical remote or keyboard, that limitation nevertheless is taught by Sahota's illustration of a television commercial including a web link (which the Examiner asserts is, alternatively, the "enhanced content activator"). Ans. 20 (citing Sahota Figs. 5A, 5B, i-f 36). On the record before us, Appellants have persuaded us that the Examiner erred with respect to both alternative findings, and therefore erred in rejecting the claim. An understanding of the invention may be gleaned from Appellants' Figure 7, which is reproduced below. 4 Appeal2015-003683 Application 13/621,733 700 DISPLAY tnn 718----:l( CURSOf!~ \) 716 CONTROllER 720 ORDER FORM Figure 7 is an embodiment of the claimed invention, illustrating a viewer (person) 712 holding controller 716 (the means of user "input" of claim 1), and watching a video broadcast on display device 700. Spec. i-f 85. In the scene shown on the display device 700, there is a pizza box 708 on table 706. Id. The pizza box 708 displays label ("interactive advertisement") 710, shown in this embodiment to be an interactive advertisement for "Paul's 5 Appeal2015-003683 Application 13/621,733 Pizzeria." Id. 2 The advertisement is interactive because, using controller 716, the viewer 712 may select an "enhanced content activator" of the advertisement (for example, by moving the cursor and clicking on the ad), which causes an order form 720 ("enhanced advertising information") to be displayed as shown in the bottom right of Figure 7. Id. at i-fi-185, 158. The "enhanced advertising information" itself may be selected by the viewer, triggering the display of "further information" (such as links to coupons, the advertiser's home page, news, or other information), as recited in claim 1. See, e.g., Sahota Fig. 8 (not shown). The Examiner first finds (in the Final Action) the "enhanced content activator" is taught by Sahota's use of an IR remote or keyboard to trigger a web link in a television commercial. Final Act. 6; Ans. 9; Sahota i-fi-120, 36. The Examiner finds "it is not inherent" that the "enhanced content activator cannot be a physical device" such as an IR remote or keyboard. Id. (emphasis added). \Ve do not, however, find support in the record for the Examiner's position. The issue is not inherency, but the express limitations in the claim. Claim 1 recites an interactive advertisement, displayed on a screen, with the "interactive advertisement including an enhanced content activator." App. Br. 12 (emphasis added). Claim 1 also recites the enhanced content activator "of' the interactive advertisement. Id. Although we give claims the "broadest reasonable interpretation" consistent with the specification, In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. 2 Appellants' Specification states that the particular interactive advertisement that appears for a given video program and given user may be determined by a variety of factors including, for example, pattern recognition software associated with the program and an embedded list of approved advertisers. Spec. i185. 6 Appeal2015-003683 Application 13/621,733 Cir. 2004), the foregoing claim language requires that the "enhanced content activator" is part of (or embedded in) the interactive advertisement, not a separate physical device such as a keyboard or remote. See Phillips v. A WH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en bane) (the "context of the surrounding words" in the claim must be considered). Furthermore, Appellants' Specification, like the claim language, describes the "enhanced content activator" as part of (embedded in) the ad itself, and describes use of an external remote control as corresponding to a separate claim limitation, "an activation of' the enhanced content activator. Spec. i-f 158; see also id. at i-fi-1 95, 96. We, therefore, do not find Sahota' s description of an IR remote or keyboard to teach the "enhanced content activator" of claim 1. In the Answer, Ans. 20-21, the Examiner's "alternative" finding is that the "enhanced content activator" is found in Sahota's teaching of displaying a URL (link) in a video advertisement. Id. The Examiner relies on Sahota Figure SA, reproduced below. COMMERCIAL t:!2J.J http://www.xyz.com TV 104 / 510 t 'v' Figure 5A, according to Sahota (i-f 14), illustrates a "screen shot of interactive advertising content integrated with a television commercial." 7 Appeal2015-003683 Application 13/621,733 The figure shows television 104 (as a block) displaying commercial 520, with URL (link) 510 displayed in the lower right comer. The Examiner finds "enhanced content activator" in the link 510, which (when clicked) causes the display of the web site content ("enhanced advertising information") at the location specified in the URL. This "enhanced advertising information" is shown, according to the Examiner, in Sahota Figure 5B. Figure 5B is reproduced below. Â§]~!J0FNTJ@Â®'D! Sr~O~ ~t .'\(.". Râ€¢1:1':} S S~oft;:> JS'l(r.s "re ll~Â·~X1:. ~h:t!.:, .S P.:..~ IMAGE 1 XYZ Sfy!e: Men's tlKll ~ i.:a:fl~::'.lÂ·)' :1.'lkabo~i! C(â€¢ Omw~'! ~I~{ ;tr:_u:Â·~~t ~~l E