Ex Parte Lowthert et al

Board of Patent Appeals and Interferences

Aug 15, 2012

09765246 (B.P.A.I. Aug. 15, 2012)

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.
09/765,246 01/18/2001 Jonathan Lowthert BKA.0008US 8160
21906 7590 08/16/2012
TROP, PRUNER & HU, P.C.
1616 S. VOSS ROAD, SUITE 750
HOUSTON, TX 77057-2631
EXAMINER
RAMAN, USHA
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
08/16/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JONATHAN LOWTHERT, OLEG B. RASHKOVSKIY,
and ANDRAY SILETSKY
___________
Appeal 2010-005108
Application 09/765,246
Technology Center 2400
____________

Before ROBERT E. NAPPI, KALYAN K. DESHPANDE, and
RAMA G. ELLURU, Administrative Patent Judges.

ELLURU, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005108
Application 09/765,246

2
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-28 and 30-34. (App. Br. 5). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Appellants’ Invention
Appellants’ inventions “relates generally to content distribution.”
(Spec., page 1).
Illustrative Claim
1. A method comprising:
allowing the use of content on a content receiver;
collecting information about web sites visited by a user
of said receiver;
said receiver receiving, from a remote processor-based
system, a first subset listing of advertising resources;
automatically and selectively choosing, on said receiver
and without user intervention, an advertising resource from the
first subset listing based at least in part on said web sites visited
by the user, to compile a second subset listing of advertising
resources; and
capturing an advertisement listed on the second subset
listing of advertising resources to store the advertisement on
said content receiver.

Prior Art Relied Upon
Picco US 6,029,045 Feb. 22, 2000
Eldering US 6,324,519 B1 Nov. 27, 2001
Thomas ‘068 US 2003/0037068 A1 Feb. 20, 2003
Sahai US 6,594,699 B1 Jul. 15, 2003
Appeal 2010-005108
Application 09/765,246

3
Thomas ‘964 US 2005/0149964 A1 Jul. 7, 2005

Rejections on Appeal
1. Claims 1, 2, and 7-10 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Picco in view of Eldering. (Ans. 3-7).
2. Claims 3-6 and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Picco in view of Eldering and Thomas ’964. (Ans.
7-8).
3. Claims 11-20 and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Picco in view of Eldering and Thomas ’068. (Ans.
9-14).
4. Claims 21-28 and 30-32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Picco in view of Thomas ’068 and
Sahai. (Ans. 14-18).

Examiner’s Findings and Conclusions
1. The Examiner finds that Eldering clearly discloses the step of
“collecting information about web sites visited by a user of the receiver,” as
it specifically teaches “[i]n a preferred embodiment, the channels or web
sites viewed by a subscriber are monitored, and heuristic rules are applied
to the sites to better determine the demographic and product preference
characteristics of the subscriber.” (Ans. 19 (citing Eldering 4:42-44, 55-
56, 62-65)). The Examiner further finds that it would have been obvious to
incorporate Eldering’s teachings into Picco to monitor a user’s web-surfing
habits enabling better characterization of the user’s characteristics and aiding
in better targeting of advertisements. (Ans. 19).
Appeal 2010-005108
Application 09/765,246

4
2. The Examiner concludes that Appellants’ arguments pertaining
to cookies are moot in view of Eldering’s teachings. (Ans. 19).
3. The Examiner finds that, with respect to claim 21, Sahai teaches
a storage (server) to determine information about a characteristic of the
receiver (client) hardware so that media can be transmitted to the client in
accordance with the client capabilities. (Ans. 19-20 (citing Sahai 2:23-28,
3:23-60, 6:17-21)). The Examiner, thus, concludes that one of ordinary skill
in the art, at the time of the invention, would have found it obvious to further
monitor the hardware capabilities of a receiver so that data can be
transmitted to a receiver based on a receiver’s capabilities. (Ans. 20). The
Examiner further explains that the modified system would minimize
scenarios where a service provider provides advertising or other
programming to a user whose device is incompatible of rendering such
programming due to hardware limitations. (Ans. 20).

Appellants’ Contentions
Appellants contend that:
1. With respect to claims 1, 2, and 7-10, getting information about
the web sites that are actually visited would be more useful in determining
which advertisements to play than would be information about what
applications the user uses, and that if the claimed invention was so obvious,
it would be hard to understand why Thomas was collecting information
about the applications the user was using, instead of the web sites. (App. Br.
11).
Appeal 2010-005108
Application 09/765,246

5
2. With respect to claims 1, 2, and 7-10, cookies are not used to
determine which web sites a user visited and they are not used to select
which advertisements to play. (Id.)
3. With respect to claim 21, no reference teaches using a receiver
hardware characteristic to automatically and selectively choose the resources
from the first subset listing. (App. Br. 12; Reply Br. 1). Appellants
specifically argue that it is a different concept to use the receiver’s
capabilities to determine how to transfer data to the receiver, as taught by
Sahai, as opposed to using the receiver’s characteristics to choose a subset of
advertising resources that will be stored, as required by the claim. (Reply
Br. 1).

II. ISSUES
1. Did the Examiner err in concluding that the combination of
Picco and Eldering renders claims 1, 2, and 7-10 unpatentable? This issue
turns on whether the Examiner has provided support for finding that
Eldering teaches or suggests the claim limitation “collecting information
about web sites visited by a user of said receiver” and whether Appellants’
argument regarding cookies is moot in light of the teachings of Eldering.
2. Did the Examiner err in concluding that the combination of
Picco, Thomas ‘068, and Sahai renders claims 21-28 and 30-32
unpatentable? The issue turns on whether the prior art teaches or suggests
determining information about the receiver’s hardware characteristics and
using that information to select advertisements.

Appeal 2010-005108
Application 09/765,246

6
III. ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contention that the Examiner has erred. We disagree with Appellants’
conclusions. We highlight and address specific arguments for emphasis as
follows.
Claims 1, 2, and 7-10: 35 U.S.C. § 103(a) Rejection—Combination of Picco
and Eldering
As the Examiner explains (Ans. 18-19), claims 1, 2, and 7-10 are
rejected over Picco in view of Eldering, and not in view of Thomas, which is
the basis of Appellants’ arguments. We further agree with the Examiner that
Eldering teaches or suggests the disputed claims limitation (see Eldering
4:42-44, 55-56, 62-65), and further, that the issue of whether the use of
cookies supports the limitations is moot in view of Eldering’s teachings
which are relied upon to reject claims 1, 2, and 7-10. Eldering specifically
teaches monitoring websites viewed by a subscriber to better understand the
subscriber’s demographic and product preference characteristics. (Eldering
4:42-46). This teaching satisfies the claim limitation “collecting information
about web sites visited by a user of said receiver.” Further, as the Examiner
explains, it would have been obvious to incorporate Eldering’s teaching into
the Picco system to better target advertisements. (Ans. 19). Thus, the
combination of these references teaches the claim limitation “automatically
and selectively choosing … advertising resource … based at least in part on
said web sites visited by the user.” Therefore, we agree with the Examiner’s
conclusion that the combination of Picco and Eldering discloses the disputed
claim limitation of claims 1, 2, and 7-10.
Appeal 2010-005108
Application 09/765,246

7
Claims 3-6 and 33: 35 U.S.C. § 103(a) Rejection—Combination of Picco,
Eldering, and Thomas ’964
Appellants repeat the same arguments with respect to claims 3-6 and
33, as claim 1. (App. Br. 12). For the same reasons discussed above with
respect to claim 1, we agree with the Examiner’s conclusion that the
combination of Picco, Eldering, and Thomas ’964 discloses all the disputed
limitations of claims 3-6 and 33.
Claims 11-20 and 34: 35 U.S.C. § 103(a) Rejection—Combination of Picco,
Eldering, and Thomas’068
Appellants make the same arguments with respect to claims 11-20 and
34, as claim 1. (App. Br. 12). For the same reasons discussed above with
respect to claim 1, we agree with the Examiner’s conclusion that the
combination of Picco, Eldering, and Thomas ’068 discloses all the disputed
limitations of claims 11-20 and 34.
Claims 21-28 and 30-32: 35 U.S.C. § 103(a) Rejection—Combination of
Picco, Thomas ’068, and Sahai
The present application does not support the distinction Appellants
argue with respect to claim 21. Appellants argue that Sahai discloses
“us[ing] the capabilities of the receiver to determine how to transfer data to
the receiver” and not “using the characteristics of the receiver to choose a
subset of advertising resources” as required by the claims. (Reply Br. 1).
The Specification discloses using information regarding a receiver hardware
characteristic to determine which advertisements database is adaptable to a
particular receiver characteristic, and thus, receivable by the receiver.
(Spec., pages 15-16 (“Some databases [of advertisements] may include
Appeal 2010-005108
Application 09/765,246

8
advertisements that are suitable for display on particular types of receivers
such as radio-equipped receivers, television-equipped receivers, and desktop
or laptop computers as opposed to handheld computers ….”)). This is
consistent with Sahai’s disclosure, which teaches storage (server) to
determine information about characteristics of the receiver (client) hardware
so that the correct data format can be delivered to the client in accordance
with the client characteristics. (Ans. 20 (citing Sahai 2:23-28, 3:23-60, 6:17-
21 “Client hardware type as TV set top, PC, lap tp, etc.”)). Therefore, we
agree with the Examiner’s conclusion that the combination of Picco, Thomas
‘068, and Sahai discloses the disputed claim limitation of claims 21-28 and
30-32.

IV. CONCLUSION
The Examiner has not erred in rejecting claims 1, 2, 7-10, 21-28, and
30-32 as being unpatentable under 35 U.S.C. § 103(a) for the reasons
discussed above, and claims 3-6, 11-20, 33, and 34, which were not
separately argued (App. Br. 12), are unpatentable for the same reasons.
Claims 1-28 and 30-34 are unpatentable.

V. DECISION
We affirm the Examiner’s decision to reject claims 1-28 and 30-34.
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).

AFFIRMED
msc