Ex Parte Ma et al

Patent Trial and Appeal Board

Jun 26, 2018

14168734 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/168,734 01/30/2014
27045 7590
ERICSSON INC.
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
06/28/2018
FIRST NAMED INVENTOR
KevinJ. Ma
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.
P43770-US3 3162
EXAMINER
JOHNSON-CALDERON, FRANK J
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
michelle.sanderson@ericsson.com
pam.ewing@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN J. MA, ROBERT HICKEY, RAJ NAIR,
PAUL TWEEDALE, DANIEL BIAGINI, JIANGUO XU,
and PRABHUDEV NA V ALI
Appeal2017-009813
Application 14/168,734 1
Technology Center 2400
Before JOHN A. JEFFERY, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-9, 11-28, and 30-33, which constitute all the claims
pending in this application. Claims 10 and 29 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 Appellants identify Ericsson AB of Stockholm, Sweden as the real party in
interest. App. Br. 1.
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Application 14/168, 734
STATEMENT OF THE CASE
Appellants' described and claimed invention generally relates to
performing targeted advertisement replacement in over-the-top (OTT) media
delivery. See Spec. 1. 2 Appellants explain that "[a] disclosed OTT delivery
system includes a live stream processor, an HTTP client, and an ad segment
proxy that collectively include a variety of mechanisms usable in different
ways for ad replacement." Id.
Claim 1 is representative and reads as follows:
1. A method of operating a computer system for targeted
advertisement replacement in a live content stream, comprising:
detecting metadata indicating program boundaries in the
live content stream;
extracting advertisement decision server, program
identifier, and/or advertisement spot information from the
metadata;
1ssumg an advertisement placement request to an
advertisement decision server;
including advertisement decision server, program
identifier, and/or advertisement spot information in the
advertisement placement request to the advertisement decision
server;
rece1vmg and processmg an advertisement placement
response from the advertisement decision server;
2 Our Decision refers to the Final Office Action mailed June 27, 2016
("Final Act."), Appellants' Appeal Brief filed Jan. 27, 2017 ("App. Br.") and
Reply Brief filed July 10, 2017 ("Reply Br."), the Examiner's Answer
mailed May 10, 2017 ("Ans."), and the original Specification filed Jan. 30,
2014 ("Spec.").
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Application 14/168, 734
determining advertisement program boundaries; and
replacing stream advertisement asset segments of the live
content stream with segments indicated in the advertisement
placement response, wherein the replacing further comprises
replacing stream advertisement asset by transparently proxying
segment requests from a client media player.
App. Br. 12 (Claims App'x).
Rejections on Appeal
Claims 1-3, 5-9, 11-16, 18, 19, 21-28, and 30-33 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Kraiman et al. (US
9,066,138 Bl; issued June 23, 2015) ("Kraiman").
Claims 4 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kraiman in view of Applicant Admitted Prior Art. 3
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kraiman in view of Sargent et al. (US 2012/0304223 Al;
published Nov. 29, 2012) ("Sargent"). 4
ANALYSIS
Rejection of Claims 1-3, 5-9, 11-16, 18, 19,
21-28, and 30--33 under 35 U.S.C. § 102(e)
3 The Examiner finds the Applicant Admitted Prior Art is the teaching that
"multiple metadata insertion methods for each format (e.g. ID3 tags, custom
metadata headers, alternate data channels, etc.) are known to those skilled in
the art." Final Act. 15 (citing Spec. 17:26-29).
4 We note Appellants do not make any arguments in the Briefs regarding the
Examiner's rejections of claims 4, 17, and 20 under 35 U.S.C. § 103(a).
Accordingly, we do not mention these claims again herein, except to affirm
the rejections.
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Claim 1 and 28
Appellants contend the Examiner erred in rejecting claims 1 and 28
because the Examiner cited from sections of Kraiman that discuss different
embodiments to piece together the elements of these claims. App. Br. 6-7.
Appellants argue this is contrary to the law of anticipation that requires the
prior art reference to not only disclose all elements of the claims within the
four comers of the document, but to disclose those elements "arranged as in
the claim." Id. at 5---6 (citing NetMoneyln v. VeriSign, 545 F.3d 1359 (Fed.
Cir. 2008)). In response to the Examiner's finding that "Kraiman expressly
contemplates/anticipates a single embodiment with the features of the
different embodiments (i.e., pieced together)," Appellants argue "this is not
the law of anticipation in the United States." Id. at 8; Reply Br. 1-2.
Appellants also argue there is not a single embodiment in Kraiman that
shows "each and every element as set forth in the independent claims" and
this is dispositive regarding whether the claims are anticipated by Kraiman.
App. Br. 8; Reply Br. 2.
We are not persuaded by Appellants' arguments that the Examiner
erred. First, the law of anticipation where multiple embodiments are
disclosed in a reference is not as constrained as Appellants argue. We agree
with Appellants that the general rule is that to anticipate a claimed invention,
a prior art reference must "disclose all elements of the claim within the four
comers of the document," and it must "disclose those elements 'arranged as
in the claim."' Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
1548 (Fed. Cir. 1983)). Our reviewing court has, however, recognized the
following exception to this rule: "[H]owever, a reference can anticipate a
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claim even if it 'd[ oes] not expressly spell out' all the limitations arranged or
combined as in the claim, if a person of skill in the art, reading the reference,
would 'at once envisage' the claimed arrangement or combination."
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
Cir. 2015) (alteration in original) (quoting In re Petering, 301 F .2d 67 6, 681
(CCPA 1962)); see also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d
1331, 1344 (Fed. Cir. 2016) ("[A] reference may still anticipate if that
reference teaches that the disclosed components or functionalities may be
combined and one of skill in the art would be able to implement the
combination." (citing Kennametal, 780 F.3d at 1383)). These standards for
proving anticipation were recently cited approvingly in Microsoft
Corporation v. Biscotti Inc., 878 F.3d 1052, 1068---69 (Fed. Cir. 2017).
Second, the Examiner finds, and we agree, Kraiman specifically
teaches that "features that are described in this specification in the context of
separate embodiments can also be implemented in combination in a single
embodiment." Ans. 3 (citing Kraiman 9:37--43); see also Kraiman 9:55-61.
The Examiner also finds that "a person of ordinary skill in the art would
recognize that Kraiman anticipates a single embodiment (Fig. 3) that
incorporates/discloses each and every element as set forth in the claim
arranged/combined in the same way as recited in the claims." Ans. 4.
Although Appellants state they do not concede that the passages of Kraiman
cited by the Examiner disclose the elements of the independent claims (see
App. Br. 6), Appellants do not argue in the Briefs that any specific claim
element is not disclosed by Kraiman. In response to the Examiner's findings
in the Answer, Appellants argue that the Examiner's findings "do not reflect
the law of anticipation in the United States." Reply Br. 2. Appellants also
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argue "[i]t does not matter that 'a person of ordinary skill in the art' would
recognize the alleged additive description in Kraiman" because "the mere
fact that a single embodiment (not a combination of different embodiments)
fails to disclose each and every element as set forth in the claims is
dispositive." Id.
We do not agree with Appellants because, under the exception
articulated by our reviewing court, as discussed supra, it does matter that a
person of ordinary skill in the art would recognize that Kraiman expressly
discloses that the features of separate embodiments can be combined in a
single embodiment. In addition, Appellants do not argue or demonstrate that
combining the features of different embodiments of Kraiman into a signal
embodiment would have been "uniquely challenging or difficult for one of
ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007). Accordingly, we agree with the
Examiner's findings that Kraiman teaches that the disclosed features
corresponding to the claim elements may be combined and one of skill in the
art would be able to implement the combination. Ans. 4. Thus, we further
agree with the Examiner's findings that Kraiman anticipates claims 1 and 28
because a person of ordinary skill in the art, upon reading Kraiman, would
"at once envisage" the claimed arrangement or combination. See
Kennametal, 780 F.3d at 1381.
For these reasons, we sustain the Examiner's rejection of claims 1 and
28, as well as dependent claims 2-9, 11, 14, 17-27, and 30-33, which are
not substantively, separately argued.
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Claims 12, 15, and 16
Appellants argue that nothing in Kraiman discloses, expressly or
inherently:
"caching advertisement segment response data in a local cache,"
as recited in claim 12;
"modifying advertisement segment requests to append
subscriber identity, location, and/or demographic information to
segment request URLs," as recited in claim 15; and,
"wherein advertisement decision server responses are cached
locally for use in future advertisement replacement
opportunities," as recited in claim 16.
App. Br. 8-10.
Regarding claim 12, the Examiner finds that because Kraiman's
method is computer implemented, "it is inherent that all
data/information/responses must be held/cached/stored in some form of
memory/cache." Ans. 4 (citing Kraiman 7:40-49). Thus, the Examiner
finds Kraiman teaches "caching advertisement segment response data," as
recited in claim 12. Id. at 4--5.
Regarding claims 16, the Examiner finds Kraiman teaches
replacement advertisements for inclusion in a manifest file are identified for
inclusion within a user specific manifest file (see Ans. 5, citing Kraiman
6:1-15) and, because Kraiman's method is computer implemented, Kraiman
inherently teaches the "advertisement decision server responses are cached,"
as recited in claim 16. Id. at 6.
We are persuaded by Appellants' arguments that the Examiner erred
in rejecting claims 12 and 16. "To establish inherency, the extrinsic
evidence 'must make clear that the missing descriptive matter is necessarily
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present in the thing described in the reference."' In re Robertson, 169 F.3d
743, 745 (Fed. Cir. 1999) (quoting Cont'! Can Co. USA, Inc. v. Monsanto
Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). "Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." In re
Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer,
102 F.2d 212, 214 (CCPA 1939)). Here, we agree with Appellants that the
mere assertion by the Examiner that all data is stored in some form of
"memory/cache" does not necessarily establish that Kraiman's method (1)
stores "advertisement segment response data" in a local cache, as recited in
claim 12, or (2) stores "advertisement decision server responses" in a local
cache, as recited in claim 16. Reply Br. 2.
Regarding claim 15, the Examiner finds Kraiman discloses
"modifiying advertisement segment request to append subscriber identity,
location, and/or demographic information to segment request URLs." Ans.
5 (citing Kraiman 5:28-37). Based on our review of the cited portion of
Kraiman, we do not agree with the Examiner's findings. Instead, we agree
with Appellants that the cited portion of Kraiman at most describes the client
device requesting a universal resource identifier (URI) that points to the
manifest server and may contain information identifying the user or client
device. Reply Br. 2. We also agree with Appellants that the cited portion of
Kraiman "does not discuss [] any sort of modification or appending of
segment request URLs with 'subscriber identity location and/or
demographic information' as claimed." Id. at 3.
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Accordingly, on this record, we do not sustain the Examiner's
rejection of claims 12, 15, and 16 for anticipation under§ 102(e). We also
do not sustain the rejection of claim 13, which depends from claim 12.
DECISION
We affirm the Examiner's rejection of claims 1-3, 5-9, 11, 14, 18, 19,
21-28, and 30-33 under 35 U.S.C. § 102(e).
We reverse the Examiner's rejection of claims 12, 13, 15, and 16
under 35 U.S.C. § 102(e).
We affirm the Examiner's rejections of claims 4, 17, and 20 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)(l)(iv).
AFFIRMED-IN-PART
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