Ex Parte Monnerat et al

Patent Trial and Appeal Board

Oct 31, 2016

13795919 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131795,919 03/12/2013
71867 7590 11/02/2016
BANNER & WITCO FF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
Edward David Monnerat
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.
007412.02312 6414
EXAMINER
SCHNURR, JOHN R
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD DAVID MONNERAT and MEHUL S. PATEL
Appeal2016-000336
Application 13/795,919 1
Technology Center 2400
Before JASON V. MORGAN, HUNG H. BUI, and JOHN R. KENNY,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1-12 and 23-33, which are
all of the claims pending on appeal. Claims 13-22 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.2
1 According to Appellants, the real party in interest is Comcast Cable
Communications, LLC. App. Br. 2.
2 Our Decision refers to Appellants' Appeal Brief filed May 5, 2015 ("App.
Br."); Reply Brief filed September 29, 2015 ("Reply Br."); Examiner's
Answer mailed July 23, 2015 ("Ans."); Final Office Action mailed July 30,
2014 ("Final Act."); and original Specification filed March 12, 2013
("Spec.").
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Application 13/795,919
STATEMENT OF THE CASE
Appellants' invention relates to "advertisement tracking" that includes
"monitor[ing] user actions during the advertisement to determine the
efficacy of the advertisement." Spec. i-fi-f l, 3. According to Appellants, user
actions may include "[ 1] changing the audio level of the advertisement
during play, [2] obstructing the advertisement, or [3] changing the z-order
[e.g., the order determining which application remains visible when two
applications overlap in the display area] of the window containing the
advertisement." Spec. i1 3; Abstract.
Claims 1, 5, and 7 are independent. Claim 1 is illustrative of
Appellants' invention, as reproduced with disputed limitations emphasized
below:
1. A method, comprising:
determining whether an advertisement was obscured
during a presentation of the advertisement on a display device;
determining a time at which a user action has occurred
during the presentation of the advertisement on the display
device; and
generating an advertisement effectiveness report for the
advertisement, wherein the report indicates how the
advertisement was obscured during the presentation of the
advertisement on the display device and the time at which the
user action occurred during the presentation of the
advertisement on the display device.
App. Br. 12 (Claims App'x.).
Examiner's Rejections and References
(1) Claims 1---6, 9, 11, 12, 24--26, 28-31, and 33 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Pottjegort (US 2013/
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0185164 Al; published July 18, 2013; "Pottjegort") and Li et al., (US 2009/
0077579 Al; published Mar. 19, 2009; "Li"). Final Act. 2---6.
(2) Claims 7, 8, 23, 27, and 32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pottjegort, Li, and Rozmaryn et al., (US
2010/0005403 Al; published Jan. 7, 2010; "Rozmaryn"). Final Act. 6-7.
(3) Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pottjegort, Li, and Morris et al., (US 2013/0018731 Al;
published Jan. 17, 2013; "Morris"). Final Act. 7.
ISSUE
Based on Appellant's arguments, the dispositive issue presented on
appeal is whether the Examiner erred in finding the cited prior art teaches or
suggests the disputed limitations: "determining a time at which a user action
has occurred during the presentation of the advertisement on the display
device" and "wherein the [advertisement effectiveness] report indicates ...
the time at which the user action occurred during the presentation of the
advertisement on the display device," as recited in Appellants' independent
claim 1 and similarly recited in claims 24 and 30. App. Br. 5-8; Reply Br.
2--4.
ANALYSIS
With respect to independent claim 1, the Examiner finds Pottjegort
teaches a method of determining the visibility of electronic advertisements,
shown in Figure 6, comprising: "determining whether an advertisement was
obscured during a presentation of the advertisement on a display device ...
and generating an advertisement effectiveness report for the advertisement,
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wherein the report indicates how the advertisement was obscured during the
presentation of the advertisement on the display device." Final Act. 3 (citing
Pottjegort i-fi-1 40-41, 72-73). According to the Examiner, "Pottjegort
discloses that browser 715 reports advertisement visibility information to
metric server 740." Ans. 3 (citing Pottjegort i-fi-141, 72-73).
The Examiner acknowledges Matsumoto does not explicitly teach
certain well known features relating to advertisement tracking, such as: (1)
"determining a time at which a user action has occurred during the
presentation of the advertisement on the display" and (2) the "report [also]
indicates 'the time at which the user action occurred during the presentation
of the advertisement on the display device,"' as evidenced from Li's method
for sending advertisements, monitoring advertisements received by
subscriber devices to track customers' viewing behavior and estimating an
effectivity index for target advertisements in order to support the conclusion
of obviousness. Id. at 2-3 (citing Li i-fi-1 60-62, Fig. 5).
Appellants do not dispute the Examiner's factual findings regarding
Pottjegort. Nor do Appellant challenge the Examiner's rationale for
combining the references. Instead, Appellants only dispute the Examiner's
factual findings regarding Li. In particular, Appellants acknowledge Li's
Figure 5 only shows a data structure that "stores information corresponding
to device states, such as a 'display on duration' and a 'display off duration,"'
but argue:
[ n ]othing in Figure 5 indicates that the data structure stores an
indication of a time at which a user action has occurred during
the presentation of the advertisement on the display device ....
Nothing in Li discusses what user action allegedly occurred
during the presentation of the advertisement on the display
device or the time at which the user action occurred during the
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presentation.
App. Br. 6 (citing Li Fig. 5). According to Appellants, Li discusses
"'advertising device state data compris[ing] speaker volume data, multi-
device usage user device data and current end device data."' App. Br. 7. As
such, Appellants contend Li does not teach or suggest the disputed
limitations: "determining a time at which a user action has occurred during
the presentation of the advertisement on the display device" and "wherein
the [advertisement effectiveness] report indicates ... the time at which the
user action occurred during the presentation of the advertisement on the
display device," as recited in Appellants' claim 1.
The Examiner responds that (1) Li's "data structure includes
information about subscriber interactions with the subscriber device at a
time of a specific commercial being displayed"; and (2) "[t]he time of the
subscriber interactions is determined to be during the display of the
commercial" and, as such, the "broad claim limitation of determining a time
has been interpreted to mean determining a range of time from the beginning
to the end of individual commercials." Ans. 3 (citing Li i-f 60, Fig. 5)
(emphasis added).
We do not agree with the Examiner's construction. At the outset, we
note Appellants' claim 1 recites, inter alia, (1) "determining a time at which
a user action has occurred during the presentation of the advertisement on
the display device" and (2) "wherein the report indicates ... the time at
which the user action occurred during the presentation of the advertisement
on the display device." As recited in Appellants' claim 1, the time limitation
refers to a user action that occurs during the presentation of an advertisement
on a display device, and not the range of time from a beginning to an end of
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individual commercials, as per the Examiner's construction. As recognized
by Appellants, the Examiner's construction ignores the phrase "'a time at
which a user action has occurred during the presentation ... "' Reply Br.
2.
Nevertheless, we still agree with the Examiner that Li teaches or
suggests the disputed limitations of Appellants' claim 1. As explained by
the Examiner, Li's data structure, as shown in Figure 5, "includes
information about subscriber interactions with the subscriber device at a
time of a specific commercial being displayed." Ans. 3 (citing Li i-f 60, Fig.
5). For example, Li's data structure includes information relating to: (1) a
degree of active advertising data viewing 516; (2) the strength of [user]
response 518; and (3) an effective index for a particular advertising category
for a particular advertisement 520. See Li i-f 62. These categories of
information refer to user actions occurring during the presentation of an
advertisement which are part of Li's method for sending advertisements,
monitoring advertisements received by subscriber devices to track
customers' viewing behavior and then estimating an effectivity index for
target advertisements. See Li i-fi-14, 10-13. According to Li, monitoring and
tracking of users' viewing and user actions relative to an advertisement
includes:
(1) "records indicating subscriber behavior, including
whether or not and for how long audio on a subscriber device has
been muted and/or fast forward or other controls have been hit
[by user actions]. See Li i-f 26;
(2) "[records of] correlating the time during which the
advertisement plays back with subscriber behavior indicates
whether the advertisement was rendered to the screen and/ or
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speakers, which portions, and for how long to per-second or
greater accuracy [by user actions]. See Li i-f 26;
(3) "identif[ing] subscriber behavior about media
content consumption [based on user actions]." See Li i-f 27; and
( 4) "correlation of advertisement viewership with
patterns of consumer behavior. For example, tracking
viewership of an advertised media event and estimating a degree
of correlation that exists between having viewed its
advertisement( s) and tuning into, and/ or pre-recording, the event.
Another embodiment estimates how a degree of correlation
differs depending on whether the advertising data is presented in
an episode in a 'regular' series, a 'special' episode in a regular
series, special event (Super Bowl, etc.) or a pay-per-view show."
See Li i-f 30.
As described by Li, subscriber behavior is based on user actions and
"a time at which a user action has occurred during the presentation of the
advertisement" as recited in Appellants' claim 1. Tracking subscriber
behaviors and subscriber [user] actions taken during the presentation of an
advertisement, as disclosed by Li, is well known in the art and any effort to
incorporate these features as part of Pottejegort's method of determining the
visibility of electronic advertisements would have been obvious to those
skilled in the art because these well-known features perform the same known
function and yield no more than one would expect otherwise. See KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). A skilled artisan would "be
able to fit the teachings of multiple patents together like pieces of a puzzle"
since the skilled artisan is "a person of ordinary creativity, not an
automaton." Id. at 4 2 0-21.
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Lastly, we note Appellants have not demonstrated the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor have Appellants provided objective evidence of secondary
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
For these reasons, we sustain the Examiner's obviousness rejection of
independent claim 1 and similarly, independent claims 24 and 30, and their
respective dependent claims 2---6, 9, 11, 12, 25, 26, 28, 29, 31, and 33, which
Appellants do not argue separately. App. Br. 8.
Claim 10 depends from claim 1, and further recites: "wherein the
report further indicates one or more applications that received the one or
more user inputs." The Examiner further relies on Morris for teaching a
system for displaying advertisements in which "the report further indicates
one or more applications that received the one or more user inputs." Final
Act. 7-8.
Appellants argue ( 1) Morris does not teach what the Examiner alleges,
and (2) Morris only teaches "the client software compares a timer value to a
minimum display time and, based on that comparison, determines whether
or not to display a new ad." App. Br. 9-10.
We are not persuaded. Instead, we adopt the Examiner's findings and
explanations provided on page 3 of the Examiner's Answer.
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OTHER ISSUES
In the event of further prosecution of this application, this panel
suggests that the Examiner consider rejecting claims 1-12 and 23-33 under
35 U.S.C. § 101 as being directed to non-statutory subject matter, i.e., an
abstract idea in light of the Supreme Court decision in Alice Corp. Pty. Ltd.
v. CLS Bank lnt'l, 134 S.Ct. 2347 (2014) and the Federal Circuit decision in
Ultramercial Inc. v. Hulu, Inc., 772 F.3d 709 (Fed. Cir. 2014).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S.Ct. 1289, at 1296-97 (2012)). The first step in the
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts." Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims "individually and 'as an ordered combination'" to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo, 132 S.Ct. at
1298, 1297). In other words, the second step is to "search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Id. (brackets in original) (quoting
Mayo, 132 S.Ct. at 1294). The prohibition against patenting abstract idea
"'cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment' or adding 'insignificant postsolution
activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010).
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Following the framework set out in Alice, the same Federal Circuit in
Ultramercial Inc. v. Hulu, Inc., 772 F.3d 709 (Fed. Cir. 2014)., held
Ultramercial 's patent on a method of viewing ads in order to access online
content invalid under§ 101 because: (1) Ultramercial's process of receiving
copyrighted media, selecting an advertisement, offering the media in
exchange for watching the selected advertisement, displaying the
advertisement, allowing the consumer access to the media, and receiving
payment from the sponsor of the ad all merely describe an "abstract idea" of
using advertising as a currency - devoid of a concrete or tangible
application; and (2) "the use of the Internet is not sufficient to save
otherwise abstract claims from ineligibility under § 101." See Ultramercial,
772 F.3d at 716 (citation omitted).
Similar to Ultramercial, Appellants' process claims 1 and 30 and
corresponding apparatus claim 24 and their respective dependent claims 2-
12, 23, 25-29, and 31-33 recite sending and tracking of such an
advertisement and, as such, may be directed to non-patentable subject matter
under 35 U.S.C. § 101 for the same reasons outlined by the Federal Circuit
in Ultramercial.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-12 and 23-33 under
35 U.S.C. § 103(a).
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DECISION
As such, we AFFIRM the Examiner's final rejection of claims 1-12
and 23-33.
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
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