Ex Parte Papageorgiou

Patent Trial and Appeal Board

Mar 22, 2016

12128154 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/128, 154 05/28/2008
63710 7590 03/24/2016
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Antonio PAPAGEORGIOU
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.
07-2166 9789
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/24/2016 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTONIO PAP AGEORGIOU
Appeal2013---005402
Application 12/128, 154
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
BRADLEY B. BAY AT, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Antonio Papageorgiou (Appellant) seeks review under
35 U.S.C. § 134of a final rejection of claims 1-24, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellant invented a way of distributing media and advertising
content to remote devices. Specification 1:6-7.
1 Our decision will make reference to the Appellant's Appeal Brief ("Appeal
Br.," filed September 26, 2012) and Reply Brief ("Reply Br.," filed March 4,
Appeal2013-005402
Application 12/128, 154
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A system comprising:
at least one computing device coupled over a communication
network to a plurality of other devices;
and
at least one memory having instructions stored thereon which,
when executed by the at least one computing device, direct the
at least one computing device at least to:
[1] receive a request for media content
from a user of a first device;
[2] receive a request for the media content
from a user of a second device;
[3] retrieve a media file associated with the media content
requested by the first and the second users,
wherein the media content comprises a first and second
defined null space,
the first and second defined null spaces at least partially
overlapping in time during a playback of the media
content;
[ 4] retrieve data for a first, second, third, and fourth product
placement,
in which the first, second, third, and fourth product
placements are each associated with different products;
[5] mix,
in response to the request from the user of the first
device,
2013), and the Examiner's Answer ("Ans.," mailed January 4, 2013), and
Final Action ("Final Act.," mailed May 27, 2011).
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Appeal2013-005402
Application 12/128, 154
the media file and the data for the first and third product
placements
such that the first product placement appears in the media
content disposed in at least a portion of the first defined
null space and the third product placement appears in the
media content disposed in at least a portion of the second
defined null space;
[ 6] mix
in response to the request from the user of the
second device
the media file and data for the second and fourth product
placement
such that the second product placement appears in the
media content disposed in at least a portion of the first
defined null space and the fourth product placement
appears in the media content disposed in at least a portion
of the second defined null space;
[7] communicate the media content with the first product
placement data to the user of the first device;
and
[8] communicate the media content with the second product
placement data to the user of the second device.
The Examiner relies upon the following prior art:
Troyansky US 2003/0028432 Al Feb. 6,2003
Claims 1-24 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Troyansky.
Claims 1-24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Troyansky.
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Appeal2013-005402
Application 12/128, 154
ISSUES
The issues of anticipation and obviousness tum primarily on whether
Troyansky describes two product placements appearing in (at least a portion
of) two null spaces that overlap in time during playback of media content.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Troyansky
01. Troyansky is directed to customized placement of product-
related material, known as product placement, in digital media.
More specifically, Troyansky describes a specific digital media
. . . . c ,..J 1 ,..J •• item, contammg a vanety 01 prouuct p1acement type auvertismg
within, adapted and customized in real time so as to target several
types of demographically distinct clients simultaneously.
Troyansky para. 2.
02. The basic concept is based on first locating (off-line) slots
where one or more product brands can be positioned, then
producing two or more copies of the slot and embedding the two
or more product brands (e.g., two or more brands of canned soft-
drinks) in said slots. The copies may thereafter be packed in
libraries or directories and stored on a storage device. A
customized copy of the content that contains an optimized
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Appeal2013-005402
Application 12/128, 154
sequence of brands, can thereafter be produced on-line by
selecting the corresponding copies and embedding them in the
content (e.g., by concatenating files of digital video). As a result,
a sequence of alternating products placed within digital media
content is created, which may create a distinction between copies
of the same content title, as they are directed to a diverse target
audience. Troyansky para. 18.
ANALYSIS
We are persuaded by the Appellant's argument that Troyansky fails to
describe two product placements appearing in (at least a portion of) two null
spaces that overlap in time during playback of media content. Appeal Br.
12-13. The Examiner finds that
Troyansky discloses that two or more product brands may be
embedded (para.18), which the Examiner is interpreting as third
and fourth product placements. The Troyanksy [sic] reference
does not provide a specific limit on the number of product
placements that may be embedded. The content may be played
at any time and can target several types of demographically
distinct clients simultaneously (para.2). Therefore, the
Examiner is interpreting Troyansky as reading onto the
invention substantially as claimed.
Ans. 9. Thus the Examiner finds that Troyansky described a system having
the capacity to meet the claim limitations perhaps by manual intervention,
but not that Troyansky did so by means of memory instructions or that one
of ordinary skill would do so with Troyansky. "[O]bviousness concerns
whether a skilled artisan not only could have made but would have been
motivated to make the combinations or modifications of prior art to arrive at
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Appeal2013-005402
Application 12/128, 154
the claimed invention." Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073
(Fed Cir 2015). The Examiner thus failed to present a prima facie case.
CONCLUSIONS OF LAW
The rejection of claims 1-24 under 35 U.S.C. § 102(e) as anticipated by
Troyansky is improper.
The rejection of claims 1-24 under 35 U.S.C. § 103(a) as unpatentable
over Troyansky is improper.
DECISION
The rejection of claims 1-24 is reversed.
REVERSED
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