Ex Parte ShusterDownload PDFPatent Trial and Appeal BoardJun 27, 201612967850 (P.T.A.B. Jun. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/967,850 12/14/2010 Brian Mark Shuster 35690 7590 06/29/2016 MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P,C P.O. BOX 398 AUSTIN, TX 78767-0398 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. 6657-17701 1316 EXAMINER HAMILTON, MATTHEW L ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 06/29/2016 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): patent_docketing@intprop.com ptomhkkg@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRIAN MARK SHUSTER Appeal2014-003038 Application 12/967,850 Technology Center 3600 Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant seeks our review under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1, 2, 4--10, 12, 13, 15, and 17-23. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. Appeal2014-003038 Application 12/967,850 Appellant's invention is directed to a timer mechanism for use in providing internet advertising. Spec., para. 2. Claim 1 is illustrative: 1. A method comprising: receiving, at a server computing device, a request for content to be transmitted to a user computing device; after a determination that advertising content has been displayed on the user computing device for at least a first threshold amount of time, the server computing device authorizing display of the requested content at the user computing device; and after determining that the requested content has been displayed on the user computing device for at least a second threshold amount of time, terminating authorization of the display of the requested content at the user computing device such that display of second advertising content replaces display of the requested content at the user computer device. Appellant appeals the following rejections: Claims 1, 4---6, 8-10, and 12 are rejected under 35 U.S.C. § 102(e) as being anticipated by Amon (US 2006/0247974 Al, pub. Nov. 2, 2006). Claims 2, 7, 13, 15, and 17-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Amon and Cezar (US 6,128,651, iss. Oct. 3, 2000). Claim 21 is rejected under 35 U.S.C. 103(a) as being unpatentable over Amon and Slotznick (US 6,011,537, iss. Jan. 4, 2000). Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Amon and Zigmond (US 6,698,020 Bl, iss. Feb. 24, 2004). 2 Appeal2014-003038 Application 12/967,850 ANALYSIS Claims l, 4-6, 8-10, and 12 Each of independent claims 1 and 8 recite "terminating authorization of the display of the requested content at the user computing device such that display of second advertising content replaces display of the requested content at the user computer device." We are persuaded by Appellant's argument that Amon fails to disclose this terminating, because Amon instead restricts "gaining access" to subsequent content without terminating display of already-accessed content. Appeal Br. 7-13; see also Reply Br. 2-3. The Examiner asserts that Amon discloses the terminating display of first content and replacing it with display of advertising at paragraphs 30, 34, and 35 (Final Act. 3 and 5), Figure 2, and paragraph 12. (Answer 3--4). However, these cited sections disclose that after a first period of time, a request from a user is not fulfilled with the requested content until an advertisement is first served to the user. Amon, para. 35 and Figure 2. Amon does not disclose that display of content is terminated and substituted with advertisement content, but only that access to subsequent requests may require an advertisement first. Not providing access to content requested after the end of a first time period is not the same as terminating the display of content being displayed during the first time period. The Examiner has thus failed to establish a prima facie case of anticipation, because Amon does not disclose the "terminating" limitation of claims 1 and 8. 3 Appeal2014-003038 Application 12/967,850 For this reason, we do not sustain the rejection of independent claims 1 and 8, nor of dependent claims 2, 4---6, 9, 10, and 12 that were rejected along with claims 1 and 8. Claims 2, 7, 13, 15, and 17-20 Independent claim 13 recites "after a determination that the requested content has been displayed for at least a second threshold amount of time, terminating display of the requested content on the user computing device and displaying other advertising content." In rejecting claim 13, the Examiner relies on the same portions of Amon for the "terminating" language as was relied upon for claims 1 and 8. Final Act. 8-9; see also Answer 5-6. We are persuaded by Appellant's argument that Amon fails to disclose the "terminating" language for the same reasons set forth for claim 1 (Appeal Br. 13; see also Reply Br. 3), for the same reasons we set forth above. As a result, we do not sustain the rejection of claim 13, nor of claims 2 and 7 that depend from claim 1, and claims 15 and 17-20 that depend from claim 13 and were rejected along with claim 13, in part because the Examiner has not established on the record that Cezar remedies the shortcomings of Amon. Claims 21-23 The Examiner has not established on the record that either of Slotznick or Zigmond remedies the shortcomings of Amon we set forth 4 Appeal2014-003038 Application 12/967,850 above relating to the rejection of claims 1 and 8, from which claims 21-23 depend. Therefore, we do not sustain the rejections of claims 21-23. DECISION We reverse the rejection of claims 1, 4--6, 8-10, and 12 under 35 U.S.C. § 102(e). We reverse the rejections of claims 2, 7, 13-15, and 17-23 under 35 U.S.C. § 103(a). REVERSED 5 Copy with citationCopy as parenthetical citation