Ex Parte Theophilis

Patent Trial and Appeal Board

Feb 23, 2018

13599485 (P.T.A.B. Feb. 23, 2018)

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.
13/599,485 08/30/2012 Mark Theophilis 40205/04101 3648
30636 7590 02/23/2018
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
02/23/2018 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARK THEOPHILIS
____________________

Appeal 2016-007664
Application 13/599,485
Technology Center 3600
____________________

Before MICHAEL J. STRAUSS, SHARON FENICK, and
MICHAEL M. BARRY, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The claims are directed to “integration of a fully interactive rich
media advertising unit and media content (e.g., digital media content)
presented in a media player.” Spec ¶ 5. Claim 1, reproduced below with
parenthetical labels added for ease of reference, is representative of the
claimed subject matter:
1. A method for dynamic integration and presentation of
advertising content and media content, the method
comprising:
(1) receiving, by a server computing device, a request for
media content from a remote computing device;
(2) providing, by the server computing device in response to
the request, an interactive advertising unit comprising:
(a) a first content layer including the requested media
content and a media player;
(b) a second content layer including the advertising
content, wherein the advertising content comprises
static content and interactive content; and
(c) an integration module configured to:
(i) display the requested media content in the media
player; and
(ii) reveal the advertising content in an area extending
from a boundary of a playback window of the media
player, wherein revealing the advertising content
includes displacing web page content to
accommodate the advertising content while keeping
the web page content available for viewing and
interaction; and
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(3) transmitting, by the server computing device, the
interactive advertising unit for presentation on the remote
computing device.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
McMahon US 2008/0010076 A1 Jan. 10, 2008
Moonka US 2008/0066107 A1 Mar. 13, 2008
Wurster US 2009/0063280 A1 Mar. 5, 2009

REJECTIONS
The Examiner made the following rejections:
Claims 1–12 and 14–21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wurster and Moonka. Final Act. 3–22.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wurster, Moonka, and McMahon. Final Act. 22–23.

APPELLANT’S CONTENTION
Appellant contends the prior art fails to teach or suggest the
interactive advertisement unit of claim 1 because Wurster discloses
performing corresponding functionalities on the server side rather than on
the remote computing device. App. Br. 4–7.

ANALYSIS
Appellant’s arguments are not persuasive of reversible Examiner
error. In connection with the argued claims, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
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appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief and concur with
the conclusions reached by the Examiner. We highlight the following for
emphasis.
Appellant does not argue the claimed functionalities are not taught or
suggested by the prior art. Specifically with respect to claim 1’s limitation
(2), that of “providing, by the server computing device in response to the
request, an interactive advertising unit . . .”, Appellant argues instead “[t]he
recited functionalities of the interactive advertising unit of claim 1 are not
performed by the mobile device that receives the multimedia message 250 in
Wurster” and, instead, are performed on Wurster’s server side. App. Br. 5.
According to Appellant, because Wurster’s server advertisement 210 and
content 205 “are merged at the server into a single integrated media file 235
by a media integrator 230, . . . Wurster does not send a . . . module to the
[remote computing] device that receives the multimedia message such that
the functionalities may be performed thereon as recited.” Id. Appellant
argues, because merging is performed at the server:
[Wurster’s] media integrator 230 is never sent to the mobile
device as its functions have already been executed on the server-
side. Only the completed multimedia message 250 is sent to the
mobile device in Wurster. In contrast, the integration module of
claim 1 is transmitted to the receiving device. Because Wurster’s
media integrator 230 is never sent to the receiving device,
Wurster does not disclose or suggest providing or transmitting
the interactive advertising unit.
App. Br. 6.
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The Examiner responds, finding “that [the] ‘Interactive Advertising
Unit’ as argued . . . is not positively recited as performed by the server[1].
What is recited is ‘providing, by the server . . . , an interactive advertising
unit.’” Ans. 22. Appellant contends the Examiner’s determination that the
claims do not require performance of the interactive advertising unit by the
server (as opposed to being performed by the remote computing device)
demonstrates a failure to understand Appellant’s argument. Reply Br. 3.
According to Appellant, “the claims recite the exact opposite of such a
configuration [in which argued functions are performed by the server, i.e.,
that the] functions of the interactive advertising unit as recited in claim 1 are
not performed by the server” and, instead, are performed by the remote
computing device. Id.
Claim construction is a matter of law that we review de novo. See In
re Donaldson Co., Inc., 16 F.3d 1189, 1192 (Fed. Cir. 1994). During
examination, claim terms are given their broadest reasonable
construction consistent with the specification. In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In general, words used in a
claim are accorded their ordinary and customary meaning. Honeywell Int'l
Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007).
Under a broadest reasonable interpretation, words of the claim must be given

1 In consideration of Appellant’s argument emphasizing the performance of
disputed functions by the remote computing device instead of by the server,
it is not clear whether the Examiner’s intended response was that the claims
fail to positively recite that the Interactive Advertising Unit is performed by
the remote computing device (rather than by the server). We find the
Examiner’s misstatement to be harmless error for the reasons discussed
below.
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their plain meaning, unless such meaning is inconsistent with the
Specification.
Although the Examiner’s characterization of Appellant’s argument is
facially incorrect as argued by Appellant (Reply Br. 3), we find such error to
be harmless. Whether or not the Examiner appreciated Appellant’s
argument to be that the claims require certain functionality be provided by
the remote computing device rather than provided by the server as disclosed
by Wurster, we independently conclude claim 1, when properly construed,
does not exclude transmitting an interactive advertising unit wherein the first
and second content layers are combined. In particular, Appellant argues
“[p]rior to transmitting the multimedia message 250, the advertisement 210
and the content 205 of Wurster are converted into a baseline format and the
formats of the advertisement 210 and the content 205 are combined . . . [or]
merged at the server into a single integrated media file 235” that is part of
multimedia message 250 transmitted to a mobile device. App. Br. 5.
Appellant further argues “[b]ecause Wurster’s media integrator 230 is never
sent to the receiving device, Wurster does not disclose or suggest providing
or transmitting the interactive advertising unit.” Id.
Appellant’s argument is not commensurate in scope with claim 1
because claim 1 does not require the claimed interactive advertising unit to
perform the argued functions of Wurster’s media integrator 230. In
particular, the interactive advertising unit includes the following three
elements as labeled above: 2(a) a first content layer of media content and a
media player; 2(b) a second content layer of advertising content; and 2(c) an
integration module. According to claim 1, any functionality required of the
disputed interactive advertising unit (element 2) is functionality (A) imputed
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to the claimed media player (element 2(a)), and (B) provided by the
constituent integration module including to display media content (element
2(c)(i)) and reveal advertising content (element 2(c)(ii)).
The Examiner finds the first layer of media content and the second
layer of advertising content is taught or suggested by Wurster’s integrated
media file 235. Final Act. 3–4. We agree because claim 1 does not require
the first and second content layers be maintained separately and, therefore,
under a broad but reasonable interpretation, Wurster’s integrated media file
teaches or suggests the disputed layers. Concerning the media player, the
Examiner relies on Moonka for, in addition to providing Wurster’s content,
providing a video player module or application. Final Act. 6. Thus, the
combination of Wurster and Moonka teaches or suggests elements 2(a) and
2(b) of claim 1 as labeled above.
According to claim 1, the integration module (element 2(c)) is
configured to provide functionality to (i) display the requested media content
in the media player and (ii) reveal the advertising content. As to the latter,
element 2(c)(ii), Appellant’s Specification discloses “revealing the
advertising content includes displacing web page content to accommodate
the advertising content while keeping the web page content available for
viewing and interaction.” Spec. ¶ 8. As explained by the Examiner,
Moonka’s video player module is capable of playing video and audio
formats in addition to other content 208 including advertisements. Final Act.
6. Thus, under a broad but reasonable interpretation of the recited
functionality, Moonka’s video player module that plays video, audio, and
additional content including advertisements teaches or suggests the disputed
integration module including claim elements 2(c)(i) and 2(c)(ii).
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Furthermore, it would have been obvious to combine Wurster’s method of
transmitting media and advertising content to a remote client device to
include Moonka’s video player module for the reasons set forth by the
Examiner (Final Act. 6) thereby teaching or suggesting step (3) of
transmitting, by the server computing device, the interactive advertising unit
for presentation on the remote computing device.
We additionally find Wurster discloses “delivery of data enabling the
mobile phone to play the integrated media file to the mobile phone is
initiated [at 440].” Spec. ¶ 41. The delivery of this enabling data further
teaches or suggests the transmission of a module (e.g., enabling data;
transmitting step of element 3) used to display the media content in a media
player (element 2(c)(i)) and reveal (e.g., display) advertising content
(element 2(c)(ii)) thereby also satisfying the functional requirements of the
disputed integration module and its transmission.
For the reasons discussed above, we are unpersuaded the claimed first
and second content layers are distinguishable over Wurster’s integrated
media file or that any argued functionalities required of the interactive
advertising unit of claim 1 are absent from either Moonka’s video player
module or, in the alternative, Wurster’s data enabling a mobile phone to play
an integrated media file of media and advertising. Accordingly, we sustain
the rejection of independent claim 1 and, for the same reasons, the rejection
of independent claims 20 and 21 under 35 U.S.C. § 103(a) together with the
rejections of dependent claims 2–19 which are not argued separately with
particularity.

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DECISION
We affirm the Examiner’s decision to reject claims 1–21 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)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED