Ex Parte BeatonDownload PDFPatent Trial and Appeal BoardSep 21, 201512322644 (P.T.A.B. Sep. 21, 2015) Copy Citation 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. 12/322,644 02/04/2009 Jeffrey Beaton 7464 16261 7590 09/21/2015 Jeffrey Beaton 2608 Farnell Road Fort Collins, CO 80524 EXAMINER ZUBERI, MOHAMMED H ART UNIT PAPER NUMBER 2177 MAIL DATE DELIVERY MODE 09/21/2015 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 JEFFREY BEATON ____________ Appeal 2013-0055581 Application 12/322,644 Technology Center 2100 ____________ Before ROBERT E. NAPPI, ADAM J. PYONIN, and GARTH D. BAER, Administrative Patent Judges. BAER, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies Jeffrey Beaton as the real party in interest. App. Br. 2. Appeal 2013-005558 Application 12/322,644 2 STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner’s Final Rejection of claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. BACKGROUND A. The Invention Appellant’s claimed invention relates to “[a] system and method for overlay advertising and purchasing utilizing on-line and streaming media.” Abstract. Claim 1 is exemplary and is reproduced below. 1. A method providing advertising to a first node via a network, comprising: providing an advertiser with access to a management system for inputting data for identifying a commercial of a predetermined time length, wherein the commercial comprises video media presentation data; receiving a selection request from a web browser at the first node via the network for the commercial of the predetermined time length, wherein the selection request for the commercial is responsive to a web browser selection of the commercial at the first node; transmitting the requested commercial of the predetermined time length via the network to the first node in response to the web browser selection request, wherein there is supplemental information having a predetermined association with the video media presentation data of the requested commercial; transmitting the supplemental information associated with the requested commercial, via the network, to the first node; and Appeal 2013-005558 Application 12/322,644 3 wherein when a presentation of the video media presentation data of the requested commercial is paused at the first node, the supplemental information is presented at the first node overlain on a minority region of the paused presentation of the requested commercial so that a majority region of the paused presentation of the requested commercial is still viewable along with overlain presentation of the supplemental information, wherein the supplemental information comprises a plurality of selectable overlay advertising thumbnail images in a sequential array arrangement and depicting products or services that are related to the contents of the presentation of the requested commercial; wherein there is respective additional supplemental information presented at the first node comprising respective enlarged depictions of each of the plurality of selectable overlay advertising thumbnail images, when each of the plurality of selectable overlay advertising thumbnail images is selected; wherein information indicative of the pause of the requested commercial occurring at the first node is received via the network at a predetermined network node; and wherein when presentation of the video media presentation data is unpaused at the first node for continuation of the presentation of the requested commercial, the continuation proceeds at a portion of the presentation of the requested commercial that is relative to a portion of the presentation where the pause of the requested commercial occurred. B. The Rejections on Appeal The Examiner rejects claims 1–7, 9–17, and 21 as unpatentable under 35 U.S.C. § 103(a) over Bowler (US 2007/0089150 A1, pub. April 19, 2007), Cover Flow (iPhone Pocket Guide, Pub. Sept. 20, 2007), and Triestram (US 2006/0068861 A1, pub. March 30, 2006). Ans. 3. Appeal 2013-005558 Application 12/322,644 4 The Examiner rejects claim 8 as unpatentable under 35 U.S.C. § 103(a) over Bowler, Cover Flow, and Rogers (US 2005/0229227 A1, pub. Oct. 13, 2005). Ans. 19. The Examiner rejects claim 18 as unpatentable under 35 U.S.C. § 103(a) over Bowler and Triestram. Ans. 20. The Examiner rejects claim 19 as unpatentable under 35 U.S.C. § 103(a) over Triestram and Rashkovskiy (US 6,616,533 B1, iss. Sep. 9, 2003). Ans. 23. The Examiner rejects claim 20 as unpatentable under 35 U.S.C. § 103(a) over Bowler, Triestram, and Rogers. Ans. 24. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner erred. Arguments that Appellant could have made but chose not to make in the Briefs have not been considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii). Except as indicated below, we disagree with Appellant that the Examiner erred and adopt as our own the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and the reasons and conclusions set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. We highlight and address specific findings and arguments for emphasis as follows. A. Claims 1–17 and 21 Appellant asserts, inter alia, the Examiner erred in finding the cited prior art teaches or suggests “receiving a selection request . . . for the commercial . . . wherein the selection request for the commercial is Appeal 2013-005558 Application 12/322,644 5 responsive to a web browser selection of the commercial at the first node,” and “transmitting the requested commercial . . . to the first node in response to the web browser selection request,” as claim 1 requires. App. Br. 14–16. According to Appellant, the Examiner erred in relying on Bowler for teaching the disputed limitation because “Bowler does not disclose or suggest transmitting any requested video commercial in response to any the web browser selection request.” App. Br. 15. We are persuaded by Appellant’s argument. The Examiner has not explained sufficiently how Bowler’s disclosure of playing Internet-based television broadcasts explicitly or inherently discloses requesting a commercial and, in response, transmitting the requested commercial as claim 1 requires. See Ans. 30–32. Accordingly, we do not sustain the Examiner’s rejection of claim 1, or claims 2–17 and 21 which depend ultimately from claim 1. B. Claim 18 Appellant asserts the Examiner erred in finding the cited prior art teaches or suggests presenting advertising “as [a] result of [the] pause,” as claim 18 requires. App. Br. 31. We are not persuaded by Appellant’s argument because we agree with the Examiner that Triestram teaches the disputed element by disclosing that “[a]t the moment the pause button is engaged, a control algorithm switches to an alternative content,” including advertising. Triestram ¶ 13; id. at ¶ 2 (“Our invention takes advantage of this pause to insert advertising or other content to the paused screen.”); see Ans. 40. Accordingly, we sustain the Examiner’s rejection of claim 18. Appeal 2013-005558 Application 12/322,644 6 C. Claim 19 Appellant asserts the Examiner erred in finding Triestram’s ¶ 13 teaches or suggests “information indicative of the pause occurring being transmitted via the network to a predetermined network node” or “a multimedia player distribution server,” as claim 19 requires. App. Br. 33. Appellant also argues the Examiner erred by relying on “column 2, lines 21- 34 of Rashkovskiy” for teaching distributing a multimedia player to the graphical user interface, as claim 19 requires. Id. We are not persuaded by Appellant’s arguments. Triestram teaches “[a]t the moment the pause button is engaged, a control algorithm switches to an alternative content that may come from” various sources including the Internet. Triestram ¶ 13. For content to be loaded from a remote location as an immediate response to a user pressing pause, the remote location necessarily must be informed of the pause, i.e., it must receive information indicating the pause. Thus, we agree with the Examiner that Triestram teaches or suggests information indicative of the pause is transmitted via a network to a node, as claim 19 requires. Ans. 23–24. We also agree with the Examiner’s finding (Ans. 23) that Triestram teaches a multimedia player distribution server by disclosing, for example, “Internet based servers . . . available ‘on demand’ to push new content to the game playing individual.” Triestram ¶ 11; see also id. at ¶ 4 (“Our invention will use . . . advertisers own distributed servers to deliver the message.”). We are not persuaded by Appellant’s argument that the Examiner erred by relying on “column 2, lines 21-34 of Rashkovskiy” for teaching distributing a multimedia player to the graphical user interface. App. Br. 33. The Examiner finds Triestram—not Rashkovskiy—teaches distributing a multimedia player, and relies on Appeal 2013-005558 Application 12/322,644 7 Rashkovskiy for teaching a graphical user interface. See Ans. 23, 24. Because the Examiner finds the combination of Triestram and Rashkovskiy teaches distributing a multimedia player to the graphical user interface (Ans. 24), Appellant’s argument that Rashkovskiy alone fails to teach that element is not persuasive. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Accordingly, we sustain the Examiner’s rejection of claim 19. D. Claim 20 Appellant asserts the Examiner erred in rejecting claim 20 because “paragraph [0021] of Rogers (relied upon by the Examiner)” fails to teach (1) “streaming media record in a first storage repository,” (2) “any way to pause any playing of any streaming media record,” or (3) “association of an advertising data record in a second storage repository with any streaming media record in the first storage repository.” App. Br. 34. Appellant also argues that “no teachings of any streaming media record in a first storage repository are to be found anywhere in the video game console of Triestram or in the Bowler television broadcast.” Id. We are not persuaded by Appellant’s arguments because they amount to attacks on the references individually, however, the Examiner’s rejection of claim 20 (Ans. 25–28) is based on the references’ combined teachings. See Merck, 800 F.2d at 1097. Accordingly, we sustain the Examiner’s rejection of claim 20. Appeal 2013-005558 Application 12/322,644 8 DECISION We reverse the Examiner’s rejections of claims 1–17 and 21. We affirm the Examiner’s rejections of claims 18–20. 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). AFFIRMED-IN-PART rvb Copy with citationCopy as parenthetical citation