Ex Parte Berkowitz et al

Patent Trial and Appeal Board

Apr 27, 2016

12916075 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/916,075
7590
Patrick S, Yoder
FILING DATE
10/29/2010
04/27/2016
P.O. Box 692289
Houston, TX 77269-2289
FIRST NAMED INVENTOR
Daniel Berkowitz
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.
248411-1/YOD
NBCU:0022
CONFIRMATION NO.
8870
EXAMINER
LEWIS, JONATHAN V
ART UNIT PAPER NUMBER
2425
MAILDATE DELIVERY MODE
04/27/2016 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 DANIEL BERKOWITZ, CHRISTOPHER J. FALKNER,
SHEAU BAO NG, and MYRA EINSTEIN
Appeal2014-003941
Application 12/916,075
Technology Center 2400
Before ALLEN R. MacDONALD, JOHN P. PINKERTON, and
GARTH D. BAER, Administrative Patent Judges.
PINKERTON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-34, which constitute all the claims pending in
this application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest identified by Appellants is NBCUniversal Media,
LLC. Appeal Br. 2.
2 Appellants' application includes two different claims numbered "3". See
Appeal Br. 14 (Claims App.). The Final Office Action objected to both of
these claims. See Final Act. 5. This objection is not before us.
Appeal2014-003941
Application 12/916,075
STATEMENT OF THE CASE
Introduction
Appellants' invention relates generally to a system and method for
allowing responses to offers displayed with digital content. Abstract.
Claims 1, 19, 23, and 30 are representative and read as follows:
1. A system for processing digital content, comprising:
a digital content delivery component configured to provide
digital content and a transactional offer;
a first processing pathway configured to receive and
process a response to the transactional offer via a first
transmission channel; and
a second processing pathway configured to receive and
process a response to the transactional offer via a second
transmission channel;
wherein both the first and second processing pathways
transmit response data to a transacting entity without human
intervention.
19. A system for processing digital content, comprising:
a content identification component configured to identify
digital content being played back on a receiver/playback system;
a transactional offer delivery component configured to
transmit a transactional offer to the receiver/playback system via
a first transmission channel based upon the identity of the digital
content;
a first processing pathway configured to receive and
process a response to the transactional off er from the
receiver/playback system via the first transmission channel; and
a second processing pathway configured to receive and
process a response to the transactional offer via a second
transmission channel;
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Appeal2014-003941
Application 12/916,075
wherein both the first and second processing pathways
transmit response data to a transacting entity without human
intervention.
23. A method for processing digital content, comprising:
identifying digital content being played back on a
receiver/playback system;
transmitting a transactional offer to the receiver/playback
system via a first transmission channel based upon the identity
of the digital content;
receiving and processing a response to the transactional
offer from the receiver/playback system via a first transmission
channel or a second transmission channel when the
receiver/playback system is capable of providing a response via
the first transmission channel; and
receiving and processing a response to the transactional
offer from the receiver/playback system via a second
transmission channel when the receiver/playback system is
incapable of providing a response via the first transmission;
wherein both the first and second transmission channels
transmit response data to a transacting entity without human
intervention.
30. A method for processing digital content, comprising:
identifying digital content being played back on a
receiver/playback system;
replacing an advertisement presented with the digital
content with a desired advertisement based upon the
identification.
Appeal Br. 14, 16-19 (Claims App.).
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Appeal2014-003941
Application 12/916,075
Yamamoto
Williamson
Kokenos
References
US 7,302,696 Bl Nov. 27, 2007
US 2010/0095323 Al Apr. 15, 2010
US 2011/0167456 Al July 7, 2011
Rejections on Appeal
1. Claims 1---6, 14--19, 22, 23, 28-31, 33, and 34 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by
Yamamoto.
2. Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yamamoto in view of Kokenos.
3. Claims 10-13, 20, 21, 24--27, and 32 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over
Yamamoto in view of Williamson.
Issue on Appeal
Appellants' arguments in the Appeal Brief3 and Reply Brief present us
with the following dispositive issues: 4
1. Does Yamamoto teach "a first processing pathway
configured to receive and process a response to the
transactional offer via a first transmission channel," and "a
3 Our Decision refers to the Final Office Action (mailed Mar. 25, 2013,
"Final Act."), Appellants' Appeal Brief (filed Oct. 3, 2013, "Appeal Br.")
and Reply Brief (filed Feb. 4, 2014, "Reply Br."), the Examiner's Answer
(mailed Dec. 4, 2013, "Ans."), and the original Specification (filed Oct. 29,
2010, "Spec.").
4 Appellants' arguments raise additional issues, but we do not reach them
because the identified issues are dispositive of the appeal.
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Appeal2014-003941
Application 12/916,075
second processing pathway configured to receive and
process a response to the transactional offer via a second
transmission channel," as recited in claim 1, and similarly
recited in claims 19 and 23?
2. Does Yamamoto teach "identifying digital content," and
"replacing an advertisement presented with the digital
content with a desired advertisement based upon the
identification," as recited in claim 30?
ANALYSIS
The Examiner finds Yamamoto teaches both "a first processing
pathway configured to receive and process a response to [a] transactional
offer via a first transmission channel" and "a second processing pathway
configured to receive and process a response to the transactional offer via a
second transmission channeL" Final Act 5---6; Ans. 14--16. According to
the Examiner, Yamamoto teaches two pathways for accessing a coupon
channel: (a) a pathway that facilitates access to the coupon channel either
directly or via another channel, such as a shopping channel; and
(b) a pathway that facilitates access to the coupon channel via a coupon
displayed along with content of a television program. Final Act. 5---6;
Ans. 15-16. Although the two pathways overlap in that both pathways
include the coupon channel, according to the Examiner, the two pathways
are still distinct and separate pathways because the two pathways include
two separate and distinct starting points: (a) the coupon channel itself or
another channel, such as the shopping channel, and (b) a coupon displayed
along with content. Ans. 15-16.
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Appeal2014-003941
Application 12/916,075
While Appellants concede there are multiple pathways to receive an
offer from the coupon channel, Appellants argue Yamamoto does not
disclose two distinct processing pathways configured to receive and process
a response to a transactional offer. Appeal Br. 9-10. Appellants argue the
claims recite two distinct processing pathways, each configured to receive
and process a response to an offer via two distinct transmission channels.
Appeal Br. 1 O; Reply Br. 3--4. Appellants further argue Yamamoto teaches
a single pathway that receives and processes responses to a coupon offer via
a single transmission channel (i.e., the coupon channel). Appeal Br. 10-11;
Reply Br. 3--4.
We are persuaded by Appellants' argument. We agree Yamamoto
teaches two pathways configured to receive an offer from the coupon
channel, and fails to teach two distinct processing pathways each configured
to receive and process a response to an offer via two distinct transmission
channels. Yamamoto col. 2, 11. 13-38. Instead, Yamamoto merely teaches a
single pathway that receives and processes responses to a coupon offer via a
single transmission channel (i.e., the coupon channel). Yamamoto col. 12,
11. 34--56; Fig. 18. Thus, we are persuaded the Examiner erred in concluding
Yamamoto anticipates claims 1, 19, and 23.
The Examiner also finds Yamamoto teaches "identifying digital
content," and "replacing an advertisement presented with the digital content
with a desired advertisement based upon the identification," as recited in
claim 30. Final Act. 10. According to the Examiner, Yamamoto teaches
offering coupons related to content of a television program/commercial
while a user is viewing the program/commercial, where a specific trigger is
selected based on the content and inserted into a signal of the
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Appeal2014-003941
Application 12/916,075
program/commercial and the trigger causes the display of a specific coupon
offer. Final Act. 10; Ans. 16-17.
Appellants argue Yamamoto merely teaches inserting triggers into
displayed content, where the triggers cause the display of specific coupon
types, and where different triggers are inserted for different subject matter of
the content. Appeal Br. 12; Reply Br. 6-7. Thus, as argued by Appellants,
any offer or advertisement of a coupon is based upon a specific type of
trigger inserted into the content, as opposed to the identity of the content.
Appeal Br. 12; Reply Br. 6-7.
We are persuaded by Appellants' argument. We agree Yamamoto
teaches identifying a trigger inserted into the digital content rather than
identifying the digital content itself. Yamamoto col. 9, 11. 3 5---65. Thus, we
are persuaded the Examiner erred in concluding Yamamoto anticipates claim
30.
Accordingly, we do not sustain the Examiner's rejection of claims 1,
19, 23, and 30, as well as dependent claims 2-18, 20-22, 24--29, and 31-34,
which variously depend therefrom.
DECISION
We reverse the Examiner's decision rejecting claims 1-34.
REVERSED
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