Ex Parte Butler et al

Patent Trial and Appeal BoardAug 18, 2017

12206836 (P.T.A.B. Aug. 18, 2017)

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. 12/206,836 09/09/2008 Dominic Butler 58083/364992 (B803) 9596 72058 7590 08/22/2017 Kilpatrick Townsend & Stockton LLP Adobe Systems, Inc. 58083 Mailstop: IP Docketing - 22 1100 Peachtree Street, Suite 2800 Atlanta, GA 30309-4530 EXAMINER BRANDENBURG, WILLIAM A ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 08/22/2017 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): ipefiling@kilpatricktownsend.com KT S Docketing2 @ kilpatrick. foundationip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DOMINIC BUTLER, JAMES MULHOLLAND, and JON WALLACE Appeal 2016-0018031 Application 12/206,83 62 Technology Center 3600 Before KENNETH G. SCHOPFER, MATTHEW S. MEYERS, and ROBERT J. SILVERMAN, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—23, 25, and 26. We have jurisdiction under 35 U.S.C. § 6(b). 1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed April 7, 2015) and Reply Brief (“Reply Br.,” filed November 25, 2015), the Examiner’s Answer (“Ans.,” mailed September 25, 2015), and Final Office Action (“Final Act.,” mailed September 22, 2014). 2 Appellants identify Adobe Systems Incorporated as the real party in interest (Appeal Br. 3). Appeal 2016-001803 Application 12/206,836 We REVERSE. CLAIMED INVENTION Appellants’ claims “relate generally to providing content and advertisements to an electronic device” (Spec. 11). Claims 1, 15, 18, and 22 are the independent claims on appeal. Claim 1, reproduced below with added bracketed notations, is illustrative of the subject matter on appeal: 1. A computer implemented method comprising: [a] providing a navigation area for an electronic device, the navigation area comprising a plurality of items, wherein a focus indicator distinguishes one or more items from other items of the plurality of items within the navigation area, wherein at least a portion of the navigation area is displayed on the electronic device and input on the electronic device moves the focus indicator; [b] providing an advertisement break in a location in the navigation area between a first item and a second item; [c] receiving input to move the focus indicator from the first item to the second item; [d] determining, by a processor of a computer system, an intersection of a movement path of the focus indicator and the advertisement break as the focus indicator moves from the first item to the second item; [e] wherein the focus indicator can only move from the first item to the second item via the movement path intersecting the advertisement break; and [f] in response to determining the intersection of the movement path and the advertisement break, providing an advertisement on the electronic device, the advertisement in an un-displayed state prior to determining the intersection of the movement path and the advertisement break. 2 Appeal 2016-001803 Application 12/206,836 REJECTIONS Claims 1, 3—7, 9-23, and 25 are rejected under 35 U.S.C. § 102(e) as being anticipated by Sharkey (US 2009/0031338 Al, pub. Jan. 29, 2009). Claims 2 and 8 are rejected under 35 U.S.C. § 103(a) as unpatentable over Sharkey. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over Sharkey and Ratsch (US 2009/0300674 Al, pub. Dec. 3, 2009). ANALYSIS Independent claim land dependent claims 3—7, 9—14, 23, and 25 We are persuaded by Appellants’ argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 102(e) because Sharkey fails to disclose “in response to determining the intersection of the movement path and the advertisement break, providing an advertisement on the electronic device, the advertisement in an un-displayed state prior to determining the intersection of the movement path and the advertisement break,” as recited by limitation [f] of independent claim 1 (see Appeal Br. 15—17; see also Reply Br. 4—5). The Examiner maintains that the rejection is proper, and cites paragraphs 7, 29, 32—38, 58, 59, 79, 84—89, 97—106, and Figure 7, elements 720 and 730 of Sharkey, as disclosing the argued subject matter (see Final Act. 8—9; see also Ans. 7—8). However, we agree with Appellants that there is nothing in the cited portions that discloses or suggests the argued subject matter. In making this determination, we note that Sharkey is directed to “to a system for forming and displaying programming guide structure” (Sharkey 3 Appeal 2016-001803 Application 12/206,836 11) and “a method [that] includes communicating row ad metadata to a user device and communicating program guide information to a user device” {id. 17). Sharkey also discloses “[a] user interface 312 may, for example, be a set of push buttons or a remote control interface. The user interface 312 is used to make selections, input various data, and change the parameters of the user device 110” {id. 179). Sharkey discloses displaying “row ads” which are ads that form a row or can take up a row or partial row in the program guide. Positioning information for positioning the row ad relative to a channel row may also be provided in the row ad information or metadata. Visibility information may also be provided regarding the row ad. For example, a row ad may be visible or hidden depending on the presence or absence of a particular channel. {Id. 133; see also id. 1 87—90). Sharkey discloses that a “row ad 720 may be selected by moving a cursor or other selection indicator with the user interface” {id. 1100). Sharkey also discloses that “[r]ow ads may be directed to appear at various positions. For example, row ads may be placed directly adjacent to a particular channel listing or a particular type of listing within the program guide” {id.). We have reviewed the cited portions of Sharkey and agree with Appellants that Sharkey fails to disclose the argued limitation. More particularly, we agree with Appellants that “Sharkey’s disclosure of an advertisement being tied to a channel and appearing if the channel is selected is different from an advertisement being triggered by a particular movement path (from one item to another) of a selection indicator” (Appeal Br. 16). Thus, we fail to see, and the Examiner does not adequately explain, how Sharkey’s disclosure that a “row ad 720 may be selected by moving a cursor or other selection indicator with the user interface” (Sharkey 1100) 4 Appeal 2016-001803 Application 12/206,836 discloses “in response to determining the intersection of the movement path and the advertisement break, providing an advertisement on the electronic device, the advertisement in an un-displayed state prior to determining the intersection of the movement path and the advertisement break,” as recited by limitation [f] of independent claim 1. Responding to Appellants’ argument in the Response to Argument section of the Answer, the Examiner takes the position that Sharkey is not describing “selecting” in terms of the user explicitly and manually inputting a selection of an item in the guide once they have already scrolled to it, but rather “selecting” in the form of scrolling through the programming guide from content item to item, as evidenced by [0099—106] of Sharkey. There are no additional operations needed to be performed in order for an advertisement to be triggered once a cursor has been moved to another channel item. It is the navigation through the programming guide itself that triggers the advertisement. (Ans. 8). The difficulty with the Examiner’s finding, as Appellants point out, is that independent claim 1 “requires providing an advertisement ‘in response to determining the intersection of the movement path and the advertisement break’” (Reply Br. 4—5). In contrast, Sharkey discloses the row ad may always be displayed above a particular row for an associated channel. The row ad may also be displayed directly below an associated channel. The associated channel may be referred to as an anchor channel. In certain situations, the row ad may also be displayed with an offset relative to its associated anchor channel row (Sharkey 1 87). More particularly, Sharkey discloses that “[visibility information may also be provided regarding the row ad. For example, a row ad may be visible or hidden depending on the presence or absence of a particular channel” {id. 133). Thus, we agree with Appellants that 5 Appeal 2016-001803 Application 12/206,836 “Sharkey’s disclosure of an advertisement being tied to a channel and appearing if the channel is selected is different from an advertisement being triggered by a particular movement path (from one item to another) of a selection indicator” (Reply Br. 4). In view of the foregoing, we do not sustain the Examiner’s rejection of independent claim 1, and dependent claims 3—7, 9-14, 23, and 25, under 35 U.S.C. § 102(e). Independent claims 15, 18, and 22, and dependent claims 16, 17, and 19—21 Independent claims 8 and 13 include a limitation similar to limitation [e] in independent claim 1, and are rejected based on the same rationale applied with respect to independent claim 1 (see Final Act. 4). Thus, for the same reasons, we also do not sustain the Examiner’s rejection of independent claims 15, 18, and 22, and claims 16, 17, and 19—21 which depend from independent claims 15 and 18, under 35 U.S.C. § 102(e). Dependent claims 2, 8, and 26 Claims 2, 8, and 26 depend from independent claim 1. The Examiner’s rejections of claims 2 and 8 under 35 U.S.C. § 103(a) based on Sharkey, and claim 26 based on Sharkey, in combination with Ratsch, do not cure the deficiency in the Examiner’s rejection of independent claim 1. Therefore, we do not sustain the Examiner’s rejections of claims 2, 8, and 26 6 Appeal 2016-001803 Application 12/206,836 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to independent claim 1. DECISION The Examiner’s rejections of claims 1—23, 25, and 26 under 35 U.S.C. §§ 102(e) and 103(a) are reversed. REVERSED 7