Ex Parte Deitsch et al

Patent Trial and Appeal BoardOct 4, 2012

11552700 (P.T.A.B. Oct. 4, 2012)

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. 11/552,700 10/25/2006 Andrew Isaac Deitsch 172832 -2 (NBCU:0028) 2541 12640 7590 10/04/2012 NBCUniversal Media, LLC c/o Fletcher Yoder, P.C. PO Box 692289 Houston, TX 77269-2289 EXAMINER TELAN, MICHAEL R ART UNIT PAPER NUMBER 2427 MAIL DATE DELIVERY MODE 10/04/2012 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 ANDREW ISAAC DEITSCH, STEPHEN JOHN ANGELOVICH, DAVID BRET RABINOWITZ, and JOHN PATRICK WALLACE ____________________ Appeal 2010-005591 Application 11/552,700 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, MARC S. HOFF, and GREGORY J. GONSALVES, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005591 Application 11/552,700 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). We Affirm. The claims are directed “to advertising and more particularly to embedded advertisements and techniques for advertising the same.” (Spec. 1). Claims 1 and 6, reproduced below, are illustrative of the claimed subject matter: 1. A method of advertising, comprising: combining two or more video streams to form a unified video stream, wherein at least one of the two or more video streams is a program content stream comprising program content that is filmed by a camera and at least one of the two or more video streams is an advertisement material stream comprising advertisement material, and wherein the placement of the advertisement material stream relative to the program content stream is independent of any information derived from the camera; and broadcasting the unified video stream providing indelible integration of said advertising with said program content. 6. A method of advertising, comprising: integrating traffic, sales, marketing and production teams to generate an advertisement video stream comprising an advertisement; combining a program content video stream comprising a program content and the advertisement video stream to generate a unified video stream; and Appeal 2010-005591 Application 11/552,700 3 broadcasting the unified video stream to a plurality of viewers, wherein said unified video stream displays the advertising simultaneously with the program content providing indelible integration of said advertising with said program content. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Vancelette US 5,894,320 Apr. 13, 1999 Holtz US 2003/0070167 Al Apr. 10, 2003 Eldering US 2004/0148625 Al Jul. 29, 2004 Steelberg US 2005/0266834 Al Dec. 01, 2005 Granville US 2007/0192190 Al Aug. 16, 2007 (effectively filed Dec. 06, 2005) Pong US 7,231,651 B2 Jun. 12, 2007 (filed Jun. 18, 2001) REJECTIONS 1. Claims 6-13, 17, 18, and 22 stand rejected under 35 U.S.C §103(a) as being unpatentable over the combination of Eldering and Pong. 2. Claims 1-5 stand rejected under 35 U.S.C §103(a) as being unpatentable over the combination of Eldering, Vancelette, and Pong. 3. Claims 14, 19, and 20 stand rejected under 35 U.S.C §103(a) as being unpatentable over the combination of Eldering, Pong, and Steelberg. 4. Claims 15 and16 stand rejected under 35 U.S.C §103(a) as being unpatentable over the combination of Eldering, Pong, Steelberg, and Holtz. Appeal 2010-005591 Application 11/552,700 4 5. Claim 21 stands rejected under 35 U.S.C §103(a) as being unpatentable over the combination of Eldering, Pong, and Granville. 6. Claims 23 and 24 stand rejected under 35 U.S.C §103(a) as being unpatentable over the combination of Eldering, Steelberg, Pong, Granville, and Holtz. Grouping of Claims Based on the Appellants’ arguments, we decide the appeal for the first-stated rejection on the basis of claim 6, and we decide the appeal for the second-stated rejection on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). We address the remaining grounds of rejection 3-6 infra. ANALYSIS We disagree with Appellants’ contentions regarding the Examiner’s obviousness rejections of the claims. We adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2), the reasons set forth by the Examiner in the Answer in response to arguments made in Appellants’ Appeal Brief. (Ans. 21-25). We highlight and address specific findings and arguments below. First Ground of Rejection - Independent Claims 6 and 11 Issue: Regarding independent claims 6 and 11, are Appellants’ arguments urging patentability predicated on non-functional descriptive material? Regarding independent claims 6 and 11, Appellants contend that the cited combination of references do not teach or suggest the “generation of unified video stream where a part of the unified video is dedicated for Appeal 2010-005591 Application 11/552,700 5 program content while the other part is dedicated for the advertisements.” (App. Br. 8, emphasis added). In response, the Examiner contends that Appellants are arguing limitations that are not claimed: “However, neither claim 6 nor claim 11 clearly specifies nor requires that part of the unified video is dedicated for program content while the other part is dedicated for advertisements.” (Ans. 22, ¶1, emphasis added). We agree with the Examiner that Appellants are arguing limitations that are not claimed. However, in reviewing the record, we also conclude that the “unified video stream” of claim 1 is merely an arrangement of video information (data), which is nonfunctional descriptive material per se. As such, claim 1 does not positively recite that the contents of the “unified video stream” (or arrangement or structure of the video data) are used to change or alter any computer function.1 See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006). Even if we assume arguendo that the nonfunctional descriptive material may be accorded weight, we agree with the Examiner’s underlying 1 Cf. Functional descriptive material consists of data structures and computer programs which impart functionality when employed as a computer component. See Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat. Office 142 (November 22, 2005), especially pages 151-152. (The Manual of Patent Examining Procedure includes substantively the same guidance. See MPEP, 8th edition (revised Aug. 2012), § 2106.01.) Appeal 2010-005591 Application 11/552,700 6 factual findings and ultimate legal conclusion of obviousness. For the reasons found by the Examiner (Ans. 4, 21-22), we agree that Eldering would have taught or suggested combining two or more videos streams for a “unified” video stream in the manner claimed: e.g., “In dynamic ad linking, one or more advertisements from an ad stream not initially associated with a program stream can be inserted into that program stream for viewing by the subscriber.” (Eldering, para. [0084]). Regarding the recited step of “ broadcasting the unified video stream to a plurality of viewers, wherein said unified video stream displays the advertising simultaneously with the program content providing indelible integration of said advertising with said program content” (claim 6, emphasis added),2 the Examiner broadly but reasonably construes the claimed “indelible integration of said advertising with said program content” as meaning “irremovable, such that advertisements cannot be skipped without skipping program content.” (Ans. 23, emphasis added). In reviewing the record, we conclude that the Examiner’s claim construction is fully consistent with the meaning of the term “indelible integration” as used within Appellants’ Specification: As will be appreciated by one skilled in the art, the advertising techniques described in the various embodiments discussed above provides transparent, indelible integration of advertising content and program content. This insures that the advertising content is delivered and viewed, along with the program content without disruption, or avoidance. The advertising content cannot be skipped or otherwise removed from the program content. (Spec. para. [0017], emphasis added). 2 Cf. claim 1: “broadcasting the unified video stream providing indelible integration of said advertising with said program content.” Appeal 2010-005591 Application 11/552,700 7 Thus, we agree with the Examiner that the secondary Pong reference, when combined with the aforementioned teachings of Eldering, would have taught or suggested the claimed indelible integration of advertising content and program content (claims 1, 6, 11): “Pong’s teaching of integrating advertisements with programs such that the advertisements are blended into the scene in which they are inserted (abstract; col. 4, lines 1-43; figs. 1-3).” (Ans. 23). See e.g., Pong, col. 4, ll. 24-27: “in the sporting field environment illustrated in FIGS. 1-3, for example, actual billboards or portions of the field on which the athletes are standing, areas of a golf course, or the display area of an airship, may simply be painted blue so that messages can be inserted.” In the Reply Brief, Appellants raise a new issue regarding the combinability of the cited references: The pertinent issue, it is believed, is whether the Examiner has adequately identified a reason that would have prompted a person of ordinary skill in the relevant [field] to combine the elements in the way the claimed new invention does. Accordingly, Appellants respectfully request the Examiner to produce objective evidence of the requisite motivation or suggestion to combine the cited references, or to remove the foregoing rejection under 35 U.S.C. § 103. (Reply Br. 4). Appellants also newly allege that the Examiner has relied on impermissible hindsight in combining the cited references. (Reply Br. 5). We note that “[t]he reply brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor is the reply brief an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.” Appeal 2010-005591 Application 11/552,700 8 Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“Informative”). Cf. Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”) (citations and quotation marks omitted). This reasoning is applicable here, given the untimely arguments raised in the Reply Brief (4-5). On this record, we are not persuaded of Examiner error regarding the rejection of representative claim 6. Therefore, we sustain the obviousness rejection of independent claim 6 over the combination of Eldering and Pong. Dependent claims 7-10, independent claim 11, and dependent claims 12, 13, 17, 18, and 22 (not argued separately) fall therewith under the same first ground of rejection. See 37 C.F.R. § 41.37(c)(1)(vii). Appellants also urge that dependent claims 14-16 and 19-21 are patentable for the same reasons that claims 6 and 11 are believed patentable. (App. Br. 8, 10). Because we did not find these arguments persuasive, we also sustain the Examiner’s obviousness rejections of dependent claims 14- 16, and 19-21 for the same reasons discussed above regarding independent claims 6 and 11. Claims 1-5 – Second Ground of rejection Regarding representative claim 1, Appellants recite the language of the claim and “submit that, as discussed in detail above, the Eldering in view of Pong fail to teach, disclose or suggest any unified video stream or generation of such unified video stream. Further, as discussed in detail above, Eldering in view of Pong fails to teach, disclose or suggest placing the advertisement material stream relative to the program content stream Appeal 2010-005591 Application 11/552,700 9 independent of any information derived from the camera that is employed to film the program content. Applicants further submit that Vancelette fails to obviate the above stated deficiencies in the teaching of Eldering in view ofVancelette and further in view of Pong.” (App. Br. 9). However, we find no deficiencies regarding the base combination of Eldering and Pong for the reasons discussed above regarding independent claim 6. Because we did not find Appellants’ arguments persuasive regarding independent claims 6 and 11, we sustain the Examiner’s obviousness rejection of representative claim 1 (and dependent claims 4-5, not argued separately) for the same reasons discussed above regarding independent claims 6 and 11. See 37 C.F.R. § 41.37(c)(1)(vii). Remaining Grounds of Rejection 3-6 For each of the remaining grounds of rejection 3-6, Appellants contend that the additional cited secondary references fail to obviate the (previously argued) deficiencies regarding independent claims 1, 6, or 11. (App. Br. 10-12). Because we did not find Appellants’ arguments persuasive regarding independent claims 1, 6 and 11, we sustain the remaining grounds of rejection (3-6) for the same reasons discussed above regarding independent claims 1, 6 and 11. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-005591 Application 11/552,700 10 DECISION We affirm the Examiner’s rejections of claims 1-24 under § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). ORDER AFFIRMED peb