Ex Parte Do et al

Patent Trial and Appeal Board

Sep 25, 2012

11565040 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHUC KY DO
and
JUSTIN MONROE PIERCE
____________

Appeal 2010-009310
Application 11/565,040
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009310
Application 11/565,040

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 3 to 7, 9, 10, 12 to 15, and 17 to 20. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative:
1. A computer implemented method for varying the amount
of received advertising content, the method comprising:
providing a portion of a plurality of levels of advertising
to a user, wherein the portion of the plurality of levels indicates
an amount of advertising content to be received by the user;
responsive to receiving a user input selecting the portion
of the plurality of levels, inserting the amount of advertising
content into a media content to form a modified media content,
wherein the amount of advertising content corresponds to the
portion of the plurality of levels selected by the user, wherein
the user dynamically selects the portion of the plurality of
levels as the media content is transmitted to the user, and
wherein the advertising content is prorated based on the amount
of time remaining within the media segment when the portion
of the plurality of levels is dynamically selected; and
transmitting the modified media content to the user.

Appellants appeal the following rejections:
1. Claims 1 and 15 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
2. Claims 1, 3 to 7, 9 to 10, 12 to 15, and 17 to 20 under 35 U.S.C. § 102(b)
as anticipated by Sender ( US 2003/0149618 A1, pub. Aug. 7, 2003).

Appeal 2010-009310
Application 11/565,040

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ANALYSIS
Indefiniteness
We will not sustain the Examiner’s rejection of claims 1 and 15 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as the invention. In the Examiner’s view, the
Specification is providing conflicting disclosure of “dynamically.” The
Examiner directs our attention to paragraph [0040] of the Specification as
disclosing that the user selects a portion of advertising content prior to
presentation of the media segment and that the user selects the advertising
content dynamically during the viewing of the advertisement.
We agree with the Examiner that the Appellants’ disclosure at
paragraph [0040] states that the user can select the portion of advertisement
prior to the presentation and that the user may select the portion dynamically
while the media segment is being presented to the user. However, the
Appellants’ Specification clearly identifies each of these as different
embodiments. As such, in our view, the recitation in the claims of
“dynamically selects the portion of the plurality of levels as the media
content” is a recitation directed to the embodiment that relates to selection
while the media segment is presented.

Anticipation
We will not sustain the rejection of claim 1 under 35 U.S.C. § 102(b)
as being anticipated by Sender. Sender does not disclose dynamically
selecting a portion of the plurality of levels of advertisement as the media
content is transmitted to the user. Rather, Sender at paragraph [0074]
Appeal 2010-009310
Application 11/565,040

4
discloses that the user selects the amount of advertisement to view prior to
downloading and therefore viewing the media package.
The Examiner relies on paragraph [0091] for teaching that the viewer
can dynamically select the portion of the plurality of levels as the media
content is transmitted to the user. We find that this paragraph of Sender
discloses that a method of determining whether the advertising content was
disabled or tampered with in some way. If it is determined that the content
was disabled or tampered with, additional charges may be levied or other
appropriate action taken. This portion of Sender is not a disclosure of the
user dynamically selecting a portion of a plurality of levels of
advertisements provided by the system as required by claim 1. In addition,
there is no disclosure in this portion of Sender of prorating based on the
amount of time remaining.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 and dependent claims 3 and 4 to 6. We will also not sustain the
rejection of the remaining claims because each of the independent claims
includes the subject matter found lacking in the Sender reference.

DECISION
We REVERSE the Examiner’s § 112, second paragraph and § 102(b)
rejections.

REVERSED

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