Ex Parte Downey et al

Patent Trial and Appeal Board

Jun 20, 2017

13191370 (P.T.A.B. Jun. 20, 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.
13/191,370 07/26/2011 DAVID DOWNEY 50196-00165 3963
25231 7590 06/22/2017
MARSH, FISCHMANN & BREYFOGLE LLP
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
MACKES, KRIS E
ART UNIT PAPER NUMBER
2153
NOTIFICATION DATE DELIVERY MODE
06/22/2017 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):
PTOMail @ mfblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID DOWNEY, PATRICK M. SHEEHAN,
BRUCE J. ANDERSON, and DANIEL C WILSON
Appeal 2017-005708
Application 13/191,37c1
Technology Center 2100
Before JUSTIN BUSCH, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-7, 11-13, 15, 18-22, 26-28, 32-34, 36, 38—40, and 50-55.2 We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Invidi Tech. Corp. as the real party in interest. Br. 1.
2 The summary paragraphs in the Final Rejection do not match the
Examiner’s rejections. See, e.g., Final Act. 2—9 (summary includes
cancelled claim 17, but does not include claim 53, even though the Examiner
rejects claim 53 on page 9).
Appeal 2017-005708
Application 13/191,370
STATEMENT OF THE CASE
Introduction
Appellants’ claimed invention is directed to “providing information of
interest, such as follow-on advertising, transaction interfaces, product
coupons, or other information, to users of a communications network,”
specifically follow-on content identified when a user is viewing broadcast
media. Spec. 1:23—30. According to the Specification, the invention
improves “the effectiveness of asset delivery.” Id. at 4:5.
Claims 1, 21, 22, and 40 are independent claims. Claims 1, 22, and 40
are representative of the subject matter on appeal and are reproduced below:
1. A method for use in providing additional information
related to items of media content, comprising:
providing a network platform, comprising:
stored media tags, each said tag relating to a defined
item of media content of interest, wherein each defined
item of media content of interest is different such that each
said tag relates to a different defined item of media content
of interest, said stored media tags including a first tag
indexed to an item of broadcast content; and
a search tool for comparing codes relating to said
defined items of media content to said stored media tags;
for each of a plurality of received codes that each uniquely
relates to one of said defined items of media content, operating
said network platform to compare said code to said stored media
tags to identify a corresponding one of said media tags uniquely
relating to said defined item of media content, said operating
comprising accessing a data store for correlating said item of
broadcast content to said first tag;
providing a response to a user, wherein said providing a
response comprises making available to the user a list of the
identified media tags indexed to the user, and wherein the user
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can select one of the indexed media tags for receiving additional
information related to the selected media tag;
establishing a membership account for a user;
receiving one or more inputs defining automated
selections from among said stored media tags;
in response to said inputs, operating said network platform
to identify selected ones of said stored media tags based on said
automated selections; and
associating said selected ones of said stored media tags
with said membership account of the user.
22. A method for use in obtaining additional information
related to items of media content of interest, comprising:
providing a targeted asset delivery system, wherein said
assets are targeted to users of a communications network by
matching target parameters of said assets to classification
parameters of said users;
capturing, using an interface of a user device, a code
relating to a defined item of media content of interest, wherein
said media content of interest corresponds to at least one of said
assets;
transmitting said captured code to a network platform, the
network platform configured to match said captured code to a
library of stored media tags based on identifying said media
content of interest from said code and associating a first stored
media tag with said media content of interest, wherein each
defined item of media content of interest is different such that
each said stored media tag relates to a different defined item of
media content of interest;
receiving a response based on a match between said
captured code and said first stored media tag; and
correlating said captured code relating to a defined item of
media content of interest to at least one of said assets to generate
information regarding the effectiveness of the at least one asset.
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40. A system for obtaining additional information related to
items of broadcast media content of interest, comprising:
a graphical user interface configured to capture a code
relating to a first defined item of broadcast media content;
a user device comprising a transmitter operative to
transmit said captured code to a network platform, the network
platform configured to match said captured code against a
number of stored media tags indexed to defined items of
broadcast media content so as to identify said first defined item
of broadcast media content and a first tag associated therewith,
wherein each defined item of broadcast media content of interest
is different such that each said stored media tag relates to a
different defined item of broadcast media content of interest, and
wherein the user device is selected from the group consisting of
a laptop computer, a desktop computer, and a handheld
computing device;
a receiver operative to receive a response from the network
platform based on a match between said captured code and a
corresponding one of said stored media tags; and
a processor operative to analyze said response and retrieve
a web-based asset for a user,
said web-based asset associated with said corresponding
one of said stored media tags;
wherein said corresponding one of said stored media tags
include instructions regarding the provision of said web-based
asset to said user.
The Examiner’s Rejections
1. Claims 1—7, 11, 15, 18, 19, 21, and 51—53 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Fitzpatrick (US
2008/0201321 Al; Aug. 21, 2008), Philyaw (US 6,708,208 Bl; Mar. 16,
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2004), and Dorogusker (US 2008/0188209 Al; Aug. 7, 2008). Final Act. 2—
9.3
2. Claims 22, 26—28, 32, 36, 38, 39, and 55 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Fitzpatrick, Philyaw, and Zito
(US 2006/0059277 Al; Mar. 16, 2006). Final Act. 9-13.
3. Claims 40 and 50 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fitzpatrick and Philyaw. Final Act. 13—15.
4. Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fitzpatrick, Philyaw, Dorogusker, and Moss (US
2005/0160014 Al; July 21, 2005). Final Act. 15-16.
5. Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fitzpatrick, Philyaw, and Moss. Final Act. 16.
6. Claims 13 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fitzpatrick, Philyaw, Dorogusker, and Maharajh
(US 2008/0195664 Al; Aug. 14, 2008). Final Act. 16-17.
7. Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fitzpatrick, Philyaw, and Maharajh. Final Act. 18.
8. Claim 54 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fitzpatrick, Philyaw, Dorogusker, and Zito. Final Act.
18-19.
ANALYSIS
Appellants assert the Examiner’s proposed combinations do not teach
various limitations of independent claims 1, 21, 22, and 40. Appellants
3 Claims 18—20 depend from cancelled claim 17. In the event of further
prosecution, should Appellants fail to correct the improper dependency, the
Examiner should enter a rejection under 35 U.S.C. § 112.
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argue each of the pending claims are patentable over the asserted prior art
because the combination of Fitzpatrick and Philyaw fails to teach or suggest
“stored media tags indexed to defined items of broadcast media content. . .
such that each said stored media tag relates to a different defined item of
broadcast media content of interest” (the “indexed media tags limitation”),
as recited in independent claim 40 and commensurately recited in
independent claims 1,21, and 22. Br. 9—16, 18, 24—26. Appellants contend
independent claim 1, and the claims which depend therefrom, are patentable
for the additional reason that Fitzpatrick fails to teach or suggest “defining
automated selections” (the “defining automated selections step”), as recited
in claim 1. Id. at 17—22. Finally, Appellants assert independent claim 22,
and the claims which depend therefrom, are patentable for the additional
reason that the combination of Fitzpatrick and Zito fails to teach or suggest
“correlating said captured code relating to a defined item of media content of
interest to at least one of said assets to generate information regarding the
effectiveness of the at least one asset” (the “correlating step”), as recited in
claim 22. Id. at 25—28. We address each of Appellants’ contentions in turn
below.
The Indexed Media Tags Limitation (Claims 1, 21, 22, and 40)
Appellants contend Philyaw, which the Examiner relies on as teaching
the indexed media tags limitation, see Final Act. 4, teaches only that
advertisers each have a unique URL address and does not teach each
barcode being associated with a unique URL address. Br. 10—15 (quoting
Philyaw 20:41—60; Fig. 21). The Examiner interprets Philyaw differently
than Appellants, finding Philyaw teaches “each ‘bar code of a particular
product’ relates to a different ‘unique URL address.’” Final Act. 4 (citing
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Philyaw 20:41—60); Ans. 5 (citing Philyaw 20:54—56). We agree with the
Examiner that Philyaw at least suggests each product bar code being
associated with a unique URL address.
The portion of Philyaw referred to by the Examiner and Appellants is
not clear as to whether a bar code or an advertiser, each of which may have
multiple bar codes, is associated with a unique URL address. See Philyaw
20:52—57. In particular, although the reference to “any number of
advertisers having unique URL addresses,” id. at 20:52—54, could indicate
URL addresses are only unique to advertisers, that statement could indicate
alternatively that each advertiser may have multiple unique URL addresses.
Lurthermore, as the Examiner finds, Philyaw also states “the bar code 1606
of a particular product is associated with a unique URL address which
routes any request for information of that product to that particular
advertiser’s site.” Id. at 20:54—57 (emphases added). That disclosure may
indicate that multiple bar codes from a single advertiser are all directed to
the same site or that each bar code is directed to a particular site for that
product of the advertiser. Importantly, we find the disputed disclosure of
Philyaw at least suggests to a person having ordinary skill in the art that each
product bar code may be affiliated with a unique URL address because such
a person would appreciate that Philyaw may be interested in presenting
different information depending on the particular bar code received.
Moreover, other sections of Philyaw support the Examiner’s findings
that Philyaw would have taught or suggested to a person having ordinary
skill in the art that each bar code may be affiliated with a unique URL
address. One example in Philyaw discloses “a user requesting product
information of a Product X [by submitting a bar code for Product X] may get
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the requested information of Product X along with advertisements for a
competing item Product Y.” Id. at 17:27-47. Accordingly, we are not
persuaded the Examiner erred in finding Philyaw teaches or suggests the
indexed media tags limitation.
Appellants further argue it would not have been obvious to combine
Philyaw and Fitzpatrick because Fitzpatrick involves tailoring ads to users
based on user profiles and modifying Fitzpatrick to provide unique tags,
which the Examiner finds Philyaw teaches, would destroy the purpose of
matching ads to users using Fitzpatrick’s disclosed filtering. Br. 15—16. The
Examiner finds Fitzpatrick presents static content based on the received code
in addition to the dynamic content based on a user profile and, therefore,
“[associating the static content with a unique tag and code would have
made the retrieval of the content more efficient and faster.” Final Act. 4—5
(citing Fitzpatrick 178); Ans. 5 (citing Fitzpatrick 178). We also agree with
the Examiner that a person having ordinary skill in the art would have
combined the cited teachings from Philyaw with those of Fitzpatrick.
The Examiner correctly finds Fitzpatrick discloses presenting both
static and dynamic content in response to receiving a code. Specifically,
Fitzpatrick discloses that “a scanned code will yield two components in the
Reply Message content: i) static content that is the same for every user who
scans the code, and ii) dynamic content that depends on the context of the
user and the user profile.” Fitzpatrick 178. Appellants’ argument that the
proposed modification of Fitzpatrick would “destroy the ability to match or
associate an ad to a scan by filtering or a query heuristic,” Br. 16, is not
persuasive because the filtering and heuristics described in paragraphs 78
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and 79 of Fitzpatrick relate to the dynamic content component, not the static
content component. See Fitzpatrick || 78, 79.
Appellants also argue independent claims 1,21, and 22 are allowable
for the same reasons as argued above because: (1) they each recite
limitations similar to the indexed media tags limitation; (2) the Examiner
relies on the combination of Fitzpatrick and Philyaw for teaching the
commensurate limitations in claims 1,21, and 22; and (3) the Examiner does
not find the additional references cited in the rejections of claims 1,21, and
22 cure the alleged deficiency of the Fitzpatrick-Philyaw combination. Id. at
18, 24, 25—26. Appellants present no separate substantive arguments for
claim 50, which depends from claim 40, or for independent claim 21 and
claims 51 and 52,4 which ultimately depend from claim 21. Br. 16, 24.
Accordingly, for the reasons discussed above, we are not persuaded the
Examiner erred in finding the combination of Fitzpatrick and Philyaw
teaches or suggests the indexed media tag limitation recited in claims 21, 40,
50, and 51, and we affirm those rejections. For the same reasons, we are not
persuaded the Examiner erred in finding the combination of Fitzpatrick and
Philyaw teaches or suggests the indexed media tag limitation recited in
claims 1 and 22. In the following sections, we address Appellants’
additional patentability arguments regarding claims 1 and 22, and the claims
which depend therefrom.
The Defining Automated Selections Step (Claim 1)
Appellants argue paragraph 78 of Fitzpatrick, which the Examiner
relies on for teaching the defining automated selections step, “does not relate
4 Appellants do not identify claim 52, which depends from claim 21 via
claim 51, in their Appeal Brief. We treat claim 52 as argued with claim 21.
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to automated selections.” Br. 18—23. Specifically, Appellants contend that,
although paragraph 78 of Fitzpatrick discloses using heuristics to match ads
to users based on their profiles, the matching is only in response to a scanned
code (i.e., it is not based on an automated selection). Id. at 22. The
Examiner finds Fitzpatrick delivers content to a user that includes both static
and dynamic components. Ans. 7. The Examiner further finds the static
component is related to the scanned code and the dynamic component “is
automatically selected based on a user’s profile.” Ans. 7 (citing Fitzpatrick
178). We agree with and adopt the Examiner’s findings.
Although the portion of Fitzpatrick that the Examiner cites relates to
content generated in response to receiving a scanned code, see Fitzpatrick
178, the dynamic component of that content is determined using previously
stored information from a user’s profile without further input from the user
at the time the content is being generated. As explained by the Examiner,
paragraphs 58 and 71 of Fitzpatrick teach or suggest receiving input and
creating a user profile, including content interests, such that the system can
automatically select appropriate content based on those interests in response
to the user scanning codes. Final Act. 3^4. Thus, applying the broadest
reasonable interpretation, we agree with the Examiner that Fitzpatrick
teaches or suggests the defining automated selections step. Moreover,
Fitzpatrick further discloses pushing advertisements to users without a code
scan. See Fitzpatrick || 82—89 (“Non-Triggered Ad Serving”).
Appellants present no separate substantive arguments for claims 2—7,
11—13, 15, 18—20,5 53, and 54, which depend from claim 1, or claim 51,
5 We note, again, that claims 18—20 were not corrected to depend from claim
1 when claim 17 was cancelled and the limitations from claim 17 were
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which depends from claim 21. Br. 23. Accordingly, for the reasons
discussed in this section with respect to the defining automated selections
step, and in the previous section with respect to the indexed media tag
limitation, we are not persuaded the Examiner erred in rejecting claims 1—7,
11-13, 15, 18-20, 53, and 54.
The Correlating Step (Claim 22)
Appellants further argue the combination of Fitzpatrick and Zito fails
to teach or suggest the correlating step. Br. 26—28 (emphasis added).
Appellants acknowledge that the Examiner relies on a combination of
Fitzpatrick and Zito as teaching the correlating step, but then assert the
Examiner relies solely on Zito as teaching the correlating step. Id. at 26
(“the Examiner relies on a combination of Fitzpatrick and Zito as allegedly
disclosing the subject matter regarding the” correlating step), 27 (“the
Examiner relies exclusively on Zito as teaching” the correlating step).
Appellants then argue the Examiner recognizes Fitzpatrick fails to disclose
the correlating step and “Zito also fails to disclose correlating a captured
code relating to a defined item of media content of interest,” as recited in
claim 22, because Zito “is passive and requires no user input.” Id. at 28
(citing Zito 116). Appellants thus argue that, because Zito monitors and
correlates all media (as opposed to just a captured code) with purchasing
behavior, Zito fails to teach the correlating step.
Appellants are correct that the Examiner stated Fitzpatrick does not
explicitly disclose the correlating step and that Zito teaches the correlating
moved into claim 1. However, because these claims are not argued
separately and we affirm the rejection, we merely note this error in case of
further prosecution.
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step. See Final Act. 10-11. The Examiner additionally finds, however, that
it would have been obvious to modify the Fitzpatrick-Philyaw system, which
includes captured codes, with Zito’s tracking system. Id. at 11. The
Examiner clarifies that Fitzpatrick teaches “correlating a captured code
(paragraph 78) while the Zito reference generates the information regarding
the effectiveness of at least one asset (abstract and paragraph 57),” and states
that Appellants’ arguments improperly attack the references individually
when the rejection is based on a combination of references. Ans. 8—9.
We agree with the Examiner that the combination of Fitzpatrick,
Philyaw, and Zito teaches or suggests the subject matter recited in claim 22.
First, we note it is clear the Examiner relied on the combination of
Fitzpatrick and Philyaw as teaching every limitation recited in claim 22
except for the correlating step. Final Act. 9—11. In particular, the Examiner
finds, and Appellants do not contest, the combination of Fitzpatrick and
Philyaw teach or suggest capturing a code, transmitting the captured code,
and receiving a response based on the captured code. Id. Accordingly,
although the Examiner did not explicitly state it in the Final Action, the
combination itself implies the combination of Fitzpatrick and Philyaw
teaches the captured code, and Zito teaches or suggests correlating of an
item of media content to an asset to generate effectiveness information. Id.
at 10—11. Furthermore, as stated above, the Examiner clarified the rejection
in the Answer. See Ans. 9. Appellants elected not to file a Reply Brief.
Accordingly, Appellants’ argument against the references individually, when
the rejection is based on a combination, is unavailing. See In re Keller, 642
F.2d 413, 426 (CCPA 1981). Fitzpatrick, Philyaw, and Zito considered
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together would have suggested to one of ordinary skill the subject matter of
claim 22.
Appellants present no separate substantive arguments for claims 26—
28, 32—34, 36, 38, 39, and 55,6 which depend from claim 22. Br. 28.
Accordingly, for the reasons discussed in this section with respect to the
correlating limitation and in the prior section with respect to the indexed
media tag limitation, we are not persuaded the Examiner erred in rejecting
claims 22, 26—28, 32—34, 36, 38, and 39.
DECISION
We affirm the Examiner’s decision rejecting claims 1—7, 11—13, 15,
18-22, 26-28, 32-34, 36, 38—40, and 50-55.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
6 Appellants do not identify claim 55, which depends from claim 22, in their
Appeal Brief. We treat claim 55 as argued with claim 22.
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