Ex Parte Eldering

Patent Trial and Appeal BoardNov 23, 2012

11412750 (P.T.A.B. Nov. 23, 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. 11/412,750 04/27/2006 Charles A. Eldering T721-18-2 8252 81712 7590 11/23/2012 Carlineo, Spicer & Kee, LLC 2003 S. Easton Road, Suite 208 Doylestown, PA 18901 EXAMINER SHELEHEDA, JAMES R ART UNIT PAPER NUMBER 2424 MAIL DATE DELIVERY MODE 11/23/2012 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 CHARLES A. ELDERING ____________________ Appeal 2010-011258 Application 11/412,750 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011258 Application 11/412,750 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1-19. We have jurisdiction under 35 U.S.C. Â§ 6(b). An oral hearing was held on November 8, 2012. Appellant has elected to group claims 1-12 and 15- 19 together as a group. (App. Br. 10). Therefore, we will address Appellants' arguments with respect to representative independent claim 1. We affirm. The claims are directed to targeted advertising in television programming or other media delivery systems. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of transmitting television programming and advertising from a head end to subscribers at a plurality of subscriber nodes, the method comprising: (a) creating a plurality of subscriber groups, members of the subscriber groups being based on at least one characteristic of the subscribers, the at least one characteristic being relevant to advertising; (b) assigning each of the subscriber nodes to one of the plurality of subscriber groups; (c) receiving at the head end at least one programming channel of television programming, the at least one programming channel including programming content and advertising avails; (d) receiving at the head end a request from at least one of the subscriber nodes for programming content; (e) forming a presentation channel by replicating the at least one programming channel, the presentation channel Appeal 2010-011258 Application 11/412,750 3 including the programming content of the at least one programming channel and advertising placed within said advertising avails corresponding to the assigned group; and (f) transmitting the presentation channel to the at least one subscriber node. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Adams US 6,378,130 Bl Apr. 23, 2002 Eldering US 7,039,932 B2 May 02, 2006 (provisionally filed Aug. 31, 2000) Bar-El WO 99/26415 May 27, 1999 REJECTIONS Claims 1-12 and 15-19 stand rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Bar-El. Claims 13 and 14 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Bar-El in view of Adams. Claim 10 stands rejected on the ground of nonstatutory obviousness- type double patenting as being unpatentable over claim 32 of Eldering. Claim 1 stands rejected on the ground of nonstatutory obviousness- type double patenting as being unpatentable over claim 1 of Eldering. Appeal 2010-011258 Application 11/412,750 4 ANALYSIS Obviousness-Type Double Patenting Appellant provides no argument in the Reply Brief or Appeal Brief for the nonstatutory obviousness-type double patenting rejection and merely indicate that Appellant "would be willing to file a Terminal Disclaimer if doing so would result in the application being placed in condition for allowance." (App. Br. 16 and 17). Therefore, we will sustain the rejection of independent claims 1 and 10 based upon nonstatutory obviousness-type double patenting. 35 U.S.C. Â§102 With respect to Appellant's arguments concerning independent claims 1 and 10, Appellant argues the claims as a single group (App. Br. 10). Throughout the Appeal Brief and the Reply Brief, Appellant's main contention is that the Examiner's interpretation of the claimed "avail" is "completely inconsistent with its plain meaning" and that the Examiner's reliance upon the "bulletin board style advertising of the Bar-El reference results from a shallow and incorrect reading of the claims and the specification." (For example, App. Br. 12). We find Appellant's arguments and identification of proffered error in the Examiner's showing of anticipation to be unavailing. We find that Appellant's arguments throughout the Reply Brief to go well beyond the broad language of independent claim 1 which merely sets forth: A method of transmitting television programming and advertising from a head end to subscribers at a plurality of subscriber nodesâ€¦ Appeal 2010-011258 Application 11/412,750 5 (c) receiving at the head end at least one programming channel of television programming, the at least one programming channel including programming content and advertising availsâ€¦ (e) forming a presentation channel by replicating the at least one programming channel, the presentation channel including the programming content of the at least one programming channel and advertising placed within said advertising avails corresponding to the assigned group; and (f) transmitting the presentation channel to the at least one subscriber node. (Claim 1) (emphasis added). Appellant has not shown how the steps of "receivingâ€¦", "formingâ€¦", and "transmittingâ€¦" are different than those described by the Bar-El reference. Appellant contends that the Bar-El reference describes different placement of the advertising content. (App. Br. 14). We find Appellant's argument is not well supported by the express language of independent claim 1. Independent claim 1 merely sets forth that content is received, content is formed and content is transmitted. We find that the Bar-El reference describes those claimed method steps. We further find, contrary to Appellant's urgings, that Appellant's reliance upon page 6 of the Specification with respect to a proffered definition or context of the claim term "avails" for its ordinary and customary meaning evidences a sufficiently broad definition of the term as the Examiner has identified in the broadest reasonable interpretation. Appellant's Specification states: a television service provider (TSP) receives a plurality of television programming channels (e.g., ABC, NBC, CBS, FOX, UPN) containing television programming as well as spaces Appeal 2010-011258 Application 11/412,750 6 interspersed within the programming for advertisements. Such advertisement intervals are herein termed "avails". Some, all or none of the avails may be filled with advertisements as delivered to the television service provider, while some all or none of the avails may be empty with the intent that the TSP insert advertisements into them. (Spec. 6) (emphasis added). We disagree with Appellantâ€™s proffered interpretation and find that the Specification does not provide a definition beyond that expressly set forth therein. Appellant provides a number of definitions in the Appeal Brief, but these definitions do not contain dates which evidence their relevance to the invention at the time of filing (and claim of priority). Appellant identifies a definition from 1994 (a date prior to the 2000 effective filing date) from the Telecommunications Management (Reply Br. 6, n. 3) "defining an avail as an advertising slot." While we find this definition relevant, this definition does not necessarily relate to a "temporal location" or "spatial location" (Reply Br. 8-12) as proffered by Appellant in distinguishing from the bulletin board style advertisement of the Bar-El reference. Therefore, we find Appellant's argument to be unavailing. We give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). We find the broad definition of advertising intervals to be broadly but reasonably interpreted to also encompass bulletin board styled advertisement placement in the programming since the definition of avail does not necessarily contain any set time period for display or presentation of a sequence of advertising. Appeal 2010-011258 Application 11/412,750 7 Furthermore, we find that the type and content of the advertising data does not necessarily change the method of transmitting television programming and advertising as recited in independent claim 1. Therefore, we find Appellant's arguments do not show error in the Examiner's showing of anticipation based upon the Bar-El reference. Appellant's contends that the "avail" is a traditional time slot within a presentation stream, separate and distinct from the programming content into which an ad may be "inserted" and further that the "bulletin board" advertisement is the opposite of an advertisement interval (i.e., a temporal location or an "avail") for splicing an advertisement into a programming stream" and that "a digitally controlled video switch may simply switch the source between the presentation channel and an advertising stream â€¦ at the beginning and end of avails." (Specification at page 13, line 29)." (App. Br. 8). We find all of Appellant's arguments are not commensurate in scope with the express language of independent claim 1. Therefore, Appellant's arguments are not persuasive of error in the Examiner's showing of anticipation. Therefore, we will sustain the rejection of representative independent claim 1 and claims a 2-12 and 15-19 grouped therewith by Appellant. 35 U.S.C. Â§103 With respect to dependent claims 13 and 14, Appellant relies upon the arguments advanced with respect to independent claim 10. Since we found Appellant's arguments to be unpersuasive of error in the Examiner's showing of anticipation, we similarly find Appellant's arguments to be unpersuasive with respect to the obviousness rejection. Appeal 2010-011258 Application 11/412,750 8 CONCLUSIONS OF LAW The Examiner did not err in rejecting independent claim 1 based upon anticipation over the Bar-El reference. The Examiner did not err in rejecting independent claims 1 and 10 based upon nonstatutory obviousness-type double patenting. DECISION For the above reasons, the Examinerâ€™s rejection of claims 1-12 and 15-19 is affirmed. The Examinerâ€™s rejection of claims 13 and 14 based upon obviousness is affirmed. The Examinerâ€™s rejections of claims 1 and 10 based upon nonstatutory obviousness-type double patenting are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(iv). AFFIRMED pgc