Ex Parte Gonzalez et al

Patent Trial and Appeal Board

Aug 30, 2013

11314844 (P.T.A.B. Aug. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/314,844 12/21/2005 Carlos J. Gonzalez SDK0735.001US
(1694/9/2)
8149
7590 09/03/2013
Jenkins, Wilson, Taylor & Hung PA
University Tower, Suite 1200
3100 Tower Boulevard
Durham, NC 27707
EXAMINER
LEE, CHUN KUAN
ART UNIT PAPER NUMBER
2181
MAIL DATE DELIVERY MODE
09/03/2013 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 CARLOS J. GONZALEZ,
EDWIN J. CUELLAR, and SUSAN A. CANNON
____________________

Appeal 2011-004220
Application 11/314,844
Technology Center 2100
____________________

Before THU A. DANG, JAMES R. HUGHES,
and JEFFREY S. SMITH, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004220
Application 11/314,844

2
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-7, 9-27, and 29-37 (App. Br. 2). Claim 8 has been allowed and
claim 28 has been canceled (id.). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
A. INVENTION
Appellants’ invention is directed to a removable memory device
having an application that launches in a display window advertisement
content which is stored within the removable memory device; wherein, the
application is launched from the removable memory device and executed on
a connected host system when the removable memory device connects to the
host system (Abstract).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A removable memory device, comprising:

a plurality of re-programmable non-volatile memory cells
for storing advertisement content; and

a memory controller interfacing with the plurality of re-
programmable nonvolatile memory cells;

wherein an advertising client application stored at the
removable memory device is launched from the removable
memory device and executed on a host system when the
removable memory device interfaces with the host system, and
the advertising client application launches a display window on
a display device;
and
Appeal 2011-004220
Application 11/314,844

3

wherein the display window is controlled by the
advertising client application instead of a user using the host
system and the advertising client application controlled display
window is used to display the advertisement content that is
stored at the plurality of re-programmable non-volatile memory
cells or stored at a server that is accessible by the host system
via a network connection.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wang US Patent App. Pub. No.: 2001/0013131 A1 Aug. 9, 2001
Buch US Patent 6,463,468 B1 Oct. 8, 2002
Banerjee US Patent. App. Pub. No.: 2002/0147638 A1 Oct. 10, 2002
Yamada US Patent. App. Pub. No.: 2004/0078385 A1 Apr. 22, 2004

Claims 1, 2, 4, 7, 13, 15, 16, 18, 20, 22, 29, and 30 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Wang in view of
Yamada and Buch.
Claims 3, 5, 6, 9-12, 14, 17, 19, 21, 23-27, and 31-37 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Wang in view of
Yamada, Buch, and Banerjee .

II. ISSUE
The dispositive issue before us is whether the Examiner has erred in
determining that the combination of Wang, Yamada, and Buch teaches or
would have suggested a removable memory device, “wherein an advertising
client application stored at the removable memory device is launched from
Appeal 2011-004220
Application 11/314,844

4
the removable memory device and executed on a host system when the
removable memory device interfaces with the host system, and the
advertising client application launches a display window on a display
device” (claim 1, emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Wang
1. Wang discloses a data memory card 49 which when it is
inserted into the memory card plug-in slot 47, a microprocessor 41of the
host system retrieves a control program stored on the data memory card 49
that adjusts microprocessor’s 41 system parameters (step 54) and the
microprocessor 41 broadcasts an advertising program stored within the data
memory card 49 using the adjusted system parameters (step 55) (Fig. 5; ¶
[0038]). Thereafter, advertising program stored within the data memory
card 49 can be played back as many times as required (¶ [0036]).
Yamada
2. Yamada discloses a server system that delivers content to a
client and a content reproducing apparatus that reproduces delivered content
using a reading-out program for reading out advertisement information from
a memory of the content reproducing apparatus when the content
reproducing apparatus is connected to the client computer, a connecting
program for connecting to the server system based on the advertisement
information, and an updating program for updating the advertisement
Appeal 2011-004220
Application 11/314,844

5
information of the memory by the new advertisement information
transmitted from the server system (¶ [0019]).
Buch
3. Buch discloses an access control system having a viewer
program that provides a user with Internet network access in exchange for its
ability to send video advertising files to the user through a network
connection; wherein, advertising files are downloaded when the user is not
actively using the bandwidth of the network connection to download Internet
content of the user’s choosing (Abstract). A viewer program of the access
control system periodically opens a viewer window on the user’s machine,
which opens on top of any other window and displays a video ad from the ad
pool (id.).
4. A database of the ad pool is keep secure from access by the user
(col. 8, ll. 43-47).

IV. ANALYSIS
Claim 1, 13, 15, 18, 22, 29, and 30
As to claim 1, Appellants contend that “Wang discloses only an
advertising program” that “refers to the ad content” and a “control program
that only configures system parameters, which are unrelated to advertising”
(App. Br. 9). Appellants argue that there “is no indication in either [Yamada
or Buch] that the application that controls the display of ad content is stored
on or launched by the removable memory device” (App. Br. 10). Appellants
contend further that “Yamada teaches away from launching an advertising
client application from [an external device]” (App. Br. 11), that “Yamada
also discloses that the display of ad content is controlled by the user, rather
Appeal 2011-004220
Application 11/314,844

6
than an application” (id.) and that Buch’s “viewer program is stored on the
host system and is never described as being located on a removable memory
device” (App. Br. 14). Finally, Appellants contend that “[t]here would be no
reason for a person of ordinary skill in the art to place the ad viewer of Buch
on a music reproducing apparatus or on a memory card … because both
Yamada and Wang disclose host-resident ad viewers” (App. Br. 15).
However, the Examiner finds that “Wang teaches a data memory card
(e.g. removable memory device) where control program (e.g. advertising
client application) is launched from the data memory card and executed by
host system (Fig. 4, ref. 40) to display advertising program (e.g. ad content)
on a display device” “wherein the control program controls system
parameters to control the displaying of the advertising program, such as
playing back the advertising program as many time as required” (Ans. 27).
The Examiner finds further that “Yamada and Buch teach advertisement
control functions including launching the application controlled display
window, retrieving the ad content to be displayed on the display window,
and display the ad content in the display window” (Ans. 27-28).
We give the claim its broadest reasonable interpretation consistent
with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). Claim 1 does not define “advertising client application” other than it
may be launched from a removable memory device and executed on a host
system when removable memory device interfaces with the host system and
that it launches a display window which it controls to display advertisement
content. Thus, we give “an advertising client application” its broadest
reasonable interpretation as executable data stored on a storage device which
Appeal 2011-004220
Application 11/314,844

7
is executed on a host system that launches a window for displaying data
related to advertising, as consistent with the Specification and claim 1.
Wang discloses a data memory card which when it is inserted into the
memory card plug-in slot, a microprocessor the host system retrieves a
control program stored on the data memory card which adjusts the
microprocessor’s system parameters for broadcasting an advertising program
stored within the data memory card using the adjusted system parameters
(FF 1). We find that the control program comprises executable data stored
on a storage device which is executed on a host system.
In addition, Yamada discloses a server system that delivers content to
a client and a content reproducing apparatus that reproduces delivered
content using a reading-out program for reading out advertisement
information from a memory of the content reproducing apparatus when the
content reproducing apparatus is connected to the client computer (FF 2).
We find that the reading-out program comprises executable data stored on a
storage device which is executed on a host system for displaying data related
to advertising.
Further, Buch discloses an access control system having a viewer
program that periodically opens a viewer window and displays video ads
from the ad pool on a user’s computer system (FF 3). We find that the
viewer program comprises executable data stored on a storage device which
is executed on a host system that launches a window for displaying data
related to advertising.
In view of our claim construction above, we conclude that the
combination of Wang, Yamada, and Buch at least suggests all of the claim
limitations of claim 1.
Appeal 2011-004220
Application 11/314,844

8
We also agree with the Examiner’s explicit motivation that combining
the references would be obvious since “to expand the display of advertising
contents to include contents from the Internet as well as the efficiency in
displaying the advertisement contents as the troublesome task of browsing
the Internet is eliminated” and “ensuring the advertisement contents are
viewed” (Ans. 28). The Supreme Court has stated that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007).
Thus, we find no error in the Examiner’s conclusion that the
combination of Wang’s system including a data memory card (including
control program and advertising program) that when connected to a host
computer broadcasts advertising content with the Yamada’s reading-out
program and Buch’s viewer program that launches a window for displaying
advertising content, produces executable data stored on a storage device
which is executed on a host system that launches a window for displaying
data related to advertising which would be obvious (Ans.28; FF 1-3).
Accordingly, we find no error in the Examiner’s rejection of claim 1
over Wang in view of Yamada and Buch. Therefore, claims 13, 15, 18, 22,
29, and 30 (depending from claims 1) which have not been argued
separately, fall with claim 1.
Claims 2, 4, 7, 16, and 20
As for claims 2, 7, and 16, Appellants repeat the argument that “there
is no advertising client application stored on the memory card of Wang” but
instead “the program is the advertising content itself,” and that “Yamada
does not mention the launching of any applications” (App. Br. 17, 19, and
Appeal 2011-004220
Application 11/314,844

9
20). However, as discussed above, we agree with the Examiner that the
combination of Wang, Yamada, and Buch at the least suggests such feature.
Accordingly, we find no error in the Examiner’s rejection of claims 2, 7, and
16 over Wang in view of Yamada and Buch.
As for claim 4, Appellants contend that “Yamada disclose only the
updating of ad content and not the updating of an application” (App. Br. 18).
However, the Examiner finds that “the updating of the ad content [disclosed
in Yamada] does suggest that the advertising client application is updated”
(Ans. 31).
As to claim 20, Appellants contend that Yamada discloses that “the
[menu] choices presented to the user are likewise content based, rather than
application based” (App. Br. 21). However, the Examiner concludes that
“by combining Yamada and Bush’s menu that is utilized for selecting which
ad content to view with Wang’s application that is utilized for controlling
the viewing of the ad content; the resulting combination of the references
does suggest a menu utilizing by a user to select the ad content and
corresponding application for viewing the ad content” (Ans. 36).
We agree with the Examiner’s conclusion that the combination of
Wang, Yamada, and Buch would at least have suggested the features of
claims 4 and 20, for the reasons given by the Examiner in the Final
Rejection and Examiner’s Answer (Ans. 30 and 36). We adopt the findings
of fact made by the Examiner as our own and concur with the conclusions
made by the Examiner regarding these claims.
Accordingly, we find no error in the Examiner’s rejection of claims 4
and 20 over Wang in view of Yamada and Buch.
Appeal 2011-004220
Application 11/314,844

10
Claims 3, 5, 6, 9-12, 14, 17, 19, 21, 23-27, and 31-37
As to claim 3, Appellants contend that “Banerjee does not disclose the
launching of an ad displaying application from a non-volatile memory
device” (App. Br. 22), but instead “the ad content would be understood to be
a web browser launched from the consumer computer” (App. Br. 23).
Appellants present similar arguments for claims 14 and 36 (App. Br. 28 and
42-43). However, the Examiner points out that the “resulting combination
of Wang, Yamada and Bush does teach an application (e.g. control program)
that resides on a removable memory device” (Ans. 37).
As to claim 5, Appellants contend that “[t]here is no mention of
authentication or authentication as a condition to view ad content stored on a
memory device” (App. Br. 24). However, the Examiner points out that
“Banerjee does teach/suggest authentication or authentication as a condition
for accessing ad content as Java provides a secure programming (e.g. secure
via authentication)” (Ans. 38).
Appellants do not provide arguments for claim 6 separate from those
of claim 5 (App. Br. 24).
As for claim 9, Appellants contend that “it would not have been
obvious to a person of ordinary skill in the art to tie cash rewards as
disclosed in Banerjee with memory device functionality” (App. Br. 25).
However, the Examiner concludes that “by combining Banerjee’s reward
associated with viewing of ad contents with Wang, Yamada and Bush
viewing of ad content on the memory device, the resulting combination of
the references does suggest the reward of utilizing the memory device is
made unavailable to a user if the application does not interface with the
memory controller within a certain time period” (Ans. 40).
Appeal 2011-004220
Application 11/314,844

11
As to claim 10, Appellants contend that the Examiner “fails to address
[the claim limitation] … which indicates the application detects a network
connection when the host system interfaces with the server” (App. Br. 26).
However, the Examiner points out that “by combining Banerjee’s secure
programming with Wang, Yamada and Bush’s, the application detects a
network connection when the host system interfaces with a server and the
advertisement content is updated” (Ans. 42).
Appellants do not provide arguments for claim 11 separate from those
of claim 10 (App. Br. 27).
As for claim 12, Appellants contend that the Examiner “fails to
indicate where the subject matter of claim 12 is found in Wang, Yamada,
Buch, or Banerjee” (App. Br. 27). Appellants present similar arguments for
claim 37 (App. Br. 43). However, the Examiner points out that “the
resulting combination of the Wang, Yamada, Buch, or Banerjee does teach
displaying the updated advertisement content stored in the memory device is
displayed when the network connection is inactive” (Ans. 42-43).
As for claim 17, Appellants contend that “[n]either window is a
memory device menu where the user can activate the application that
controls the display of the ad content, because Figures 7 and 8 of Yamada
are the ad content” (App. Br. 29, emphasis mitted). However, the Examiner
finds that “Yamada does teach utilizing a menu for activating the ad content,
wherein the ad content is control by the advertising client application, and
Banerjee teaches a user activating the displaying of the ad content” (Ans.
45).
As for claim 19, Appellants contend that even though Yamada
“disclose[s] the incorporation of advertisements in computer games,”
Appeal 2011-004220
Application 11/314,844

12
Yamada does not “discloses providing computer games as an incentive for
watching advertising content that is displayed in another portion of the
window” (App. Br. 30). However, the Examiner finds that “Banerjee does
teach integrating games into the viewing of the advertisements” and
concludes that “the resulting combination of the references does
teach/suggest the above claimed feature” (Ans. 46-47).
As for claim 21, Appellants contend that although Banerjee discloses
“resource preservation mechanisms that exist with some applications where
a user is automatically logged off of the Internet after a period of inactivity,”
“[t]he purpose of such applications is to preserve the processing capability of
the underlying resource and have nothing to do with ads or memory
controllers” (App. Br. 32). However, the Examiner finds that “Banerjee
does teach that the user is rewarded in response to viewing ad contents” and
concludes that “by combining Banerjee’s reward incentive with Wang,
Yamada and Bush’s viewing of ad content on the memory device, the
resulting combination of the references does suggest the reward of utilizing
the memory device is deactivated” (Ans. 49).
As for claim 23, Appellants contend that although “Banerjee mentions
that an ad is transferred from the advertiser’s computer to the consumer’s
computer in response to a detected event, such as the user entering a
kitchen,” “[t]here is no mention of the user setting any policies or of
communication between a server and a memory device” in any of the recited
portions of Banerjee (App. Br. 33). However, the Examiner finds that
“Banerjee discloses real time advertisement functionality associated with the
advertisement provider” and concludes that “by combining Banerjee with
Wang, Yamada and Bush’s viewing of ad content wherein the removable
Appeal 2011-004220
Application 11/314,844

13
memory is connected to the server for updates (e.g. modifies the policies via
update)” “the resulting combination of the references would suggest the
entity modifies policies (e.g. updating the removable memory)” (Ans. 50).
As for claim 24, Appellants contend that “Banerjee disclose[s] that the
advertisement provider computer, rather than an application residing on a
host computer, reports the amount of time that advertisement is viewed”
(App. Br. 34). However, the Examiner points out that “the combination of
the references does teach/suggest that the amount of time that advertisement
is viewed is being reported” (Ans. 52).
As to claim 25, Appellants contend that “[t]here is no mention of
monitoring an amount of time that a memory device interfaces with a host
system” in any of the recited portions of the references (App. Br. 35).
However, the Examiner finds that “the combination of the references does
teach/suggest that the amount of time that advertisement is viewed is being
measured for reporting” (Ans. 53).
Appellants do not provide arguments for claim 26 separate from those
of claims 24 and 25 (App. Br. 35-36).
As for claim 27, Appellants contend that “Banerjee merely disclose
how cookies work” “Banerjee nowhere indicates that an application transfers
browsing data to a removable memory device” (App. Br. 37). However, the
Examiner finds that “Banerjee teaches secure transferring of cookie (e.g.
Internet browsing data) associated with the advertisement provider” (Ans.
56) and concludes that by combining the teachings of Banerjee “with Wang,
Yamada and Bush’s displaying of the advertisements on the host from the
removable memory (advertisement provider), wherein the advertisement
client application is stored in a secured area of the memory device,” “the
Appeal 2011-004220
Application 11/314,844

14
resulting combination of the references” at least suggest the claimed feature
(id.).
As to claim 31, Appellants contend that although Fig. 3 of “Banerjee
discloses the display of ads in response to user activities and updating the
ads in response to new user activities,” “[t]here is no mention of cycling
through ad content stored in a removable memory device and displaying
each ad for a different time period” (App. Br. 38). However, the Examiner
points out that he “is relying on Wang and Bush for the teaching of the
above claimed feature” (Ans. 58).
As for claim 32, Appellants contend that although “Banerjee disclose
the incorporation of ads and games,” it “nowhere mention[s] the measure of
exposure time to ads based on user interaction with a game or responses to
questions” (App. Br. 39). However, the Examiner points out that “the
features upon which [A]ppellant[s] relies (i.e., measure of exposure time) are
not recited in the rejected claim(s)” (Ans. 59).
As for claim 33, Appellants contend that although “Banerjee discloses
that advertisements displayed to the user are updated in response to new user
activity” “the user, rather than the application determines when to ask for
more ad content” (App. Br. 39-40). However, the Examiner finds that
“Banerjee does suggest the computer transmitting updated consumer activity
code, based on activity detection, to ask for update of advertisement content
from the server's content provider computer” (Ans.60).
As for claim 34, Appellants contend that “Yamada nowhere discloses
that memory interface 410 performs any operations relating to advertising”
(App. Br. 41). However, the Examiner points out that the combination
“Yamada’s CPU (e.g. memory controller) for launching the displaying of ad
Appeal 2011-004220
Application 11/314,844

15
content that is stored in the memory with Wang’s control program that
controls the displaying of the ad content” teach all the claim limitations of
claim 34 (Ans. 61).
As for claim 35, Appellants contend that “the Abstract of Yamada
fails to disclose, teach, or suggest that the host system is not connected to the
network when the advertisements are being displayed by the host system”
(App. Br. 42). However, the Examiner finds that “Wang does teach/suggest
that host system is not connected to the network when the advertisements are
being displayed by the host system” (Ans.62).
We agree with the Examiner’s conclusion that the combination of
Wang, Yamada, Buch, and Banerjee would at least have suggested the
features of claims 3, 5, 6, 9-12, 14, 17, 19, 21, 23-27, and 31-37 for the
reasons given by the Examiner in the Final Rejection and Examiner’s
Answer. We adopt the findings of fact made by the Examiner as our own,
and concur with the conclusions made by the Examiner with respect to these
claims.
Accordingly, we find no error in the Examiner’s rejection of claims 3,
5, 6, 9-12, 14, 17, 19, 21, 23-27, and 31-37 over Wang in view of Yamada,
Buch and Banerjee.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-7, 9-27, and 29-37 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

Appeal 2011-004220
Application 11/314,844

16
AFFIRMED

vsh