Ex Parte Gonzalez et alDownload PDFPatent Trial and Appeal BoardAug 30, 201311314844 (P.T.A.B. Aug. 30, 2013) Copy Citation 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 Copy with citationCopy as parenthetical citation