Ex Parte Hoelz et al

Patent Trial and Appeal Board

Mar 7, 2016

12607699 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/607,699 10/28/2009
84278 7590 03/09/2016
PA TENT LAW GROUP: Atkins and Associates P.C.
55 N. Arizona Place, Suite 104
Chandler, AZ 85225
Clifford Hoelz
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4448.0002 5036
EXAMINER
CAO, VINCENT M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/09/2016 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):
main@plgaz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIFFORD HOELZ and
DANIEL D. ORLANDO
Appeal2013-008907 1
Application 12/607,6992
Technology Center 3600
Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("Br.," filed
January 28, 2013) and the Examiner's Answer ("Ans.," mailed
April 15, 2013), and Final Office Action ("Final Act.," mailed April 26,
2012).
2 Appellants identify VIDCLX, LLC as the real party in interest (Br. 1 ).
Appeal2013-008907
Application 12/607,699
CLAIMED INVENTION
Appellants' claimed invention relates to "a system and method for
presenting a commercial product by inserting digital content into a video
stream" (Spec. i-f 1 ).
Claim 1, reproduced below with added bracketed notations, is
illustrative of the subject matter on appeal:
1. A method of presenting a commercial product in a
commerce system, comprising:
[a] providing a commercial product in a commerce
system;
[b] providing a published video stream having a
fingerprint for identifying a spatial and temporal location of a
sponsorship display space within the published video stream for
dynamically altering the published video stream in real-time by
inserting digital content into the sponsorship display space;
[ c] transmitting the published video stream through a
communication link to present as an image on a video display
device, the image including a representation of the commercial
product;
[ d] providing an interactive device for a consumer to select
a portion of the image on the video display device representing
the commercial product;
[ e] retrieving information related to the commercial
product based on the selected portion of the image on the video
display device;
[ f] after retrieving the information related to the
commercial product, generating digital content containing the
information related to the commercial product and an interface
for enabling the consumer to access information related to the
commercial product;
[g] forming a composite video by inserting the digital
content into the sponsorship display space; and
[h] displaying the composite video including the digital
content on the video display device to assist the consumer in
completing a transaction to acquire the commercial product.
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Application 12/607,699
REJECTIONS
Claims 1--4, 7-10, 12, 13, 20-23, and 26-31 are rejected under
35 U.S.C. § 103(a) as unpatentable over Pack (US 2001/0052133 Al, pub.
Dec. 13, 2001) and Lemmons (US 2003/0028873 Al, pub. Feb. 6, 2003)
(see Final Act. 3, 19, 55, 72).
Claims 5, 11, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pack, Lemmons, and Kulas (US 2009/0019487 Al, pub.
Jan. 15, 2009) (see Final Act. 15, 34, 67).
Claims 6 and 25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Pack, Lemmons, and Mahoney (see Final Act. 17, 69).
Claims 14--17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Pack, Official Notice, and Lemmons (see Final Act. 36).
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Pack, Official Notice, Lemmons, and Kulas (see Final Act. 50).
Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Pack, Official Notice, Lemmons, and Mahoney (see Final Act. 52).
ANALYSIS
Independent claims 1, 7, 20, and 26
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Lemmons,
upon which the Examiner relies, does not disclose or suggest "providing a
published video stream having a fingerprint for identifying a spatial and
temporal location of a sponsorship display space within the published video
stream for dynamically altering the published video stream in real-time by
inserting digital content into the sponsorship display space," as recited by
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Application 12/607,699
limitation [b] of independent claim 1 (see Br. 14--19). More particularly,
Appellants argue "Lemmons describes tags for describing a location and a
contour of an object, but makes no mention of a fingerprint for identifying a
spatial and temporal location of a sponsorship display space" (Br. 16-17).
Each of the remaining independent claims 7, 20, and 26 recites the same or a
substantially similar limitation.
The Examiner maintains that the rejection is proper, and cites
paragraphs 39, 44, 81, and 84 of Lemmons, as "teach[ing] the concept of
having identifiers for identifying the spatial and temporal locations of
sponsorship display spaces" (Final Act. 3-5; see also Ans. 5---6).
Lemmons is directed to a system for providing interactive overlay
screens or combining video segments using "labels" which "compris[ e]
supplemental information such as advertising, promotional, or informational
elements including interactive elements (i.e., 'Hot Labelsâ„¢'), [which] may
be superimposed into a video stream after production of the video"
(Lemmons, Abstract, i-f 10). Lemmons discloses that its labels include "tags
and markers to describe advertising space" (id. at i-f 80). Lemmons further
discloses that its "tags define the location and perhaps contour of the
identified attribute. That is, the tags may comprise a location or several
defining locations, perhaps in x and y coordinates, and a contour of the
object or blank space (attribute) identified" (id. at i-f 81). Lemmons also
discloses that "markers indicate the position of a division between each
video segment of the video stream" (id. at i-f 82) and a "'moving location' tag
may be superimposed into the video stream and may indicate the new
location of an attribute on the screen" (id. at i-f 83). Lemmons discloses, for
example, that a "moving tag" "would account for [a] refrigerator's new
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Application 12/607,699
location and/or orientation, and this tag may comprise new x and y
coordinates and contour data of the refrigerator" (id. at i-f 84). Lemmons
discloses that "[t]he tags and markers may be sent during the video's
Vertical Blinking Interval (VBI)" (id. at i-f 84).
The Examiner finds
Lemmons teaches the concept of accounting for movements of
objects within a video presentation, wherein the tag contains
updated spatial location coordinates for a tag based on time, thus
Lemmons teaches the tag to have spatial location coordinates
associated with a temporal location, wherein to account for the
changes in the tag spatial location (the x and y coordinate), and
a third time coordinate to represent when a new spatial
coordinate is used.
(Ans. 6).
The difficulty with the Examiner's analysis, however, is that
Lemmons does not disclose that "the tag contains updated spatial location
coordinates for a tag based on time" or "a third time coordinate to represent
when a new spatial coordinate is used." Instead, we agree with Appellants
that
[a] lthough Lemmons discloses a tag for identifying a location of
an object on screen, a marker indicating divisions of video
segments, and a separate "moving-location" tag for use at the
head-end, Lemmons is silent with respect to a fingerprint for
identifying a spatial and temporal location of a sponsorship
display space within a published video stream.
(Br. 17). In this regard, we note that Lemmons discloses that its "tags
describe the advertising space" and define "a location or several defining
locations, perhaps in x and y coordinates, and a contour of the object or
blank space (attribute) identified" (Lemmons i-f 81 ). Thus, contrary to the
Examiner's findings that Lemmons' "tag contains updated spatial location
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coordinates for a tag based on time" and "a third time coordinate to represent
when a new spatial coordinate is used" (see Ans. 6), we find Lemmons'
"tags" define "a location or several defining locations, perhaps in x and y
coordinates, and a contour of the object or blank space (attribute) identified"
(Lemmons i-f 81 ), but Lemmons is silent as to any temporal component
present in its "tag."
We acknowledge that Lemmons discloses "markers" which "indicate
the beginning and the end of each video segment within the video stream"
(Lemmons i-f 82); however, the Examiner has not established on the record
that these "markers" correspond to a "temporal" element, as it appears in
limitation [b] of claim 1, which calls for "a published video stream having a
fingerprint for identifying a spatial and temporal location of a sponsorship
display space within the published video stream for dynamically altering the
published video stream in real-time by inserting digital content into the
sponsorship display space." The addition of Pack does not cure this
deficiency.
We also note that there is inadequate reasoning explaining how one of
ordinary skill in the art would have reached the claimed invention as a
whole, and as such, the Examiner has not established a prima facie case of
obviousness. Critically, the Examiner does not articulate any reasoning with
rational underpinning for modifying the combination of Pack and Lemmons
to arrive at the method recited in claim 1, which requires, inter alia,
"providing a published video stream having a fingerprint for identifying a
spatial and temporal location of a sponsorship display space within the
published video stream for dynamically altering the published video stream
in real-time by inserting digital content into the sponsorship display space,"
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as recited by limitation [b] of independent claim 1. Instead, the Examiner
merely makes the conclusory statement that "it would have been obvious to
one of ordinary skill in the art at the time of the invention to have combined
the teachings of Lemmons with the invention of Pack" (Final Act. 5).
"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
On this record, the Examiner has failed to establish a prima facie case
of obviousness. Therefore, we do not sustain the Examiner's rejection of
claim 1under35 U.S.C. § 103(a). Independent claims 7, 20, and 26 include
a limitation similar to limitation [b] in independent claim 1. Thus, for the
same reasons, we also do not sustain the Examiner's rejection of
independent claims 7, 20, and 26 under 35 U.S.C. § 103(a).
Dependent claims 2--4, 8-jO, j2, jJ, 2j-23, and 27-Jj
Claims 2--4, 8-10, 12, 13, 21-23, and 27-31 depend, directly or
indirectly, from one of independent claims 1, 7, 20, and 26, and thus
incorporate limitation [b] recited in independent claim 1 or the similar
limitations recited in independent claims 7, 20, and 26. These dependent
claims are rejected on the same grounds as the independent claims; and the
Examiner's further findings with respect to them do not cure the above-
discussed shortcomings of Pack and Lemmons identified by Appellants.
Thus, we do not sustain the Examiner's rejection of dependent claims 2--4,
8-10, 12, 13, 21-23, and 27-31under35 U.S.C. § 103(a).
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Independent claim 14 and dependent claims 15-17
Independent claim 14 includes a limitation similar to limitation [b] in
independent claim 1. The Examiner's rejection of independent claim 14
based on Official Notice, in combination with Pack and Lemmons, does not
cure the above-discussed shortcomings of Pack and Lemmons identified by
Appellants with respect to independent claim 1 (see, e.g., Br. 37-38). Thus,
for the same reasons, we also do not sustain the Examiner's rejection of
independent claim 14 and claims 15-17, which depend from claim 14, under
35 U.S.C. § 103(a).
Dependent claims 5, 6, 11, 13, 18, 19, 24, and 25
Claims 5, 6, 11, 13, 15-19, 24, and 25 depend, directly or indirectly,
from one of independent claims 1, 7, 14, and 20, and thus incorporate
limitation [b] recited in independent claim 1 or the similar limitations recited
in independent claims 7, 14, and 20. The Examiner's further findings with
respect to Kulas, as applied to dependent claims 5, 11, and 24; iviahoney, as
applied to claims 6 and 25; Official Notice and Kulas, as applied to claim
18; and Official Notice and Mahoney, as applied to claim 19, do not cure the
above-discussed shortcomings of Pack and Lemmons identified by
Appellants with respect to independent claim 1. Thus, we do not sustain the
Examiner's rejections of claims 5, 6, 11, 13, 15-19, 24, and 25 under
35 U.S.C. § 103(a).
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DECISION
The Examiner's rejections of claims 1-31 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
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