Ex Parte Hoelz et alDownload PDFPatent Trial and Appeal BoardMar 7, 201612607699 (P.T.A.B. Mar. 7, 2016) Copy Citation 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. 2 Appeal2013-008907 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 3 Appeal2013-008907 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 Labels™'), [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 4 Appeal2013-008907 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 5 Appeal2013-008907 Application 12/607,699 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," 6 Appeal2013-008907 Application 12/607,699 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). 7 Appeal2013-008907 Application 12/607,699 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). 8 Appeal2013-008907 Application 12/607,699 DECISION The Examiner's rejections of claims 1-31 under 35 U.S.C. § 103(a) are reversed. REVERSED 9 Copy with citationCopy as parenthetical citation