Ex Parte KawaiDownload PDFPatent Trial and Appeal BoardSep 19, 201411703174 (P.T.A.B. Sep. 19, 2014) 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. 11/703,174 02/07/2007 Eiji Kawai 09812.0155-01 9968 22852 7590 09/22/2014 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER MENDOZA, JUNIOR O ART UNIT PAPER NUMBER 2423 MAIL DATE DELIVERY MODE 09/22/2014 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 EIJI KAWAI ____________ Appeal 2012-005902 Application 11/703,174 Technology Center 2400 ____________ Before ELENI MANTIS MERCADER, MICHAEL J. STRAUSS, and NORMAN H. BEAMER, Administrative Patent Judges. BEAMER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-005902 Application 11/703,174 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims 12–17 and 52–56. Claims 1–11, 18–51, and 57–73 are cancelled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION The claims are directed to distribution of interactive advertising content with other television broadcast content, where the content can be presented in a program (or broadcast) mode or an interactive advertisement operating mode. (Spec. 19.) Claim 12, reproduced below, is illustrative of the claimed subject matter: 12. An information distribution apparatus for distributing electronic information contents comprising an interactive advertisement to a electronic apparatus, the information distribution apparatus comprising: a data inserter for: constructing the electronic information contents into a group of data, the electronic information contents comprising media content for the interactive advertisement and data program information that allows a control device of the electronic apparatus to manipulate the interactive advertisement, and being configured to present the interactive advertisement in (i) a broadcast mode using the media content to provide the interactive advertisement without interaction being enabled and (ii) an interactive advertisement operating mode using the media content and the data program information to provide the interactive advertisement with interaction enabled, and Appeal 2012-005902 Application 11/703,174 3 inserting the electronic information contents into a carrying signal; and a transmitter for transmitting the carrying signal to the electronic apparatus. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Shoff US 6,240,555 B1 May 29, 2001 (filed Mar. 29, 1996) Eldering US 6,324,519 B1 Nov. 27, 2001 (filed Mar. 12, 1999) Safadi US 6,487,721 B1 Nov. 26, 2002 (filed Jan. 8, 1999) Ramanathan US 6,959,451 B1 Oct. 25, 2005 (filed Aug. 21, 1998) REJECTIONS1 The Examiner made the following rejections: Claims 12 and 52 are rejected under 35 U.S.C. § 112 ¶ 2 based on insufficient antecedent basis. (FOA. 2.) 1 Appellant argues the rejection of claim 12, asserting that “[i]ndependent claim 52, while different in scope, distinguishes over the cited art for at least similar reasons. Claims 13–17 and 53–56 depend from one of the independent claims. Accordingly, the rejection should be reversed.” (App. Br. 12). We find such general assertion fails to provide the specificity of argument required by our Rule 41.37. See 37 C.F.R. § 41.37(c)(1)(vii) (2011) (“[T]he failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.”); see also In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011) (“We conclude that the Board has reasonably interpreted Rule 41.37 to require applicants to articulate more substantive arguments if they wish for individual claims to be treated separately.”). Therefore, based on Appellant’s arguments, we decide the appeal of claims 12–15 and 52–55 based on claim 12 alone. Appeal 2012-005902 Application 11/703,174 4 Claims 12–15 and 52–55 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ramanathan in view of Shoff and further in view of Safadi. (Ans. 5–11.) Claims 16, 17, and 56 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ramanathan in view of Shoff in view of Safadi and further in view of Eldering. (Ans. 11–13.) 35 U.S.C. § 112 ¶ 2 Appellant’s Amendment After Final filed March 29, 2011 amending claims 12 and 52 was entered pursuant to the Advisory Action of March 29, 2011, as reflected in Appellant’s Claims Appendix. We agree with Appellant that the amendments to claims 12 and 52 overcome the rejections under 35 U.S.C. § 112 ¶ 2 (App. Br. 11) and we reverse the rejections. 35 U.S.C. § 103(a) ISSUE ON APPEAL Based on Appellant’s arguments in the Appeal Brief (App. Br. 14–16) and Reply Brief (Reply Br. 1–2), the issue presented on appeal in connection with the rejections under 35 U.S.C. § 103(a) is whether the Examiner erred in finding Shoff teaches or suggests “a broadcast mode using the media content to provide the interactive advertisement without interaction being enabled” (hereafter, the “broadcast mode” element), as recited in claim 12. Appeal 2012-005902 Application 11/703,174 5 ANALYSIS In connection with the rejections under 35 U.S.C. § 103(a) we have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusions. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Ans. 5–13) and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 14–16) and concur with the conclusions reached by the Examiner. We highlight the following for emphasis. Appellant argues that (1) the Examiner conceded that the broadcast mode element was not disclosed in Ramanathan; and (2) the “‘initial screen’” of Shoff which the Examiner found to satisfy the broadcast mode limitation, did not include the required “interactive advertisement.” (App. Br. 11–12.) In support of this latter point, Appellant points out that the initial screen does not contain the “supplemental content,” which the Examiner had found to correspond to an interactive advertisement. Although Appellant is correct that the initial screen of Shoff does not contain supplemental content, we do not agree that the Examiner erred in finding that the combination of Ramanathan and Shoff discloses the broadcast mode. In particular, Ramanathan discloses, as required by claim 12, an information distribution apparatus for distributing electronic information contents comprising media content to an electronic apparatus, in which the distribution apparatus includes (1) a data inserter that constructs the electronic information contents into a group of data; and (2) a transmitter for Appeal 2012-005902 Application 11/703,174 6 transmitting the carrying signal to the electronic apparatus. (Ans. 5; Ramanathan col. 2, ll. 3–23.) In addition, Shoff discloses, in an overall system similar to that of Ramanathan, the ability for a user to switch between an ordinary video program and an interactive version of the program with supplemental content. (Ans. 6; Shoff Figs. 8a, 8b, 8c, col. 9, l. 41 – col. 10, l. 67.) Shoff discusses in detail an example in which the ordinary program is a broadcast of a Star Trek episode, and the interactive mode adds to that video content various soft keys, hyperlinks and information windows. (Shoff col. 11, ll. 3–65, col. 5, ll. 23–60.) Shoff further teaches that the supplemental content can consist of advertisements. (Ans. 6; Shoff col. 5, l. 20.) As the Examiner correctly found, “Shoff recites that the viewer may be permitted to selectively activate the interactive mode; where the viewer may already know that a given television program is capable of interaction, col. 9 lines 30–40 figure 6.” (Ans. 15.) Therefore, Shoff’s interactive mode teaches the interactive advertisement operating mode of claim 12 consistent with the example disclosed in Appellant’s Specification at pages 19–29. (See Reply Br. 2.) As illustrated in Figure 3 of the Specification, a “SPOT ADVERTISEMENT” that does not have interactive capability is provided, and the user can then invoke an interactive version of that advertisement. This admitted claim 12 subject matter compares to the ability of Shoff to invoke an interactive version of the television program, which comprises, inter alia, advertisements, which supports the Examiner’s findings that Shoff teaches or suggests the broadcast mode. Notwithstanding the foregoing, should prosecution be continued, the Examiner should consider whether the pending claims should be rejected Appeal 2012-005902 Application 11/703,174 7 under 35 U.S.C. § 112 first and/or second paragraph for failure to enable the recited “interactive advertisement in . . . a broadcast mode using the media content to provide the interactive advertisement without interaction being enabled.” In particular, it is not clear how an advertisement can be both “interactive” and be an advertisement “without interaction being enabled.” We note this limitation was added to the claims during prosecution. However we find no direct support for the limitation in the Specification as originally filed. For purposes of this Decision we find that the “spot advertisement” disclosed at page 2 of the Specification is is the only possible disclosed example of an “interactive advertisement without interaction being enabled.” Accordingly, the relationship of the video program of Figure 8a of Shoff to the interactive mode of Figure 8b corresponds to the relationship of the spot advertisement to the interactive advertisement of Figure 3 of the Specification, and thus leads to the Examiner’s finding that Shoff discloses the subject matter of claim 12 that is in dispute. Finally, although we agree with the Examiner and find that Shoff teaches or suggests interactive and non-interactive advertisements (Shoff, col. 5, ll. 12–20), we note in passing the advertising subject matter of the media content is not entitled to patentable weight to the extent that the content of the electronic information does not affect the operation of the claimed device and is therefore nonfunctional descriptive material. CONCLUSION Therefore, we disagree with Appellant that Shoff fails to teach or suggest the disputed broadcast mode. Accordingly, the Examiner’s 35 Appeal 2012-005902 Application 11/703,174 8 U.S.C. § 103(a) rejection of independent claim 12, as well as claims 13–17 and 52–56, not separately argued by Appellant, is sustained. DECISION The Examiner’s decision to reject claims 12–17 and 52–56 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) (2011). 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