Ex Parte Kawai

Patent Trial and Appeal Board

Sep 19, 2014

11703174 (P.T.A.B. Sep. 19, 2014)

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

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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
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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.
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Application 11/703,174

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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.

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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
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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
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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
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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).

AFFIRMED

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