Ex Parte Prestenback et al

Patent Trials and Appeals BoardApr 18, 2019

12239596 - (D) (P.T.A.B. Apr. 18, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/239,596 09/26/2008 94468 7590 04/22/2019 DISNEY ENTERPRISES INC. c/o Patent Ingenuity, P.C. 9701 Wilshire Blvd., Suite 1000 Beverly Hills, CA 90212 FIRST NAMED INVENTOR Kyle Prestenback 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. DISNEY-0400-US 3747 EXAMINER FEATHERSTONE, MARK D ART UNIT PAPER NUMBER 2166 NOTIFICATION DATE DELIVERY MODE 04/22/2019 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): ssimpson@patentingenuity.com patents@patentingenuity.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KYLE PRESTENBACK, EVAN TAHLER, BRIAN KW AN, and DAVID JESSEN Appeal2017-009003 Application 12/239,596 1 Technology Center 2100 Before JEAN R. HOMERE, DANIEL N. FISHMAN, and JASON J. CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL 2 This is a decision on appeal under 35 U.S.C. Â§ 134(a) of the Final Rejection of claims 55-72. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. INTRODUCTION Appellants' claimed subject matter is directed to combining and distributing user enhanced video/audio content. Spec. ,r 1. Claim 55 is illustrative of the invention and is reproduced below: 1 According to Appellants, Disney Enterprises, Inc. is the real party in interest. App. Br. 2. 2 In this case, there was a previous decision mailed on April 24, 2015 affirming claims 1-54. 3 Claims 1-54 are canceled. App. Br. 15. Appeal2017-009003 Application 12/239,596 55. A non-transitory computer readable device having stored thereon computer implementable instructions that if implemented using at least one processing unit within a device, cause the device to: tag, at a user content tagging device, user content with one or more tags to establish tagged user content so that the tagged user content is configured to playback in synchronization with reference content at a recipient device, the user content being generated by a user, the user content tagging device being distinct from the recipient device; allow the user to generate, at the user content tagging device, sender input information, the sender input information configuring presentation of the tagged user content with respect to the reference content during playback at the recipient device; and send the tagged user content and the sender input information from the user content tagging device to a content combining device that combines the tagged user content and the reference content into combined content for playback at the recipient device according to the one or more tags, wherein a duration of the combined content is greater than a duration of the reference content. REJECTION AT ISSUE Claims 55-72 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over the combination of Gilley (US 2006/0265657 Al; filed May 23, 2006) and Ramaswamy (US 2007/016292 7 A 1; filed Dec. 29, 2006; continuation of PCT application filed on July 25, 2005). Final Act. 4--9. ANALYSIS The Examiner finds a person having ordinary skill in the art would have modified Gilley' s advertisement insertion techniques with Ramaswamy's splicing of segments into primary content between two 2 Appeal2017-009003 Application 12/239,596 portions for the benefit of giving the user more control and flexibility in authoring and distributing stream by providing the option of adding content to the reference stream. Final Act. 5---6. Appellants argue Gilley pertains to ad insertion within a frame rather than between frames, as taught by Ramaswamy; therefore, modifying Gilley' s ad insertion within a frame with Ramaswamy would change the principle operation of Gilley. App. Br. 9-11 (citing Gilley ,r,r 9, 63-73); Reply Br. 2--4. Moreover, Appellants argue Gilley teaches that advertisers pay for ad placement based on the size of the ad relative to a movie frame and there is a need for authoring systems that reduces the time, cost, and complexity of the authoring and distributing DVD; by removing ad insertion into a specific frame, the control and flexibility are removed. App. Br. 11- 12 (citing Gilley ,r,r 7, 34); Reply Br. 4---6. We disagree with Appellants. As an initial matter, we study paragraph 34 of Gilley, which Appellants cite. Gilley ,r 34. Paragraph 34 of Gilley states "[ m ]ovie system 10 enables flexible ad placement, including at the start or end of a movie, within selected frames of a movie, and at a selected location and size within the selected frames" ( emphasis added). Id. We interpret the emphasized text as Gilley suggesting the ads do not have to be placed within frames because the ad placement is flexible. Id. In addition, the word "including" is open ended and does not mean that these are the only options of placement. We, therefore, disagree with Appellants' argument that modifying Gilley's advertisement insertion within a frame with Ramaswamy would change the principle operation of Gilley (App. Br. 9-11 (citing Gilley ,r,r 9, 63-73); Reply Br. 2--4) because Gilley teaches a flexible approach to ad 3 Appeal2017-009003 Application 12/239,596 placement that a person having ordinary skill in the art at the time of the invention would determine includes placing ads between frames. We also disagree with Appellants' argument that by removing ad insertion into a specific frame, the control and flexibility are removed (App. Br. 11-12 (citing Gilley ,r,r 7, 34); Reply Br. 4---6) because limiting the ad placement options as only within frames reduces control and flexibility of providing the user with an additional option of placing ads between frames. Appellants do not argue separately claims 56-72 with particularity, but assert the rejections of those claims should be withdrawn for at least the same reasons as argued in independent claim 55. App. Br. 13. Accordingly, we sustain the Examiner rejection of: (1) independent claims 55, 63, 64, and 72; and (2) dependent claims 56-62 and 65-71 under 35 U.S.C. Â§ 103. We have only considered those arguments that Appellants actually raised in the Briefs. Arguments Appellants could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. Â§ 41.37(c)(l)(iv). DECISION We affirm the Examiner's decision rejecting claims 55-72 under 35 U.S.C. Â§ 103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 4