Ex Parte Rajaram

Patent Trial and Appeal BoardApr 17, 2013

11241858 (P.T.A.B. Apr. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/241,858 09/30/2005 Gokul Rajaram Google-125 (GP-558-00-US) 2688 82402 7590 04/18/2013 Straub & Pokotylo 788 Shrewsbury Avenue Tinton Falls, NJ 07724 EXAMINER DAGNEW, SABA ART UNIT PAPER NUMBER 3688 MAIL DATE DELIVERY MODE 04/18/2013 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 GOKUL RAJARAM ____________ Appeal 2011-000934 Application 11/241,858 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and MICHAEL W. KIM, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-000934 Application 11/241,858 2 STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-8, 12-30, 45, 46, and 48-52 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellant’s claimed invention is directed to a method of advertising that can be done online for example (Spec. [0001]). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A computer-implemented method comprising: a) accepting. with an advertising system including at least one computer, information defining at least one ad spot associated with at least one instance of an audio document; b) accepting, with the advertising system, offers to have advertisements served in the at least one ad spot; c) arbitrating, with the advertising system, among competing advertisements, using at least the offers, to determine at least one advertisement to be served in that at least one ad spot; d) transmitting, with the advertising system, the audio document for delivery to an end user client Appeal 2011-000934 Application 11/241,858 3 device; and e) transmitting, with the advertising system, the at least one advertisement to be served in that at least one ad spot, for delivery to the end user client wherein the act of arbitrating occurs after the act of transmitting the audio document has been initiated. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Logan US 2003/0093790 A1 May 15, 2003 The following rejections are before us for review: 1. Claims 1-8, 12-30, 45, 46, and 48-521 are rejected under 35 U.S.C. § 102(b) as anticipated by Logan. FINDINGS OF FACT We find that the findings of fact used in the Analysis section below are supported at least by a preponderance of the evidence.2 1 Claims 9-11, 31-44 and 47 have been indicated as cancelled in the paper filed Dec. 3, 2009. 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2011-000934 Application 11/241,858 4 ANALYSIS The Appellant argues that the rejection of claim 1 is improper because Logan fails to disclose claim limitations “b” and “e” as listed in the claim above (App. Br. 17-20, Reply Br. 2-3). In contrast, the Examiner has determined that claim limitation “b” is shown at paragraphs [0062] and [0240]-[0242] of Logan and that the elements of claim limitation “e” are shown at paragraphs [0218]-[0247]. (Ans. 4-5, 13-14). We agree with the Appellant. The argued portions of claim 1 require in part: b) accepting, with the advertising system, offers to have advertisements served in the at least one ad spot; c) arbitrating, with the advertising system, among competing advertisements, using at least the offers, to determine at least one advertisement to be served in that at least one ad spot; and …. e) transmitting, with the advertising system, the at least one advertisement to be served…wherein the act of arbitrating occurs after the act of transmitting the audio document has been initiated. (Claim 1) (emphasis added). The Examiner has cited to Logan at paragraphs [0062] and [0240]-[0242] as disclosing “accepting… offers to have advertisements served in the at least one ad spot” but this is not shown at these cited portions. While these cited portions do for instance disclose the use of “metadata,” there is no specific disclosure that this metadata is an advertisement or was offered in the manner claimed. Logan at paragraph [0240] does disclose the use of advertisements, but there is no specific disclosure that the advertisements were offered to the system and accepted Appeal 2011-000934 Application 11/241,858 5 and not, for instance, self-generated by the system. Further, the Examiner has cited to Logan at paragraphs [0218] and [0247] to show “wherein the act of arbitrating occurs after the act of transmitting the audio document has been initiated” but these cited portions of Logan do not show this. While Logan at paragraph [0247] does disclose that advertising segments can be “inserted into the programming at playback time” it is not disclosed that this occurs after the act of transmitting the audio document has been initiated as required by the claim. As the rejection of record fails to show the above cited claim elements the rejection of claim 1 and its dependent claims is not sustained. The remaining claims contain similar limitations and the rejection of these claims is not sustained for these same reasons. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting the claims as listed in the Rejection section above. DECISION The Examiner’s rejection of claims 1-8, 12-30, 45, 46, and 48-52 is reversed. REVERSED mls