Ex Parte Wu et al

Patent Trial and Appeal Board

Mar 28, 2017

13292339 (P.T.A.B. Mar. 28, 2017)

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.
13/292,339 11/09/2011 Wan-Chung W. Wu 108249.64578D1 4264
23911 7590 03/30/2017
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
KARWAN, SIHAR A
ART UNIT PAPER NUMBER
2422
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
edocket @ crowell. com
tche @ crowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAN-CHUNG W. WU, KOUROSH LASHGARI,
PAUL DIXON, and THOMAS C. OPDYKE
Appeal 2016-006560
Application 13/292,33 91
Technology Center 2400
Before KRISTEN L. DROESCH, NORMAN H. BEAMER, and
JOHN D. HAMANN, Administrative Patent Judges.
DROESCH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—12, and 25,2 all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN-PART.
1 Appellants indicate the real party-in-interest is DS—IQ, Inc. App. Br. 2.
2 Claims 13—24 have been cancelled.
Appeal 2016-006560
Application 13/292,339
BACKGROUND
The disclosed invention relates to monitoring and changing media
content utilized in media device network marketing campaigns. Spec. 122,
Abstract.
CLAIMED SUBJECT MATTER
Representative claim 1, reproduced from the Claims Appendix of the
Appeal Brief, reads as follows (disputed limitations in italics)'.
1. A system for changing media content in a presentation
of media content to natural persons on a plurality of digital media
players that are sited at public locations, the system comprising:
a storage area containing a plurality of units of
replacement media content and serving instructions dictating
conditions under which one or more units of replacement media
content should be used to change a presentation of a plurality of
units of media content',
a plurality of agents, each of the plurality of agents
operating in conjunction with a digital media player that is sited
at a public location, each agent monitoring the presentation of
the plurality of units of media content on the corresponding
digital media player; and
a plurality of injection components, each of the plurality
of injection components coupled to the storage area and to one
of the plurality of agents, each of the plurality of injection
components changing the presentation of the plurality of units of
media content in accordance with the serving instructions when
the corresponding agent detects the conditions in the
presentation of the plurality of units of media content that satisfy
the serving instructions.
25. A system for changing media content that is presented
to an audience on a digital media player that is sited at a public
location, the system comprising:
a storage area containing a unit of replacement media
content and serving instructions dictating conditions under
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which the unit of replacement media content should be used to
change the media content;
an agent operating in conjunction with the digital media
player that is sited at the public location, wherein the agent
monitors the media content when it is presented to the audience
on the digital media player that is sited at the public location; and
an injection component coupled to the storage area and to
the agent, wherein the injection component changes the media
content by using the unit of replacement media content when the
agent detects the serving instructions.
REFERENCES AND REJECTIONS ON APPEAL
Claims 1 and 25 stand rejected under 35U.S.C. § 112, second
paragraph as indefinite.
Claims 1, 3—8, 10, 11, and 25 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Blumenschein et al. (US 2007/0261073 Al; Nov. 8, 2007)
(“Blumenschein”).
Claims 2, 9, and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Blumenschein and Russek (US 2004/0267816 Al; Dec.
30, 2004).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Brief, the Examiner’s Answer, and the Reply Brief. We
highlight and address specific findings and arguments below for emphasis.
35 U.S.C. $ 112, second paragraph Rejection
The Examiner finds that that the terms “should be” recited in claims 1
and 25 render the claims indefinite “because it is unclear whether the
limitations following the phrase are part of the claimed invention.” Final
Act. 3. Appellants contend that in the context of the claims 1 and 25, the
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terms are definite. See App. Br. 9—10. Appellants assert that in the context
of “a storage area containing . . . serving instructions dictating conditions
under which one or more units of replacement media content should be used
to change a presentation of a plurality of units of media content,” as recited
in claim 1, the serving instructions dictate the conditions under which a
switch of media content is to be effectuated. See id. at 10. Appellants
contend that “the test for indefiniteness is ‘whether those skilled in the art
would understand what is claimed when read in light of the specification.’”
Id. (quoting MPEP 2173.04).
In response to Appellants’ arguments, the Examiner explains:
Appellant must not confuses the word “should” with “must”. As
used the limitation above, why “should” a storage area
containing a plurality of units of replacement media content and
serving instructions dictating conditions under which one or
more units of replacement media content be used to change a
presentation of a plurality of units of media content. That is to
say what triggers the “should”, what is the deciding factor in the
software that make the media content “be used to change a
presentation of a plurality of units of media content”. What is
the supporting factor or structural element the makes the
dissection in the claims that lead to “should be”.
Ans. 17. Appellants respond that “should be” denotes a temporal
relationship between features of the claim. See Reply Br. 5. Appellants
assert that “[conditions in the presentation of media content that satisfy the
serving instructions ... are detected and the presentation is accordingly
changed.” Id.
We agree with Appellants that the Examiner erred in rejecting claims
1 and 25 as indefinite based on the terms “should be.” The Examiner does
not explain sufficiently why one of ordinary skill in the art would not
understand what is claimed when read in light of Appellants’ Specification.
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The claim phrase in question utilizing the terms “should be” describes the
serving instructions contained in storage, specifically, that the serving
instructions dictate conditions under which replacement media content
should be used to change a presentation of a media content. See App. Br.
12, 14. Consistent with Appellants’ remarks that “should be” denotes a
temporal relationship, additional limitations of claim 1 describe the
functions of the system upon detecting conditions in the media content
presentation that satisfy the serving instructions, that is, “each of the
plurality of injection components changing the presentation of the plurality
of units of media content in accordance with the serving instructions when
the corresponding agent detects the conditions in the presentation of the
plurality of units of media content that satisfy the serving instructions.” Id.
at 12 (emphasis added). Claim 25 recites a similar additional limitation “the
injection component changes the media content by using the unit of
replacement media content when the agent detects the serving instructions.”
Id. at 14 (emphasis added.)
For these reasons, Appellants persuade us that the Examiner erred in
rejecting claims 1 and 25 under 35 U.S.C. § 112, second paragraph.
Prior Art Rejections of Claims 1—12
The Examiner finds that Blumenschein discloses “each of the plurality
of injection components changing the presentation of the plurality of units of
media content in accordance with the serving instructions when the
corresponding agent detect the conditions in the presentation of the plurality
of units of media content that satisfy the serving instructions,” as recited in
claim 1, based on Blumenschein’s description that Multiple-Systems
Operators (MSOs) could replace certain content intended for distribution
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with other content. See Final Act. 4 (citing Blumenschein 19). The
Examiner further asserts that Blumenschein describes a programming
content determination is made, wherein the programming content received
from the content provider is compared against the programming content
received from the consumer. See Ans. 15 (citing Blumenschein | 32).
We agree with Appellants’ arguments that there is no description in
Blumenschein that an MSO detects any conditions in accordance with
serving instructions. See App. Br. 6—7. Appellants point out correctly that
the Final Rejection fails to identify how Blumenschein’s disclosure of an
MSO replacing content teaches detecting conditions in the presentation of
media content that satisfy serving instructions. See id. at 7; Blumenschein
19. Appellants also point out correctly that Blumenschein’s disclosure of
determining whether programming content received from an MSO is the
same as programming content being received by the consumer does not
disclose detecting conditions in a presentation that satisfy serving
instructions, where the satisfaction of the conditions means that “each of the
plurality of the injection component chang[e] the presentation of the
plurality of units of media content in accordance with the serving
instructions.” See Reply Br. 4.
For these reasons we are constrained to reverse the rejection of claim
1, and claims 3—8, 10, and 11, dependent therefrom, as anticipated by
Blumenschein. As applied by the Examiner, the teachings of Russek do not
remedy the deficiencies of Blumenschein. See Final Act. 7—9. Accordingly,
for the same reasons as claims 1, 3—8, 10, and 11, we reverse the rejection of
claims 2, 9, and 12 as unpatentable over Blumenschein and Russek.
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Prior Art Rejection of Claim 25
Appellants’ arguments address the recitations of independent claim 1,
but do not specifically address the limitations of claim 25. See App. Br. 1—9;
Reply Br. 1—5. Specifically, Appellants assert that “a plurality of agents,
each of the plurality of agents operating in conjunction with a digital media
player, each agent monitoring the presentation of the plurality of units of
media content on the corresponding digital media play,” as recited in claim
1, requires a one-to-one correspondence between each agent and digital
media player. See App. Br. 4—5; Reply Br. 1—2. Appellants also contend
“when the corresponding agent detects the conditions that satisfy the serving
instructions,” recited in claim 1, requires that the agent detects when
conditions satisfy the serving instructions are met for its corresponding
digital media player. See App. Br. 4, 6—7; Reply Br. 1^4.
Appellants’ arguments are not persuasive of error in the rejection of
claim 25 because Appellants’ arguments are not commensurate in scope
with claim 25. Claim 25 does not require a one-to-one correspondence
between an agent and a digital media player. In contrast to the recitations of
claim 1, claim 25 does not recite the corresponding “digital media player”
and “the corresponding agent.” Claim 25 only recites “an agent,” “a digital
media player,” “the agent,” and “the digital media player.” The recitation of
“an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of
‘one or more’ in open-ended claims containing the transitional phrase
‘comprising.’” KCJCorp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356
(Fed. Cir. 2000) (citations omitted). Thus, claim 25 is not limited to one
digital media player and one agent, and does not require any correspondence
between one or more digital media players and one or more agents. Also
different from claim 1, claim 25 does not require detection of conditions that
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satisfy the serving instructions. Instead, claim 25 recites “the injection
component changes the media content by using the unit of replacement
media content when the agent detects the serving instructions.'’'’ App. Br. 15
(emphasis added.)
For these reasons, Appellants’ arguments do not persuade us of error
in the rejection of claim 25 as anticipated by Blumenschein.
DECISION
We AFFIRM the § 102 rejection of claim 25.
We REVERSE the § 112 rejection of claim 25.
We REVERSE the §§102 and 103 rejections of claims 1—12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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