Ex Parte Wu et alDownload PDFPatent Trial and Appeal BoardMar 28, 201713292339 (P.T.A.B. Mar. 28, 2017) Copy Citation 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 2 Appeal 2016-006560 Application 13/292,339 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 3 Appeal 2016-006560 Application 13/292,339 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. 4 Appeal 2016-006560 Application 13/292,339 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 5 Appeal 2016-006560 Application 13/292,339 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. 6 Appeal 2016-006560 Application 13/292,339 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 7 Appeal 2016-006560 Application 13/292,339 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 8 Copy with citationCopy as parenthetical citation