Hamed Tadayon

Patent Trials and Appeals BoardDec 11, 2019

13441721 - (D) (P.T.A.B. Dec. 11, 2019)

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. 13/441,721 04/06/2012 Hamed Tadayon 1334-P001001 3002 60984 7590 12/11/2019 Cotman IP Law Group, PLC 35 Hugus Alley, Suite 210 Pasadena, CA 91103 EXAMINER ZIMMERMAN, JEFFREY P ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 12/11/2019 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): patents@cotmanlaw.com uspto.docketing@cotmanip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HAMED TADAYON Appeal 2018-006241 Application 13/441,721 Technology Center 3600 Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Hamed Tadayon. Appeal Br. 1. Appeal 2018-006241 Application 13/441,721 2 CLAIMED SUBJECT MATTER The invention relates to synchronizing media and advertisements. Spec. ¶ 1. According to the Specification, the invention makes it easier for viewers to purchase advertised products in media content. See id. ¶¶ 3–4. To accomplish this, the system uses a database of products associated with media content and time codes for synchronizing the corresponding advertisements with the media during playback. Id. ¶¶ 7–13. Claims 1 and 20 are independent. Claim 1 is reproduced below with emphasis on the limitation at issue. 1. A method for synchronizing media and targeted content comprising: a content management server establishing a network connection with a mobile device; said content management server receiving timing data associated with playing media content from said mobile device, wherein said playing media content is from a media outlet disconnected from said content management server; said content management server synchronizing with said playing media content based on said timing data; said content management server accessing advertisement data associated with said playing media content; said content management server providing at least one synchronized advertisement to said mobile device for display in synchronized time, wherein each synchronized advertisement is associated with a time code associated with said playing media content; said content management server receiving a user response from said mobile device as a result of one of said at least one synchronized advertisement; and said content management server initiating an e-commerce transaction between said mobile device user and a sponsor of said one of said at least one synchronized advertisement based on said user response. Appeal 2018-006241 Application 13/441,721 3 Appeal Br. 9, Claims App.2 REFERENCES Name Reference Date Matsunga US 2011/0035270 A1 Feb. 10, 2011 Chu US 2008/0243603 A1 Oct. 2, 2008 Bernosky US 2009/0063277 A1 Mar. 5, 2009 Sean Hollister, ABC app eavesdrops on your TV to synchronize interactive content using Nielsen tech (video), Engaget, (Sept. 18, 2010) (accessed Nov. 2, 2013), http://www.engadget.com/2010/09/18/abc-app- eavesdrops-on-your-tv-to-synchronize-interactive-content/ (“ABC”) Digital Watermarking, Civolution (Nov. 5, 2010), https://www.civolution.com/technology/digital-audio-and-video- watermarking/ (“Civolution”) REJECTIONS The Examiner rejects claims 1, 3–13, 15, and 18–20 under pre-AIA3 35 U.S.C. § 103(a) as unpatentable over Matsunaga and ABC. Final 3–12; Ans. 2–3. The Examiner rejects claims 2 and 14 under 35 U.S.C. § 103(a) as unpatentable over Matsunaga, ABC, and Chu. Final 12–14. The Examiner rejects claim 16 and 17 under 35 U.S.C. § 103(a) as unpatentable over Matsunaga, ABC, and Bernosky. Final 14–16. 2 Throughout this opinion, we refer to the Final Office Action (“Final”), mailed March 12, 2015; the Appeal Brief (“Appeal Br.”), filed December 10, 2015; and the Examiner’s Answer (“Ans.”), mailed June 16, 2016. 3 Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, § 3, 125 Stat. 284, 285–93 (2011). Appeal 2018-006241 Application 13/441,721 4 OPINION The Examiner’s Rejection over Matsunaga and ABC The Examiner finds that Matsunaga teaches all limitations in claim 1 except for a content management server that receives the recited timing data from a mobile device. Final 3–5. In concluding that the claimed subject matter would have been obvious, the Examiner finds that ABC teaches this limitation. Id. According to the Examiner, ABC’s mobile app uses audio watermarks to identify the television show that the user is watching. Id. at 5. In the Examiner’s view, ABC teaches that the user’s mobile device sends timing data to a content management server. Id.; see also Ans. 4. The Examiner presents a similar rationale in rejecting claim 20 (Final 10–12), which recites “receiving timing data associated with said media content from said mobile device” (Appeal Br. 16). Appellant’s Argument Appellant argues that ABC’s timing data comes from the broadcasted audio via the watermarks. Appeal Br. 9. So, in Appellant’s view, ABC’s timing data originates from a media outlet, not from the mobile device as required by claims 1 and 20. Id. Issue Did the Examiner err in finding that ABC teaches or suggests a content management server that receives the recited timing data from a mobile device in claims 1 and 20? Analysis Claim 1 recites, in part, “content management server receiving timing data associated with playing media content from said mobile device.” Appeal Br. 9, Claims App. Claim 20 recites a similar limitation. See id. at 16. Appeal 2018-006241 Application 13/441,721 5 According to the Specification, timing data can include a start time or the media content’s current play position. Spec. ¶ 17. The timing data may also include an identifier or audio sample, among other things. Id. The server uses the timing data to generate synchronization data. Id. ¶ 62. Although these exemplary, non-limiting embodiments do not precisely define “timing data,” they nevertheless inform our understanding of the limitation at issue, which requires a server that receives the timing data from the mobile device. Appeal Br. 9. In rejecting claims 1 and 20, the Examiner finds that ABC’s audio watermarks correspond to the recited timing data. Final 4. We, however, agree with Appellant that the Examiner has not shown how a content server receives these watermarks, or other timing data, from the mobile device. Appeal Br. 9. Specifically, ABC teaches that an iPad’s microphone captures audio watermarks, which are embedded “in most every US television show.” ABC 1. An app on the iPad then uses the audio watermarks to identify the show and offer interactive content. Id. But ABC does not expressly teach or suggest that a content management server receives watermarks from the iPad. Indeed, the Examiner does not provide any citation to the prior art of record to support the findings about the server. See Ans. 4; see also Final 5. At most, ABC teaches that the “app uses the [] audio watermarks.” See ABC 1 (emphasis added). ABC is silent about what data, if any, is sent to a server from this app. See id. So if the watermarks are timing data, as the Examiner finds (Final 4), the timing data’s source is the media outlet, not the mobile device (Appeal Br. 9). Appeal 2018-006241 Application 13/441,721 6 Nor has the Examiner shown that the cited references inherently teach or suggest a content management server that receives watermarks from the iPad. See Final 4; Ans. 4. “Inherency . . . may not be established by probabilities or possibilities.” PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014). Rather, there is “a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis—the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Id. at 1195–96. Here, the Examiner explicitly finds that Matsunaga lacks a content management server that receives the recited timing data from a mobile device. Final 4. And ABC is silent about communications with a server. To sustain the Examiner’s rejection, we would have to speculate about how the ABC app uses the audio watermarks and what is communicated to a server. Constrained by this record and based upon a preponderance of the evidence, Appellant has persuaded us that the Examiner erred in finding that the cited references teach or suggest a content management server that receives the recited timing data from a mobile device in claims 1 and 20. Appeal Br. 9– 10. Thus, we do not sustain the rejection of independent claims 1 and 20, and dependent claims 3–13, 15, 18, and 19. The Remaining Obviousness Rejections We also do not sustain the rejections of dependent claims 2, 14, 16, and 17 for the same reasons discussed above in connection with claim 1. Specifically, the Examiner did not rely on the additional references, Chu or Bernosky, to teach the features missing from Matsunaga and ABC. See Appeal 2018-006241 Application 13/441,721 7 Final 12–16. Thus, the Examiner does not show that Chu or Bernosky cures the deficiency discussed above. See id. CONCLUSION We reverse the Examiner’s decision to reject claims 1–20. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–13, 15, 18–20 103 Matsunaga, ABC 1, 3–13, 15, 18–20 2, 14 103 Matsunaga, ABC, Chu 2, 14 16, 17 103 Matsunaga, ABC, Bernosky 16, 17 Overall Outcome 1–20 REVERSED