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Patent Trials and Appeals Board

Mar 29, 2022

2021000678 (P.T.A.B. Mar. 29, 2022)

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. 14/098,511 12/05/2013 James Manchester TW-76 (TWC 13-38) 7698 26479 7590 03/29/2022 STRAUB & POKOTYLO 788 Shrewsbury Avenue TINTON FALLS, NJ 07724 EXAMINER CASTRO, ALFONSO ART UNIT PAPER NUMBER 2421 MAIL DATE DELIVERY MODE 03/29/2022 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 JAMES MANCHESTER, CHRIS FAW, and SEAN COAR Appeal 2021-000678 Application 14/098,511 Technology Center 2400 Before MINN CHUNG, CHRISTA P. ZADO, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Time Warner Cable Enterprises LLC. Appeal Br. 3. Appeal 2021-000678 Application 14/098,511 2 CLAIMED SUBJECT MATTER The claims are directed to “content delivery and playback methods . . . that support delivery of targeted advertising content communicated via a secondary communications channel that is different from a communications channel used for delivery of programming content.” Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method, the method comprising: communicating, from a customer premise device to a control device used to control the supply of alternative content to the customer premise device, a tuning message including tuning information sent from the customer premise device, said tuning message including an identifier identifying the customer premise device and indicating: i) a first communications channel, said first communications channel being a broadcast channel to which the customer premise device has tuned and ii) a time at which the customer premise device tuned to the first communications channel; outputting, from the customer premise device, program content received on the first communications channel; monitoring, at said customer premise device, said program content received on said first communications channel to detect an indicator indicating an upcoming commercial break; receiving at the customer premise device alternative advertisement content transmitted by the control device via unicast IP packets, sent over a second communications channel which is different from said first communications channel, said unicast IP packets including alternative advertisement content to be used for a program being broadcast at the time the tuning message is received by the control device; and outputting, during a commercial break which occurs on said first communications channel, advertising content communicated via said second communications channel, said advertising content being different from said program content received on the first communications channel. Appeal 2021-000678 Application 14/098,511 3 Appeal Br. 34 (Claims Appendix). REFERENCES2 The Examiner relies on these references: Name Reference Date Mao US 8,681,681 B2 Mar. 25, 2014 Kaftan US 2009/0210900 A1 Aug. 20, 2009 Tidwell (“Tidwell ’969”) US 2010/0131969 A1 May 27, 2010 Tidwell US 2011/0110515 A1 May 12, 2011 Gordon US 2012/0117584 A1 May 10, 2012 Sharif-Ahmadi US 2015/0070585 A1 Mar. 12, 2015 REJECTIONS Claims 5, 15, and 20 stand rejected under 35 U.S.C. § 112(b) as being indefinite.3 Final Act. 6-7. Claims 1-17 and 20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Gordon, Kaftan, Sharif-Ahmadi, and Tidwell. Final Act. 7-24. Claims 18 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Gordon, Kaftan, Sharif-Ahmadi, Tidwell, and Mao. Final Act. 25-27. Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable over Gordon, Kaftan, Sharif-Ahmadi, Tidwell, and Tidwell ’969. Final Act. 28-29. 2 Citations to the references are to the first named inventor/author only. 3 Appellant does not advance arguments against the indefiniteness rejection. Therefore, we summarily affirm the rejection for indefiniteness under 35 U.S.C. § 112(b). Appeal 2021-000678 Application 14/098,511 4 ISSUES First Issue: Has the Examiner erred in finding the cited references teach or suggest “a control device” and a “tuning message” as recited in the “communicating” limitation of claim 1? Second Issue: Has the Examiner erred in finding the cited references teach or suggest “a gateway device” as recited in claim 2? Third Issue: Has the Examiner erred in finding the cited references teach or suggest “a predetermined period of time being the broadcast time period of a program” as recited in claim 9? Fourth Issue: Has the Examiner erred in finding the cited references teach or suggest recording advertising content “received via the first communications channel in addition to the advertising content received via the second communications channel and the user selected program content,” as recited in claim 21? ANALYSIS First Issue The Examiner rejects claim 1 as obvious over Gordon, Kaftan, Sharif- Ahmadi, and Tidwell. Relevant to the issues raised by Appellant, the Examiner finds Gordon teaches most of the “communicating” limitation of claim 1, including the recited “tuning message,” but is deficient in certain respects. Final Act. 8-10. Specifically, the Examiner states that “Gordon’s customer premise device first transmits a request for a channel, then after the channel is decoded by the CPD, the CPD transmits control and usage data to a Content Replacement System because the Content Replacement System utilizes control and usage data to deliver tailored advertisements to the CPD.” Ans. 6; see also Ans. 7 (citing Gordon ¶¶ 92-93). The Examiner Appeal 2021-000678 Application 14/098,511 5 further states “[w]hereas Gordon teaches a tuning message as discussed above, Gordon . . . do[es] not explicitly disclose that a tuning message as claimed comprises including and indicating i) a first communications channel, said first communications channel being a broadcast channel to which the customer premise device has tuned and ii) a time at which the customer premise device tuned to the first communications channel.” Final Act. 10. The Examiner finds that “Sharif-Ahmadi teaches providing information identifying the customer premise device.” Final Act. 11 (citing Sharif-Ahmadi ¶¶ 62-64). The Examiner finds “Tidwell teaches tuning information from a customer premise device indicating a broadcast channel to which the customer premise device is tuned, the time at which the customer tuned to the broadcast channel, and information identifying the customer premise device.” Final Act. 11 (Tidwell ¶¶ 78-79, 109-123, 148, 187-192, 1346-1363, 1379-1387). Appellant argues the Examiner has erred because “the primary Gordon reference fails to disclose . . . the ‘tuning message’.” Appeal Br. 13. More specifically, Appellant argues that “[t]he ‘request’ in the Gordon reference is not a tuning message but rather requests that a particular television channel be supplied.” Appeal Br. 15 (emphasis omitted). Appellant argues the request made in Gordon is sent to content distributor 106, while the Examiner equates the content replacement system 110 to the claimed “control device used to control the supply of alternate content.” Appeal Br. 18 (emphasis omitted). Appellant further argues that the request in Gordon does not teach any tuning message that indicates “i) a first communications channel . . . which the customer premise device has turned” because the request merely asks for a channel to be supplied and does not Appeal 2021-000678 Application 14/098,511 6 reflect a channel that has already been tuned. Appeal Br. 18 (emphasis omitted). Appellant also asserts that Gordon does not teach the limitation “ii) a time at which the customer premise device tuned to the first communications channel” because nothing in Gordon indicates that a time is part of the request. Appeal Br. 18 (emphasis omitted). Additionally, Appellant contends that information sent to the content replacement system 110 does not relate to tuning, but instead is “sent by a decoder when decoding occurs.” Appeal Br. 19 (emphasis omitted) (citing Gordon ¶ 180). Appellant further argues the Examiner’s reliance on Tidwell does not address Gordon’s deficiencies. Appeal Br. 20-21. Specifically, Appellant argues “[t]he maintenance of ‘SDV records’ in the SDV system of Tidwell do not disclose or suggest the sending of a ‘tuning information message’ of the type recited in claim 1 . . . [because] [t]he records in Tidwell are a collection of a large amount of SDV information and are very different from the tuning message recited in claim 1.” Appeal Br. 21. We are not persuaded the Examiner has erred. Gordon relates to a content distribution system which “supports identifying content that is currently being displayed or prepared for display at a media system and identifies additional content to be displayed instead of or in addition to the content that is currently being displayed or prepared for display.” Gordon ¶ 5. Gordon describes the system that includes a content distributor 106 (such as a cable television company, for example) which distributes media content received from a content provider 102 (such as a television network) and distributes it to a media system 108 (such as a set top box). Gordon teaches that “[i]n some embodiments, the Media System 108 is configured to communicate through [a] communication network C 104-C with a Content Appeal 2021-000678 Application 14/098,511 7 Replacement System 110 . . . [that] provides replacement sequences of media content to replace at least a portion of the sequence of media content provided by the Content Distributor 106.” Gordon ¶ 35. Gordon further teaches that the replacement content may be a targeted advertisement. Gordon ¶ 36. With respect to the disputed “communicating” limitation, we agree with the Examiner that Gordon’s description of the Media System 108 sending control data to Content Replacement System 110 teaches “communicating, from a customer premise device to a control device used to control the supply of alternative content to the customer premise device.” Appellant argues the cited portion of Gordon teaches a request that is made to the Content Distributor 106, which is not “used to control the supply of alternative content” as claimed. Appeal Br. 18. But we are not persuaded by this argument, as the Examiner explains in the Answer that the tuning request made for a specific channel is not the communication relied upon in the rejection. Rather, as the Examiner correctly explains: Gordon’s CPD first makes a request for a particular channel (i.e., a request to tune to a particular channel) to a Content Provider/Distributor. However, the Examiner also recognizes that Gordon’s CPD also communicates control data, in a separate request, and usage data, to a different device being a Content Replacement System. Ans. 7. For example, Gordon describes that once the Media System 108 has tuned to a particular requested channel, “the Media System 108 stores (630- C) usage data and/or sends the usage data to a Content Replacement System 110 for later use.” Gordon ¶ 108. We further agree with the Examiner that Gordon teaches “a tuning message including tuning information sent from the customer premise Appeal 2021-000678 Application 14/098,511 8 device, said tuning message including an identifier identifying the customer premise device.” Gordon describes that the data sent from the Media System 108 and the Content Replacement System 110 includes “one or more of a unique identifier of the media device, and the control data.” Gordon ¶ 110. We agree with the Examiner that the unique identifier teaches “an identifier identifying the customer premise device.” We further note that the Examiner also relies on Sharif-Ahmadi for this portion of the “communicating limitation.” Final Act. 11 (“In an analogous art, Sharif- Ahmadi teaches providing information identifying the customer premise device.”). Appellant does not address this finding in the Appeal Brief or Reply Brief. The remainder of the “communicating” limitation specifies additional information indicated by the tuning message: “i) a first communications channel, said first communications channel being a broadcast channel to which the customer premise device has tuned and ii) a time at which the customer premise device tuned to the first communications channel.” Appeal Br. 34 (Claims Appendix). As noted above, the Examiner relies on Gordon and Tidwell’s teachings as corresponding to these specific aspects of the tuning message. We agree with the Examiner that Gordon teaches that a request made to the Content Replacement System 110 includes “i) a first communications channel, said first communications channel being a broadcast channel to which the customer premise device has been tuned.” Specifically, we find this limitation taught by Gordon’s description that the information sent from the Media Device 108 to the Content Replacement System 110 includes “header information uniquely identifying original sequence of media content Appeal 2021-000678 Application 14/098,511 9 where the replacement media content is to be inserted.” Gordon ¶ 93. One of ordinary skill in the art would have understood that one way of uniquely identifying the original sequence of media content, would be to indicate the broadcast channel currently playing on the Media Device. Gordon later confirms that this would be the most natural understanding, teaching that “[i]n some embodiments, a request for replacement media content includes parameters that enable the Content Replacement System 110 to select advertisements that target the viewer based on program context.” Gordon ¶ 114. This understanding is further confirmed by Gordon’s disclosure that parameters “enable the Content Replacement System 110 to select advertisements that best match the interests of the viewer based on the characteristics of the content being viewed.” Gordon ¶ 114 (emphasis added). We further agree with the Examiner that, to the extent Gordon is deficient with respect to the request including a “first communications channel being a broadcast channel to which the customer premise device has [been] tuned,” Tidwell addresses this deficiency. Tidwell describes “a data collection system, where the records are collected, processed and used to generate files for delivery to a subscriber data analysis (SDA) system, the delivered data being used for detailed analysis of user preferences, activity, and/or behavior.” Tidwell ¶ 78. Tidwell’s data collection system collects, among other things, switched digital video (SDV) tuning events. Tidwell ¶ 79. Tidwell further describes that “[t]uning event data . . . is . . . collected in real time,” (Tidwell ¶ 113) and this data collection “involves the correlation of tune in and tune out events into a single tuning impression record that consists of the program viewed, [and] start/end date/time of the Appeal 2021-000678 Application 14/098,511 10 viewing event” (Tidwell ¶ 121). Thus, Tidwell demonstrates that it was known in the art for tuning messages to be collected as tuning events occur (in real time) such that the tuning messages indicate the channel to which a customer device has been tuned. Moreover, we also agree with the Examiner that Tidwell teaches the last portion of the disputed limitation which recites “ii) a time at which the customer premise device tuned to the first communications channel.” Specifically, we agree that Tidwell’s description that the tuning information includes “start/end date/time of the viewing event” (Tidwell ¶ 121) as well as Tidwell’s description of storing tuning events “which CPE were tuned to which channels in a particular region and at what time” (Tidwell ¶ 1327) teaches the recited “time at which the customer premise device tuned to the first communications channel.” Accordingly, we are not persuaded the Examiner has erred in finding the cited references teach or suggest “a control device” and a “tuning message,” as recited in the “communicating” limitation of claim 1, and we, therefore, sustain the rejection of claim 1 under § 103. Appellant relies on substantially similar arguments with respect to the rejection of claims 10, 16, and 20, which recites limitations which, although not identical, are substantially similar in scope as those discussed in connection with claim 1. For the same reasons, we sustain the rejection of claims 10, 16, and 20 under § 103. Second Issue Claim 2 depends from claim 1 and recites the limitation: operating a gateway device located at a customer premise where the customer premise device is located to send a power off indication message to the control device in response to detecting Appeal 2021-000678 Application 14/098,511 11 that customer premise device is turned off or in response to detecting a period of inactivity beyond a threshold time period. Appeal Br. 34 (Claims Appendix). In rejecting claim 2, the Examiner finds Tidwell’s description of the use of “tuning messages that the user device has been turned off and [in] an inactive state” (citing Tidwell ¶ 1364) and ending a tuning event “when a CPE enters a standby state (i.e. an event is received that indicates the CPE is actively turned off-e.g. Inactive)” (quoting Tidwell ¶ 1355) teaches the subject matter of the additionally recited limitation of claim 2. Ans. 19. In the Answer, the Examiner further finds that “Sharif-Ahmadi teaches that a gateway located at a customer premise may have the base functionality of a conventional set top box and further teaches that the gateway device provides usage information to the operators.” Ans. 19 (citing Sharif-Ahmadi ¶ 63). Appellant argues the Examiner has erred because “the Examiner fails to identify a gateway device performing the recited operation and does not even mention a gateway device when discussing claim 2 and instead relies on an alleged operation performed by a ‘user device’ which the Examiner equates to the customer premise device.” Appeal Br. 22. In the Reply Brief, Appellant challenges the Examiner’s reliance on Sharif-Ahmadi, arguing that although the cited portions describe user device on/off information, “[t]here is no message sent by the gateway providing such information to ‘a control device’ of the type recited in claim 2.” Reply Br. 10 (emphasis omitted). We are not persuaded of reversible Examiner error with respect to claim 2. Appellant’s arguments attack each reference individually, asserting that each fails to teach the entirety of claim 2. The Examiner’s rejection, however, relies on what the collective teachings of the references would Appeal 2021-000678 Application 14/098,511 12 have taught or suggested to the ordinarily skilled artisan. For example, Appellant argues that neither Tidwell nor Sharif-Ahmadi teaches sending messages to the control device. However, as we discussed in connection with claim 1, the Examiner relies on Gordon’s content replacement system as teaching the exchange of messages between the customer premise and the recited “control device.” Tidwell’s description of tuning messages that indicate “when a CPE enters a standby state (i.e. an event is received that indicates the CPE is actively turned off . . .)” teaches the recited “send a power off indication message . . . in response to detecting that customer premise device is turned off,” as claimed. Although Appellant argues that Tidwell fails to teach that any such messages sent “to the control device,” as we explained above, the control device is taught by Gordon. Thus, Tidwell and Gordon are deficient with respect to claim 2 only in that neither reference specifies that the message sent to the control device is sent by “operating a gateway device.” We agree with the Examiner, however, that Sharif-Ahmadi sufficiently addresses this deficiency. Sharif-Ahmadi relates to “creating a network (or ‘micro-cloud’) of service nodes, referred to as gateways, with each gateway being a configured CPE for servicing a home or other residential unit.” Sharif-Ahmadi ¶ 62 (reference numerals omitted). Sharif-Ahmadi further describes that the gateway “is used to forward content to one or more user devices that are registered to use that particular gateway.” Sharif-Ahmadi ¶ 62 (reference numerals omitted). Sharif-Ahmadi further teaches that the “[g]ateway . . . retrieves content for the user devices and provides usage information to the operators.” Sharif-Ahmadi ¶ 63 (reference numerals omitted). Thus, Sharif- Appeal 2021-000678 Application 14/098,511 13 Ahmadi demonstrates that the use of gateway devices was known, and further that it was known for gateway devices to be separate devices from set-top boxes (see, e.g., Figure 2), and still further that it was known for gateways to send messages, such as usage information, over a network to a server. Consequently, we agree with the Examiner that Sharif-Ahmadi addresses any deficiency in Tidwell with respect to the claimed gateway device. We, therefore, are not persuaded the Examiner erred in rejecting claim 2, and we sustain the rejection of claim 2 under 35 U.S.C. § 103. Third Issue Claim 9 depends from claim 1 by way of claim 8, and recites the limitation: operating the control device to cause targeted advertisements to be sent to the customer premise device for a predetermined period of time after receiving the tuning message, said predetermined period of time being the broadcast time period of a program on the first channel at the time indicated in said tuning message. Appeal Br. 36 (Claims Appendix) (italics added). In rejecting claim 9, the Examiner “incorporated by reference the rejection of claim 20 because claim 20 recites an analogous limitation.” Ans. 21. The Examiner further explains in the Answer that the same portions of the prior art cited to reject claim 20 are also applicable to the rejection of claim 9 (Ans. 21), and that “insertion of advertisements of Gordon is performed after a new television channel is displayed which a person of ordinary skill in the art would have reasonably inferred that the Content Replacement has received control and usage data indicating a tune in time.” Ans. 22 (citing Gordon ¶¶ 102, 234- 236). Appeal 2021-000678 Application 14/098,511 14 Appellant argues the Examiner erred in finding the references teach or suggest “said predetermined period of time being the broadcast time period of a program,” as recited in claim 9. More specifically, Appellant argues “[c]laim 20 . . . does NOT mention a ‘predetermined period of time’” (Appeal Br. 24), and as a result, “the rejection of claim 9 includes no discussion of the features of claim 9 relating to the predetermined period of time recited in the claim.” Appeal Br. 25 (emphasis omitted). Appellant further argues the cited passages in Gordon do not teach any predetermined period of time being the broadcast time period of a program because they merely describe triggering keys that trigger requests for advertising content and have no relationship to the timing of the broadcast program. Reply Br. 12. We disagree. Gordon describes that “the Content Provider 102 selects three five- minute blocks for commercial breaks in an hour-long television program.” Gordon ¶ 102 (italics added). Thus, Gordon indicates that targeted advertising is sent based on commercial breaks defined with respect to a specific “hour-long television program.” Gordon further describes that the Content Replacement System is configured to send targeted ads until the user has changed the channel to another program. Gordon ¶ 121. When the channel is changed, the targeted ads are discontinued and “the Media System 108 ceases presenting the replacement media content.” Id. Taken together, we agree with the Examiner that these statement in Gordon teach, or at least suggest, that targeted ads should be delivered for a period of time defined by the broadcast time of a program. As such, we are not persuaded the Examiner erred in rejecting claim 9, and, therefore, sustain the rejection of claim 9 under 35 U.S.C. § 103. Appeal 2021-000678 Application 14/098,511 15 Fourth Issue Claim 21, depends from claim 5 (which in turn depends from claim 1), and recites “recording advertising content received via the first communications channel in addition to the adverting [sic] content received via the second communications channel and the user selected program content.” Appeal Br. 39 (Claims Appendix). In rejecting claim 21, the Examiner relies on Tidwell ’969 for teaching the limitation recited in the claim. Final Act. 28-29 (citing Tidwell ’969 ¶ 240). Appellant argues “claim 21 relates to recording, with user selected program content, advertising content received via two different communications channels.” Appeal Br. 31 (emphasis omitted). Appellant asserts that Tidwell ’969’s description of decoupling advertising or promotions from a previously recorded program does not teach recording advertising content received over both communication channels as required by the claim. Appeal Br. 31-32. We agree. The process step recited in claim 21 calls for advertising content received via the first communications channel (i.e., the broadcast communication stream) as well as advertising content received via the second communications channel (i.e., the alternative advertising content sent via unicast IP packets) to both be recorded and stored. Nothing in the cited portions of Tidwell ’969 indicate that advertising content delivered via two different communication paths are both recorded. As such, we agree with Appellant that the Examiner has not sufficiently shown that the teachings of Tidwell ’969 would have rendered obvious the “recording” recited in claim 21. We therefore, do not sustain the rejection of claim 21 under 35 U.S.C. § 103. Appeal 2021-000678 Application 14/098,511 16 Remaining Claims Appellant presents no separate arguments for patentability of any other claims. Accordingly, we sustain the Examiner’s rejections of these claims for the reasons stated with respect to the independent claims from which they depend. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION We affirm in part the Examiner’s decision to reject the claims. More specifically: We affirm the Examiner’s rejection of claims 5, 15, and 20 under 35 U.S.C. § 112(b). We affirm the Examiner’s rejections of claims 1-20 under 35 U.S.C § 103. We reverse the Examiner’s rejection of claim 21 under 35 U.S.C. § 103. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5, 15, 20 112(b) Indefiniteness 5, 15, 20 1-17, 20 103 Gordon, Kaftan, Sharif-Ahmadi, Tidwell 1-17, 20 18, 19 103 Gordon, Kaftan, Sharif-Ahmadi, Tidwell, Mao 18, 19 21 103 Gordon, Kaftan, Sharif-Ahmadi, Tidwell, Tidwell ’969 21 Overall Outcome 1-20 21 Appeal 2021-000678 Application 14/098,511 17 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART