Ex Parte Alsina et alDownload PDFPatent Trial and Appeal BoardAug 31, 201814186764 (P.T.A.B. Aug. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/186,764 02/21/2014 77970 7590 Polsinelli -- Apple Inc. c/o Polsinelli PC 1661 Page Mill Road Suite A Palo Alto, CA 94304 09/05/2018 FIRST NAMED INVENTOR Thomas Alsina 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 535014 (P21826US1) 7597 EXAMINER CASTRO, ALFONSO ART UNIT PAPER NUMBER 2421 NOTIFICATION DATE DELIVERY MODE 09/05/2018 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): Apple@Polsinelli.com cadocket@Polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS ALSINA, DAVID T. WILSON, KENLEY SUN, and SAGAR A. JOSHI Appeal2017-006629 1 Application 14/186,7642 Technology Center 2400 Before MAHSHID D. SAADAT, MARC S. HOFF, and JOHN D. HAMANN, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants file this appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Sept. 23, 2016), Reply Brief ("Reply Br.," filed Mar. 13, 2017), and Specification ("Spec.," filed Feb. 21, 2014), as well as the Examiner's Answer ("Ans.," mailed Jan. 12, 2017) and the Final Office Action ("Final Act.," mailed Mar. 11, 2016). 2 Appellants identify the real party in interest as Apple Inc. App. Br. 3. Appeal2017-006629 Application 14/186, 7 64 THE CLAIMED INVENTION Appellants' claimed invention relates to the "management of invitational content during broadcasting of media streams." Spec. ,r 1. Claim 1 is illustrative of the subject matter on appeal and is reproduced below. 1. A computer-implemented method, comprising: transmitting, to a server, a media stream comprising a sequence of segments for delivery from the server to a plurality of devices, the sequence of segments comprising a primary content, wherein a sub-segment of the sequence of segments comprises a secondary content item embedded within the sub- segment, the sub-segment comprising a tag embedded within the secondary content item, the tag comprising metadata about the secondary content item embedded within the sub-segment; receiving, from at least one of the plurality of devices, a respective notification associated with the at least one of the plurality of devices generated in response to an identification of the tag in the secondary content item during a processing of the secondary content item, the respective notification comprising the tag and device metadata associated with the at least one of the plurality of devices; computing, via a processor, exposure statistics for the secondary content item based on the respective notification. REJECTIONS ON APPEAL (1) The Examiner rejected claims 1-3, 6-13, 16-18, and 21-2 5 under 35 U.S.C. § 103 as being unpatentable over the combination of Besehanic et al. (US 2013/0007794 Al; published Jan. 3, 2013) (hereinafter "Besehanic") and Mick, Jr. et al. (US 2014/0331247 Al; published Nov. 6, 2014) (hereinafter "Mick"). 2 Appeal2017-006629 Application 14/186, 7 64 (2) The Examiner rejected claims 4, 5, 14, 15, 19, and 20 under 35 U.S.C. § 103 over the combination of Besehanic, Mick, and Priyadarshan et al. (US 2012/0054303 Al; published Mar. 1, 2012) (hereinafter "Priyadarshan"). ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner erred. We disagree with Appellants' contentions for the reasons discussed below. (1) Independent Claim 1 (a) tag embedded within the secondary content item Appellants argue that the combination of Besehanic and Mick fails to teach or suggest a "sequence of segments comprising a primary content, wherein a sub-segment of the sequence of segments comprises a secondary content item embedded within the sub-segment, the sub-segment comprising a tag embedded within the secondary content item," as recited in independent claim 1. App. Br. 8-10; Reply Br. 3-5. More specifically, Appellants argue that Besehanic fails to teach or suggest (i) "a tag embedded within a secondary content item," which is (ii) "embedded within a sub- segment of a sequence of primary content segments." App. Br. 9. Appellants argue that Besehanic instead teaches embedding a watermark "in [a] media stream without suggesting embedding the watermark in a particular segment" of secondary content. Id. Furthermore, Appellants argue that Besehanic's teaching "that a media monitoring facility may generate reports for a content provider or advertiser," which they may find useful, does not teach "tracking individual advertisements embedded within 3 Appeal2017-006629 Application 14/186, 7 64 a media stream." Id. at 11 ( citing Besehanic ,r 57); see also id. ( citing Besehanic ,r,r 3, 35, 40) (arguing Besehanic instead teaches "that the information provided to advertisers is general information about the content as a whole"); Reply Br. 2-5. The Examiner finds that the claim language of the disputed limitation corresponds to "a media stream comprising a sequence of segments wherein the segmented media stream is made up of primary content and secondary content." Ans. 6. The Examiner also finds that the claim language requires that "both the segment and sub-segment are part of the same media stream segmentation," and that "a sub-segment (i.e., secondary segment) could be presented after a segment comprising primary content." Id. at 7. As such, the Examiner finds that "the sub-segment is being utilized as the portion of the media stream used [to] transmit [a] secondary content item and the secondary content item is embedded with a tag." Id. at 7-8. The Examiner also looks to Appellants' Specification for an example of what constitutes primary and secondary content, and finds that "primary content may be a radio or television program and secondary content may be one or more advertisements." Id. at 8 (citing Spec. ,r 30). Against this backdrop ofhow the disputed limitation should be interpreted, the Examiner finds that Besehanic teaches or suggests the disputed limitation. See id. at 5-14; Final Act. 6. In particular, the Examiner finds that Besehanic teaches or suggests a media stream comprised of a sequence of segments, including primary segments (e.g., broadcast media content such as a movie or TV show) and secondary segments (e.g., advertisements). Ans. 8-9 (citing Besehanic ,r,r 45--46, 57, 130). The Examiner finds that Besehanic also teaches or 4 Appeal2017-006629 Application 14/186, 7 64 suggests embedding watermarks (i.e., tags) in each of the segments to identify their content for reporting purposes. Id. at 10 ( citing Besehanic ,r,r 41--42, 51, 54--57, Figs. 1, 5, 12, 16, 19). The Examiner finds that these watermarks can be used to "generate reports ... for advertisers that distribute advertisements via the content provider(s) 125." Id. at 12 (citing Besehanic ,r,r 3, 57). The Examiner finds that Besehanic thus teaches or suggests to one of ordinary skill in the art that the reports can be generated for the content of a particular advertiser and advertisement. Id. We agree with the Examiner that Besehanic teaches the disputed limitation. See Besehanic ,r,r 3, 41--42, 45--46, 51, 54--57, 130, Figs. 1, 5, 12, 16, 19. For example, Besehanic teaches or suggests a media stream that includes primary content segments ( e.g., broadcast content such as a TV show) and secondary content segments (e.g., advertisements). See, e.g., id. ,r,r 45--46 ( describing streaming broadcast media content in segments), 57 (teaching that the media stream content includes advertisements). Besehanic also teaches or suggests that a tag (i.e., a watermark) is embedded within a secondary content item (i.e., an advertisement). See, e.g., id. ,r,r 51, 57, 130. We are not persuaded by Appellants' argument that Besehanic does not teach tagging individual advertisements. To the contrary, Besehanic teaches that monitoring reports (e.g., reports showing the number of times that media content was accessed, interactions of users with the media content, and the duration of accesses of the media content) can be generated for particular content providers and advertisers to provide valuable information to the advertisers. See id. ,r,r 3, 57. This teaching at least suggests that individual advertisements are tagged so that valuable information can be provided for a particular advertisement and to the correct advertiser. Id. 5 Appeal2017-006629 Application 14/186, 7 64 Furthermore, a particular advertiser may have only one advertisement placed with a particular content provider, and hence, identifying the advertiser identifies the advertisement. (b) respective notification Appellants argue that the combination of Besehanic and Mick fails to teach or suggest "a respective notification ... comprising the tag and device metadata associated with the at least one of the plurality of devices," as recited in claim 1. App. Br. 13-15. In particular, Appellants argue that Besehanic only teaches generally reporting content identifying information, but does not teach that the identifying information includes a tag or metadata about devices. Id. at 14--15 (citing Besehanic ,r 41). Appellants also argue that Mick likewise does not teach or suggest "a respective notification comprising the tag and device metadata associated with the at least one of the plurality of devices." Id. at 15. The Examiner finds that the combination of Besehanic and Mick teaches or suggests the disputed limitation. Ans. 15-17; Final Act. 7. More specifically, the Examiner finds that Mick teaches a notification comprising a tag and device metadata via Mick's teaching that a "smart appliance (i.e., a receiving device) transmits an indication in the form of a string comprising tag information and device metadata associated with at least one of the plurality of devices receiving the media stream." Ans. 16 ( citing Mick ,r 82); see also id. at 15-16 (citing Mick ,r,r 73-76, 81-82). We agree with the Examiner that Mick teaches or suggests the disputed limitation. See Mick ,r,r 73-7 6, 81-82. In particular, Mick teaches a smart appliance transmitting a notification having a unique identifier (i.e., a tag) associated with an advertisement and a device identifier (i.e., device 6 Appeal2017-006629 Application 14/186, 7 64 metadata), such as a medium access control ("MAC") address, for the smart appliance. See id. Appellants focus on Besehanic' s teachings but do not substantively address Mick's teachings, upon which the Examiner relies for teaching the disputed limitation. (2) Dependent Claim 2 Appellants argue that the combination of Besehanic and Mick fails to teach or suggest "determining a number of tags received from the at least one of the plurality of devices," "based on the number of tags, inferring that the at least one of the plurality of devices did not process all of the sequence of segments in the media stream," and "based on the number of tags, determining which segments from the media stream where received and processed by the at least one of the plurality of devices," as recited in claim 2. App. Br. 15-16. More specifically, Appellants argue that none of these limitations are taught because Mick teaches having separate, unique identifiers to indicate the percentage of an advertisement played by a smart device, rather than teaching using "a number of tags" to make any determination. Id. (citing Mick ,r,r 31, 73-75); Reply Br. 7. In other words, according to Appellants, "Mick teaches that markers are mapped to a specific portion of the advertisement, which allows the individual markers to identify the specific portion of the advertisement that they are mapped to." Reply Br. 7 (citing Mick ,r,r 91, 99-100). The Examiner finds that the combination of Besehanic and Mick teaches or suggests the disputed limitation. Ans. 17-19; Final Act. 9. More specifically, the Examiner finds that Mick teaches or suggests "a server [that] receives data from a smart appliance and the server detects a marker (i.e., marker is disclosed as a 'tag') in the data corresponding to a segment of 7 Appeal2017-006629 Application 14/186, 7 64 an advertisement of a session played by the smart appliance." Ans. 18; Final Act. 9 ( citing Mick ,r 31 ). The Examiner also finds that "Mick teaches that the percentage of an advertisement played by the viewer's device may be determined based on the markers (i.e., tags). As such, a person of ordinary skill would reasonably infer" the percentage of an advertisement (i.e., which segments) that were not played on the device. Ans. 18-19; Final Act. 9 (citing Mick ,r,r 73-75). The Examiner concludes that the disputed limitation would have been obvious in light of Mick's teachings. Ans. 19. We find that the disputed limitation would have been obvious to one of ordinary skill in the art in light of Mick's teachings. See Mick ,r,r 31, 73- 75. There are only a finite number of reasonable options for indicating what segments of a media stream were not played, such as by (i) uniquely marking equal intervals of a stream or (ii) counting the number of identifiers, where each identifier corresponds to an interval (i.e., "0%, 25%, 50%, 75%, and % 100" quartiles) of a played portion of a stream, such as in Mick. See id. ,r,r 73-75. Picking one of a finite number of known solutions (i.e., mapping the unique identifier or counting the number of equally spaced identifiers) to a known problem would have been obvious here. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421 ("When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp."); see also In re Rice, 341 F.2d 309, 314 (CCPA 1965) (finding minor differences between the prior art and a claimed device may be a matter of design choice absent evidence to the contrary). 8 Appeal2017-006629 Application 14/186, 7 64 (3) Independent Claims 8. 11. 16. and 2 2 Appellants argue that the Examiner improperly rejects independent claims 8, 11, 16, and 22 because the Examiner merely refers to claim 1 's rejection without addressing the differing limitations of claims 8, 11, 16, and 22. App. Br. 17; Reply Br. 8-12. Appellants quote various limitations of claims 8, 11, and 22 and argue that (i) the limitations "are not explicitly recited in claim 1," and (ii) the Examiner failed to "establish a prima facie rejection," including failing to "establish why the rationale of claim 1 applies to at least" the quoted limitations. See Reply Br. 8; see also id. at 10-12; App. Br. 17. The Examiner finds "that independent claims 8, 11, 1 [6], and 22 are directed to the same subject matter as recited in independent claim 1." Ans. 20. The Examiner thus groups these claims with independent claim 1 and finds that the limitations of these claims "are met by the disclosure of the apparatus and methods of the reference(s) as discussed in the rejection of [claim] 1." Final Act. 10-12. The Examiner also finds that "the steps of the methods disclosed by the prior art are easily converted into elements of a system by one skilled in the art." Id. We are not persuaded that the Examiner erred. Appellants do not persuasively compare the scope of independent claims 8, 11, 16, and 22 to independent claim 1 to show substantive differences. Rather, Appellants simply rely on the language between the claims not being identical, and argue, without further explanation, that the Examiner fails to provide sufficient rationale for the rejection of independent claims 8, 11, 16, and 22 to establish a prima facie case of obviousness. However, it is only "when a rejection is so uninformative that it prevents the applicant from recognizing 9 Appeal2017-006629 Application 14/186, 7 64 and seeking to counter the grounds for rejection" that the prima facie burden has not been met. Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). Such is not the case here because the Examiner finds that the rationale for claim 1 applies to independent claims 8, 11, 16, and 22, and Appellants have not shown otherwise. Furthermore, Appellants have not shown good cause as to why any additional arguments raised in the Reply Brief regarding independent claims 8, 11, 16, or 22 could not have been presented earlier. As such, these arguments have not been considered, and are waived. See Ex parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (informative) (finding absent a showing of good cause, the Board is not required to address arguments in Reply Brief that could have been presented in the principal Appeal Brief). CONCLUSION Based on our reasoning above, we sustain the Examiner's§ 103 rejection of independent claims 1, 8, 11, 16, and 22, as well as dependent claim 2. We also sustain the Examiner's§ 103 rejection of dependent claims (i) 3, 6, 7, 9, 10, 12, 13, 17, 18, 21, and 23-25 and (ii) 4, 5, 14, 15, 19, and 20, as Appellants do not provide separate arguments for their patentability. DECISION We affirm the Examiner's decision rejecting claims 1-25. 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 10 Copy with citationCopy as parenthetical citation