Ex Parte Angiolillo

Patent Trial and Appeal Board

Sep 6, 2016

11693338 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111693,338 0312912007
25537 7590 09/08/2016
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Joel Angiolillo
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.
20060349 9110
EXAMINER
TELAN, MICHAEL R
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
09/08/2016 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@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL ANGIOLILLO
Appeal2015-001787
Application 11/693,338 1
Technology Center 2400
Before JON M. JURGOVAN, ADAM J. PYONIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-16, 18, and 20-24, which are all pending claims. See
App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Although the header of each page of Appellant's Appeal Brief refers to
"U.S. Patent Application No.: 11/693,758," the correct serial number on
appeal is Application Serial Number 11/693,338. See App. Br. 1-33.
Appeal2015-001787
Application 11/693,338
STATEMENT OF THE CASE
Introduction
Appellant's disclosure is directed to a system and method for
providing a directory of advertisements. Spec., Title. Claims 1, 5, 8, 15,
and 21 are independent. Claim 1 is reproduced below for reference:
1. A method, comprising:
receiving a media signal, from a TV network provider,
comprising TV broadcast programming and at least one
advertisement and corresponding advertisement data for each
advertisement, wherein the at least one advertisement and
corresponding advertisement data are associated with a
particular broadcast program of the TV broadcast
programmmg;
recording the media signal;
parsing the media signal to extract the at least one
advertisement and corresponding advertisement data;
storing in at least one database each advertisement and
corresponding advertisement data;
indexing each advertisement for retrieval by a user-
controlled media control station, the indexing being based on
the corresponding advertisement data, wherein each
advertisement is indexed according to category, advertiser,
product or service, title, length of advertisement, and rating; and
receiving a request from a user to view the at least one
advertisement.
References and Rejections
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rodriguez
Dupuis
Dow
US 2003/0154475 Al
US 2003/0182208 Al
US 2004/0221311 Al
2
Aug. 14, 2003
Sept. 25, 2003
Nov. 4, 2004
Appeal2015-001787
Application 11/693,338
Marsh
Sherwood
Phillips
US 2005/0192987 Al
US 2007 /0233701 Al
US 2007/0261088 Al
Sept. 1, 2005
Oct. 4, 2007
Nov. 8, 2007
Claims 1, 2, 4--8, 10-16, 18, and 20-23 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Phillips, Dupuis, Rodriguez,
and Sherwood. Final Act. 5-33; Ans. 2.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Phillips, Dupuis, Rodriguez, Sherwood, and Dow. Final
Act. 33; Ans. 30.
Claims 3 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Phillips, Dupuis, Rodriguez, Sherwood, and Marsh. Final
Act. 34--35; Ans. 31.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments. We adopt the Examiner's findings and conclusions in the Final
Action and Examiner's Answer as our own, to the extent they are consistent
with our analysis below. We add the following primarily for emphasis.
A. Independent Claim 1
The Examiner s Combination
Appellant argues the Examiner erred in rejecting claim 1, because the
cited combination of references relies on improper hindsight reasoning, and
"Fails To Disclose 'recording the media signal; [and] parsing the media
signal to extract the at least one advertisement and corresponding
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advertisement data"' as claimed. App. Br. 9, 16. Particularly, Appellant
contends that,
[i]n rejecting claim 1, for example, the Office Action asserts
that it would have been obvious to combine no less than four
references, resulting in numerous modifications to the primary
reference Phillips and even modifications to secondary
references such as Dupuis. Applicant respectfully submits that
parsing various portions of numerous distinct references is
reflective of both the novel combination of features found in the
present claims and also the use of inappropriate hindsight
reasoning in rejecting Applicant's claimed invention.
App. Br. 15; see also id. at 16-17.
We are not persuaded the Examiner erred. During prosecution, claims
are given their broadest reasonable interpretation consistent with the
Specification as they would be understood by one of ordinary skill in the art.
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Here, we note the claim term "extract" is not recited in the Specification, and
the term "parsing" only appears once, with respect to indexing: "the Ad
Server 136 may also include additional processing logic to sort and index the
one or more recorded and stored TV advertisements ... [ s ]toring and
indexing may be achieved by parsing the advertisement data, which may
typically be transmitted as searchable metadata." Spec. i-f 14. Thus, we
agree with the Examiner that Phillips teaches or suggests recording a media
signal and "parsing the media signal," within the meaning of the claim,
because Phillips teaches or suggests storing video on demand ("VOD")
media content, extracting metadata from the content, and organizing the
content based on the metadata. See Ans. 34--35; see also Phillips, Fig. 1,
,-r,-r 17, 18, 34, 45, 47, 49.
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Further, we are not persuaded the Examiner erred in finding "[t]he
combination of references would ... provide a teaching for 'parsing the
media signal to extract at least one advertisement and corresponding
advertisement data' as claimed" (Ans. 36), because
[t]aking together Phillips' teaching that assets may include "any
piece of media that a content provider desires to track or
manage" ([Phillips, [0044]) and Dupuis' teaching for on-
demand television commercial advertisements ([0025]), it
would have been obvious to one of ordinary skill in the art at
the time the invention was made to combine the teachings such
that assets (i.e., media content) may include advertisements.
Ans. 43. We agree, because including advertising as a part of media content
was well known in the art, as evidenced by the cited references. See, e.g.,
Dupuis, Fig. 1; see also Rodriguez i-f 52. Additionally, each of the cited
references is directed to systems for distributing and viewing media content,
and we find the Examiner has articulated adequate reasoning, including
rational underpinnings drawn from the cited references, for the combination.
See Ans. 4--7, 42--44; Phillips i-fi-145, 47, 49; Dupuis i-fi-125-27; Rodriguez,
Fig. 8; Sherwood i-f 61; see also In re Kahn, 441F.3d977, 988 (Fed. Cir
2006); KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("Often, it
will be necessary for a court to look to interrelated teachings of multiple
patents ... to determine whether there was an apparent reason to combine
the known elements in the fashion claimed by the patent at issue"); In re
Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (Appellant's hindsight
argument of no moment where the Examiner provides a sufficient, non-
hindsight reason to combine the references).
In addition, regarding Appellant's hindsight argument (see App. Br.
16), Appellant does not persuade us the Examiner improperly relied upon
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knowledge gleaned only from Appellant's disclosure. See Jn re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Rather, we find the
Examiner did not err in combining the references.
Thus, we do not find the Examiner erred in determining one of skill in
the art would practice the claimed invention in view of the combination of
Phillips, Dupuis, and the other cited references. See Ans. 38, 44.
Teaching Away
Appellant argues the Examiner erred in combining Phillips with
Dupuis, because "the teachings of Dupuis suggest that advertisers provide
the advertisements directly to Dupuis' system, which is an alternative way
of collecting advertisements, as compared with recording 'TV broadcast
programming and at least one advertisement' and 'parsing the media signal
to extract the at least one advertisement .... "' as claimed. Reply Br. 7; see
also App. Br. 15.
We are not persuaded Dupuis teaches away from the Examiner's
modifications to the other cited references, because teaching an alternative
method does not teach away from the use of a claimed method. See In re
Dunn, 349 F.2d 433, 438 (CCPA 1965). In particular, Appellant fails to
provide sufficient evidence or reasoning explaining why Dupuis discourages
the ordinary artisan from making the combination of elements as claimed.
See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314,
1327 (Fed. Cir. 2009) ("A reference does not teach away, however, if it
merely expresses a general preference for an alternative invention but does
not 'criticize, discredit, or otherwise discourage' investigation into the
invention claimed.") (Citations removed).
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B. Dependent Claim 2
Appellant argues the Examiner erred in rejecting claim 2, because
"Phillips[] merely discusses use of metadata, not recordation of metadata ...
. As use of metadata is different from recordation of metadata, it should be
held that Phillips fails to disclose, 'wherein the advertisement data comprises
searchable metadata,' as recited in claim 2." App. Br. 18.
We are not persuaded the Examiner erred in finding "the combination
of references teaches both recordation of metadata, and that advertisement
data comprises searchable metadata" (Ans. 45), for the reasons discussed
above for parent claim 1, and because Phillips teaches storing and searching
metadata extracted from the media content. See Phillips, Fig. 1, i-fi-1 29, 4 7,
69. Accordingly, we sustain the Examiner's rejection of dependent claim 2.
CONCLUSION
We sustain the Examiner's rejection of independent claim 1 and
dependent claim 2. Appellant argues the patentability of the remaining
claims for the same reasons provided for independent claim 1. See App. Br.
18-23. Accordingly, we sustain the Examiner's rejections of these claims
for the same reasons discussed above. See 37 C.F.R. § 41.37(c)(l)(iv); see
also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
DECISION
The Examiner's rejection of claims 1-16, 18, and 20-24 is affirmed.
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).
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Application 11/693,338
AFFIRMED
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