Ex Parte Arling et al

Patent Trials and Appeals Board

Jun 27, 2019

14282785 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/282,785 05/20/2014 Paul D. Arling
34018 7590 07/01/2019
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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.
81230.721US 12 9661
EXAMINER
FOXX, CHICO A
ART UNIT PAPER NUMBER
2684
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
chiipmail@gtlaw.com
j arosikg@gtlaw.com
clairt@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExpartePAUL D. ARLING, PATRICKH. HAYES, and
ARSHAM HATAMBEIKI 1
Appeal 2018-007916
Application 14/282,785
Technology Center 2600
Before JASON V. MORGAN, IRVINE. BRANCH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1 and 12-22. Claims 2-11 are canceled. Final Act. 2.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the applicant and real party in interest, Universal Electronics
Inc. Appeal Br. 2.
Appeal2018-007916
Application 14/282,785
Summary of disclosure
The Specification discloses displaying advertisement content by
having a "first app installed on a first device ... retrieve the advertising
content ... to ... provide the advertising content to a second app installed
on a second device" for display "as an overlay in a display associated with
the second device." Abstract.
Representative claims (key limitations emphasized)
1. A method for displaying advertising content,
compnsmg:
receiving by a first app installed on a first device from a second
app installed on the first device information related to a media
content that the second app installed on the first device is
causing to be streamed to a second device for display on a
display associated with the second device;
uploading by the first app the information received from the
second app to a network server device to thereby retrieve
advertising content from the network server device related to
the media content that the second app is causing to be streamed
to the second device; and
providing by the first app the advertising content to a third app
installed on the second device whereby the advertising content
is provided to the third app installed on the second device
independent of the media content the second app installed on
the first device is causing to be streamed to the second device
whereupon the third app installed on the second device will
function to display the advertising content as an overlay to the
media content in the display associated with the second device.
1 7. A method for displaying advertising content, comprising:
receiving by a first app installed on a first device from a second
app installed on a second device information related to a media
content that the second app is receiving from a media content
streaming service and causing to be displayed in a display
device associated with the second device;
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uploading by the first app the information received from the
second app to a network server device to thereby retrieve
advertising content from the network server device related to
the media content that the second app is causing to be displayed
in the display associated with the second device; and
providing by the first app the advertising content to the second
app installed on the second device whereby the advertising
content is provided to the second app installed on the second
device independent of the media content the second app
installed on the second device is receiving from the media
content streaming service whereupon the second app installed
on the second device will function to display the advertising
content as an overlay to the media content in the display
associated with the second device.
Rejections
The Examiner rejects claims 1 and 12-16 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 2--4.
The Examiner rejects claims 1 and 12-22 under 35 U.S.C. § I03(a) as
being unpatentable over Gardner et al. (US 2008/0319852 Al; published
Dec. 25,008) ("Gardner") and Hu et al. (US 2013/0304817 Al; published
Nov. 14, 2013) ("Hu"). Final Act. 4--12.
35 U.S.C. § 112, FIRST PARAGRAPH
In rejecting claim 1 as failing to comply with the written description
requirement, the Examiner finds the Specification provides "no support for
the first app receiving information from a second app on the same first
device related to a media content and using that information to upload to a
server, for the purpose of retrieving advertising content." Final Act. 3. The
Examiner notes that the Specification discloses first app 800A of first device
media streamer 802 can either actively retrieve advertisement content from a
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remote server or passively receive advertisement content pushed by the
remote server. Id. For active retrieval-the type of retrieval relevant to
Examiner's rejection-first app 800A retrieves the advertisement content
from the remote server using information that is: (1) stored on and retrieved
from the remote server, (2) retrieved from third app 800B on display device
106, or (3) provided by third app 800B on display device 106. Id.; see also
Spec. 19. The Examiner acknowledges that advertisement content may
relate to content being streamed by media stream 802 from "another app"
(i.e., from a second app on the first device as claimed). Final Act. 3; see
also Spec. 18-19. The Examiner finds, however, that the Specification
never discloses that the information provided to the remote server to actively
retrieve advertisement content "actually comes or is provided from said
'another app installed on the media streamer 802. "' Final Act. 4; see also
Ans. 3. Therefore, the Examiner concludes the Specification would not have
reasonably conveyed to an artisan of ordinary skill that the inventors had
possession of the subject matter of claim 1. See Final Act. 4.
Appellant contends the Examiner erred because, for first app 800A to
actively retrieve advertisement content that is related to content being
streamed by media stream 802 from another app (i.e., from a second app ),
INHERENTLY ... the first app installed on the first device ...
must obtain/receive from the "another app" or second app also
installed on the first device information that is related to the
media content that the "another app" or second app installed on
the first device is causing to be streamed.
Appeal Br. 6; see also Reply Br. 2-3.
Appellant's arguments are unpersuasive because the Specification
merely discloses that the "advertising content that is provided by the app
800A to the app 800B may be related to content that the media streamer 802
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is providing to the display device 106 (for example via ... another app
installed on the media steamer 802)." Spec. 18-19 (emphasis added). The
Specification not only fails to explicitly disclose that the advertisement
content is related as such because first app 800A retrieves information from
the second app, but the Specification enables obtaining advertisement
content by first app 800A without using information received from the
second app.
For example, first app 800A could actively obtain or passively receive
information from third app 800B about the content being provided to third
app 800B by the second app. Id. The information provided by first app
800A for use in obtaining advertisement content would result in the obtained
advertisement being related to content provided by the second app even
though first app 800A received the informed from third app 800B, not from
the second app in the manner recited. Thus, Appellant does not show the
disputed step of claim 1 would inherently be performed.
Therefore, we agree with the Examiner that the Specification would
not have reasonably conveyed to an artisan of ordinary skill that the
inventors had possession of "receiving by a first app installed on a first
device from a second app installed on the first device information related to
a media content" and "uploading by the first app the information received
from the second app to a network server device to thereby retrieve
advertising content," as recited in claim 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 112(a) rejection
of claim 1, and claims 12-16, which Appellant does not argue separately
with respect to this rejection.
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35 U.S.C. § 103(A)
Claims 1 and 12-16
In rejecting claim 1 as obvious, the Examiner finds that Gardner does
not explicitly disclose the claimed "third app installed on" the claimed
second device. Final Act. 6-7 (relying on Hu, but not Gardner, to teach or
suggest incorporating "an overlay module into [the] display device"
(emphasis added)). The Examiner, however, relies on Gardner's use of (I)
player module 112 to coordinate full-screen playback of program content
and (2) advertising module 114 to control the display of overlay
advertisement information to teach or suggest:
[P]roviding by the first app the advertising content to a ... second
device whereby the advertising content is provided to . . . the
second device independent of the media content the second app
installed on the first device is causing to be streamed to the
second device whereupon ... the second device will function to
display the advertising content as an overlay to the media content
in the display associated with the second device.
See Final Act. 5-7 (citing, e.g., Gardner ,r,r 37, 39, Figs. 1-3). The
Examiner relies on Ru's distribution of content for display ( e.g., on public
device 204 or portable device 206) to teach or suggest providing advertising
content to a "third app installed" on the second device. Id. at 7 ( citing Hu
,r,r 161-64, Figs. 2, 3, and 7).
Appellant argues the Examiner erred because "Gardner describes that
the player module 112 of the device 102 (the asserted 'second app')
coordinates the playing of the program content and the playing of the
commercial/advertising content on the display device." Appeal Br. 8
(citation omitted). Gardner, however, teaches that "[p]layer module 112
coordinates the full-screen playback of program content and video
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commercial content on device 102." Gardner ,r 37 (italicized emphasis
added). Gardner's advertising module 114, in contrast, "controls the display
of ... advertisement content that is included in advertisement overlays." Id.
,r 39 (emphasis added). Appellant's arguments fail to address persuasively
the Examiner's explicit reliance on advertising module 114---which controls
content that differs from the content controlled by player module 112 and
that displays the content in a manner that differs as well-to teach or suggest
the claimed first app. See Final Act. 4--6.
Appellant further argues "Gardner expressly describes that
identifier( s) for advertisement overlays are to be embedded in the program
content and/or video commercial content." Reply Br. 4 (citing Gardner
,r 48). Thus, Appellant contends Gardner fails to teach or suggest
"advertising content is provided [by a first app] to ... the second device
independent of the media content the second app installed on the first device
is causing to be streamed to the second device," as recited in claim 1. See
Appeal Br. 4; Reply Br. 8.
Appellant's arguments are unpersuasive because the identifiers
embedded in the program content or video merely identify the advertisement
overlay relevant to the program content "being displayed at the time it is
determined that the advertisement overlay is to be displayed." Gardner ,r 48.
For Example, "the advertisement overlay can be displayed whenever a
remote control device is picked up or otherwise moved by the user." Id.
,r 47. Thus, contrary to Appellant's arguments, Gardner's advertisement
content (i.e., the advertisement overlay) is provided independent of the
media content being streamed (e.g., an advertisement overlay is displayed
when the remote control device is moved).
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Appellant does not show the Examiner erred in relying on Hu to teach
or suggest an app on a display device (i.e., the claimed "third app installed
on the second device"). Rather, Appellant argues the Examiner erred
because "Hu discloses, exactly like Gardner, a single module ... that is
responsible for coordinating the playing of the program content and the
playing of the commercial/advertising content." Appeal Br. 8; see also
Reply Br. 4--5. As discussed above, Gardner is not deficient with respect to
teaching or suggesting the claimed first and second apps. Thus, we are
unpersuaded by Appellant's argument that Hu fails to cure the alleged but
non-existent deficiency of Gardner.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1, and claims 12-16, which Appellant does not argue separately.
Claims 17-22
Claim 1 7 recites "receiving by a first app installed on a first device
from a second app installed on a second device information related to a
media content that the second app is receiving." Appellant contends the
Examiner erred "because neither Gardner nor Hu disclose, teach, or suggest
receiving by a first app installed on a first device from a second app installed
on a second device information related to a media content that the second
app is receiving from a media content streaming service." Appeal Br. 9-10;
Reply Br. 5 ("the Office has not responded to Appellant's argument that
neither Gardner nor Hu disclose, teach, or suggest receiving by a first app
installed on a first device from a second app installed on a second device").
Appellant does not provide persuasive support for this conclusory
contention. Rather, Appellant relies on the Examiner's purported
acknowledgment "that Gardner does not disclose a second app installed on a
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first device" (Appeal Br. 10 (citing Final Act. 10) (emphasis added)) as
evidence of the Examiner's failure "to even present a primafacie case of
obviousness" (id.; see also Reply Br. 5). The second app of claim 17,
however, is on the second device, not on the first device. Moreover, the
Examiner relies on Hu, not Gardner, to teach or suggest an app on the
second device. See Final Act. 11. Appellant does not rebut persuasively the
Examiner's fact-finding and analysis with respect to Hu. Therefore,
Appellant's contentions and arguments with respect to claim 17 are
unpersuasive.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of claim 1 7, and claims 18-22, which Appellant does not argue separately.
DECISION
We affirm the Examiner's decision rejecting claims 1 and 12-22.
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.
§ 4I.50(f).
AFFIRMED
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