Ex Parte Beaton

Patent Trial and Appeal Board

Sep 21, 2015

12322644 (P.T.A.B. Sep. 21, 2015)

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.
12/322,644 02/04/2009 Jeffrey Beaton 7464
16261 7590 09/21/2015
Jeffrey Beaton
2608 Farnell Road
Fort Collins, CO 80524
EXAMINER
ZUBERI, MOHAMMED H
ART UNIT PAPER NUMBER
2177
MAIL DATE DELIVERY MODE
09/21/2015 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 JEFFREY BEATON
____________

Appeal 2013-0055581
Application 12/322,644
Technology Center 2100
____________

Before ROBERT E. NAPPI, ADAM J. PYONIN, and GARTH D. BAER,
Administrative Patent Judges.

BAER, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellant identifies Jeffrey Beaton as the real party in interest.
App. Br. 2.
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s Final Rejection of claims 1–21. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.

BACKGROUND
A. The Invention
Appellant’s claimed invention relates to “[a] system and method for
overlay advertising and purchasing utilizing on-line and streaming media.”
Abstract. Claim 1 is exemplary and is reproduced below.
1. A method providing advertising to a first node via a network,
comprising:
providing an advertiser with access to a management
system for inputting data for identifying a commercial of a
predetermined time length, wherein the commercial comprises
video media presentation data;
receiving a selection request from a web browser at the
first node via the network for the commercial of the
predetermined time length, wherein the selection request for the
commercial is responsive to a web browser selection of the
commercial at the first node;
transmitting the requested commercial of the
predetermined time length via the network to the first node in
response to the web browser selection request, wherein there is
supplemental information having a predetermined association
with the video media presentation data of the requested
commercial;
transmitting the supplemental information associated
with the requested commercial, via the network, to the first
node; and
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wherein when a presentation of the video media
presentation data of the requested commercial is paused at the
first node, the supplemental information is presented at the first
node overlain on a minority region of the paused presentation
of the requested commercial so that a majority region of the
paused presentation of the requested commercial is still
viewable along with overlain presentation of the supplemental
information, wherein the supplemental information comprises a
plurality of selectable overlay advertising thumbnail images in
a sequential array arrangement and depicting products or
services that are related to the contents of the presentation of
the requested commercial;
wherein there is respective additional supplemental
information presented at the first node comprising respective
enlarged depictions of each of the plurality of selectable overlay
advertising thumbnail images, when each of the plurality of
selectable overlay advertising thumbnail images is selected;
wherein information indicative of the pause of the
requested commercial occurring at the first node is received via
the network at a predetermined network node; and
wherein when presentation of the video media
presentation data is unpaused at the first node for continuation
of the presentation of the requested commercial, the
continuation proceeds at a portion of the presentation of the
requested commercial that is relative to a portion of the
presentation where the pause of the requested commercial
occurred.
B. The Rejections on Appeal
The Examiner rejects claims 1–7, 9–17, and 21 as unpatentable under
35 U.S.C. § 103(a) over Bowler (US 2007/0089150 A1, pub. April 19,
2007), Cover Flow (iPhone Pocket Guide, Pub. Sept. 20, 2007), and
Triestram (US 2006/0068861 A1, pub. March 30, 2006). Ans. 3.
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The Examiner rejects claim 8 as unpatentable under
35 U.S.C. § 103(a) over Bowler, Cover Flow, and Rogers (US
2005/0229227 A1, pub. Oct. 13, 2005). Ans. 19.
The Examiner rejects claim 18 as unpatentable under
35 U.S.C. § 103(a) over Bowler and Triestram. Ans. 20.
The Examiner rejects claim 19 as unpatentable under
35 U.S.C. § 103(a) over Triestram and Rashkovskiy (US 6,616,533 B1, iss.
Sep. 9, 2003). Ans. 23.
The Examiner rejects claim 20 as unpatentable under
35 U.S.C. § 103(a) over Bowler, Triestram, and Rogers. Ans. 24.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. Arguments that Appellant could have
made but chose not to make in the Briefs have not been considered and are
deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii). Except as indicated
below, we disagree with Appellant that the Examiner erred and adopt as our
own the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and the reasons and conclusions set forth by the
Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief.
We highlight and address specific findings and arguments for emphasis as
follows.
A. Claims 1–17 and 21
Appellant asserts, inter alia, the Examiner erred in finding the cited
prior art teaches or suggests “receiving a selection request . . . for the
commercial . . . wherein the selection request for the commercial is
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responsive to a web browser selection of the commercial at the first node,”
and “transmitting the requested commercial . . . to the first node in response
to the web browser selection request,” as claim 1 requires. App. Br. 14–16.
According to Appellant, the Examiner erred in relying on Bowler for
teaching the disputed limitation because “Bowler does not disclose or
suggest transmitting any requested video commercial in response to any the
web browser selection request.” App. Br. 15.
We are persuaded by Appellant’s argument. The Examiner has not
explained sufficiently how Bowler’s disclosure of playing Internet-based
television broadcasts explicitly or inherently discloses requesting a
commercial and, in response, transmitting the requested commercial as claim
1 requires. See Ans. 30–32. Accordingly, we do not sustain the Examiner’s
rejection of claim 1, or claims 2–17 and 21 which depend ultimately from
claim 1.
B. Claim 18
Appellant asserts the Examiner erred in finding the cited prior art
teaches or suggests presenting advertising “as [a] result of [the] pause,” as
claim 18 requires. App. Br. 31. We are not persuaded by Appellant’s
argument because we agree with the Examiner that Triestram teaches the
disputed element by disclosing that “[a]t the moment the pause button is
engaged, a control algorithm switches to an alternative content,” including
advertising. Triestram ¶ 13; id. at ¶ 2 (“Our invention takes advantage of
this pause to insert advertising or other content to the paused screen.”); see
Ans. 40. Accordingly, we sustain the Examiner’s rejection of claim 18.
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C. Claim 19
Appellant asserts the Examiner erred in finding Triestram’s ¶ 13
teaches or suggests “information indicative of the pause occurring being
transmitted via the network to a predetermined network node” or “a
multimedia player distribution server,” as claim 19 requires. App. Br. 33.
Appellant also argues the Examiner erred by relying on “column 2, lines 21-
34 of Rashkovskiy” for teaching distributing a multimedia player to the
graphical user interface, as claim 19 requires. Id.
We are not persuaded by Appellant’s arguments. Triestram teaches
“[a]t the moment the pause button is engaged, a control algorithm switches
to an alternative content that may come from” various sources including the
Internet. Triestram ¶ 13. For content to be loaded from a remote location as
an immediate response to a user pressing pause, the remote location
necessarily must be informed of the pause, i.e., it must receive information
indicating the pause. Thus, we agree with the Examiner that Triestram
teaches or suggests information indicative of the pause is transmitted via a
network to a node, as claim 19 requires. Ans. 23–24. We also agree with
the Examiner’s finding (Ans. 23) that Triestram teaches a multimedia player
distribution server by disclosing, for example, “Internet based servers . . .
available ‘on demand’ to push new content to the game playing individual.”
Triestram ¶ 11; see also id. at ¶ 4 (“Our invention will use . . . advertisers
own distributed servers to deliver the message.”). We are not persuaded by
Appellant’s argument that the Examiner erred by relying on “column 2, lines
21-34 of Rashkovskiy” for teaching distributing a multimedia player to the
graphical user interface. App. Br. 33. The Examiner finds Triestram—not
Rashkovskiy—teaches distributing a multimedia player, and relies on
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Rashkovskiy for teaching a graphical user interface. See Ans. 23, 24.
Because the Examiner finds the combination of Triestram and Rashkovskiy
teaches distributing a multimedia player to the graphical user interface (Ans.
24), Appellant’s argument that Rashkovskiy alone fails to teach that element
is not persuasive. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)). Accordingly, we sustain the Examiner’s rejection of claim 19.
D. Claim 20
Appellant asserts the Examiner erred in rejecting claim 20 because
“paragraph [0021] of Rogers (relied upon by the Examiner)” fails to teach
(1) “streaming media record in a first storage repository,” (2) “any way to
pause any playing of any streaming media record,” or (3) “association of an
advertising data record in a second storage repository with any streaming
media record in the first storage repository.” App. Br. 34. Appellant also
argues that “no teachings of any streaming media record in a first storage
repository are to be found anywhere in the video game console of Triestram
or in the Bowler television broadcast.” Id.
We are not persuaded by Appellant’s arguments because they amount
to attacks on the references individually, however, the Examiner’s rejection
of claim 20 (Ans. 25–28) is based on the references’ combined teachings.
See Merck, 800 F.2d at 1097. Accordingly, we sustain the Examiner’s
rejection of claim 20.

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DECISION
We reverse the Examiner’s rejections of claims 1–17 and 21.
We affirm the Examiner’s rejections of claims 18–20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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