Ex Parte Canney et alDownload PDFPatent Trial and Appeal BoardAug 22, 201814102291 (P.T.A.B. Aug. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/102,291 12/10/2013 50437 7590 08/24/2018 DUFT BORNSEN & FETTIG, LLP 1526 SPRUCE STREET SUITE 302 BOULDER, CO 80302 FIRST NAMED INVENTOR Jason Canney 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. CAN-0007 8078 EXAMINER LI,SUSANX ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 08/24/2018 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): docketing@dbflaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON CANNEY, JOEL HASSELL, SID GREGORY, TOM HUBER, CHRIS PIZZURRO, STEVE MARKEL, JONATHAN E. FARB, THOMAS M. MORETTO, BRUCE C. DILGER, TIMOTHY R. WHITTON, and CHRISTOPHER M. RIPPE 1 Appeal2018-002607 Application 14/102,291 Technology Center 2400 Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection of claims 1, 3---6, 8-11, and 13-15, which are all of the claims pending in the application. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant is the Applicant, CANOE VENTURES, LLC, which, according to the Appeal Brief, is the real party in interest. See App. Br. 3. 2 Claims 2, 7, and 12 have been cancelled. See Non-Final Act. 2. Appeal 2018-002607 Application 14/102,291 STATEMENT OF THE CASE According to Appellant, the claims are directed to an auction for inserting assets, e.g., advertisements, into on-demand content, i.e., Content On Demand (COD). Spec. ,r 2, Abstract. 3 Claim 1, reproduced below, is representative of the claimed subject matter: 1. A system, comprising: a Content On Demand (COD) asset insertion decision system communicatively coupled to a content distributer and operable to process information, from the content distributer, about COD content selections by Customer Premises Equipment (CPEs); and an auction system communicatively coupled to the COD asset insertion decision system and to a plurality of asset providers to process information about assets of the asset providers, wherein the auction system is operable to provide an auction for asset opportunities in the COD content selections, to receive bids for the asset opportunities, and to rank the auctioned assets according to bid, wherein the COD asset insertion decision system is operable to further rank the auctioned assets based in part on the COD content selection information and the asset information, to identify one or more of the further ranked assets for insertion into the COD content selections, and to direct the content distributer to insert the identified one or more of the further ranked assets into the COD content selections, wherein: a portion of the COD content selections have a same title; 3 This Decision refers to: (1) Appellant's Specification filed December 10, 2013 ("Spec."); (2) the Non-Final Office Action ("Non-Final Act.") mailed March 21, 2017; (3) the Appeal Brief ("App. Br.") filed August 21, 2017; (4) the Examiner's Answer ("Ans.") mailed December 8, 2017; and (5) the Reply Brief ("Reply Br.") filed January 11, 2018. 2 Appeal 2018-002607 Application 14/102,291 the COD asset insertion decision system is further operable to process information of that portion of the COD content selections and to direct the auction system to generate an auction for that portion of the COD content selections; the auction system is further operable to receive bids for the auction for that portion of the COD content selections, to determine winning bids for asset insertions for that portion of the COD content selections, and to convey the winning bids to the COD asset insertion decision system; and the COD asset insertion decision system is further operable to direct the content distributer to insert the assets associated with the winning bids when a COD content selection having a title matches the title of that portion of the COD content selections. (App. Br., Claims Appendix, 10-11.) REFERENCES AND REJECTION Claims 1, 3---6, 8-11, and 13-15 stand rejected under 35 U.S.C. §I03(a) as being unpatentable over Gilbane et al., (US 2011/0295700 Al; published Dec. 1, 2011; hereinafter "Gilbane"), Zschocke et al., (US 2010/0138290 Al; published June 3, 2010; hereinafter "Zschocke"), and Eldering et al., (US 2003/0149975 Al; published Aug. 7, 2003; hereinafter "Eldering"). Non-Final Act. 5-22. Our review in this appeal is limited only to the above rejection and the issues raised by Appellant. Arguments not made are waived. See MPEP § 1205.02; 37 C.F.R. §§ 4I.37(c)(l)(iv) and 4I.39(a)(l). 3 Appeal 2018-002607 Application 14/102,291 ANALYSIS We disagree with Appellant's contentions and, insofar as they relate to issues raised in this appeal, adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Non-Final Act. 3-10); and (2) the reasons set forth by the Examiner in the Answer (Ans. 24-29) in response to the Appeal Brief. With respect to the claims argued by Appellant, we highlight and address specific findings and arguments for emphasis as follows. "COD content selections have a same title" Appellant contends the Examiner erred in finding the combination of Gilbane, Zschocke, and Eldering teaches "a portion of the COD content selections have a same title ... [and] insert[ing] the assets associated with the winning bids when a COD content selection having a title matches the title of that portion of the COD content selections," as recited in claim 1 and similarly recited in claims 6 and 11. App. Br. 6-11; Reply Br. 2-3. Specifically, Appellant argues "Gilbane does not disclose and cannot perform an auction based on COD content titles because Gilbane only performs an auction for each COD content selection." App. Br. 7. Appellant further argues "Zschocke does not auction assets based on a particular content title" and "there is no 'portion' of COD content selections with the same title in Zschocke." App. Br. 8; Reply Br. 3. Still further, Appellant argues "Eldering may disclose a portion of the COD content selections have a same title," but "Eldering has nothing to do with auctions or bidding." App. Br. 10. 4 Appeal 2018-002607 Application 14/102,291 We are not persuaded. The Examiner finds, and we agree, both Gilbane and Zschocke similarly teach "insert[ing] the assets associated with the winning bids." Non-Final Act. 6-9; Ans. 25-27. In particular, the Examiner relies on Gilbane's "video-on-demand (VOD)," i.e., COD content, system (Gilbane ,r 26) in which advertisements, i.e., "assets," "corresponding to [ selected] winning bids are ... placed [into content] when corresponding content is delivered" (id. ,r 75; see id. ,r,r 50-53, 60, 34---68, Figs. 3, 4) to teach the claimed limitation. The Examiner also relies on Zschocke's description of an "asset delivery spot ... auctioned (1804) to the asset providers" so that an "asset may be delivered to a first portion of a broadcast audience" (Zschocke ,r,r 175-178) to teach the claimed limitation. Non-Final Act. 8-9. Further, the Examiner finds Eldering teaches "a portion of the COD content selections have a same title ... [and] insert[ing] the assets ... when a COD content selection having a title matches the title of that portion of the COD content selections." Non-Final Act. 9-10; Ans. 24-- 25, 27-28. In particular, the Examiner relies on Eldering's system for inserting advertisements into COD content in which "advertisers ( or media buyers) may select their advertising campaign for [the] VoD based on the content title." Eldering ,r,r 155-156; see id. ,r 161, Fig. 7. For example, "Coke may identify that they would like to place ads in all 'I Love Lucy' episodes." Id. ,r 156. Appellant's arguments inappropriately attack the references individually when the Examiner's rejection is based on the combination of references. In re Keller, 642 F.2d 413,426 (CCPA 1981) (citation omitted). In particular, Appellant argues Eldering "has nothing to do with auctions or bidding" (App. Br. 10) and so does not teach auctions for inserting 5 Appeal 2018-002607 Application 14/102,291 advertisements into content (App. Br. 10-11). The Examiner, however, relies on Gilbane and Zschocke to teach that feature. And, Appellant argues Gilbane and Zschocke do not teach inserting advertisements into content having the same title (App. Br. 7-9; Reply Br. 3), but the Examiner relies on Eldering to teach that feature. Contrary to Appellant's assertion that the Examiner "disregard[s] certain elements of the Appellant's claim" and "distill[s] the Appellant's claims to into a mere gist or thrust" (App. Br. 10; Reply Br. 3), the Examiner's combination addresses each limitation recited by the claims. Specifically, the Examiner's combination relies on Gilbane and Zschocke to teach determining winning bids in auctions for inserting advertisements into on-demand content (Non-Final Act. 6-9; Ans. 25-27) and further relies on Eldering to teach inserting advertisements into portions of COD content having the same title (Ans. 24--25, 27-28; Non-Final Act. 9). We agree with the Examiner's finding that the combination of the teachings of Gilbane, Zschocke, and Eldering teaches "a portion of the COD content selections have a same title ... [and] insert[ing] the assets associated with the winning bids when a COD content selection having a title matches the title of that portion of the COD content selections." Ans. 24, 28-29; Non- Final-Act. 10. We are also not persuaded by Appellant's argument that "Zschocke is not associated with VOD." Reply Br. 3; App. Br. 9. Zschocke discloses that its auctioned advertisements are "delivered to a first portion of a broadcast audience." Zschocke ,r 178. Zschocke describes that those "broadcast networks [are] used to deliver on demand content such as VOD." Zschocke ,r 51. Accordingly, Zschocke's auctions are for VOD content. Moreover, as 6 Appeal 2018-002607 Application 14/102,291 discussed above, the Examiner's rejection is based on the combination of Gilbane, Zschocke, and Eldering, and Gilbane and Eldering also teach inserting advertisements into VOD content. Gilbane ,r,r 26, 75; Eldering ,r,r 155-156. Improper Combination Appellant contends the Examiner improperly combined Gilbane, Zschocke, and Eldering. App. Br. 11-15. Specifically, Appellant argues the references are not analogous art because "the Examiner is inappropriately expanding the problem associated with Eldering in a way that is not consistent with the Appellant's [S]pecification." Id. at 11. Appellant further argues the "Examiner has provided no articulated reasoning that indicates how Eldering could be used in an auctioning system for COD content." Id. at 12. Still further, Appellant argues the "Examiner has not provided any evidentiary basis for the concept of modifying Gil bane and Zschocke to implement an auction for assets having the same title, and further has not provided any evidentiary basis for the argument that such a modification would encounter a reasonable expectation of success." Id. at 13. Additionally, Appellant argues "the present combination of references has been subjected to impermissible hindsight." Id. at 15. We are not persuaded. A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention ( even if it addresses a different problem) or (2) the reference is reasonably pertinent to the problem faced by the inventor ( even if it is not in the same field of endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Here, Appellant addresses the 7 Appeal 2018-002607 Application 14/102,291 alternative second test for finding analogous art but does not persuade us the references are not analogous art based on the first test, i.e., does not persuade us the references are not in the same field of endeavor. We agree with the Examiner that the references are analogous art because the references and the invention are all in the same field of endeavor, specifically, "the field of delivering video content with advertisement[s]." Ans. 29; Non-Final Act. 5. Indeed, Gilbane is in the field of "advertisement insertion opportunities ... associated with distributed content" (Gilbane Abstract), Zschocke is in the field of "targeted advertising media delivery opportunities" (Zschocke ,r 2), and Eldering is in the field of "targeted advertisements to be presented to subscribers along with selected video in a video on demand (VoD)" (Eldering Abstract). Further, we are not persuaded by Appellant's argument that the Examiner has not provided any "articulated reasoning" or "basis" for the combination and that the combination "has been subjected to impermissible hindsight" (App. Br. 11, 13, 15) because the Examiner has expressly provided a motivation for the combination supported by "articulated reasoning" having "some rational underpinning to support the legal conclusion of obviousness." See KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417-18 (2007). Specifically, the Examiner's motivation for the combination includes "presenting targeted advertisements." Non-Final Act. 5, 10; Ans. 29. That motivation is rationally underpinned because using targeted advertisements is more effective than using non-targeted advertisements. Eldering ,r 50 ("targeting of advertisements to the households most likely to be responsive to the advertising"). Furthermore, Appellant has not demonstrated that it would have been "uniquely 8 Appeal 2018-002607 Application 14/102,291 challenging or difficult for one of ordinary skill in the art" to combine the various advertisement insertion techniques of Gilbane, Zschocke, and Eldering with a reasonable expectation of success. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citation omitted). Accordingly, we are not persuaded the Examiner erred in concluding claims 1, 6, and 11 are obvious over the combination of Gilbane, Zschocke, and Eldering. We, therefore, sustain the 35 U.S.C. § 103(a) rejection of independent claims 1, 6, and 11, as well as the 35 U.S.C. § 103(a) rejections of dependent claims 3-5, 8-10, and 13-15, which are not argued separately. See App. Br. 15. DECISION For the reasons above, we affirm the Examiner's decision rejecting claims 1, 3---6, 8-11, and 13-15. 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. § 41.50(±). AFFIRMED 9 Copy with citationCopy as parenthetical citation