Ex Parte Chandratillake et al

Patent Trial and Appeal Board

Jun 30, 2016

12241746 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/241,746 09/30/2008 Suranga Chandratillake
34284 7590 07/05/2016
Rutan & Tucker, LLP
611 ANTON BL VD
SUITE 1400
COST A MESA, CA 92626
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.
026500-0002P 7611
EXAMINER
ALATA, YASSIN
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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@rutan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SURANGA CHANDRATILLAKE,
MATT SCHEYBELER, JACK STOCKDALE, and
ABRAHAM SERGIO MARTINEZ RODRIGUEZ
Appeal2014-007701
Application 12/241, 7 46 1
Technology Center 2400
Before LARRY J. HUME, NATHAN A. ENGELS, and
CARLL. SILVERMAN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the non-final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Blinkx UK Ltd. App.
Br. 3.
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Application 12/241, 7 46
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed invention are directed to
[a Jn advertisement player . . . that embeds on a web page
having a video player, which is hosted on a first server. The
advertisement player is configured to make a call to and send
information associated with a video file about to be played on
the web page across a network to a contextual engine hosted on
a second server. The contextual engine analyses the content of
the video file to be played on the video player and content of
two or more advertisements from two or more advertisement
networks and sends back one or more advertisements to display
with the video file as the video player plays the video file on the
web page. The contextual engine pairs the one or more
advertisements with the video file based on at least a best match
of relevance of the one or more advertisements to content in the
video file.
Abstract.
Exemplary Claims
Claims 1 and 2, reproduced below, are representative of the subject
matter on appeal (formatting and emphasis added):
1. An apparatus, comprising:
[L 1] an advertisement player that is configured to embed
on a web page having a video player, which is hosted on a first
server, wherein the advertisement player is coupled to the video
player on that web page, where the advertisement player and
the video player are discrete stand-alone components, and
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 3, 2013); Reply Brief ("Reply Br.," filed July 7, 2014); Examiner's
Answer ("Ans.," mailed May 8, 2014); Non-Final Office Action ("Non-Final
Act.," mailed Jan. 10, 2013); and the original Specification ("Spec.," filed
Sept. 30, 2008).
2
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Application 12/241, 7 46
[L2] a same instance of the advertisement player is
configured to be able to couple to a first instance of the video
player configured to play a video file in a first video format as
well able to couple to a second instance of the video player
configured to play a video file in a second video format, which
is a different format than the first, and thus,
[L3] the same instance of the advertisement player is
configured to work with instances of video players programmed
in different proprietary video formats,
[L4] where the advertisement player has one or more
routines is[3J configured to
1) detect when the video player has been
requested to play a video file,
2) to detect what video file is being
requested to be played and then
3) to make a real time call to and send
information associated with a video file about to
be played on the web page across a network to a
contextual engine hosted on a second server, and
the contextual engine, upon receiving the call from the
advertisement player, sends back across the network to the first
server hosting the advertisement player a first advertisement to
display with the video file as the video player plays the video
file on the web page,
wherein the contextual engine pairs the first
advertisement with the video file based on at least a best match
of relevance of the first advertisement to content in the video
file to be played on the web page.
2. The apparatus of claim 1, wherein the first server
is configured to download the web page over the network into a
memory of a client machine having a browser application
resident on the client machine upon request from the browser
3 In the event of further prosecution, we invite the Examiner's attention to
the apparently extraneously recited "is" in claim 1, and any potential
implication of indefiniteness under 35 U.S.C. § 112, second paragraph.
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and the client machine displays the web page on a display of
the client machine to allow a user of the client machine to make
a request to activate the video player to play the video file,
wherein the first video format is a Y ouTube video format
to play video files and the second video format is Google Video
video format to play video files,
wherein the advertisement player is configured to display
the advertisements in the same window that the video player
plays the video as well as in other areas of the web page.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Cramer et al.
("Cramer")
Kim et al.
("Kim")
Lax et al.
CLaxii)
US 2002/0104096 Al Aug. 1, 2002
US 2008/0320531 Al Dec. 25, 2008
(filed June 25, 2008)
US 2009/0006375 Al Jan. 1, 2009
(filed Sept. 5, 2007)
Rejections on Appeal
RI. Claims 1 and 3-20 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Lax and Cramer. Non-Final Act. 6.
R2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Lax, Cramer, and Kim. Non-Final Act. 19.
CLAIM GROUPING
Based on Appellants' arguments and proposed claim grouping (App.
Br. 8-29), we decide the appeal of obviousness Rejection RI of claims 1
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Application 12/241, 7 46
and 3-20 on the basis of representative claim 1; and we decide the appeal of
obviousness Rejection R2 of separately argued claim 2, infra. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-20,
and we incorporate herein and adopt as our own: ( 1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claims 1
and 2 for emphasis as follows.
1. § 103 RejectionRl ofClaims 1 and3-20
Issue 1
Appellants argue (App. Br. 8-28; Reply Br. 3-20) the Examiner's
rejection of claim 1under35 U.S.C. § 103(a) as being obvious over the
combination of Lax and Cramer is in error. These contentions present us
with the following issue:
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
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Did the Examiner err in finding the cited prior art combination teaches
or suggests an apparatus that includes, inter alia, limitations L 1 through L3,
and L4(1) through L4(3), as recited in claim 1?
Analysis
Appellants set forth multiple contentions alleging the Examiner erred
in combining Lax and Cramer to render claim 1 obvious under§ 103. App.
Br. 8 et seq. We are not persuaded the Examiner erred.
We are not persuaded of Examiner error because we find that the
Examiner has, in great detail, rebutted each of those arguments in the
Answer by a preponderance of the evidence, including addressing each of
contested limitations LI through L3, and L4(1) through L4(3). Ans. 4--13.
In addition, in the Reply Brief, we find Appellants essentially reiterate
their previous arguments. Reply Br. 4--20. In particular, Appellants restate
their argument (App. Br. 15) alleging the Examiner relied upon inherency in
rejecting claim 1 under§ 103 over the combination of Lax and Cramer.
Reply Br. 7, 18-19. We disagree with Appellants, and find the Examiner
never invoked inherency implicitly or explicitly in the rejection of the
appealed claims, either in the Non-Final Action, or in the Answer. See Non-
Final Act. 6 et seq.; Ans. 4 et seq. Instead, we find the Examiner clearly and
explicitly mapped all the limitations of claim 1 to the cited prior art. Non-
Final Act. 6-19; Ans. 4--13. Therefore, we are not persuaded the Examiner
erred.
Accordingly, we adopt the Examiner's factual findings, underlying
reasoning, and legal conclusions, which we incorporate herein as our own.
Consequently, we find no reversible error in the Examiner's rejection of
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claim 1, and grouped claims 3-20 which fall therewith. See Claim
Grouping, supra.
2. § 103 Rejection R2 of Claim 2
Issue 2
Appellants argue (App. Br. 28-29; Reply Br. 20) the Examiner's
rejection of claim 2 under 35 U.S.C. § 103(a) as being obvious over the
combination of Lax, Cramer, and Kim is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the apparatus of claim 1, wherein, inter alia, "the advertisement
player is configured to display the advertisements in the same window that
the video player plays the video as well as in other areas of the web page,"
as recited in claim 2?5
5 In the event of further prosecution, we direct the Examiner's attention to
determine whether claim 2 meets the definiteness requirements of 35 U.S.C.
§ 112, second paragraph. In particular, we note claim 2 additionally recites,
"wherein the first video format is a You Tube video format to play video files
and the second video format is Google Video video format to play video
files." Claim 2 (emphasis added). We note "Google" and "Y ouTube" are
trademarked/service marked words which may not adequately describe the
technical attributes of the recited video formats. "The presence of a
trademark or trade name in a claim is not, per se, improper under 35 U.S.C.
112(b) or pre-AIA 35 U.S.C. 112, second paragraph, but the claim should be
carefully analyzed to determine how the mark or name is used in the claim.
It is important to recognize that a trademark or trade name is used to identify
a source of goods, and not the goods themselves. Thus a trademark or trade
name does not identify or describe the goods associated with the trademark
or trade name." See MPEP § 2173.05(U) ("TRADEMARKS OR TRADE
NAMES IN A CLAIM"). "Where a trademark or trade name is used in a
claim as a limitation to identify or describe a particular material or product,
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Analysis
Appellants contend "[t]he Office Action does not assert that Kim
makes up for any of the above deficiencies discussed for Lax and Cramer in
regard to claim 1. Thus dependent claim 2 is patentable over the
combination of Lax, Cramer, and Kim for at least the reasons stated above
[with respect to independent claim 1]." App. Br. 28. Appellants further
contend "Lax itself also does not disclose claim 2 's limitation of the
advertisement player is configured to display the advertisements in the same
window that the video player plays the video as well as in other areas of the
web page" because Lax's "ad placements pre-roll, post-roll or interstitial
expressly convey that the ads are being displayed in the same window that is
displaying the video." App. Br. 29.
Again, the Examiner has responded to each of Appellants' arguments
in the Answer, and we find the Examiner has rebutted each of those
arguments by a preponderance of the evidence. Ans. 13-14; and see Non-
Final Act. 19-20.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitation of claim 2, nor do we find error in the Examiner's
the claim does not comply with the requirements of 35 U.S.C. 112, second
paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The
claim scope is uncertain since the trademark or trade name cannot be used
properly to identify any particular material or product. A trademark or trade
name is used to identify a source of goods, and not the goods themselves.
Thus, a trademark or trade name does not identify or describe the goods
associated with the trademark or trade name." See MPEP § 608.0l(v).
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resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of dependent claim 2.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 3-21) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSIONS
The Examiner did not err with respect to obviousness Rejections RI
and R2 of claims 1-20 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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