Ex Parte Deitsch et al

Patent Trial and Appeal Board

Oct 4, 2012

11552700 (P.T.A.B. Oct. 4, 2012)

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.
11/552,700 10/25/2006 Andrew Isaac Deitsch 172832 -2 (NBCU:0028) 2541
12640 7590 10/04/2012
NBCUniversal Media, LLC
c/o Fletcher Yoder, P.C.
PO Box 692289
Houston, TX 77269-2289
EXAMINER
TELAN, MICHAEL R
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
10/04/2012 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 ANDREW ISAAC DEITSCH, STEPHEN JOHN
ANGELOVICH, DAVID BRET RABINOWITZ, and JOHN
PATRICK WALLACE
____________________

Appeal 2010-005591
Application 11/552,700
Technology Center 2400
____________________

Before ST. JOHN COURTENAY III, MARC S. HOFF, and
GREGORY J. GONSALVES, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005591
Application 11/552,700

2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-24. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
The claims are directed “to advertising and more particularly to
embedded advertisements and techniques for advertising the same.” (Spec.
1). Claims 1 and 6, reproduced below, are illustrative of the claimed subject
matter:
1. A method of advertising, comprising:

combining two or more video streams to form a unified
video stream, wherein at least one of the two or more video
streams is a program content stream comprising program
content that is filmed by a camera and at least one of the two or
more video streams is an advertisement material stream
comprising advertisement material, and wherein the placement
of the advertisement material stream relative to the program
content stream is independent of any information derived from
the camera; and

broadcasting the unified video stream providing indelible
integration of said advertising with said program content.

6. A method of advertising, comprising:

integrating traffic, sales, marketing and production teams to
generate an advertisement video stream comprising an advertisement;

combining a program content video stream comprising a
program content and the advertisement video stream to generate a
unified video stream; and

Appeal 2010-005591
Application 11/552,700

3
broadcasting the unified video stream to a plurality of viewers,
wherein said unified video stream displays the advertising
simultaneously with the program content providing indelible
integration of said advertising with said program content.

REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Vancelette US 5,894,320 Apr. 13, 1999
Holtz US 2003/0070167 Al Apr. 10, 2003
Eldering US 2004/0148625 Al Jul. 29, 2004
Steelberg US 2005/0266834 Al Dec. 01, 2005
Granville US 2007/0192190 Al Aug. 16, 2007
(effectively filed Dec. 06, 2005)
Pong US 7,231,651 B2 Jun. 12, 2007
(filed Jun. 18, 2001)

REJECTIONS
1. Claims 6-13, 17, 18, and 22 stand rejected under 35 U.S.C
§103(a) as being unpatentable over the combination of Eldering
and Pong.
2. Claims 1-5 stand rejected under 35 U.S.C §103(a) as being
unpatentable over the combination of Eldering, Vancelette, and
Pong.
3. Claims 14, 19, and 20 stand rejected under 35 U.S.C §103(a) as
being unpatentable over the combination of Eldering, Pong, and
Steelberg.
4. Claims 15 and16 stand rejected under 35 U.S.C §103(a) as
being unpatentable over the combination of Eldering, Pong,
Steelberg, and Holtz.
Appeal 2010-005591
Application 11/552,700

4
5. Claim 21 stands rejected under 35 U.S.C §103(a) as being
unpatentable over the combination of Eldering, Pong, and
Granville.
6. Claims 23 and 24 stand rejected under 35 U.S.C §103(a) as
being unpatentable over the combination of Eldering, Steelberg,
Pong, Granville, and Holtz.
Grouping of Claims
Based on the Appellants’ arguments, we decide the appeal for the
first-stated rejection on the basis of claim 6, and we decide the appeal for the
second-stated rejection on the basis of claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii). We address the remaining grounds of rejection 3-6 infra.
ANALYSIS
We disagree with Appellants’ contentions regarding the Examiner’s
obviousness rejections of the claims. We 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 set forth by the Examiner in the Answer in
response to arguments made in Appellants’ Appeal Brief. (Ans. 21-25). We
highlight and address specific findings and arguments below.

First Ground of Rejection - Independent Claims 6 and 11
Issue: Regarding independent claims 6 and 11, are Appellants’
arguments urging patentability predicated on non-functional descriptive
material?
Regarding independent claims 6 and 11, Appellants contend that the
cited combination of references do not teach or suggest the “generation of
unified video stream where a part of the unified video is dedicated for
Appeal 2010-005591
Application 11/552,700

5
program content while the other part is dedicated for the advertisements.”
(App. Br. 8, emphasis added).
In response, the Examiner contends that Appellants are arguing
limitations that are not claimed: “However, neither claim 6 nor claim 11
clearly specifies nor requires that part of the unified video is dedicated for
program content while the other part is dedicated for advertisements.” (Ans.
22, ¶1, emphasis added).
We agree with the Examiner that Appellants are arguing limitations
that are not claimed. However, in reviewing the record, we also conclude
that the “unified video stream” of claim 1 is merely an arrangement of video
information (data), which is nonfunctional descriptive material per se. As
such, claim 1 does not positively recite that the contents of the “unified
video stream” (or arrangement or structure of the video data) are used to
change or alter any computer function.1 See Ex parte Nehls, 88 USPQ2d
1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d
1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003,
aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI
2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).
Even if we assume arguendo that the nonfunctional descriptive
material may be accorded weight, we agree with the Examiner’s underlying

1 Cf. Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (November 22, 2005), especially pages 151-152. (The Manual of
Patent Examining Procedure includes substantively the same guidance. See
MPEP, 8th edition (revised Aug. 2012), § 2106.01.)

Appeal 2010-005591
Application 11/552,700

6
factual findings and ultimate legal conclusion of obviousness. For the
reasons found by the Examiner (Ans. 4, 21-22), we agree that Eldering
would have taught or suggested combining two or more videos streams for a
“unified” video stream in the manner claimed: e.g., “In dynamic ad linking,
one or more advertisements from an ad stream not initially associated with a
program stream can be inserted into that program stream for viewing by the
subscriber.” (Eldering, para. [0084]).
Regarding the recited step of “ broadcasting the unified video stream
to a plurality of viewers, wherein said unified video stream displays the
advertising simultaneously with the program content providing indelible
integration of said advertising with said program content” (claim 6,
emphasis added),2 the Examiner broadly but reasonably construes the
claimed “indelible integration of said advertising with said program content”
as meaning “irremovable, such that advertisements cannot be skipped
without skipping program content.” (Ans. 23, emphasis added).
In reviewing the record, we conclude that the Examiner’s claim
construction is fully consistent with the meaning of the term “indelible
integration” as used within Appellants’ Specification:
As will be appreciated by one skilled in the art, the advertising
techniques described in the various embodiments discussed
above provides transparent, indelible integration of advertising
content and program content. This insures that the advertising
content is delivered and viewed, along with the program
content without disruption, or avoidance. The advertising
content cannot be skipped or otherwise removed from the
program content.
(Spec. para. [0017], emphasis added).

2 Cf. claim 1: “broadcasting the unified video stream providing indelible
integration of said advertising with said program content.”
Appeal 2010-005591
Application 11/552,700

7
Thus, we agree with the Examiner that the secondary Pong reference,
when combined with the aforementioned teachings of Eldering, would have
taught or suggested the claimed indelible integration of advertising content
and program content (claims 1, 6, 11): “Pong’s teaching of integrating
advertisements with programs such that the advertisements are blended into
the scene in which they are inserted (abstract; col. 4, lines 1-43; figs. 1-3).”
(Ans. 23). See e.g., Pong, col. 4, ll. 24-27: “in the sporting field
environment illustrated in FIGS. 1-3, for example, actual billboards or
portions of the field on which the athletes are standing, areas of a golf
course, or the display area of an airship, may simply be painted blue so that
messages can be inserted.”
In the Reply Brief, Appellants raise a new issue regarding the
combinability of the cited references:
The pertinent issue, it is believed, is whether the Examiner has
adequately identified a reason that would have prompted a
person of ordinary skill in the relevant [field] to combine the
elements in the way the claimed new invention does.
Accordingly, Appellants respectfully request the Examiner to
produce objective evidence of the requisite motivation or
suggestion to combine the cited references, or to remove the
foregoing rejection under 35 U.S.C. § 103.
(Reply Br. 4).

Appellants also newly allege that the Examiner has relied on
impermissible hindsight in combining the cited references. (Reply Br. 5).
We note that “[t]he reply brief is not an opportunity to make arguments that
could have been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.”
Appeal 2010-005591
Application 11/552,700

8
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (“Informative”). Cf.
Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (“[A]n issue not raised by an appellant in its opening brief . . . is
waived.”) (citations and quotation marks omitted).
This reasoning is applicable here, given the untimely arguments raised
in the Reply Brief (4-5). On this record, we are not persuaded of Examiner
error regarding the rejection of representative claim 6. Therefore, we sustain
the obviousness rejection of independent claim 6 over the combination of
Eldering and Pong. Dependent claims 7-10, independent claim 11, and
dependent claims 12, 13, 17, 18, and 22 (not argued separately) fall
therewith under the same first ground of rejection. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appellants also urge that dependent claims 14-16 and 19-21 are
patentable for the same reasons that claims 6 and 11 are believed patentable.
(App. Br. 8, 10). Because we did not find these arguments persuasive, we
also sustain the Examiner’s obviousness rejections of dependent claims 14-
16, and 19-21 for the same reasons discussed above regarding independent
claims 6 and 11.

Claims 1-5 – Second Ground of rejection
Regarding representative claim 1, Appellants recite the language of
the claim and “submit that, as discussed in detail above, the Eldering in view
of Pong fail to teach, disclose or suggest any unified video stream or
generation of such unified video stream. Further, as discussed in detail
above, Eldering in view of Pong fails to teach, disclose or suggest placing
the advertisement material stream relative to the program content stream
Appeal 2010-005591
Application 11/552,700

9
independent of any information derived from the camera that is employed to
film the program content. Applicants further submit that Vancelette fails to
obviate the above stated deficiencies in the teaching of Eldering in view
ofVancelette and further in view of Pong.” (App. Br. 9).
However, we find no deficiencies regarding the base combination of
Eldering and Pong for the reasons discussed above regarding independent
claim 6. Because we did not find Appellants’ arguments persuasive
regarding independent claims 6 and 11, we sustain the Examiner’s
obviousness rejection of representative claim 1 (and dependent claims 4-5,
not argued separately) for the same reasons discussed above regarding
independent claims 6 and 11. See 37 C.F.R. § 41.37(c)(1)(vii).

Remaining Grounds of Rejection 3-6
For each of the remaining grounds of rejection 3-6, Appellants
contend that the additional cited secondary references fail to obviate the
(previously argued) deficiencies regarding independent claims 1, 6, or 11.
(App. Br. 10-12).
Because we did not find Appellants’ arguments persuasive regarding
independent claims 1, 6 and 11, we sustain the remaining grounds of
rejection (3-6) for the same reasons discussed above regarding independent
claims 1, 6 and 11. See 37 C.F.R. § 41.37(c)(1)(vii).

Appeal 2010-005591
Application 11/552,700

10
DECISION
We affirm the Examiner’s rejections of claims 1-24 under § 103. No
time for taking any action connected with this appeal may be extended under
37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv).

ORDER
AFFIRMED

peb