Ex Parte DolphDownload PDFPatent Trial and Appeal BoardJan 27, 201510803631 (P.T.A.B. Jan. 27, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BLAINE H. DOLPH ____________ Appeal 2012-010166 Application 10/803,631 Technology Center 2400 ____________ Before ELENI MANTIS MERCADER, JOHN A. EVANS, and JESSICA C. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 6, 12–18, 24, 25, 27, and 29. Claims 2–5, 7–11, 19–23, 26, and 28 have been canceled. (App. Br. 4.) We have jurisdiction under 35 U.S.C. § 6(b). We reverse. INVENTION The invention relates to methods for targeted advertising. (See Spec. ¶ 1.) Claim 1 is illustrative of the invention and is reproduced below: 1. A method for sending second marketing content to a digital video recorder, the method comprising the steps of: a computer broadcasting, from a service provider to the digital video recorder via a communications network, television programming comprising first marketing content; Appeal 2012-010166 Application 10/803,631 2 after the step of the computer broadcasting the television programming, the computer receiving a user identification and a program identification from the digital video recorder; the computer determining a location of the user by referencing a user profile associated with the user identification; and in response to the step of the computer determining the location of the user, the computer sending the second marketing content to the digital video recorder, wherein the second marketing content is associated with the location of the user and the program identification. REJECTIONS AT ISSUE The Examiner rejected claims 1, 17, and 25 under 35 U.S.C. § 102(b) as anticipated by Koga (US 2001/0042018 A1; published Nov. 15, 2001). (Ans. 5.) The Examiner rejected claims 6, 12–16, 18, and 27 under 35 U.S.C. § 103(a) as unpatentable over Koga, Stinebruner (US 6,133,910; Oct. 17, 2000), and Plotnick (US 2002/0144262 A1; published Oct. 3, 2002). (Ans. 7.) The Examiner rejected claims 24 and 29 under 35 U.S.C. § 103(a) as unpatentable over Koga and Plotnick. (Ans. 13.) ISSUE Appellant presents several arguments, on pages 11 through 18 of the Appeal Brief, directed to the Examiner’s rejection of independent claim 1. The dispositive issue presented by these arguments is: did the Examiner err in finding that Koga discloses a “digital video recorder” as recited in claim 1? This issue is also dispositive for the other claims on appeal. Appeal 2012-010166 Application 10/803,631 3 ANALYSIS Claims 1, 17, and 25 under 35 U.S.C. § 102(b) Appellant argues that Koga does not disclose a “digital video recorder.” (App. Br. 12.) Appellant’s Specification defines a “Digital Video Recorder (DVR)” as “a machine that receives television programming and stores the television programming in memory or on a disk.” (Spec. ¶ 15.) The Examiner finds that the user terminal in Koga is a “digital video recorder.” (Ans. 5.) The Examiner further finds that Koga discloses a CD and “since [a] CD stores digital data, terminal 40 is recording [] digital data.” (Ans. 15 (citing Koga, Figs. 4 and 6, ¶ 67).) We disagree. Koga discloses that the user terminal receives and displays television programming. (See Koga, ¶ 21.) We agree with Appellant that Koga does not disclose the user terminal storing television programming in memory or on a disk. (App. Br. 12–13; Reply Br. 2.) Rather, a person of ordinary skill in the art would understand that the CD disclosed in Koga is a CD that is being advertised and not a CD on which the user terminal stores television programming. “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Because Koga does not disclose a “digital video recorder,” we do not sustain the Examiner’s rejection of claim 1 under § 102(b). For the same reasons, we also do not sustain the Examiner’s rejections of claims 17 and 25. Appeal 2012-010166 Application 10/803,631 4 Claims 6, 12–16, 18, 24, 27, and 29 under 35 U.S.C. § 103(a) The Examiner also relied on the user terminal in Koga as disclosing a “digital video recorder” in the obviousness rejections of the remaining claims. (See Ans. 7, 10.)* We note that the additional references of Stinebruner and Plotnick as applied by the Examiner do not cure the deficiency discussed supra. Should there be further prosecution, however, the Examiner is urged to apply Plotnick’s teaching of a personal video recorder in examining all of the claims. (Plotnick, ¶¶ 53, 97 (disclosing a personal video recorder (PVR), which “may also be referred to as [a] Digital Video Recorder[]” and may be “any type of device which digitally stores and plays back programming . . .”).) Because we are a Board of review, we leave it to the Examiner to apply this teaching in the first instance. In sum, we do not sustain the rejections of claims 6, 12–16, 18, 24, 27, and 29 for the same reasons discussed supra for claim 1. DECISION The Examiner’s rejection of claims 1, 17, and 25 under 35 U.S.C. § 102(b) as anticipated by Koga is not sustained. * To the extent that the Examiner relied on Paragraph 68 of Koga as teaching a “digital video recorder” in the Section 103(a) rejection of claim 6 (Ans. 7), we disagree. That paragraph teaches recording the “guide menu program corresponding to the TV advertisement program.” Koga teaches that the guide menu program is the “multifunction icon” (i.e., an icon on the private page). (Koga, ¶ 38, Fig. 6.) Thus, Paragraph 68 of Koga does not teach that the user terminal records the television programming. Appeal 2012-010166 Application 10/803,631 5 The Examiner’s rejection of claims 6, 12–16, 18, 24, 27, and 29 under 35 U.S.C. § 103(a) is not sustained. REVERSED pgc Copy with citationCopy as parenthetical citation