Ex Parte Dolph

Patent Trial and Appeal Board

Jan 27, 2015

10803631 (P.T.A.B. Jan. 27, 2015)

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