Ex Parte Eldering

Board of Patent Appeals and Interferences

Mar 25, 2009

09742852 (B.P.A.I. Mar. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CHARLES A. ELDERING
____________________

Appeal 2009-0696
Application 09/742,8521
Technology Center 2400
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Decided:2 March 26, 2009
____________________

Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and MARC S.
HOFF, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a Non-final Rejection
of claims 4-6, 55, 56, 59, 60, 75, 78, 79, 90, and 91.3
We affirm.

1 The real party in interest is Prime Research Alliance E., Inc.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
3 Claims 1-3, 7-54, 57, 58, 61-74, 76, 77, and 80-89 have been cancelled.
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Appellant’s invention relates to the insertion of targeted advertising
into media program channels at the subscriber’s side (Spec. 3). An ad
processing unit determines the next ad or ads to be inserted into available
time slots in a programming channel (Spec. 4). The ad processing unit may
also readily change the ad insertion schedule in view of a change in channel
selection, viewer identity, and/or the type of program being watched (Spec.
5).
Claim 4 is exemplary:
4. A subscriber system for inserting unscheduled advertisements into
at least one channel of media signals, the system comprising:

an ad insertion device configured to determine an order in which the
unscheduled advertisements are to be inserted into the at least one channel
and insert the unscheduled advertisements into the at least one channel
according to the order; and

a watchdog module coupled to the ad insertion device, the watchdog
module configured to detect a change in current program content being
displayed on the at least one channel and output results of the detection to
the ad insertion device, such that the ad insertion device modifies the order
in which the unscheduled advertisements are to be inserted according to
program content displayed as a result of the detected change.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Doherty US 2003/0200128 A1 Oct. 23, 2003
Zigmond US 6,698,020 B1 Feb. 24, 2004

Claims 4-6, 55, 56, 59, 60, 75, 78, 79, 90, and 91 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Zigmond in view of Doherty.
Rather than repeat the arguments of Appellant or the Examiner, we
make reference to the Appeal Brief (filed January 19, 2007, supplemented
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April 25, 2007), the Reply Brief (filed September 28, 2007), and the
Examiner’s Answer (mailed July 31, 2007) for their respective details.
ISSUES
There are two principal issues in the appeal before us:
1. Has Appellant shown that the Examiner erred in finding that the
combination of Zigmond and Doherty teaches modifying the order in which
unscheduled advertisements are to be inserted according to program content
displayed, as a result of detected change in program content being displayed,
as claims 4 and 90 require?
2. Has Appellant shown that the Examiner’s proposed rejection
lacked motivation to combine Zigmond and Doherty to obtain the claimed
invention, because the Examiner failed to point to an objective teaching
demonstrating the desirability of the asserted combination?
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
The Invention
1. According to Appellant, the invention concerns the insertion of
targeted advertising into media program channels at the subscriber’s side
(Spec. 3).
2. An ad processing unit determines the next ad or ads to be
inserted into available time slots in a programming channel (Spec. 4).
3. The ad processing unit may also readily change the ad insertion
schedule in view of a change in channel selection, viewer identity, and/or the
type of program being watched (Spec. 5).
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Zigmond
4. Zigmond teaches a system and method for selecting and
inserting advertisements into a video programming feed at the household
level (col. 6, ll. 4-6).
5. Zigmond’s ad insertion device may comprise means for
identifying the content of television programs carried on the video
programming feed (col. 10, ll. 65-67). The program descriptions in the
electronic program database may be used to select an advertisement
according to the subject matter of a particular program (col. 12, ll. 60-62).
Doherty
6. Doherty teaches a method and apparatus for displaying items of
information, such as targeted advertisements, on a display apparatus (para.
[0001]).
7. Doherty teaches a scheduler 140 that records a log of
advertisements and other items of information to be scheduled and displayed
by the output devices 100 (para. [0029]).
8. Once a user commences interacting with the user interface 150
of Doherty, a user interrupt is generated and supplied to scheduler 140, in
response to which the schedule is cleared and rescheduling is undertaken
(para. [0030]).
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
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1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S. Ct. at 1739 (citing Graham v. John
Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed
principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

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Id. at 1740. The operative question in this “functional approach” is
thus “whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
As was described in In re Kahn, 441 F.3d 977 (Fed. Cir. 2006):

[T]he “motivation-suggestion-teaching” test asks
not merely what the references disclose, but
whether a person of ordinary skill in the art,
possessed with the understandings and knowledge
reflected in the prior art, and motivated by the
general problem facing the inventor, would have
been led to make the combination recited in the
claims. From this it may be determined whether
the overall disclosures, teachings, and suggestions
of the prior art, and the level of skill in the art –
i.e., the understandings and knowledge of persons
having ordinary skill in the art at the time of the
invention-support the legal conclusion of
obviousness. (internal citations omitted).
Id. at 988. To establish a prima facie case of obviousness, the
references being combined do not need to explicitly suggest combining their
teachings. See id. at 987-88 (“the teaching, motivation, or suggestion may
be implicit from the prior art as a whole, rather than expressly stated in the
references”). “’The test for an implicit showing is what the combined
teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary
skill in the art.’” Id. at 987-88 (quoting In re Kotzab, 217 F.3d 1365, 1370
(Fed. Cir. 2000)).
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). The test of obviousness is not whether the
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features of a secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. Id. at 425.

ANALYSIS
Appellant presents a single set of arguments with respect to all
pending claims. We select claim 4 as representative of the claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that the combination of Zigmond and Doherty
asserted by the Examiner does not teach “modify[ing] the order in which
unscheduled advertisements are to be inserted according to program content
displayed as a result of the detected change,” as claim 4 requires, because
Zigmond does not contemplate the use of a schedule (Br. 11), and because
Doherty does not teach altering the schedule or order of ads “according to
program content displayed as a result of the detected change” (Br. 10).
Appellant’s arguments are not persuasive of Examiner error. The
Examiner’s rejection relies on Doherty, rather than Zigmond, to teach the
concept of a schedule of advertisements (Ans. 12; see FF 7). The Examiner’s
rejection further relies on Zigmond, rather than Doherty, to teach the concept
of modifying the order in which advertisements are to be inserted, in the
event of a change in displayed program content (Ans. 12; see FF 5). In any
case, Appellant’s attacks on the individual references are not persuasive to
show the nonobviousness of the asserted combination. Keller, 642 F.2d at
425.
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Appellant further argues that even if Doherty’s queue were
incorporated into Zigmond’s system, it cannot be inferred from such a
combination that the included queue would be reordered at all, let alone
according to program content (Br. 11). This argument is similarly
unpersuasive, because it is based on the assumption that Doherty’s queue
must be bodily incorporated into Zigmond’s adaptive advertisement
selection system. The test of obviousness, however, is what the combined
teachings of the references would have suggested to one of skill in the art.
Keller, 642 F.2d at 425. We concur in the Examiner’s conclusion that the
combined teachings of Zigmond and Doherty would have suggested a
system for inserting targeted advertisements including an ad insertion device
that determines an order in which unscheduled advertisements are to be
inserted, and that modifies the order of unscheduled advertisement insertion
in response to a change in displayed program content, to achieve the
advantages of eliminating any possible delay in inserting the ad, and
achieving greater compression of the video data (Ans. 5, 11).
Appellant further argues that the Examiner has failed to establish
motivation to combine Zigmond and Doherty, because the Examiner has
failed to point to an objective teaching that suggests the desirability of
combining the references (Br. 8).
Such an objective teaching is not a per se requirement, however. The
Federal Circuit recently framed the obviousness inquiry as “whether a
person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem
facing the inventor, would have been led to make the combination recited in
the claims.” Kahn, 441 F.3d at 988. We concur in the Examiner’s conclusion
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that, presented with the adaptive advertisement selection based on program
content taught by Zigmond, and the advertisement schedule taught by
Doherty, the person having ordinary skill in the art would have found it
obvious to combine the two teachings to achieve the advantages of
eliminating any possible delay in displaying an advertisement and allowing
greater compression of video data (Ans. 11). Further, we regard the
Examiner’s proposed modification of Zigmond to include the determination
of an order in which advertisements are to be inserted, as taught by Doherty,
as the predictable use of prior art elements according to their established
functions. See KSR, 127 S. Ct. at 1734.
Appellant thus has not demonstrated error in the Examiner’s rejection
of claim 4. We therefore affirm the rejection of claims 4-6, 55, 56, 59, 60,
75, 78, 79, 90, and 91 under 35 U.S.C. § 103.
CONCLUSIONS OF LAW
1. Appellant has not shown that the Examiner erred in finding that
the combination of Zigmond and Doherty teaches modifying the order in
which unscheduled advertisements are to be inserted according to program
content displayed, as a result of detected change in program content being
displayed, as claims 4 and 90 require.
2. Appellant has not shown that the Examiner’s proposed rejection
lacked motivation to combine Zigmond and Doherty to obtain the claimed
invention.
ORDER
The Examiner’s rejection of claims 4-6, 55, 56, 59, 60, 75, 78, 79, 90,
and 91 is affirmed.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tdl

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