Ex Parte Hara

Patent Trial and Appeal Board

Jan 18, 2013

10959115 (P.T.A.B. Jan. 18, 2013)

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.
10/959,115 10/07/2004 Kazuhiro Hara 01480090AA 3266
30743 7590 01/18/2013
WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
HUERTA, ALEXANDER Q
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
01/18/2013 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 KAZUHIRO HARA
____________

Appeal 2010-012153
Application 10/959,115
Technology Center 2400
____________

Before CARLA M. KRIVAK, CAROLYN D. THOMAS and
CARL W. WHITEHEAD, JR, Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-012153
Application 10/959,115

2
STATEMENT OF THE CASE
Appellant is appealing claims 1-6. Appeal Brief 5. We have
jurisdiction under 35 U.S.C. § 6(b) (2012). An Oral Hearing was held
January 10, 2013.
We affirm.

Introduction
The invention is directed to:
[A] video distribution system for distributing video
programs through the internet such that a user who agrees
in advance to view advertisements associated with
particular video programs at a time of the user’s choosing
can receive the video programs in a form which is not
interrupted by the advertisements while the sponsor of the
video program can be assured that the advertisement(s)
will, in fact, be viewed by a user that views more than a
freely selectable duration of the program.

Appeal Brief 11.

Illustrative Claim
1. A video distribution system for distributing video programs through
the Internet, comprising:

a broadcasting station server having

a viewing time database to record, in association with a user ID of
each viewer, a viewing starting time, a viewing stop time, and a viewing
time of each viewer who views a video program, for each of video programs
that are distributed by the broadcasting station server,

a viewing time manager to record, in response to a viewer’s terminal
gaining access to the broadcasting station server via the Internet and starts
Appeal 2010-012153
Application 10/959,115

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viewing the video program that is being distributed, the user ID of the
viewer and a viewing start time thereof in said viewing time database, and, if
a signal indicative of a stoppage of viewing of the video program, is
received from the viewer’s terminal that views the video program, to
calculate a viewing time from a difference between a viewing stop time
included in said signal and the viewing start time recorded in said viewing
time database, and to record the calculated viewing time in said viewing
time database, and

a viewing time information transmitter to transmit, if a program end in
information indicative of an end of the distributed video program is
received, the user ID and a viewing time of the viewer who has viewed the
video program as viewing information through the Internet; and

a data center having

a mail address database to store the user IDs of viewers and mail
addresses thereof in one-to-one correspondence,

an advertisement information database to store prepared
advertisement information for each of video programs,

a decision unit to select the user ID of a viewer whose viewing time of
the video program, calculated by the viewing time manager, is longer than a
predetermined time from the viewing information transmitted from said
broadcasting station server via the Internet, and

an advertisement mail distributor to read a mail address corresponding
to the user ID selected by said decision unit from said mail address database,
and to read advertisement information corresponding to the video program
from said advertisement information database, and to distribute an
advertisement mail, said mail having the advertisement information read
from said advertisement information database, added to the mail address
read from said mail address database.

Appeal 2010-012153
Application 10/959,115

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Rejections on Appeal
Claims 1, 3 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Swix (U.S. Patent 6,718,551 B1; issued April 6, 2004),
Williams (U.S. Patent 6,075,971; issued June 13, 2000), Kamada (U.S.
Patent Application Number 2003/0056208 A1; published March 20, 2003)
and Grauch (U.S. Patent 6,983,478 B1; issued January 3, 2006). Answer 4-
13.
Claims 2, 4 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Swix, Williams, Kamada, Grauch and Aharoni (U.S.
Patent 6,014,694; issued January 11, 2000). Answer 13-16.

Issue on Appeal
Do Swix, Williams, Kamada, Grauch and Aharoni, either in
combination or alone, disclose an Internet video distribution system as
claimed by Appellant?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We concur with the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and the reasons set
forth by the Examiner in the Answer in response to Appellant’s Appeal
Brief. However, we highlight and address specific findings and arguments
for emphasis as follows.

Appeal 2010-012153
Application 10/959,115

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We do not find Appellant’s arguments to be persuasive. In particular,
we observe that Appellant attacks the cited references in isolation. (Appeal
Brief 11-26; Reply Brief 1-10). Appellant’s arguments do not take into
account what the collective teachings of the prior art would have suggested
to one of ordinary skill in the art and are therefore ineffective to rebut the
Examiner's prima facie case of obviousness. See In re Keller, 642 F.2d 413,
425 (CCPA 1981)(“The test for obviousness is not whether the 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.” (Emphasis added) (citations omitted)).
For example, Appellant argues that Swix does not teach or suggest
calculating the viewing time of the video program. Appeal Brief 12-13.
However, the Examiner does not rely upon Swix to disclose this feature but
relies upon Grauch, where Grauch teaches a method and system for tracking
network usage for interactive media delivery based upon a subscriber’s use
of a multimedia device. Answer 21.
Appellant further argues that Swix is directed to targeting
advertisements “which necessarily requires analysis of profiles of viewer
preferences and selection of advertisements in accordance with results of
that analysis which precludes and is antithetical to advertisements ‘prepared
. . . for each of video programs’ which the Examiner does not address.”
Reply Brief 4. We do not find Appellant’s arguments to be persuasive
because the limitations of the claims do not preclude using profiles of
viewer’s preferences. Further, the claimed advertisements are not merely
Appeal 2010-012153
Application 10/959,115

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prepared for each video; the claimed invention considers users ID’s to target
those to receive the advertisements, as well as the user’s viewing time,
which is essentially profiling the user’s preference. See claim 1.
We do not find Appellant’s arguments to be persuasive because the
Examiner has established a nexus for the combination of the cited
references. “Common sense teaches, however, that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 420 (2007).
Therefore we will sustain the Examiner’s rejection of claim 1, as well as,
claims 3 and 5 which recite limitations commensurate in scope because
Appellant have not convinced us of Examiner error. We also sustain the
Examiner’s rejection of claim 2, 4 and 6, which are dependent from claims
1, 3, and 5, for the same reasons as stated above.

DECISION
The rejections of claims 1-6 are affirmed.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED

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