Ex Parte Harkness et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201612049077 (P.T.A.B. Feb. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/049,077 03/14/2008 81905 7590 02/25/2016 Hanley, Flight & Zimmerman, LLC (Nielsen) 150 S. Wacker Dr. Suite 2200 Chicago, IL 60606 FIRST NAMED INVENTOR David H. Harkness 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 20004/355US02 6114 EXAMINER PRASAD, NANCY N ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 02/25/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): jflight@hfzlaw.com mhanley@hfzlaw.com docketing@hfzlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID H. HARKNESS and ARUN RAMASWAMY Appeal2013-007817 1 Application 12/049,0772 Technology Center 3600 Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and TARA L. HUTCHINGS, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed December 4, 2012) and Reply Brief ("Reply Br.," filed June 3, 2013), and the Examiner's Answer ("Ans.," mailed April 1, 2013) and Final Office Action ("Final Act.," mailed April 12, 2012). 2 Appellants identify The Nielsen Company (US), LLC as the real party in interest. App. Br. 1. Appeal2013-007817 Application 12/049,077 CLAIMED fNVENTION Appellants' claimed invention "relates generally to media measurement and, more particularly, to systems and methods to identify intentionally placed products in media content" (Spec. i-f 2). Claim 1, reproduced below, is the sole independent claim and is representative of the subject matter on appeal: 1. A system to detect intentionally placed products in media content comprising: a placement monitor site comprising a logic circuit, the placement monitor site to record an occurrence of a first intentionally placed product within first broadcast media content in a product placement record; an audience measurement site to record an audience interaction with a second intentionally placed product in second broadcast media content in an event record, the audience interaction including a selection of the second intentionally placed product by an audience member; and a collection facility to store the product placement record and the event record. REJECTION Claims 1-19 are rejected under 35 U.S.C. § 102(b) as anticipated by Hays (WO 2005/086969 A2, pub. Sept. 22, 2005). ANALYSIS We are persuaded by Appellants' argument that the Examiner erred in rejecting independent claim 1under35 U.S.C. § 102(b) because Hays does not disclose a system to record an audience interaction that includes a selection of an intentionally placed product by an audience member, i.e., "an audience measurement site to record an audience interaction with a second intentionally placed product ... , the audience interaction including a 2 Appeal2013-007817 Application 12/049,077 selection of the second intentionally placed product by an audience member," as recited in claim 1 (App. Br. 4--9). In the Final Office Action, the Examiner cites "ad management service 108/116-Fig. 1 A/Fig. 4; Impression reporting client 104 - Fig. 3" of Hays as disclosing the argued limitation (Final Act. 4). And, in the Response to Argument section of the Answer, the Examiner additionally cites paragraphs 23-28, 30-35, 44, and 48-57, and Figures lB, 2, and 6 (Ans. 13-17). However, we agree with Appellants that none of the cited portions of Hays discloses a system to record an audience interaction that includes a selection of an intentionally placed product by an audience member, as called for in claim 1. Hays is directed to an advertisement delivery scheme for inserting targeted advertisements into video games (Hays, Abstract). Hays discloses that the advertisements may be targeted to groupings of one or more games, and/or groupings of one or more players, and that data about the presentation of advertisements, e.g., impression data, are aggregated into online reports and used for billing to ensure that advertisers pay only for advertisement presentations that meet specified thresholds (see id. i-fi-123-28, 48-50; see also id. i1 7 5-77 (describing that an advertisement presented in a video game is considered an "impression" if it is viewed by a game player and if its presence on the screen meets certain specified parameters, e.g., time viewed, angle of presentation, and size of presentation relative to screen size). However, we find nothing in any of paragraphs 23-28 and 48-50 that discloses "an audience measurement site to record an audience interaction with a second intentionally placed product ... , the audience interaction including a selection of the second intentionally placed product by an audience member," as recited in claim 1. 3 Appeal2013-007817 Application 12/049,077 The Examiner asserts at page 15 of the Answer that because different ads are targeted to different game users, "the selection of the game is an audience interaction." However, as Appellants observe, "a user selection of a particular game or game genre is not a selection of an intentionally placed product as recited in claim 1 because a game or game genre is not an intentionally placed product" (Reply Br. 7). Moreover, when selecting a game to play, a user has neither seen nor had any opportunity to interact with an advertisement. Thus, the selection of a game or game genre in Hays cannot reasonably be considered selection of an intentionally placed product within media content, as called for in claim 1. Hayes discloses in paragraph 34, cited by the Examiner, that in one scenario, a player may "accept to actively download advertisements in exchange for receiving a desirable upgrade to the game (e.g., a new weapon, game hints, new game levels, new game characters, etc.)." The Examiner asserts that "the player accepting to actively download advertisements ... reads on the broadest reasonable interpretation of the claim limitation 'an audience interaction that includes a selection of an intentionally placed product by an audience member"' (Ans. 16). However, we agree with Appellants that choosing to accept to actively download advertisements is not a selection of an intentionally placed product, as called for in claim 1 (App. Br. 8). Paragraphs 50-57 of Hays describe distributed environments in which the Hays system can be implemented, including an environment where advertisers contract with an advertisement management service to place advertisements within a game for a defined period of time and frequency. But again, we find nothing in this portion of Hays or in any of the other cited 4 Appeal2013-007817 Application 12/049,077 portions of the reference that discloses "an audience measurement site to record an audience interaction with a second intentionally placed product ... , the audience interaction including a selection of the second intentionally placed product by an audience member," as recited in claim 1. In view of the foregoing, we do not sustain the Examiner's rejection of claim 1under35 U.S.C. § 102(b). For the same reasons, we also do not sustain the Examiner's rejection of claims 2-19, each of which depends, directly or indirectly, from claim 1. DECISION The Examiner's rejection of claims 1-19 under 35 U.S.C. § 102(b) is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation