Ex Parte Hawkins et alDownload PDFPatent Trial and Appeal BoardDec 23, 201412321791 (P.T.A.B. Dec. 23, 2014) Copy Citation 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. 12/321,791 01/26/2009 William J. Hawkins 5381 86605 7590 12/23/2014 Allen D. Brufsky, PA 475 Galleon Dr. Naples, FL 34102 EXAMINER NGUYEN BA, HOANG VU A ART UNIT PAPER NUMBER 2421 MAIL DATE DELIVERY MODE 12/23/2014 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 WILLIAM J. HAWKINS and LASZLO BORSY ____________ Appeal 2012-004626 Application 12/321,791 Technology Center 2400 ____________ Before CARL W. WHITEHEAD JR., JOHN A. EVANS, and CHARLES J. BOUDREAU, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review2 under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of Claims 40–423 as obvious. Claims 1–39 have 1 The Appeal Brief identifies the Applicants as the real parties in interest. R. 22 (Appellants’ Brief is not paginated. We refer to the electronic Record “Rec.”). 2 We have considered in this decision only those arguments Appellants actually raised in the Briefs. Any other arguments which Appellants could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). 3 Rec. 37. Appeal 2012-004626 Application 12/321,791 2 been cancelled.4 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.5 STATEMENT OF THE CASE The claims relate to an opt-in system for displaying targeted content. See Abstract. Claim 40 is independent. The claims have not been argued separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(iv). An understanding of the invention can be derived from a reading of exemplary Claim 40, which is reproduced below with disputed limitations italicized and some paragraphing added: 40. An interactive opt-in viewing unit for targeting advertisements to a viewer based on information provided by the viewer comprising: means for receiving a viewer profile from the viewer generated by the viewer in response to one or more questions; means for receiving program content and advertisements; means for storing received program content, advertisements, and said viewer profile; means for determining a match between said received program content and said advertisements based on the viewer generated profile in response to one or more questions; and 4 Id. 5 Our Decision refers to Appellants’ Appeal Brief filed July 15, 2011 (“App. Br.” or “Rec.”) and the Examiner’s Answer mailed October 31, 2011 (“Ans.”). Appeal 2012-004626 Application 12/321,791 3 means for selecting an advertisement to be displayed to the viewer based on said match whereby the viewer has at least some control over the advertisement displayed to the viewer. References and Rejections The Examiner relies upon the prior art as follows: Herz US 6,088,722 July 11, 2000 Stern EP 1 067 792 A2 Jan. 2001 Rosser US 6,446,261 B1 Sept. 3, 2002 Claims 40–42 stand rejected under 35 U.S.C. § 103(a) as obvious over Herz, Stern, and Rosser.6 Ans. 4–6. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusions. OBVIOUSNESS Appellants argue all the claims (Claims 40–42) as a group. Rec. 38– 42. 6 Based on Appellants’ arguments in the Appeal Brief, we will decide the appeal on the basis of claims as set forth below. See 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2012-004626 Application 12/321,791 4 The Examiner finds that the combination of Herz and Stern teaches each claimed limitation except the combination fails to teach “means for selecting an advertisement to be displayed to the viewer based on said match whereby the viewer has at least some control over the advertisement displayed to the viewer,” which is taught by Rosser. Ans. 5–6 (citing Rosser, “at least” col. 4, ll. 14–48, e.g., “write-in”). Appellants concede that Rosser’s “ ‘write-in’ dimension to the viewing” provides the viewer “the opportunity to select extra specific profile factors to the broadcaster’s selections,” but “contra to the present invention it is still the broadcaster who selects the advertisements.” Rec. 39. Moreover, Rosser’s apparatus to select the ads to be displayed differs from that of the invention. Id. The Examiner responds with a table setting forth correspondences between the disputed claim limitations and the disclosures of Rosser. Ans. 7. Moreover, the Examiner finds that the claimed “based on said match,” is recited in the limitation preceding the limitation in question and reads on Herz’s disclosed function of the agreement matrix 908. Ans. 8. Appellants did not file a Reply Brief. Appellants’ arguments fail to persuade us that the Examiner has erred. DECISION The rejection of Claims 40–42 under 35 U.S.C. § 103 is AFFIRMED. No time period for taking any subsequent action in connection with Appeal 2012-004626 Application 12/321,791 5 this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED kme Copy with citationCopy as parenthetical citation