Ex Parte Herlein et alDownload PDFPatent Trial and Appeal BoardJan 29, 201612734729 (P.T.A.B. Jan. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121734,729 05/19/2010 24498 7590 02/02/2016 Robert D, Shedd, Patent Operations THOMSON Licensing LLC 4 Research Way 3rd Floor Princeton, NJ 08543 FIRST NAMED INVENTOR Gregory Charles Herlein 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. PU070289 3544 EXAMINER STITT, ERIK V ART UNIT PAPER NUMBER 2141 NOTIFICATION DATE DELIVERY MODE 02/02/2016 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): uspto@technicolor.com pat. verlangieri@technicolor.com russell. smith@technicolor.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY CHARLES HERLEIN, SCOTT FRANCIS, and VINCENTE. SARTOR Appeal2014-004436 Application 12/734,729 Technology Center 2100 Before DEBRA K. STEPHENS, JOSEPH P. LENTIVECH, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal2014-004436 Application 12/734,729 STATEMENT OF THE CASE Appellants' invention is directed to a method and system for using message services for control and interaction in content distribution. (Spec. 1 ). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for using a message service for communication in a content distribution environment, comprising: soliciting a response from a user by displaying a message on a display device, said user instructed to respond using a message service not provided by the display device, wherein a message communicated by said user in response to the solicitation includes information identifying at least one display for a return response; in response to a message received from said user, initiating an action associated with said received message; and identifying a location for execution of said initiated action using the information in the message communicated by said user. The Examiner's Rejections Appellants seek our review of the following rejections: Claims 1-11, 13-19, 21, and 22 stand rejected under 35 U.S.C. § 103 (a) as being unpatentable over the combination of Smith (US 2004/0034561 Al, published Feb. 19, 2004) and Rosenhaft (US 2012/0077474 Al, published Mar. 29, 2012). Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Smith, Rosenhaft, and Yuan Li (US 2007/0071071 Al, published Mar. 29, 2007). 2 Appeal2014-004436 Application 12/734,729 Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Smith, Rosenhaft, and Walsh (US 2008/0209335 Al, published Aug. 28, 2008). ANALYSIS After consideration of each of Appellants' arguments, we agree with the Examiner. We adopt the Examiner's findings and conclusions as set forth in the Examiner's Answer and in the action from which this appeal was taken. (Ans. 2-23; Final Act. 2-12). Our discussions here will be limited to the following points of emphasis. Issue 1: Did the Examiner err by improperly combining Smith and Rosenhaft? Appellants contend there is no motivation to combine Smith and Rosenhaft. (Br. 12). Appellants argue the problems and solutions set forth are very different and no reason exists for combining them. (Br. 12). Appellants further argue the modifications required to achieve Appellants' invention could not be obtained by a person of ordinary skill in the art without knowing Appellants' invention. (Br. 14). We are not persuaded by Appellants' arguments. The Examiner finds, and we agree, that Smith is in the art of displaying advertisements and analyzing responses and Rosenhaft is an analogous art of displaying an advertisement solicitation, and concludes it would have been obvious to one of ordinary skill in the art to combine Smith with Rosenhaft so the system knows where to send Smith's response message. (Final Act. 3). Thus, we find the Examiner has articulated how the claimed features are met by the 3 Appeal2014-004436 Application 12/734,729 proposed combination of the reference teachings with some rational underpinning consistent with the guidelines stated in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Appellants have not proffered sufficient evidence or argument to persuade us an ordinarily skilled artisan would not have been motivated to combine the teachings of Rosenhaft and Smith. Furthermore, Appellants do not provide sufficient persuasive arguments or evidence that the Examiner relied on hindsight reasoning. Therefore, we are not persuaded the Examiner erred in combining Smith and Rosenhaft. Issue 2: Did the Examiner err in finding the combination of Smith and Rosenhaft teaches or suggests "identifying a location for execution of said initiated action using the information in the message communicated by said user" as recited in independent claim 1 and commensurately recited in independent claim 15? The Examiner relies on Rosenhaft to teach or suggest the disputed limitation. (Final Act. 3). Rosenhaft describes, inter alia, that the "data message typically includes ... data string input by the customer along with identifying information for the initiating telecommunications device, such as the directory number assigned to the originating telecommunications device." (Rosenhaft, i-f 5; see also Rosenhaft i-fi-18, 11). Additionally, Rosenhaft states "[t]he data message may include location information pertaining to the originating telecommunications device, such as information identifying the originating MTSO and cell tower." (Rosenhaft i-f 5). Appellants contend such "information about the location of the user is added to the input sequence in the data message by the telecommunication switch." (Br. 13). In other words, Appellants argue the location information 4 Appeal2014-004436 Application 12/734,729 is added to the message communicated by the user, rather than part of the message communicated by the user. (Br. 13-14 ). We are not persuaded by Appellants' arguments. The claim language only requires that the location be identified using information in the message communicated by the user. It does not require the user to physically enter the location as part of the message. Under the broadest reasonable interpretation of the claim consistent with the Specification, we agree with the Examiner's findings that the location information in Rosenhaft's data message is information in the message communicated by the user. Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of independent claims 1 and 15. For the same reasons, we sustain the Examiner's 35 U.S.C. § 103(a) rejections of dependent claims 2-14 and 16- 22. DECISION For the above reasons, the Examiner's rejections of claims 1-22 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)(l )(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation