Ex Parte King et alDownload PDFPatent Trial and Appeal BoardJan 18, 201813744129 (P.T.A.B. Jan. 18, 2018) 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. 13/744,129 01/17/2013 Michael J. King 100166.401C1 5058 500 7590 01/22/2018 SFFD TNTFT T FFTT TAT PROPFRTY T AW GROT TP T T P EXAMINER 701 FIFTH AVE HANCE, ROBERT J SUITE 5400 SEATTLE, WA 98104 ART UNIT PAPER NUMBER 2423 NOTIFICATION DATE DELIVERY MODE 01/22/2018 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): US PTOe Action @ S eedIP .com pairlinkdktg @ seedip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL J. KING, JOHN W. MORRIS, and BRIAN S. BOS WORTH Appeal 2017-001401 Application 13/744,129 Technology Center 2400 Before JEREMY J. CURCURI, BARBARA A. BENOIT, and MICHAEL M. BARRY, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 12—32. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). Claims 12, 13, 15, 17, 19, 20, 22, 24, 26, 27, 29, and 31 are rejected under 35 U.S.C. § 103(a) as obvious over Minter et al. (US 6,577,716 Bl; iss. June 10, 2003, hereinafter “Minter”) and Cosmao et al. (US 2001/0023498 Al; pub. Sept. 20, 2001, hereinafter “Cosmao”). Final Act. 9-12. Appeal 2017-001401 Application 13/744,129 Claims 14, 21, and 28 are rejected under 35 U.S.C. § 103(a) as obvious over Minter, Cosmao, and Steelberg et al. (US 7,676,405 B2; iss. Mar. 9, 2010, hereinafter “Steelberg”). Final Act. 13—14. Claims 16, 23, and 30 are rejected under 35 U.S.C. § 103(a) as obvious over Minter, Cosmao, and Gadkari et al. (US 2002/0078443 Al; pub. June 20, 2002, hereinafter “Gadkari”). Final Act. 14. Claims 18, 25, and 32 are rejected under 35 U.S.C. § 103(a) as obvious over Minter, Cosmao, and Liga et al. (US 2004/0128682 Al; pub. July 1, 2004, hereinafter “Liga”). Final Act. 15—16. We REVERSE. STATEMENT OF THE CASE Appellants’ invention relates to “a content injection system and methodology associated with delivering, differently to different audiences, or audience groups, of a ‘source’ data flow characterized by an alternating series of what we refer to herein as content and non-content segments.” Spec. 1:8—11. Claim 12 is illustrative and reproduced below: 12. A method of operating a system including a processor and at least one non-transitory processor-readable storage medium communicatively coupled with the processor, the method comprising: receiving a broadcast source data flow which is for broadcast to a broadcast audience of a plurality of broadcast receivers, and which comprises a plurality of content segments interspersed with a plurality of non-content segments, the content segments consisting of one or more sections of content material, and the non-content segments consisting of one or more sections of non-content material; 2 Appeal 2017-001401 Application 13/744,129 selecting a plurality of replacement sections of non- content material to replace one or more of the sections of non- content material of the non-content segments; streaming as a stream the content segments of the broadcast and a plurality of replacement non-content segments interspersed with the content segments for an online audience of at least a plurality of streaming receivers; when streaming the replacement non-content segments for the online audience, recognizing that a next one of the content segments is going to begin in the broadcast source data flow; in response to recognizing that the next one of the content segments is going to begin, storing to a memory device any portions of the next one of the content segments of the broadcast source data flow which overlap with the replacement non-content segment still being streamed for the online audience; for each of the replacement non-content segments streamed, detecting an end of the replacement non-content segment; and in response to both recognizing that the next one of the content segments is going to begin in the broadcast source data flow and detecting the end of the replacement non- content segment, providing the stored portions of the content segments from the memory device for streaming to the streaming audience, and wherein a duration of the replacement sections of non- content material for each of the non-content segments at least equals a duration of the respective non-content segment as reduced by any portion of the stored content segment provided into the respective non-content segment, and the duration of the replacement sections of non-content material for at least one of the non-content segments is greater than the duration of the respective non-content segment as reduced by any portion of the stored content segment provided into the respective non-content segment. 3 Appeal 2017-001401 Application 13/744,129 ANALYSIS The Obviousness Rejection of Claims 12,13,15,17,19,20,22,24,26, 27,29, and 31 over Minter and Cosmao Contentions The Examiner finds Minter and Cosmao teach all limitations of claim 12. Final Act. 9—11; see also Ans. 2—11. The Examiner reasons: It would have been obvious to a skilled artisan at the time of the invention to modify the system of Minter with the teachings of Cosmao, the rationale being to provide advertisers with more flexibility in choosing insertion content, rather than requiring the advertisements to be of a predefined length. Final Act. 11; see also Final Act. 5 (“In this case, the rationale to make the combination would have been found in the knowledge generally available to one of ordinary skill in the art.”) and Final Act. 5 (“This is to say that the advertisement break would not have to be a predefined length.”). Among other arguments, Appellants present the following principal arguments with respect to the Examiner’s reasoning: i. The Examiner relies on impermissible hindsight. See App. Br. 24—29 (citing Beckerman Deck Tflf 6—16, 18—28; Fahr Deck Tflf 8—18, 20-28). Simply put, at the time of the invention the time shifting resulting from buffering would fail to meet the perceived expectations and needs of an Internet based listening audience, as well as the expectations and needs of the radio broadcasters and the advertisers. Accordingly, even if the proposed combination occurred to one of skill in the art, the loss of the benefit of synchronization between the delivery to [the] Internet listening audience and the radio broadcast audience would be readily apparent, and the person of ordinary skill in the art would dismiss the proposed combination or modification[.] App. Br. 28. 4 Appeal 2017-001401 Application 13/744,129 [T]he Examiner fails to articulate any explanation that could possibly support the Examiner’s assertions and conclusions that “any need or problem” that the Examiner relies upon was “known in the field of endeavor at the time of the invention.” Also, the only “design incentives and other market forces ” that the Examiner relies upon are those that Appellant discovered or created[.\ App. Br. 29; see also Reply Br. 5—6 (citing Beckerman Deck 25, 28; Lahr Deck 27—28) (“Simply put, handed these two references without Appellants[’] claims as a guide, a person of ordinary skill in the art would select one of the approaches, dismissing the other approach as being an alternative.”). ii. The Examiner relies on conclusory statements that the evidence in the record contradicts. See App. Br. 29-30. [ Without any explanation, the Examiner asserts, “In this case, the rationale to make the combination would have been found in the knowledge generally available to one of ordinary skill in the art.” Office Action, 8 September 2015, at p. 5. The Examiner also fails to provide any specific factual findings predicated on sound technical and scientific reasoning to support this alleged conclusion of common knowledge. MPEP at § 2144.03(B). The Examiner does not even attempt to provide a reasoned explanation that allegedly could support the Examiner’s conclusion of common knowledge. MPEP at §§ 2141 and 2143. At best, the Examiner asserts that the Examiner’s proposed modification allegedly was within the abilities or capabilities of one of ordinary skill in the art. App. Br. 30. In response, the Examiner explains “[a]s directly evidenced by the disclosure of Cosmao, there was shown to be a need to enable flexibility in the duration of inserted advertisements. Therefore the skilled artisan would 5 Appeal 2017-001401 Application 13/744,129 have been motivated by this disclosure to modify Minter as shown in the rejection.” Ans. 10; see also Cosmao Fig. 6 (depicting displaying time shifted events to accommodate recorded advertising sequences implemented at the receiver). Further in response, the Examiner explains: Further, MPEP 2141(II)(2C) states that when resolving the level of ordinary skill in the art, “Office personnel may rely on their own technical expertise to describe the knowledge and skills of a person of ordinary skill in the art.” Therefore it is respectfully submitted that the Examiner has provided adequate rationale for combining the prior art references. Ans. 10-11. Our Review We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Minter discloses “the present invention is directed to the replacement of the portion of the content of a radio broadcast that is local in nature or otherwise unsuitable for an Intemet/computer network audience with other content prior to the distribution of the radio broadcast over the Internet or other computer network.” Minter col. 2,11. 7—12 (emphasis added). Cosmao discloses “short audiovisual transmissions are, upon reception in the receiver, automatically replaced by transmissions of the same type previously recorded in the receiver.” Cosmao Abstract (emphasis added). Cosmao also discloses displaying time shifted events to accommodate recorded advertising sequences implemented at the receiver. Cosmao Fig. 6. 6 Appeal 2017-001401 Application 13/744,129 In concluding the claimed invention would have been obvious, the Examiner’s reasoning, at its essence, is that a skilled artisan would have modified Minter’s replacement of content prior to distribution, in light of the teachings of Cosmao, to provide flexibility in the length of the advertising break. See Final Act. 5, 11; Ans. 10. As the foundation for the Examiner’s reasoning (i.e., the rational underpinning), the Examiner finds “the rationale to make the combination would have been found in the knowledge generally available to one of ordinary skill in the art.” Final Act. 5; see also Ans. 10—11 (Examiner relies on own technical expertise.). Appellants’ arguments are supported by evidence. See Beckerman Deck H21—28; see also Lahr Deck H 23—28. For example, with regard to hindsight, Appellants’ declaration evidence states: It is my opinion that if one of ordinary skill in the art were handed the two fundamentally different approaches taken by Minter and Cosmao without Applicants’ claims as a guide, having full understanding of the desired business model, one would select neither of the approaches, either solely or together, dismissing such as being inappropriate and incomplete solutions to a fundamentally different business problem. Beckerman Deck 128. It is my opinion that if one of ordinary skill in the art were handed the two fundamentally different approaches taken by Minter and Cosmao without Applicants’ claims as a guide, one of ordinary skill in the art would select just one of the approaches, dismissing the other approach as being an alternative solution to a fundamentally different business problem. Lahr Deck 128. 7 Appeal 2017-001401 Application 13/744,129 Weighing the Examiner’s reasoning supported by the Examiner’s technical expertise without further evidence drawn from the record against Appellants’ arguments supported by well-reasoned declaration evidence, we find that on this record before us, we do not agree with the Examiner’s conclusion of obviousness because the Examiner’s reasoning lacks a rational underpinning supported by a preponderance of the evidence. See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining “a preponderance of the evidence must show unpatentability before the PTO may reject the claims of a patent application”). In particular, the Examiner’s expertise without further evidence drawn from the record is out-weighed by Appellants’ arguments and well-reasoned declaration evidence. We, therefore, do not sustain the Examiner’s rejection of claim 12. We also do not sustain the Examiner’s rejection of claims 13, 15, 17, 19, 20, 22, 24, 26, 27, 29, and 31 for the same reasons. The Obviousness Rejection of Claims 14,21, and 28 over Minter, COSMAO, AND STEELBERG The Examiner does not make any further findings to provide a rational underpinning supported by a preponderance of the evidence for the Examiner’s reason that a skilled artisan would have modified Minter in light of the teachings of Cosmao as proposed by the Examiner. See Final Act. 13— 14. We, therefore, do not sustain the Examiner’s rejection of claims 14, 21, and 28 for the same reasons discussed above when addressing claim 12. 8 Appeal 2017-001401 Application 13/744,129 The Obviousness Rejection of Claims 16,23, and 30 over Minter, COSMAO, AND GADKARI The Examiner does not make any further findings to provide a rational underpinning supported by a preponderance of the evidence for the Examiner’s reason that a skilled artisan would have modified Minter in light of the teachings of Cosmao as proposed by the Examiner. See Final Act. 14; Ans. 11-12. We, therefore, do not sustain the Examiner’s rejection of claims 16, 23, and 30 for the same reasons discussed above when addressing claim 12. The Obviousness Rejection of Claims 18,25, and 32 over Minter, Cosmao, and Liga The Examiner does not make any further findings to provide a rational underpinning supported by a preponderance of the evidence for the Examiner’s reason that a skilled artisan would have modified Minter in light of the teachings of Cosmao as proposed by the Examiner. See Final Act. 15- lb. We, therefore, do not sustain the Examiner’s rejection of claims 18, 25, and 32 for the same reasons discussed above when addressing claim 12. DECISION The Examiner’s decision rejecting claims 12—32 is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation