09580583 (B.P.A.I. Oct. 26, 2011)

Ex Parte Kopra

Board of Patent Appeals and InterferencesOct 26, 2011

09580583 (B.P.A.I. Oct. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte TONI KOPRA 8 ___________ 9 10 Appeal 2010-006079 11 Application 09/580,583 12 Technology Center 3600 13 ___________ 14 15 16 Before ANTON W. FETTING, BIBHU R. MOHANTY, and 17 MEREDITH C. PETRAVICK, Administrative Patent Judges. 18 FETTING, Administrative Patent Judge. 19 DECISION ON APPEAL 20 21 Appeal 2010-006079 Application 09/580,583 2 STATEMENT OF THE CASE1 1 Toni Kopra (Appellant) seeks review under 35 U.S.C. § 134 (2002) of a 2 final rejection of claims 19, 22-34, 41, 45-47, and 49-53, the only claims 3 pending in the application on appeal. We have jurisdiction over the appeal 4 pursuant to 35 U.S.C. § 6(b) (2002). 5 The Appellant invented a technique for selectively providing product 6 placement and advertising to mobile terminals based on the location of the 7 terminals (Specification 1:20-22). 8 An understanding of the invention can be derived from a reading of 9 exemplary claim 19, which is reproduced below [bracketed matter and some 10 paragraphing added]. 11 19. A method comprising: 12 [1] displaying a video on a mobile terminal, 13 wherein the video 14 is received via digital broadcasting network and 15 includes a product image link; 16 [2] receiving input selecting the link; 17 [3] sending a location of the mobile terminal 18 in response to a receiving input selecting the link, 19 the location determined using a mobile communication 20 network, 21 where in the mobile communication network is a 22 different network than the digital broadcasting 23 network; 24 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed July 30, 2009) and Reply Brief (“Reply Br.,” filed November 20, 2009), and the Examiner’s Answer (“Ans.,” mailed October 27, 2009). Appeal 2010-006079 Application 09/580,583 3 [4] receiving content via the mobile communication network, 1 the content related to the link and also related to the 2 location of the mobile terminal; 3 and 4 [5] displaying the related content. 5 The Examiner relies upon the following prior art: 6 Rangan US 6,006,265 Dec. 21, 1999 Bandera US 6,332,127 B1 Dec. 18, 2001 Owa US 6,711,379 B1 Mar. 23, 2004 Saha US 6,198,935 B1 Mar. 6, 2001 Claims 19, 22-24, 28, 29, 34, 41, and 50-53 stand rejected under 35 7 U.S.C. § 103(a) as unpatentable over Rangan, Bandera, Owa, and Admitted 8 Prior Art. 9 Claims 25-27 and 30-33 stand rejected under 35 U.S.C. § 103(a) as 10 unpatentable over Rangan, Bandera, Owa, Saha, and Admitted Prior Art. 11 ISSUES 12 The issues of obviousness turn on whether it was predictable to use a 13 network to receive the content related to the link and also related to the 14 location of the mobile terminal in limitation [4] that is different from the 15 network to receive video via digital broadcasting in limitation [1], as 16 required by limitation [3]. 17 FACTS PERTINENT TO THE ISSUES 18 The following enumerated Findings of Fact (FF) are believed to be 19 supported by a preponderance of the evidence. 20 Appeal 2010-006079 Application 09/580,583 4 Facts Related to Appellant’s Disclosure 1 01. Recent improvements in technology have allowed the widespread 2 proliferation of higher speed Internet access, such as 56K 3 modems, Digital Subscriber Line (DSL) and cable TV Internet 4 connections, etc. These high speed Internet connections can 5 support video streaming - the transmission of compressed video 6 signals over the Internet so as to produce picture and sound 7 comparable to that of a standard television receiver. Furthermore, 8 high speed data services to mobile terminals are supported by 9 advanced Third Generation (3G) Universal Mobile 10 Telecommunications System (UMTS) or Global System for 11 Mobile Communication/General Packet 'Radio Service 12 (GSM/GPRS) mobile networks. Specification 4:5-17. 13 Facts Related to the Prior Art 14 Rangan 15 02. Rangan is directed to the machine-automated distribution, 16 processing and network communication of streaming digital 17 video/hypervideo, and the provision of diverse sophisticated 18 responses--including branching, storage, playback/replay, 19 subscriber/user-specific responses, and contests--to subscriber, 20 user, or viewer (SUV) "click-throughs" on hyperlinks embedded 21 within streaming digital hypervideo. Rangan 1:32-44. 22 03. Rangan describes hotspots, which are links within video, and the 23 link may be attached to the image of a product, such as a car. 24 Rangan 5:15-19. 25 Appeal 2010-006079 Application 09/580,583 5 Owa 1 04. Owa is directed to a digital broadcasting system for broadcast 2 multimedia data consisting of picture, sound, text and the like, to a 3 terminal device built in a mobile station, and to the terminal 4 device. Owa 1:6-10. 5 05. Owa describes using both a GPS system and the internet. The 6 GPS system is used to locate the device only. Owa 7:40-52 and 7 9:14-22. 8 ANALYSIS 9 We are persuaded by the Appellant’s argument that it was not 10 predictable to use a network to receive the content related to the link and 11 also related to the location of the mobile terminal in limitation [4] that is 12 different from the network to receive video via digital broadcasting in 13 limitation [1], as required by limitation [3] of claim 19. Appeal Br. 11-17. 14 All of the independent claims have a similar requirement. 15 The Examiner found that Owa used two distinct networks. Ans. 4-6. 16 We agree that Owa does so and that it was predictable to apply Owa’s two 17 distinct networks to Rangan as found by the Examiner. Id. See FF 04-05. 18 The Examiner appears to not consider the requirement in limitation [4] that 19 the content related to the link is not received by the network in which the 20 digital broadcasting video is received, however. There does not appear to be 21 any finding that would evidence that separation would have been 22 predictable. Owa’s second network is used only to determine the location. 23 This is consistent with limitation [3], but is inconsistent with limitation [4]. 24 Accordingly, we find the Examiner failed to present a prima facie case. 25 Appeal 2010-006079 Application 09/580,583 6 CONCLUSIONS OF LAW 1 The rejection of claims 19, 22-24, 28, 29, 34, 41, and 50-53 under 35 2 U.S.C. § 103(a) as unpatentable over Rangan, Bandera, Owa, and Admitted 3 Prior Art is improper. 4 The rejection of claims 25-27 and 30-33 under 35 U.S.C. § 103(a) as 5 unpatentable over Rangan, Bandera, Owa, Saha, and Admitted Prior Art is 6 improper. 7 DECISION 8 The rejection of claims 19, 22-34, 41, 45-47, and 49-53 is reversed. 9 10 REVERSED 11 12 13 14 MP 15