Ex Parte Laksono et al

Patent Trial and Appeal Board

Oct 31, 2012

09947013 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte INDRA LAKSONO and PAUL DUCHARME
____________________

Appeal 2012-011644
Application 09/947,013
Technology Center 2400
____________________

Before JOSEPH L. DIXON, THU A. DANG, and JAMES R. HUGHES,
Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
Appellants appeal from the Examiner’s final rejection of claims 7-12,
14, 21-26, and 28 under 35 U.S.C. § 134(a) (2007). Claims 1-6 and 15-20
have been withdrawn and claims 13 and 27 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b) (2007).
We affirm.

A. INVENTION
According to Appellants, the invention relates generally to cable
systems and more particularly to commercial messaging within such systems
(Spec. 1, ll. 12-14).

B. ILLUSTRATIVE CLAIM
Claim 7 is exemplary and is reproduced below:
7. A method for custom messaging within a cable system, the
method comprises:

maintaining a database of user profiles for each of a plurality of users
affiliated with the cable system;

maintaining a database of a plurality of messages;

customizing messages from the database of the plurality of messages
for a user of the plurality of users based on the user profile of the user to
produce custom messages, wherein the customizing includes inserting user
specific information into a specific audience section of at least one pre-
existing message to produce the custom messages;
and

inserting at least one of the custom messages into video programming
to generate a combined signal and sending the combined signal via the cable
system.
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C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stetson US Pat. Pub. 2002/0169669 A1 Nov. 14, 2002
Feldman US Pat. 6,577,414 B1 June 10, 2003
Zigmond US Pat. 6,698,020 B1 Feb. 24, 2004
Swix US Pat. 6,718,551 April 6, 2004
Kunkel US Pat. 7,100,183 B2 Aug. 29, 2006

Claims 7, 8, 14, 21, 22, and 28 stand rejected under 35 U.S.C.
§ 103(a) over the teachings of Swix and Stetson.
Claims 9 and 23 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Swix, Stetson and Feldman.
Claims 10, 11, 24, and 25 stand rejected under 35 U.S.C. § 103(a)
over the teachings of Swix, Stetson, Feldman and Kunkel.
Claims 12 and 26 stand rejected under 35 U.S.C. § 103(a) over the
teachings of Swix, Stetson, Feldman, Kunkel and Zigmond.
The rejection of claim 21 under 35 U.S.C. § 112, second paragraph
has been withdrawn by the Examiner (Ans. 3).

II. ISSUES
Has the Examiner erred in finding that:
1) the combined teachings of Swix and Stetson would have taught or
suggested “inserting at least one custom message… in an ad insertion slot in
the video programming” (claim 1, emphasis added); and
2) the ordinarily skilled artisan would have found it obvious to
combine Swix’s teachings of providing targeted advertisements with
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Stetson’s teachings of serving a message in conjunction with an
advertisement?

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Swix
1. Swix discloses providing targeted advertisements over a
networked media delivery system, wherein based on a subscriber’s
viewing habits and account information, customized advertisements to
different viewers watching the same program or channel are delivered
as either still frame bit maps or as video streams advertisement
insertion in a playlist or a broadcast media program (Abstract).
Stetson
2. Stetson discloses serving a message in conjunction with an
advertisement for display on a World Wide Web page, wherein the
message may be tailored to include information specific to a user
viewing the Web page, message and advertisement to direct the user’s
attention to the advertisement or otherwise enhance the advertisement
(Abstract).

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IV. ANALYSIS
As for independent claims 7 and 21, Appellants merely contend that a)
“declaring that two references are analogous art does not properly establish
obviousness” (App. Br. 7); b) “the internet content and advertising
aggregation system is not part of the cable television system… and therefore
there would be no motivation to add the teachings of Stetson into the cable
television system of Swix” (App. Br. 8); c) “[i]t therefore would require a
principle change in operation to merge the disparate and separate content
and advertising systems” (App. Br. 9); and d) “[e]ven if the combination
were deemed proper, it would not result in Swix’s customizing of television
video programming” (id.).
However, the Examiner explains that “the issue is not about the
advertising being in an Internet system or a cable system” but rather “about
customizing advertisements that are provided to users” (Ans. 3). The
Examiner finds that “[i]n Swix, it is seen how content is customized for
users” and “Stetson’s addition further describes a situation where user
specific information is inserted in the advertisement” (id.). Further, the
Examiner finds that “both Swix and Stetson are in an analogous art because
they both deal with sending customized advertisement to users” and thus
“further customizing the advertisements based on more specific user
information such as username [as taught by Stetson] would have been
obvious and would not have changed the principle of operation” (Ans. 4).
We find no error in the Examiner’s findings.
By arguing “the combination [of Swix and Stetson]…would not result
in Swix’s customizing of television video programing” (App. Br. 9),
Appellants appear to be arguing that Swix and Stetson do not anticipate the
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claimed invention. The test for obviousness is not what each reference
shows but what the combined teachings would have suggested to one of
ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
Swix discloses providing customized advertisements to different
viewers of video programming (FF 1). We find that Swix discloses an ad
insertion slot in a video programming.
Further, Stetson discloses serving a tailored message in conjunction
with an advertisement for display, wherein the message and advertisement
directs the user’s attention to the advertisement or otherwise enhances the
advertisement (FF 2). We find that Stetson discloses inserting at least one
custom message in an ad insertion slot. Thus, we find no error in the
Examiner’s conclusion that the combined teachings of Swix and Stetson
would have at least suggested “inserting at least one custom message… in an
ad insertion slot in the video programming” as required by claim 7 and
similarly required by claim 21 (Ans. 3-4).
Further, we find no error in the Examiner’s finding that “both Swix
and Stetson are in an analogous art because they both deal with sending
customized advertisement to users” and thus “further customizing the
advertisements … would have been obvious and would not have changed the
principle of operation” (Ans. 4). Although Appellants contend that that “the
internet content and advertising aggregation system is not part of the cable
television system… and therefore there would be no motivation to add the
teachings of Stetson into the cable television system of Swix” and that “[i]t
therefore would require a principle change in operation to merge the
disparate and separate content and advertising systems” (App. Br. 8-9),
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Appellants appear to view the references from the different perspective than
that of the Examiner. That is, the question is not whether the ordinarily
skilled artisan would have combined the video programming system of Swix
with the internet system of Stetson, but whether the artisan would have
inserted a custom message for an ad as taught by Stetson to the ad in a video
programming of Swix. We conclude that the ordinarily skilled artisan would
have found it obvious to combine Stetson’s teaching of inserting a custom
message to an ad to Swix’s ad in a video programming system.
Appellants have provided no evidence that combining the well-known
teaching of inserting a customized message to an ad with the well-known
teaching of providing an ad in a video programming was “uniquely
challenging or difficult for one of ordinary skill in the art,” Leapfrog
Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007),
nor have Appellants presented evidence that this incorporation yielded more
than expected results. Rather, we find that Appellants’ invention is simply
an arrangement of the known teachings customizing advertisements.
“[W]hen a patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no more than one
would expect from such an arrangement, the combination is obvious.” KSR
Int’l Co. v. Teleflex, 550 U.S. 398, 417 (2007).
Accordingly, we find no error with the Examiner’s rejection of claims
7 and 21 over Swix and Stetson.
As for claims 8, 9, 22, and 23 Appellants merely list the claim
language and then assert that the combined teachings do not disclose these
features (App. Br. 9). However, a statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
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the claim. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); and Ex parte Belinne, No. 2009-004693, 2009 WL 2477843, at *3-4
(BPAI Aug. 10, 2009) (informative). Accordingly, we also affirm the
rejection of claims 8 and 22 over Swix and Stetson; and the rejection of
claims 9 and 23 over Swix, Stetson and further in view of Feldman.
Appellants do not provide any argument for claims 10-12, 14, 24-26,
and 28, accordingly we also affirm the rejection of claims 14 and 28 over
Swix and Stetson, of claims 10, 11, 24, and 25 over Swix, Stetson, Feldman
and Kunkel; and of claims 12 and 26 over Swix, Stetson, Feldman, Kunkel
and Zigmond.

CONCLUSION AND DECISION
The Examiner’s rejection of claims 7-12, 14, 21-26, and 28 under 35
U.S.C. § 103(a) is 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).

AFFIRMED

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