Ex Parte Malik

Patent Trials and Appeals Board

May 13, 2016

11315621 - (D) (P.T.A.B. May. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111315,621 12/22/2005
84326 7590 05/16/2016
AT & T LEGAL DEPARTMENT-Toler
ATTN: PA TENT DOCKETING
ROOM2A-207
ONEAT&TWAY
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Dale Malik
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.
050342 9675
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
MAILDATE DELIVERY MODE
05/16/2016 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 DALE MALIK
Appeal2014-001266
Application 11/315,621
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 13-17, 21-29, and 33-37 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We REVERSE.
Appeal2014-001266
Application 11/315,621
THE INVENTION
The Appellant's claimed invention is directed to providing an
invitation to share viewer profile data with an advertiser and in tum being
forwarded audio and video content (Spec. para. 7). Claim 13, reproduced
below, is representative of the subject matter on appeal.
13. A method comprising:
establishing, at a computing device, an interactive session with
a set top box;
sending, prior to sending a selected program to the set top box,
a first advertising
schedule associated with the selected program to the set top
box, wherein the first advertising schedule identifies a first duration of
advertising to be provided to the set top box in association with the
selected program upon acceptance of the first advertising schedule;
receiving, from the set top box, input during the interactive
session indicating that a viewer associated with the set top box is
willing to share a viewer profile associated with the viewer in
exchange for less advertising than identified
by the first advertising schedule; and
in response to the input, sending, prior to sending the selected
program to the set top box, a second advertising schedule associated
with the selected program to the set top box, wherein the second
advertising schedule identifies a second duration of advertising to be
provided to the set top box in association with the selected program
upon acceptance of the second advertising schedule, wherein the
second duration is less than the first duration.
THE REJECTION
The following rejection is before us for review:
Claims 13-17, 21-29, and 33-37 are rejected under 35 U.S.C. § 103
(a) as unpatentable over Ward (US 6,756, 997 Bl, iss. June 29, 2004) and
Nolan (US 2006/0053049 Al, pub. Mar. 9, 2006).
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Appeal2014-001266
Application 11/315,621
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
The Appellant argues that the rejection of claim 13 is improper
because the cited prior art fails to disclose elements of the claim identified
below (numbering and bracketed matter added for clarity):
[ 1] a "first advertising schedule [that] identifies a first duration of
advertising to be provided to the set top box in association with the
selected program upon acceptance of the first advertising schedule",
[2] [an indication that the viewer] "is willing to share a viewer profile
associated with the viewer in exchange for less advertising than
identified by the first advertising schedule"
[3] and sending a "second advertising schedule ... [that] identifies a
second duration of advertising to be provided ... upon acceptance of
the second advertising schedule, wherein the second duration is less
than the first duration".
(App. Br. 8, 9). The Appellant has also argued that the combination has not
been rendered obvious by the cited rejection of record (App. Br. 14).
In contrast, the Examiner has determined that the cited rejection is
proper (Final Act. 2--4, Ans. 2--4).
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-001266
Application 11/315,621
We agree with the Appellant. In making the cited combination, the
Examiner relies on Ward at column 8, lines 6-22, column 19, lines 35-50,
and column 26, lines 22-24 for disclosing claim limitation [ 1] directed to
providing a first advertising schedule identifying the duration of advertising
in association with the selected program (Ans. 2). Ward at column 19, lines
35-50 does disclose the use of "infomercials" with a broadcast time which
could be considered a "first advertising schedule". In order to meet claim
limitation [2] the rejection cites to Ward at column 6, lines 40-46 and
column 27, lines 25-32 (Ans. 3). In order to meet claim limitation [3] the
rejection cites to Nolan at Figures 17, 18; and paras. 50, 52, 55, 78, 81, 86,
90, 100, and 101 (Ans. 3). However, these citations to Nolan show the
customer receiving more advertising, not less in order to receive free or
reduced fee programming.
However, in the claim at issue, claim limitation [2] requires instead
that the viewer is willing to share their profile in exchange for less
advertising than identified by the first schedule. Claim limitation [3] is
directed to the sending of the second advertising schedule that identifies a
second duration of advertising that is less than the first duration.
Here, the rejection before us lacks articulated reasoning without
impermissible hindsight to show that the cited combination would have been
obvious to meet the requirements of claim limitations [ 1], [2], and [3] in the
context of the claim. In KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007)
the Supreme Court at 418 noted that in an obviousness analysis
that"[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
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Appeal2014-001266
Application 11/315,621
obviousness". For these reasons the rejection of claim 13 and its dependent
claims is not sustained. The remaining claims contain similar limitations to
those addressed above and the rejection of these claims is not sustained for
the reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims as listed above.
DECISION
The Examiner's rejection of claims 13-17, 21-29, and 33-37 is
reversed.
REVERSED
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