Ex Parte Nieminen

Patent Trial and Appeal Board

Nov 18, 2013

11165994 (P.T.A.B. Nov. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ARI NIEMINEN
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Appeal 2011-004457
Application 11/165,994
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-18, 25, 27-32, 34-39, 41-49, and 51-54 (App. Br. 2). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellant’s claimed invention is direct to “program and/or content
transmission, and particularly to inducing a consumer of program and/or
content transmission to continue to receive and consume program and/or
content transmission during portions thereof in which he is not actively
interested and which he is inclined to ignore.” (Spec. ¶ [0002]).
Independent claim 1, reproduced below, is representative of the subject
matter on appeal:
1. A method comprising:
causing, at least in part, transmission of a first
information stream comprising first consumable content
including a plurality of advertisements for consumption by a
user; and
causing, at least in part, transmission of a second
information stream comprising a first portion for interaction
with a user and a second portion comprising second
consumable content for consumption by the user conditionally
according to a response of the user to the first portion and a
particular one of the advertisements.
(Disputed limitations emphasized).

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REJECTIONS
A. The Examiner rejects claims 1, 3-9, 17, 18, 32, 34, 36, and 37 under
35 U.S.C. § 103(a) as being unpatentable over Haberman (U.S. Patent
No. 7,490,344 B2, Feb. 10, 2009) in view of Abecassis (U.S. Patent No.
6,553, 178 B2, Apr. 22, 2003). (Ans. 4-8).
B. The Examiner rejects claims 10-16, 25, 27-31, 35, 38, 39, 41-49, and 51
under 35 U.S.C. § 103(a) as unpatentable over Haberman, Abecassis, and
in further view of Candelore (U.S. Patent No. 6,057,872, May 2, 2000).
(Ans. 8-16).
C. The Examiner rejects claim 52 under 35 U.S.C. § 103(a) as unpatentable
over Haberman, Abecassis, and in further view of Barnes, Jr. (U.S. Patent
Application Publication No. 2007/0061845 A1, May 15, 2007). (Ans.
16-17).
D. The Examiner rejects claim 53 under 35 U.S.C. § 103(a) as unpatentable
over Haberman, Abecassis, and in further view of Kim (U.S. Patent
Application Publication No. 2002/0010927 A1, Jan. 24, 2002). (Ans. 17-
18).
E. The Examiner rejects claim 54 under 35 U.S.C. § 103(a) as unpatentable
over Haberman, Abecassis, and in further view of Wong (U.S. Patent
Application Publication No. 2007/0277201 A1, Nov. 29, 2007). (Ans.
18).
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GROUPING OF CLAIMS
Based on Appellant’s arguments, we decide the appeal of the first-
stated obviousness rejection (A) of claims 1, 3-9, 17, 18, 32, 34, 36, and 37
on the basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2004).1
CONTENTIONS
Appellant notes the Examiner relies principally on Abecassis for
teaching “causing, at least in part, transmission of a second information
stream comprising a first portion for interaction with a user and a second
portion comprising second consumable content for consumption by the user
conditionally according to a response of the user to the first portion and a
particular one of the advertisements.” (Claim 1; App. Br. 8).
Appellant contends:
It is readily apparent that Abecassis does not teach, at
least “a second portion comprising second consumable content
for consumption by the user conditionally according to
response of the user to the first portion and a particular one of
the advertisements.” (Emphasis added). Col. 47, lines 44-56 of
Abecassis merely discloses the following (Emphasis Added):

Any of the viewer interactions with the
presentation within the required period of time
may provide verification of the viewing of the
advertisement.

1 Appellant filed a Notice of Appeal on May 24, 2010. The date of filing the
Notice of Appeal determines which set of rules applies to an Ex parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004
version of the Board Rules last published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also Manual of Patent Examining Procedure (MPEP) Rev. 8,
July 2010.
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FIG. 12B is an illustration of a screen notifying the
viewer of the crediting of the viewing of an
advertisement. In this instance, the viewer is being
credited with 30 minutes 1211.

The accounting of the viewer’s account may be
based on any number of systems whether monetary
or non-monetary. A simplified relationship may
be established between credits from advertisement
and debits from non-sponsored videos. In this
instance, the viewer’s spending three minutes with
the advertisement is compensated with a credit of
30 minutes.

At best, Abecassis discloses that the viewer is able to interact
during the viewing of the advertisement and is notified that the
viewer was credited with 30 minutes of viewing non-sponsored
videos. Abecassis only requires that the viewers to interact to a
particular advertisement to acquire the 30 minutes credit for
viewing any non-sponsored videos. By contrast, the present
invention recites in addition to transmission of a first
information stream, transmission of a second information
stream. The second information stream comprises a first
portion and a second portion. Further, the second portion
comprises second consumable content. Moreover, the second
consumable content is capable of being consumed by a user
based on a condition, and the condition is responding to the first
portion a particular one of the advertisement. The Specification
of the present invention indicates “an audio signal (compressed,
e.g. in MP3 format)” as an example embodiment of the second
consumable content. To acquire the audio signal for
consumption, the viewer would need to respond to the first
portion and a particular one of the advertisements.

As explained above, Abecassis clearly fails to disclose
the connection between a particular consumable content and a
particular portion and advertisement to be responded to
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consume the consumable content. Therefore, as one having
ordinary skill in the art would have readily understood,
Abecassis does not make up for the admitted deficiencies of
Haberman et al.

It is therefore apparent that even if, for the sake of
argument, the applied references are combined as proposed by
the Examiner, and Appellant does not agree that the requisite
basis for the asserted motivation has been established, the
inventions defined in independent claim 1 would not result.

(App. Br. 8-10) (emphasis omitted).
The Examiner disagrees:
Clearly, Abecassis discloses that an advertisement is
presented to be verified. Figure 12A shows the advertisement,
the first consumable content, that is presented to the user, which
has button 1204. Upon selecting 1204 the user is presented
with the advertisement, and based upon viewing the
advertisement, the user is rewarded with a credit with 30
minutes 1211. The 30 minutes of viewing credit is a second
consumable content, which the consumer receives conditionally
according to the user viewing the 3 minute commercial, which
is a particular one of the advertisements. The conditional
response of the user is in fact to the first portion, wherein
Haberman provided the evidence of streaming multiple,
selectable options of the advertisements in one stream as shown
in Figure 9 of Haberman, and Abecassis modifies the
“particular one of the advertisements.” Abecassis’ modification
of the selected advertisement is done based upon the selection
of multiple on-demand advertisements as disclosed and cited in
col. 47, lines 31-56.

The claim language requires “second consumable
content,” the credited viewing time, be conditionally responsive
to the first portion, a selected advertisement, and a particular
one of the advertisements, which is represented by the chosen
on-demand advertisement and it’s corresponding length.
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However, the appellant has stated “[t]he specification of the
present invention indicates ‘an audio signal (compressed, e.g. in
MP3 format)’ as an example embodiment of the second
consumable content.” While this is true of the specification, the
claim language does not require this feature as currently
construction. Therefore, the claim limitations are clearly met
by Haberman in view of Abecassis.

(Ans. 21-22, “Response to Arguments”).
ISSUE
Under § 103, did the Examiner err in finding the cited combination of
references, principally Abecassis, would have taught or suggested “causing,
at least in part, transmission . . . [of] a second portion comprising second
consumable content for consumption by the user conditionally according to
response of the user to the first portion and a particular one of the
advertisements,” within the meaning of representative claim 1?
ANALYSIS
At the outset, we observe Appellant’s arguments are predicated on the
type or content of the data which is non-functional descriptive material
intended for human viewing.2 In contrast, functional descriptive material

2 See MPEP § 2111.05(III) (“[W]here the claim as a whole is directed [to]
conveying a message or meaning to a human reader independent of the
intended computer system, and/or the computer-readable medium merely
serves as a support for information or data, no functional relationship exists.
For example, a claim to a memory stick containing tables of batting
averages, or tracks of recorded music, utilizes the intended computer system
merely as a support for the information. Such claims are directed toward
conveying meaning to the human reader rather than towards establishing a

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consists of data which imparts functionality when employed.3 The non-
functional descriptive material of claim 1 (first and second information
streams, “second consumable content for consumption by the user” and
“advertisements”) refers to data content that is not positively recited as
changing or affecting the way the method is performed. As an initial matter
of claim construction, the informational content of such non-functional
descriptive material is not entitled to patentable weight in the patentability
analysis.4
Moreover, the recited “first portion for interaction with a user” is not
positively recited as actually being used in an interactive manner, but is
rather a statement of intended purpose, as is the contested claim limitation “a
second portion comprising second consumable content for consumption by
the user conditionally.” (Claim 1) (emphasis added). “An intended use or
purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”

functional relationship between recorded data and the computer.”)
(Emphasis added)).
3 Functional descriptive material consists of data structures and computer
programs which impart functionality when employed as a computer
component. See Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility (“Guidelines”), 1300 Off. Gaz. Pat.
Office 142 (Nov. 22, 2005), especially pages 151-152. The MPEP includes
substantively the same guidance. See MPEP § 2111.05 (8th ed. Rev. 9, Aug.
2012).
4 See Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008)
(precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005)
(informative), aff’d, No. 2006-1003 (Fed. Cir. June 12, 2006) (Rule 36); Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed.
Appx. 959 (Fed. Cir. 2006).
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Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . .
appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir.
1987), a statement of intended use or purpose can appear elsewhere in a
claim. Id.
Assuming arguendo the contested non-functional data content
intended for human viewing could be given patentable weight by our
reviewing court, we additionally find the weight of the evidence supports the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness regarding representative claim 1. (Ans. 20-22). We observe
Abecassis expressly teaches a reward (credit) for viewing the advertisement:
Any of the viewer interactions with the presentation
within the required period of time may provide verification of
the viewing of the advertisement.

FIG. 12B is an illustration of a screen notifying the
viewer of the crediting of the viewing of an advertisement. In
this instance, the viewer is being credited with 30 minutes 1211.

The accounting of the viewer’s account may be based on
any number of systems whether monetary or non-monetary. A
simplified relationship may be established between credits from
advertisement and debits from non-sponsored videos. In this
instance, the viewer’s spending three minutes with the
advertisement is compensated with a credit of 30 minutes.

(Abecassis, col. 47, ll. 43-56; Fig. 12B; see also Ans. 21).
In concurrence with the Examiner’s position (Ans. 21-22), we decline
Appellant’s invitation to read limitations from the Specification into the
claims: “The Specification of the present invention indicates ‘an audio
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signal (compressed, e.g. in MP3 format)’ as an example embodiment of the
second consumable content.” (App. Br. 9).
We also note the Examiner’s obviousness rejection is based on the
combined teachings and suggestions of the cited references. We find the
combination of Haberman and Abecassis would have at least suggested the
contested limitations, for essentially the same reasons articulated by the
Examiner in the Answer. (Ans. 4-5, 20-22). Moreover, Appellant’s
arguments urging patentability are predicated on non-functional descriptive
material intended for human viewing, as discussed above.5 Therefore, on
this record we are not persuaded of Examiner error.
For the above reasons, we sustain the Examiner’s obviousness
rejection A of independent claim 1. Claims 3-9, 17, 18, 32, 34, 36, and 37
(not argued separately) fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2004).

Remaining § 103 Rejections B-E
Regarding the remaining rejections B-E, Appellant contends “the
tertiary references cited in Rejections B, C, D, and E are not directed
towards the above argued distinct claim features and thus do not cure the
deficiencies of Haberman et al. and Abecassis.” (App. Br. 10).
However, we find no deficiencies with the base combination of
Haberman and Abecassis, for the reasons discuss above regarding claim 1.
Therefore, we sustain the Examiner’s obviousness rejections B-E for the
same reasons discussed above regarding rejection A and claim 1.

5 See n.4 supra.
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CONCLUSION
The Examiner did not err in rejecting claims 1, 3-18, 25, 27-32,
34-39, 41-49, and 51-54 under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 1, 3-18, 25, 27-32, 34-39,
41-49, and 51-54 under 35 U.S.C. § 103 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)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED

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