Ex Parte Patil

Patent Trial and Appeal Board

Mar 19, 2015

11830157 (P.T.A.B. Mar. 19, 2015)

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.
11/830,157 07/30/2007 Bhushan Arun Patil 12729-264 (Y02200US00) 2387
56020 7590 03/20/2015
BGL/Yahoo! Overture
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
BELIVEAU, SCOTT E
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
03/20/2015 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 BHUSHAN ARUN PATIL
____________________

Appeal 2012-001953
Application 11/830,157
1

Technology Center 2400
____________________

Before ELENI MANTIS MERCADER, DEBRA K. STEPHENS, and
DANIEL N. FISHMAN, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1–5, 7–9, and 12–22. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 6, 10, and 11 have been cancelled.
We AFFIRM.

1
According to Appellant, the real party in interest is Yahoo! Inc. App. Br.
2.
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Introduction
According to Appellant, the claims are directed to insertion of textual
and visual interactive advertisements in videos. Abstract.

Exemplary Claim
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A method for providing an interactive advertisement
within a video comprising:

identifying a video to be played;

including the interactive advertisement in the video based
on a number of previous interactions with the interactive
advertisement that were tracked;

displaying the interactive advertisement within the video
while the video is played;

receiving an indication when there is an interaction with
the interactive advertisement during the playing of the
video;

displaying additional information associated with the
interactive advertisement upon receiving the indication of
the interaction, wherein the additional information
comprises an additional advertisement displayed within
the video;

where the additional advertisement comprises at least one
of a video advertisement, an audio advertisement, or a
scrolling text advertisement; and

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tracking the interaction upon receiving the indication of
the interaction.

REFERENCES
Lemmons
Beyda
US 2003/0028873 A1
US 2005/0246736 A1
Feb. 6, 2003
Nov. 3, 2005

Rune Hjelsvold, Subu Vdaygiri, & Yves Léauté, Web-based Personalization
and Management of Interactive Video, WWW10, May 1–5, 2001 at 129–
139.

REJECTIONS
The Examiner made the following rejections:
(1) Claims 9 and 12–21 stand rejected under 35 U.S.C. § 112 first
paragraph as failing to comply with the written description
requirement. Ans. 5–6.
2

(2) Claims 1–5, 7, 8, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lemmons, Beyda, and Hjelsvold.
Ans. 6–8.
(3) Claims 9 and 14–17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lemmons. Ans. 8–10.
(4) Claims 12, 13, and 18–21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lemmons and Hjelsvold. Ans.
10–11.

We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to

2
The Examiner has withdrawn the rejections under 35 U.S.C. § 112 first
paragraph, of claims 1–5, 7, 8, and 22.
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make in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2011).

ISSUE 1
35 U.S.C. § 112, first paragraph: Claims 9 and 12–21
Appellant argues the invention as recited complies with the written
description requirement. App. Br. 4–7; Reply Br. 2–5. The issue presented
by the arguments is:
Issue 1: Has the Examiner erred in determining the invention as
recited does not comply with the written description requirement?

ANALYSIS
Appellant argues the Answer improperly pieces together selective
sections of Appellant’s Specification and ignores or discounts other sections.
Reply Br. 2. Appellant identifies the Examiner’s determination that the
Specification only describes one type of interaction for one device as one
source of error. Id. Appellant argues when paragraphs 46 and 49 of the
Specification are read together, the type of interaction determines the
response, not the type of medium or device determines the response. Id. at
4. Additionally, Appellant contends paragraphs 49 and 50 need to be read
together and in doing so, the Specification describes different embodiments
and numerous types of interactions. Id. at 4–5.
We agree with the Examiner’s finding that the Specification, in
paragraph 46 discloses the “type of interaction varies depending on a
medium on which the video is viewed.” Ans. 11. As noted by the
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Examiner, the only references to “type of interaction” tie the type of
interaction to the device. Id. Appellant argues the “type of interaction”
determines the response and devices can have many different input devices
and further, the interaction may occur in different ways by the same input
devices. Reply Br. 3.
We are not persuaded. Appellant contends that “type of interaction”
includes several types of input devices (such as a computer with a mouse
and a keyboard). However, the one type of interaction described is moving a
cursor over the advertisement and clicking. See Spec. ¶ 46.
The portions of the Specification identified by Appellant, do not
provide sufficient examples or sufficient description as to how the
“determining” occurs. Indeed, the Specification does not provide any
examples or description of an interaction being analyzed to determine
whether the interaction is from a television or computer, whether an
interaction is from a mouse or keyboard, or whether any other interaction is
a particular type. Therefore, we are not persuaded the Specification
reasonably conveys to skilled artisans that Appellant had possession of the
claimed invention as of the filing date.
Accordingly, we sustain the Examiner’s rejection of claims 9 and 12–
21 under 35 U.S.C. § 112, first paragraph as failing to comply with the
written description requirement.

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ISSUE 2
35 U.S.C. § 103(a): Claims 1–5, 7, 8, and 22
Appellant asserts the invention as recited in claim 1 is not obvious
over Lemmons and Beyda, and Hjelsvold.” App. Br. 7–9.
Specifically, the issue presented by the arguments is:
Issue: Has the Examiner erred in finding the combination of
Lemmons and Beyda, and Hjelsvold teaches or suggests “displaying
additional information associated with an interactive advertisement upon
receiving an indication of the interaction, wherein the additional information
comprises an additional advertisement displayed within the video?”

ANALYSIS
This issue turns on interpretation of the limitation “within the video.”
The Examiner finds, taking a broad but reasonable interpretation in light of
the Specification, “video” is the entire video signal. Ans. 15. Appellant
urges us to interpret video as the video that is displayed and, as support,
identify several portions of the Specification. Reply Br. 5–6.
We are not persuaded by Appellant’s arguments. Portions of the
Specification, other than those cited by Appellant, describe the video in less
limiting or different terms. For example, paragraph 23 states “[a]s described
herein, video may include various forms of multimedia including video of
any format, . . . , or a slideshow, a series of images, or any display with or
without audio.” Spec. ¶ 23. Paragraph 27 discloses “[a]s described below,
the files that are stored and transferred by the video server 108 to/from the
video database 110 will be described as videos, although other files,
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including other multimedia may also be transferred and stored.” Id. at ¶ 27
(emphasis added). Thus, Appellant’s proffered interpretation is not
consistent with all the uses of the term “video” in the Specification.
Accordingly, taking a broad, but reasonable interpretation in light of the
Specification, we construe “within the video” as covering the file and/or any
video displayed to a viewer.
In light of this interpretation, we are not persuaded by Appellant’s
arguments. Specifically, Appellant argues the information displayed in
Lemmons is not displayed within the video, but is, instead, displayed on an
unused portion of the TV screen. App. Br. 8.
According to Lemmons, labels, interactive advertisements, may be
interactive links. Lemmons ¶ 39; see also Spec. ¶ 44 describing an
interactive advertisement as being, for example, a hyperlink. Upon selection
of the link, the viewer may be linked to a webpage. Lemmons ¶ 46.
Appellant argues a web page is not displayed within an unused portion of the
TV screen, but instead links the viewer to a company home page or website.
Reply Br. 6. However, Lemmons teaches an order form may appear on an
unused portion of the TV screen, an enhanced content window, or border
area allowing the video presentation to remain viewable. Lemmons ¶ 44–
45. Therefore, we agree with the Examiner Lemmons teaches further
information being displayed within the video.
Furthermore, we agree with the Examiner that Hjelsvold teaches the
additional information comprises a video advertisement. Ans. 7, 15–16.
Therefore, the combination of Lemmons and Hjelsvold teaches “the
additional information comprises an additional advertisement displayed
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within the video.” We further note, as set forth above, Appellant’s
Specification defines video as “any display with or without audio.” Spec.
¶ 23.
Accordingly, we are not persuaded the Examiner erred in finding the
combination of Lemmons and Beyda, and Hjelsvold teaches or suggests the
limitations as recited in claim 1 and claims 2–5, 7, 8, and 22, not separately
argued. Therefore, we sustain the Examiner’s rejection of claims 1–5, 7, 8,
and 22 under 35 U.S.C. § 103(a) for obviousness over Lemmons and Beyda,
and Hjelsvold.

ISSUE 3
35 U.S.C. § 103(a): Claims 9 and 12–21
Appellant asserts the invention is not obvious over Lemmons because
Lemmons does not teach or suggest the invention as recited. App. Br. 9–10.
Specifically, the issue presented by the arguments is:
Issue: Has the Examiner erred in concluding Lemmons teaches or
suggests “determining a type of interaction . . . for the detected interaction
with the advertisement?”
ANALYSIS
Appellant argues the additional information enabled upon an
activation of a label in Lemmons does not depend on the type of interaction.
App. Br. 9. We agree with the Examiner that “type of interaction” should be
construed broadly, but reasonably, in light of the Specification. As set forth
above in Issue 1, the Specification does not provide a written description for
“determining a type of interaction.” Nor is “type of interaction” explicitly
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defined in the Specification. Thus, we agree with the Examiner’s findings
and determine that, in light of this interpretation, Lemmons teaches or
suggests the disputed limitation recited in claim 9 and commensurately
recited in claim 17.
With respect to claims 12, 13, and 18–21, Appellant does not proffer
any additional arguments. See App. Br. 10–11. For the reasons set forth
above, we agree with the Examiner’s findings.
Accordingly, we sustain the Examiner’s rejection of claims 9 and 14–
17 under 35 U.S.C. § 103(a) for obviousness over Lemmons and claims 12,
13, and 18–21 under 35 U.S.C. § 103(a) for obviousness over Lemmons and
Hjelsvold.

DECISION
The Examiner’s rejection of claims 9 and 12–21 for failing to comply
with the written description requirement under 35 U.S.C. § 112, first
paragraph is affirmed.
The Examiner’s rejections of claims 1–5, 7–9, and 12–22 under
35 U.S.C. § 103(a) for obviousness are 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).

AFFIRMED

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