Ex Parte Poole et al

Patent Trial and Appeal Board

Jun 20, 2014

11698266 (P.T.A.B. Jun. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW J.B. POOLE
and JOSEPH R. MATARESE
____________

Appeal 2012-002920
Application 11/698,266
Technology Center 2400
____________

Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 23-26 and 31-34. Claims 1-22 and 27-30 have been canceled. App.
Br. 4, 12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellants’ invention relates to advertising insertion/association with
programming/on demand content delivered over a network. Spec. ¶ 2.
Independent claim 23, reproduced below, is representative of the
subject matter on appeal.
23. A method in a streaming content delivery network,
comprising:
in a regional network device downstream in the network
from a content server and upstream of a consumer premise
device, buffering advertising from ad breaks in a first program
content stream; and
causing the buffered advertising to appear during an ad
break during the presentation of a second program content
stream.

REJECTIONS
The Examiner rejected claims 23, 25, 26, 31, 33, and 34 under
35 U.S.C. § 103(a) as being unpatentable over Schlack (US 7,228,555 B2,
June 5, 2007) and Kaplan (US 2002/0087976 A1, July 4, 2002). Ans. 5-9.
The Examiner rejected claims 24 and 32 under 35 U.S.C. § 103(a) as
being unpatentable over Schlack, Kaplan, and De Heer (US 2007/0079325
A1, Apr. 5, 2007). Ans. 9-11.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments as to claims 23-26 and 31-34.
App. Br. 10-11; Reply Br. 8-9.
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We disagree with Appellants’ conclusions. Arguments made for the
first time in the Reply Brief that could have been presented in the Appeal
Brief to rebut rejections made in the Final Office Action are waived and not
considered. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative decision) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”).
We adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. Ans. 5-17. We concur with the conclusions
reached by the Examiner. We highlight and address specific findings and
arguments for emphasis as follows.
The Examiner finds that Schlack teaches all claimed features of
independent claim 23 except “buffering advertising from ad breaks in a first
program content stream.” Id. at 6. The Examiner relies upon Kaplan for this
feature (Kaplan ¶ 49; Ans. 6). Independent claim 31 recites subject matter
similar to claim 23.
Appellants’ arguments are focused on the teachings of Schlack and
the propriety of the proposed combination of Schlack with Kaplan (App. Br.
10-11). Regarding Appellants’ contention that the “Schlack system has no
reason or suggestion to implement buffering of ad content in the regional
nodes, which already receive multiple synchronize copies of the program
content, which already have all the ads inserted in them” (App. Br. 11
(emphasis ours)), Appellants’ arguments are not commensurate with the
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scope of claim 23, because claim 23 does not preclude such a reading. See
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
We observe that the Examiner has identified the relevant portions of
each reference and has properly concluded that the proposed combination
would result in an operable method. Ans. 12-15.
The Examiner finds:
In this case, Kaplan discloses targeting advertising without the
need for transmitting NxM streams through the network (see
¶ 0007) while Schlack discloses transmitting NxM streams
through the network to facilitate effectively targeting
advertising to group of viewers (Col. 2, lines 27-64). Thus by
combining the teachings of Kaplan to the system of Schlack,
the modified system of Schlack can conserve bandwidth within
the network by only carrying N program streams (see Kaplan
¶ 0007).
Ans. 11 (emphasis ours).
In other words, as found by the Examiner, the proposed combination
of Schlack and Kaplan increases “the number of schedule ads that are
available to be selected and inserted into program content streams during ad
avails in each presentation stream.” Final Rej. 4-5. We find this articulated
rationale to be sufficient to justify the proposed combination because it
would merely require the ordinarily skilled artisan to use common sense.1
Appellants further argue that Schlack/Kaplan and De Heer fail to
teach or suggest the limitations of dependent claims 24 and 32. App. Br. 11.
The Examiner responds that Schlack/Kaplan and De Heer are not deficient

1 “Common sense teaches, however, that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 420 (2007).
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and points out where De Heer teaches or suggests the limitations of claims
24 and 32. Ans. 16-17. We specifically find the Examiner has articulated
how the claimed features are met by the reference teachings. We agree with
and, accordingly, adopt the Examiner’s findings of fact and analysis and
reach the same legal conclusions as in the Examiner’s Answer.
For the above reasons, the Examiner’s 35 U.S.C. § 103(a) rejections
of claims 23, 24, and 32 and claims 25, 26, 31, 33, and 34, not separately
argued by Appellants, are sustained.

DECISION
The Examiner’s decision rejecting claims 23-26 and 31-34 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).

AFFIRMED

msc