Ex Parte Ramer et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201612499585 (P.T.A.B. Feb. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/499,585 07/08/2009 130011 7590 02/22/2016 Shook, Hardy & Bacon LLP, (AOL Inc.) Intellectual Property Department 2555 Grand Blvd. Kansas City, MO 64108-2613 FIRST NAMED INVENTOR Jorey Ramer 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. AOLI.246023 1588 EXAMINER GARTLAND, SCOTT D ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 02/22/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): IPDOCKET@SHB.COM IPRCDKT@SHB.COM tquick@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOREY RAMER, ADAM SOROCA, and DENNIS DOUGHTY Appeal2013-006971 Application 12/499,585 Technology Center 3600 Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and MICHAEL W. KIM, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 from the Examiner's final rejection of claims 21-36. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal2013-006971 Application 12/499,585 Appellants' invention relates to mobile communication facilities and searches for content. (Spec. para. 40). Claim 21 is illustrative: 21. A system for presenting an advertisement in association with a webpage displayed on a mobile communication facility, the system comprising one or more computers having computer readable mediums having stored thereon instructions which, when executed by one or more processors of the one or more computers, causes the system to perform the steps of: (a) receiving an advertisement request associated with a webpage request from the mobile communication facility operated by a user, wherein the webpage request is received over a cellular telephony infrastructure provided by a wireless provider, wherein the user is paying for use of the mobile communication facility with the wireless provider; (b) accessing from the wireless provider a viewing history of television content of the user, wherein the wireless provider has provided the television content; ( c) receiving contextual information from the webpage corresponding to the webpage request, wherein the contextual information includes one or more keywords; ( d) adding the one or more keywords to a user behavioral profile, wherein the user behavioral profile includes a behavioral datum relating to prior behaviors of the user made via the mobile communication facility; ( e) selecting an advertisement based at least on a relevancy thereof to the viewing history and the one or more keywords added to the user behavioral profile; and (f) transmitting the advertisement for display on the mobile communication facility. 2 Appeal2013-006971 Application 12/499,585 Appellants appeal the following rejections: Claims 21-31and33-36 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dureau (US 2004/0073915 Al, pub. Apr. 15, 2004) and Kublickis (US 2007/0067297 Al, pub. Mar. 22, 2007). Claim 32 is rejected under 35 U.S.C. § 103(a) over Dureau, Kublickis, and McKay (US 2005/0149398 Al, pub. July 7, 2005). ANALYSIS We are persuaded by Appellants' argument that Dureau does not disclose that whatever entity is providing the user with access to the network is the same entity that provides the television content to the user, and thus the combination does not disclose limitation b) in claim 21. (Appeal Br. 4-- 5; Reply Br. 2-5.) The Examiner finds the claim language that the "wireless provider has provided the television content" is optional. (Answer 6-9.) However, we find nothing optional in the language which requires an advertisement/web page request "received over a cellular telephony infrastructure" and "accessing from the wireless provider a viewing history of television content of the user, wherein the wireless provider has provided the television content." The Examiner also finds that "Dureau is understood to have one provider for cellular telephony infrastructure and television content that accepts payment for use of all the services and/or programs - all within the same, or a singular, context." (Id. at 5---6.) The Examiner concludes that Dureau provides cellular telephony infrastructure and television content by 3 Appeal2013-006971 Application 12/499,585 one entity, based on paragraphs 8, 9, 13, 23, 24, 27, 32, 38, and 39 of Dureau. (Id.) We disagree with the Examiner. Dureau discloses that television content emanates from a "broadcast station" that may comprise "a satellite based system 23, a cable based system 24, a terrestrial or multiple multi- point distribution service (MMDS) based system 25, a combination of these systems, or some other appropriate system of transmission," and that the mobile unit may communicate with the broadcast station over the same medium. (Para. 23.) Dureau also discloses that user profiles are built by the broadcast service provider, such as from pay-per-view or subscription transaction, and may be collected at the broadcast station or at the "set-top box." (Para. 38.) However, Dureau does not disclose that television content and cellular telephony infrastructure are provided by the same entity, as claimed. For this reason, we do not sustain the rejection of claim 21, nor of dependent claims 22-31 and 33-3 6 that were rejected along with claim 21. We also do not sustain the rejection of dependent claim 32, because the Examiner has not established on the record that McKay remedies the shortcomings of Dureau. DECISION We reverse the rejections of claims 21-36. REVERSED 4 Copy with citationCopy as parenthetical citation