Ex Parte Rashkovskiy

Board of Patent Appeals and Interferences

Sep 23, 2004

09560458 (B.P.A.I. Sep. 23, 2004)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte OLEG B. RASHKOVSKIY

Appeal No. 2004-0992
Application No. 09/560,458

ON BRIEF

Before KRASS, RUGGIERO and BLANKENSHIP, Administrative Patent
Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 2-7 and 9-26.
The invention pertains to the distribution of television
advertisements over the Internet.
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Representative independent claim 15 is reproduced as
follows:
15. A method comprising:
determining whether a client is configured to automatically
display adverting material in association with other content; and
providing through a server access to the other content.
The examiner relies on the following reference:
Hidary et al. (Hidary) 5,774,664 Jun. 30, 1998
Claims 2-7 and 9-26 stand rejected under 35 U.S.C. 103 as
unpatentable over Hidary.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
At the outset, we note that contrary to appellant’s
indication, there is no issue before us involving a rejection
under 35 U.S.C. 102. The sole issue before us on appeal is the
obviousness of the claimed subject matter under 35 U.S.C. 103.
It is the examiner’s position, with regard to claims 2-4, 6,
7 and 9-14, that Hidary discloses detecting an event comprising
comparing the time of day, which reads on the current time, to
the time that advertising is to be distributed (column 3, lines
47-49); viewing an advertisement distributed over a TV
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distribution system (column 2, lines 37-38), which reads on
automatically accessing an advertisement distributed over a first
medium; accessing content over the Internet, which reads on a
second medium, and displaying the advertisement in association
with the content from the second medium (column 3, lines 45-49).
The examiner indicates that Hidary does not teach
interrupting the content to display the advertisement and does
not teach inserting advertising material. However, the examiner
alleges that this is the “common mode” (answer-page 4) for
combining advertising with content in commercial television
broadcasting. Accordingly, the examiner concludes that it would
have been obvious to interrupt the content to display the
advertising.
With regard to claim 5, the examiner alleges that Hidary
teaches accessing the advertisement at a certain period of time
(column 5, line 66 through column 6, line 3) and that this reads
on accessing the advertisement in response to an elapsed period
of time.
With regard to claims 15-26, the examiner alleges that
Hidary teaches providing through a server 28 access to other
content (column 5, lines 39-44) and automatically displaying
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advertising material with the content (column 2, lines 34-35 and
column 3, lines 34-36).
While the examiner indicates that Hidary does not explicitly
teach determining whether a client is configured to automatically
display advertising material in association with other content,
the examiner contends that Hidary “necessarily” performs the
method claim and that, therefore, Hidary inherently discloses the
claimed subject matter (see page 5 of the answer). In order to
show the inherency alleged, the examiner notes that it is
necessary to determine whether a client is configured to
automatically display advertising material in association with
other content before the advertising material is automatically
displayed in association with other content. The examiner
indicates that the reference teaches, at column 3, lines 37-40,
that any standard PC is physically configured to implement the
reference invention, and that information is provided regarding
when the advertising material is to be distributed over the first
medium, at column 3, lines 45-49.
With regard to claims 2-7 and 9-14, appellant argues that
Hidary does not interrupt content accessed from one medium to
display an advertisement that is accessed and distributed over a
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different medium and that there is no motivation for modifying
Hidary to provide for such.
We agree with appellant.
Each of claims 2-7 and 9-14 requires accessing an
advertisement distributed over a first medium, accessing content
from a second medium and interrupting the content and displaying
the advertisement. It is clear that Hidary does disclose two
mediums, a TV broadcast, and the Internet, whereby content is
accessed from one medium and advertisements are accessed from the
other medium. But, Hidary displays the content simultaneously
with the advertisement material, rather than interrupting the
content and displaying the advertisement.
The examiner recognizes this deficiency in Hidary but
contends that it would have been obvious to display the
advertisement by interrupting the content in view of the old and
well known technique, in broadcast TV, of interrupting the
content of a television program by commercials, i.e.,
advertisements.
We agree that it was well known, in commercial TV, to
interrupt program content for permitting advertisements.
However, in such cases, the advertisement and the program content
both emanate from the same medium, rather than two different
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mediums, as required by the instant claims. It is true that
Hidary shows two different mediums for presenting the content and
the advertisement, but there does not appear to be any reason for
the artisan to have modified Hidary to provide for an
interruption of the content in order to display the
advertisement.
Hidary recognized the old broadcast TV method of
interrupting programs to display advertisements. This is
apparent throughout Hidary’s disclosure as, for example, at
column 2, lines 62-64, wherein it is disclosed that
advertisers can speak more directly to consumers by
directly sending Web pages to the consumer instead of
only displaying Web addresses in their commercials; and
consumers can gain a new level of interest and
interactivity over a video-based medium.
Thus, it is clear that Hidary wants to get away from the
mere watching of TV commercials which interrupt regular broadcast
TV programs and wants to involve viewers interactively. This is
why Hidary provides for simultaneous display of content and
advertisement. Accordingly, it would appear contrary to Hidary’s
teachings to merely interrupt a broadcast TV program with the
display of an advertisement, rather than the simultaneous display
of both. Accordingly, we find that the skilled artisan would not
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have been led to modify Hidary in such a way to interrupt the
broadcast TV program content in order to provide for an
advertisement from a different medium. The display of an
advertisement alongside content is not an “interruption” of the
content, as required by the instant claims.
Therefore, we will not sustain the rejection of claims 2-7
and 9-14 under 35 U.S.C. 103.
We reach the opposite result with regard to claims 15-26 and
we will sustain the rejection of claims 15-26 under 35 U.S.C.
103.
With regard to claims 15-26, appellant argues that the
examiner relies on inherency for the rejection of these claims.
This is true. The examiner does find it inherent in Hidary to
determine whether a client is configured to automatically display
advertising material in association with other content. The
examiner explains that it is necessary to determine whether a
client is configured to automatically display advertising
material in association with other content before the advertising
material is automatically displayed in association with other
content.
Appellant does not argue, in any meaningful way, the merits
of the examiner’s position that in order to automatically display
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advertising material, a client must, of necessity, be configured
to display such material. Instead, appellant argues that the
examiner’s inherency argument points to a rejection under
35 U.S.C. 102, rather than a rejection under 35 U.S.C. 103 (see
page 7 of the reply brief).
This argument is not persuasive because even if the examiner
could have made the rejection under 35 U.S.C. 102, rather than
under 35 U.S.C. 103, anticipation is the epitome of obviousness.
In re Fracalossi, 681 F.2d 792, 215 USPQ 569 (CCPA 1982).
The examiner’s position that in order for something to be
displayed, a system must be configured to display it, is so
reasonable to us that appellant must provide some reason why this
would not be the case. Appellant’s mere assertion, at page 8 of
the reply brief, that the examiner has not shown that Hidary must
function or perform in the claimed manner, does not, in our view,
overcome the examiner’s reasonable assertion of inherency, in
view of the rather broad scope of the instant claims. For
example, independent claim 15 merely requires a determination of
whether a client is configured to automatically insert and
display advertising material in association with other content;
and providing through a server access to the other content.
Clearly, Hidary provides access to content through the Internet
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via a server. Further, Hidary provides for the display of
advertising material in association with the other content. If
Hidary displays advertising material in association with other
content, then the client performing this function must, of
necessity, be “configured” to do so.
We have sustained the rejection of claims 15-26 under
35 U.S.C. 103 but we have not sustained the rejection of claims
2-7 and 9-14 under 35 U.S.C. 103.
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Accordingly, the examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
)
JOSEPH F. RUGGIERO ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
EK/RWK
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