Ex Parte Shuster

Patent Trial and Appeal Board

Dec 7, 2016

13158358 (P.T.A.B. Dec. 7, 2016)

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.
008744.P010 9241
EXAMINER
HANCE, ROBERT J
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
13/158,358 06/10/2011 Brian Shuster
8791 7590 12/08/2016
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
12/08/2016 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 BRIAN SHUSTER1
Appeal 2015-006762
Application 13/158,358
Technology Center 2400
Before MICHAEL J. STRAUSS, AMBER L. HAGY, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3, and 8, which constitute all of the claims under
consideration in this appeal.2 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.3
1 According to Appellant, the real party in interest is Actv8, Inc. See Appeal
Br. 3.
2 Claims 2 and 5—7 have been cancelled and claim 4 has been withdrawn.
3 Throughout this Opinion, we refer to: (1) Appellant’s Specification filed
June 10, 2011 and substitute Specification filed Aug. 25, 2011 (“Spec.”);
(2) the Final Office Action (“Final Act.”) mailed May 22, 2014; (3) the
Appeal Brief (“Appeal Br.”) filed Dec. 12, 2014; and (4) the Examiner’s
Answer (“Ans.”) mailed May 5, 2015.
Appeal 2015-006762
Application 13/158,358
BACKGROUND
Appellant’s application relates to “creation of a relationship between
consumers/viewers with a mobile CPU (Mobile device such as a phone, a
pad, a laptop, or other similar devices) and a video screen, a digital screen, a
kiosk, a billboard and any related signage, whether digital or not.”
Spec. 111. Claims 1,3, and 8 are independent claims. Claim 1 is
representative and is reproduced below:
1. Method for providing real-time interaction with broadcasted
audio/video content comprising:
a) sampling via a microphone an audio segment from a
broadcasted audio/video content received on an audio/video device;
b) converting the sampled audio segment to a digital signal;
c) sending the digital signal to a server for comparing the digital
signal with a digital snapshot of an audio pattern that corresponds to the
audio portion of the broadcasted audio/video content;
d) receiving a determined current position relative to a beginning
of said broadcasted audio/video content based on said comparing;
e) displaying on a second audio/video device an interactive
display based on said determined current position, said interactive
display including content which takes into account said determined
current position, said interactive display being an offer for a product or
service which relates to said audio/video content at said determined
current position, which offer is selectable by a user of said second
audio/video device to be stored for a subsequent redemption.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Basson et al. (“Basson”) US 2002/0101537 A1 Aug. 1, 2002
Kaars US 2003/0002638 Al Jan. 2, 2003
Hosking et al. (“Hosking”) US 2005/0227614 Al Oct. 13, 2005
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Application 13/158,358
Mechaley US 2008/0003987 A1 Jan. 3, 2008
Bansal et al. (“Bansal”) US 2011/0208575 A1 Aug. 25, 2011
REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kaars, Basson, and Bansal. Final
Act. 4—6.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kaars, Hosking, Bansal, and
Mechaley. Final Act. 6—8.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kaars, Basson, and Bansal, and
Mechaley. Final Act. 8—9.
Our review in this appeal is limited to the above rejections and issues
raised by Appellant. We have not considered other possible issues that have
not been raised by Appellant and which are, therefore, not before us. See
37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUES
1. Did the Examiner err by improperly combining Kaars, Basson, and
Bansal because Basson is non-analogous art?
2. Did the Examiner err by improperly combining Kaars, Basson, and
Bansal because Bansal is non-analogous art?
3. Did the Examiner err by improperly combining Kaars, Hosking,
Bansal, and Mechaley because Hosking is non-analogous art?
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4. Did the Examiner err by finding the combination of Kaars,
Hosking, Bansal, and Mechaley teaches or suggests all of the limitation of
claim 3?
ANALYSIS
We have reviewed the Examiner’s rejections in light of the
Appellant’s arguments that the Examiner has erred. We disagree with
Appellant’s conclusions and we adopt as our own: (1) the findings and
reasons set forth by the Examiner in the Office Action from which this
appeal is taken (Final Act. 3—9 and 13—16) and (2) the reasons set forth by
the Examiner in the Examiner’s Answer in response to Appellant’s Appeal
Brief. Ans. 2—3. We concur with the conclusions reached by the Examiner,
and we highlight the following for emphasis and completeness.
Claim 1
The Examiner relies on the combination of Kaars, Basson, and Bansal
to teach or suggest all of the limitations of claim 1. Final Act. 4—6.
Appellant argues Basson is non-analogous art because “Basson’s
closed-captioned portable receiver for the hearing impaired is unconcerned
with any kind of advertising content.” Appeal Br. 8—10.
We find Appellant’s argument unpersuasive. A reference must be
from an analogous art to be available for use in a section 103(a) rejection.
“Whether a reference in the prior art is ‘analogous’ is a fact question.” In re
Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison
Mfg. Co., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987)). Two criteria have
evolved for answering the question: “(1) whether the art is from the same
field of endeavor, regardless of the problem addressed, and (2) if the
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Application 13/158,358
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” Id. at 658—59 (citing In re Deminski, 796 F.2d
436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
The Examiner finds, and we agree, the “field of endeavor in this
instance is the synchronization of external content to a video presentation.”
Ans. 2.
Meanwhile, Appellant characterizes the field of endeavor of the
invention as follows:
This invention relates to the creation of a relationship between
consumers/viewers with a mobile CPU (Mobile device such as
a phone, a pad, a laptop, or other similar devices) and a video
screen, a digital screen, a kiosk, a billboard and any related
signage, whether digital or not. More particularly, the present
invention provides an eco-system and method for consumers
and/or viewers with a mobile CPU (Mobile device such as a
phone, a pad, a laptop, or other similar devices) to engage with
“meta data” (such as but not limited to coupons, special offers,
discounts, games, quizzes, trivia, polls, social integration)
related to content from a video screen, a digital screen, a kiosk,
a billboard and any related signage, whether digital or not.
Spec. 1.
Similar to Appellant’s preceding description of the field of endeavor
of his invention, Basson relates to creation of a relationship between
consumers/viewers with a mobile CPU (Basson’s mobile head mounted
display system 102 displaying closed caption data) and a video screen
(television set 108, which has no closed caption processing capabilities).
Basson || 30 and 32 and FIG. 1. We also find Basson’s closed caption data
discloses “meta data . . . related to content from a video screen” as described
above in Appellant’s description of the field of endeavor of his invention.
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Accordingly, whether we use the Examiner’s characterization of
Appellant’s field of endeavor or Appellant’s own characterization of the
field of endeavor from the Specification, we agree with the Examiner in
finding Basson is from the same field of endeavor as Appellant’s claimed
invention.
Appellant further argues Basson is non-analogous art because Basson
“does not ‘logically commend itself to an inventor’s attention in
considering his problem as required.” Appeal Br. 10.
Because we agree with the Examiner’s finding that Basson is within
the field of the inventor’s endeavor, we need not reach the issue of whether
Basson logically commends itself to the inventor’s attention in considering
his problem. See In re Deminski, 796 F.2d at 442.
Thus, we are not persuaded by Appellant’s argument that Basson is
non-analogous art and hence improperly combined with Kaars.
Appellant contends Bansal is non-analogous art because “Bansal is
not pertinent to the problem solved by the invention which requires, inter
alia, the simultaneous use of first and second screen devices.” Appeal
Br. 11. Specifically, Appellant contends Bansal is not pertinent to the
problem solved by the invention because the Bansal redemption process is
serial in nature and does not require that a first and second screen be used in
parallel. Appeal Br. 10.
We find Appellant’s arguments unpersuasive. As noted by Appellant,
a reference is analogous art if the reference is: (1) from the same field of
endeavor, regardless of the problem addressed, or (2) if the reference is not
within the field of the inventor’s endeavor, if the reference still is reasonably
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pertinent to the particular problem with which the inventor is involved. In re
Deminski, 796 F.2d at 442.
According to Appellant, his invention “is directed to solutions that
enable many technologies to coincide with one another creating a system
that provides advertisers with a complete interactive offer system . . . that
provides delivery, storage and redemption of offers for handheld/mobile
device users in an interactive manner.” Spec. 3. Consumers can store
offers for later use in a digital filing system. Spec. 12. Thus, a problem
with which Appellant was involved was how to enable a user to select an
offer to be stored for a subsequent redemption. Appellant notes, and we
agree, “Bansal solves the problem of when a user sees an ad on a website,
providing a mechanism so that the ad (ie [sic] offer for a product or service)
can be stored for a subsequent retrieval and redemption.” Appeal Br. 10. In
light of the similarity of the problem solved by Bansal and the problem
addressed by Appellant’s invention, we are not persuaded by Appellant’s
argument that Bansal is non-analogous art and hence improperly combined
with Kaars merely because Bansal’s redemption process is serial in nature.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1. We also sustain the Examiner’s rejections of independent claims
3 and 8 for similar reasons.
Claim 3
Appellant contends Hosking cannot be construed to logically
commend itself to the inventor’s problem because Hosking “is essentially a
passive system and is unconcerned with any kind of advertising content.”
Appeal Br. 11.
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We find Appellant’s contention unpersuasive because we agree with
the Examiner’s finding that Hosking’s field of endeavor, similar to
Appellants’ invention, is “synchronizing external content with a video
presentation.” Ans. 3. Because we agree with the Examiner’s finding that
Hosking is within the field of the inventor’s endeavor, we need not reach the
issue of whether Hosking logically commends itself to the inventor’s
attention in considering his problem. See In re Deminski, 796 F.2d at 442.
Accordingly, Hosking is analogous art and hence properly combined with
Kaars, Bansal, and Mechaley.
Appellant contends Basson and Hosking do not “meet the claim
limitation wherein the interactivity allows the user to make a real time
selection based on displayed content.” Appeal Br. 11. We are not
persuaded by Appellant’s contention because the argument is not
commensurate with the scope of claim 3, which is silent with respect to a
“real-time selection.” Moreover, the Examiner does not rely upon Basson in
the rejection of claim 3. See Final Act. 6.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 3.
Claim 8
Appellant notes that Mechaley is analogous art but contends
Mechaley doesn’t compensate for the deficiencies of Bansal and Hosking,
which are not analogous art. Because we find Appellant’s arguments with
respect to Bansal and Hosking unpersuasive, we sustain the Examiner’s
35 U.S.C. § 103(a) rejection of claim 8 for reasons similar to those discussed
above for claim 1.
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DECISION
We affirm the Examiner’s decision rejecting claims 1, 3, and 8.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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