Ex Parte Shuster

Patent Trial and Appeal Board

Jun 27, 2016

12967850 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/967,850 12/14/2010 Brian Mark Shuster
35690 7590 06/29/2016
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P,C
P.O. BOX 398
AUSTIN, TX 78767-0398
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.
6657-17701 1316
EXAMINER
HAMILTON, MATTHEW L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN MARK SHUSTER
Appeal2014-003038
Application 12/967,850
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 CASE
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 2, 4--10, 12, 13, 15, and 17-23. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-003038
Application 12/967,850
Appellant's invention is directed to a timer mechanism for use in
providing internet advertising. Spec., para. 2.
Claim 1 is illustrative:
1. A method comprising:
receiving, at a server computing device, a request for
content to be transmitted to a user computing device;
after a determination that advertising content has been
displayed on the user computing device for at least a first
threshold amount of time, the server computing device
authorizing display of the requested content at the user
computing device; and
after determining that the requested content has been
displayed on the user computing device for at least a second
threshold amount of time, terminating authorization of the
display of the requested content at the user computing device
such that display of second advertising content replaces display
of the requested content at the user computer device.
Appellant appeals the following rejections:
Claims 1, 4---6, 8-10, and 12 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Amon (US 2006/0247974 Al, pub. Nov. 2, 2006).
Claims 2, 7, 13, 15, and 17-20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Amon and Cezar (US 6,128,651, iss. Oct. 3, 2000).
Claim 21 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Amon and Slotznick (US 6,011,537, iss. Jan. 4, 2000).
Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Amon and Zigmond (US 6,698,020 Bl, iss. Feb. 24,
2004).
2
Appeal2014-003038
Application 12/967,850
ANALYSIS
Claims l, 4-6, 8-10, and 12
Each of independent claims 1 and 8 recite "terminating authorization
of the display of the requested content at the user computing device such that
display of second advertising content replaces display of the requested
content at the user computer device."
We are persuaded by Appellant's argument that Amon fails to
disclose this terminating, because Amon instead restricts "gaining access" to
subsequent content without terminating display of already-accessed content.
Appeal Br. 7-13; see also Reply Br. 2-3.
The Examiner asserts that Amon discloses the terminating display of
first content and replacing it with display of advertising at paragraphs 30, 34,
and 35 (Final Act. 3 and 5), Figure 2, and paragraph 12. (Answer 3--4).
However, these cited sections disclose that after a first period of time, a
request from a user is not fulfilled with the requested content until an
advertisement is first served to the user. Amon, para. 35 and Figure 2.
Amon does not disclose that display of content is terminated and substituted
with advertisement content, but only that access to subsequent requests may
require an advertisement first. Not providing access to content requested
after the end of a first time period is not the same as terminating the display
of content being displayed during the first time period.
The Examiner has thus failed to establish a prima facie case of
anticipation, because Amon does not disclose the "terminating" limitation of
claims 1 and 8.
3
Appeal2014-003038
Application 12/967,850
For this reason, we do not sustain the rejection of independent claims
1 and 8, nor of dependent claims 2, 4---6, 9, 10, and 12 that were rejected
along with claims 1 and 8.
Claims 2, 7, 13, 15, and 17-20
Independent claim 13 recites "after a determination that the requested
content has been displayed for at least a second threshold amount of time,
terminating display of the requested content on the user computing device
and displaying other advertising content."
In rejecting claim 13, the Examiner relies on the same portions of
Amon for the "terminating" language as was relied upon for claims 1 and 8.
Final Act. 8-9; see also Answer 5-6.
We are persuaded by Appellant's argument that Amon fails to
disclose the "terminating" language for the same reasons set forth for claim
1 (Appeal Br. 13; see also Reply Br. 3), for the same reasons we set forth
above.
As a result, we do not sustain the rejection of claim 13, nor of claims
2 and 7 that depend from claim 1, and claims 15 and 17-20 that depend from
claim 13 and were rejected along with claim 13, in part because the
Examiner has not established on the record that Cezar remedies the
shortcomings of Amon.
Claims 21-23
The Examiner has not established on the record that either of
Slotznick or Zigmond remedies the shortcomings of Amon we set forth
4
Appeal2014-003038
Application 12/967,850
above relating to the rejection of claims 1 and 8, from which claims 21-23
depend. Therefore, we do not sustain the rejections of claims 21-23.
DECISION
We reverse the rejection of claims 1, 4--6, 8-10, and 12 under 35
U.S.C. § 102(e).
We reverse the rejections of claims 2, 7, 13-15, and 17-23 under 35
U.S.C. § 103(a).
REVERSED
5