Ex Parte Slothouber et alDownload PDFPatent Trial and Appeal BoardSep 28, 201612751273 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121751,273 03/31/2010 21967 7590 09/29/2016 HUNTON & WILLIAMS LLP INTELLECTUAL PROPERTY DEPARTMENT 2200 Pennsylvania Avenue, N.W. WASHINGTON, DC 20037 FIRST NAMED INVENTOR Louis P. SLOTHOUBER 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. 63001.000057 1346 EXAMINER HUYNH, AN SON PHI ART UNIT PAPER NUMBER 2426 MAILDATE DELIVERY MODE 09/29/2016 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 LOUIS P. SLOTHOUBER and AARON YE Appeal2015-007400 Application 12/7 51,2 73 Technology Center 2400 Before ERIC S. FRAHM, JUSTIN BUSCH, and JENNIFER L. McKEOWN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-10 and 12-24. Claim 11 is canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants' invention relates to "video advertising, generally, and systems, methods, and apparatuses for enhancing video advertising with interactive content, in particular." Spec. i-f 2. Appeal2015-007400 Application 12/7 51,2 73 Claim 1 is illustrative of the claimed invention and reads as follows: 1. A computer-implemented method of enhancing video advertising with interactive content, the computer- implemented method comprising: receiving non-interactive video advertisement data and advertisement order data associated with the non- interactive video advertisement data from an extant non- interactive order entry system; generating interactive content data associated with the non-interactive video advertisement data; embedding, in the non-interactive video advertisement data, the interactive content data, wherein the interactive content data is configured to provide interactivity to an extant non-interactive advertisement received from an extant order entry system; and transmitting, to an ad server component of an extant ad system, the non-interactive video advertisement data and the embedded interactive content data as a static asset for transmission to one or more end user devices, wherein the ad server component manages the non-interactive video advertisement data embedded with the interactive content data alongside other non-interactive video advertisement data. THE REJECTION The Examiner rejected claims 1-10 and 12-24 under 35 U.S.C. § 103(a) as unpatentable over Applicants' Admitted Prior Art (AAPA) and Riedl (US 2009/0150941 Al; published June 11, 2009). Final Act. 6-15. 1 1 Throughout this opinion, we also refer to ( 1) the Final Action mailed Sept. 22, 2014 ("Final Act."); (2) the Appeal Brief filed Apr. 7, 2015 ("App. Br."); (3) the Examiner's Answer mailed June 17, 2015 ("Ans."); and (4) the Reply Brief filed Aug. 4, 2015 ("Reply Br."). 2 Appeal2015-007400 Application 12/7 51,2 73 ANALYSIS Based on the record before us, we are persuaded the Examiner erred in rejecting claims 1-10 and 12-24 as unpatentable over AAPA and Riedl. Namely, we agree with Appellants that the Examiner erred in relying on paragraphs 25-29 of the present application's Specification to reject the claims. While paragraph 16 of the Specification identifies Figure 1 as prior art, paragraphs 25-29 do not discuss Figure 1 but rather are describing embodiments of the invention. See, e.g., Spec. i-f 26 ("Certain embodiments of the present invention provide ... "). The Examiner fails to identify any disclosure that suggests that these paragraphs are admitted prior art. As such, the Examiner erred by relying on paragraphs 25-29 of the Specification in rejecting the claims. Moreover, we agree with Appellants that the Examiner fails to sufficiently explain how Reidl teaches the generating, embedding, and transmitting limitations. See App. Br. 12-15; Reply Br. 3-5. For example, the Examiner appears to identify Riedl' s play list as the recited "interactive content data" and Riedl's video advertisements as the non-interactive video advertisement. See Final Act. 8-9; Ans. 15; but see Ans. 16 (citing paragraph 52 of Riedl, which describes combining video advertisement and programming content, as satisfying the combining/embedding of interactive content data limitation). The Examiner, then, fails to explain how Riedl teaches embedding the playlist in the associated video advertisements. Further, Riedl explains that the "play list" includes the list of material to be played as well as the actual video and audio of the video advertisements. Riedl i-f 44. In order for us to sustain the Examiner's rejection, we would need to resort to impermissible speculation or unfounded assumptions or 3 Appeal2015-007400 Application 12/7 51,2 73 rationales to supply deficiencies in the factual bases of the rejection before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, we do not sustain the rejection of claims 1-10 and 12- 24 as unpatentable over AAP A and Riedl. DECISION We reverse the Examiner's decision to reject claims 1-10 and 12-24. REVERSED 4 Copy with citationCopy as parenthetical citation