Ex Parte Sprogis

Board of Patent Appeals and Interferences

Aug 20, 2012

10643120 (B.P.A.I. Aug. 20, 2012)

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.
10/643,120 08/18/2003 David H. Sprogis 5014CON2 3480
55740 7590 08/20/2012
Gesmer Updegrove LLP
40 Broad Street
BOSTON, MA 02109
EXAMINER
STAMBER, ERIC W
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
08/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID H. SPROGIS
___________

Appeal 2010-011355
Application 10/643,120
Technology Center 3600
____________

Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011355
Application 10/643,120

2
STATEMENT OF THE CASE
David H. Sprogis (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-8. We have jurisdiction under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is “systems and methods for providing advertisement
and other information to audiences in a theater environment.” Spec. 2:6-7.
Claims 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A video data scheduling system comprising:
a computer storage unit configured to store
digital video data representative of video
information, said digital video data including
content data regarding the content of the video
information, and context data regarding a
scheduling context in which said video information
is desired to be presented;
a plurality of digital projector assemblies
coupled to said computer storage unit;
schedule input means configured to receive
show schedule information including a plurality of

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Oct. 16, 2008) and Reply Brief (“Reply Br.,” filed Aug. 9, 2010),
and the Examiner’s Answer (“Ans.,” mailed Jun. 8, 2010).

Appeal 2010-011355
Application 10/643,120

3
start times and locations at which each of a
plurality of shows are scheduled to begin;
schedule means configured to access a subset of
said content data in said computer storage unit
responsive to said context data and said show
schedule information;
production means configured to assemble
presentation data including a subset of said content
data, said presentation data being associated with a
first show; and
a first digital projector assembly of said
plurality of digital projector assemblies configured
to present said presentation data such that said
subset of said content data will be shown prior to a
first start time associated with said first show at
said first digital projector assembly.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Rabowsky
Zigmond
US 6,141,530
US 6,698,020 B1
Oct. 31, 2000
Feb. 24, 2004
The Examiner took official notice: 1) “that it is old and well known
for theaters having plural projectors to display a plurality of
advertisements and trailers while the audience is waiting for each
projector/theater’s actual movie showing to start.” (Ans. 5); 2) “that it
is common within the movie industry to present that advertisements,
trailers, previews, etc. before showing the actual movie” (Ans. 6); and
3) “that users are typically notified that requests submitted to a
computer system have been properly received” (Ans. 7). [Hereinafter,
Official Notice.]

Appeal 2010-011355
Application 10/643,120

4
The following rejections are before us for review:
1. Claims 5-8 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which applicant
regards as the invention.
2. Claims 1-8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rabowsky, Zigmond, and Official Notice.

ISSUES
The first issue is whether claims 5 and 8 are indefinite under
35 U.S.C. § 112, second paragraph. Specifically, the issue is whether the
Specification discloses corresponding structure for the projector control
means recited in claims 5 and 8. The rejection of claims 1-8 under
35 U.S.C. § 103(a) over Rabowsky, Zigmond, and Official Notice also turn
on this issue.
The second issue is whether claims 1-4 are unpatentable under
35 U.S.C. § 103(a) over Rabowsky, Zigmond, and Official Notice.

ANALYSIS
The rejection of claims 5-8 under 35 U.S.C. § 112, second paragraph, as
being indefinite
Claim 5 recites:
projector control means configured to present said
first presentation data using said first projector
assembly such that said first subset of content data
will be shown prior to a first start time associated
with said first show, and configured to present said
Appeal 2010-011355
Application 10/643,120

5
second presentation data using said second
projector assembly such that said second subset of
content data will be shown prior to a second start
time associated with said second show.

Claim 8 recites a similar limitation. This limitation is written in means-plus-
function format and, according to 35 U.S.C. § 112, sixth paragraph, is
construed to cover the corresponding structure and its equivalents.
The Appellant and the Examiner dispute whether the Specification
describes a corresponding structure, including an algorithm for performing
the claimed functions at issue. See Ans. 7-9 and Reply Br. 1-7.
We are not persuaded by the Appellant that the Examiner erred in
finding independent claims 5 and 8 indefinite. “If there is no structure in the
specification corresponding to the means-plus-function limitation in the
claims, the claim will be found invalid as indefinite.” Biomedino, LLC v.
Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir.2007). Initially, we note
that on page 7 of the Appeal Brief, the Appellant corresponds to item 34 in
the embodiment of Figure 2 and similar item 50 in the embodiment of Figure
4 to the claimed projector control means. We agree with the Examiner (see
Ans. 9), that the Specification does not disclose an algorithm that causes the
general purpose, personal computers 34 and 50 (see Spec. 17:20-21, 18:21-
23), to perform the claimed functionality. Further, as to the Appellant’s
reliance upon the portions of the Specification reproduced in the Reply Brief
on pages 1-7, while these portions of the Specification describe commercial
software which transmits the presentation (e.g. ads plus movie) to the client
PC (i.e., items 34 or 50), none of these portions describe an algorithm which
Appeal 2010-011355
Application 10/643,120

6
imparts the timing aspect (e.g, “prior to a second start time” (Claim 5)) of
the limitation at issue.
Accordingly, the rejection of claims 5-8 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention is
affirmed.

The rejection of claims 1-8 under § 103(a) as being unpatentable over
Rabowsky, Zigmond, and Official Notice
Claim 1
To contest the rejection of claim 1, 1) the Appellant argues that
Rabowsky’s description of manually modifying the playback schedule
teaches away from the Examiner’s proposed combination, which automates
the selection of the scheduled ads (App. Br. 9-10 ); 2) the Appellant asserts
that the Examiner’s combination changes Rabowsky’s principle of
operations (App. Br. 10); 3) the Appellant argues that Zigmond does not
describe creating a schedule of targeted ads (App. Br. 11); 4) the Appellant
asserts that there is no motivation for the Examiner’s proposed modification
(App. Br. 12); and 5) the Appellant asserts that the proposed modification
would require a substantial impermissible redesign of Rabowsky (App. Br.
12). We find each of these arguments and assertions unpersuasive for the
reasons set forth by the Examiner on pages 9-12 of the Answer.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Rabowsky, Zigmond, and Official Notice is affirmed.

Appeal 2010-011355
Application 10/643,120

7
Claims 2-4
To contest each of the rejections of claims 2-4, the Appellant broadly
asserts that there is no motivation to combine Rabowsky and that the
combination would require a substantial impermissible redesign of
Rabowsky. App. Br. 14-15. However, the Appellant makes no substantive
arguments to support these broad assertions nor does the Appellant address
the Examiner’s articulated reasoning in the rejections (for example, see Ans.
6). Therefore, we find these arguments unpersuasive, and, accordingly, the
rejection of claims 2-4 under 35 U.S.C. § 103(a) as being unpatentable over
Rabowsky, Zigmond, and Official Notice is affirmed.

Claims 5-8
As discussed above, we find claims 5-8 indefinite under 35 U.S.C.
§ 112, second paragraph. Therefore, the rejections of these claims under
35 U.S.C. § 103(a) must fall pro forma because they are necessarily based
on a speculative assumption as to the scope of these claims. See In re Steele,
305 F.2d 859, 862-63 (CCPA 1962). Our decision is based solely on the
indefiniteness of the claims.
Accordingly, the rejection of claims 5-8 under 35 U.S.C. § 103(a) as
being unpatentable over Rabowsky, Zigmond, and Official Notice is pro
forma reversed.

DECISION
The decision of the Examiner to reject claims 1-8 is affirmed.
Appeal 2010-011355
Application 10/643,120

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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

JRG