Ex Parte Weber et al

Board of Patent Appeals and Interferences

Mar 30, 2011

09712887 (B.P.A.I. Mar. 30, 2011)

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.
09/712,887 11/15/2000 Barry Jay Weber RCA90,206 5241
24498 7590 03/31/2011
Robert D. Shedd, Patent Operations
THOMSON Licensing LLC
P.O. Box 5312
Princeton, NJ 08543-5312
EXAMINER
LAZARO, DAVID R
ART UNIT PAPER NUMBER
2455
MAIL DATE DELIVERY MODE
03/31/2011 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 BARRY JAY WEBER and KERRY WAYNE CALVERT
____________________

Appeal 2009-006708
Application No. 09/712,8871
Technology Center 2400

____________________

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Thomson Licensing Inc.
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 4-16 and 26.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention concerns a system for processing and/or
providing broadcast multimedia content and targeted advertisements to
multiple different users over a network (Spec. 2). The invention includes a
processor to concurrently provide broadcast multimedia program content to
the system, a scheduler to schedule time or insertion of a designated
advertisement into selected content, and a multiplexer operable to provide
multiple users with individualized composite program datastream by
performing, in parallel for multiple users, insertion of a designated
advertisement and coupling of the composite program datastream formed
after advertisement insertion to each corresponding user (Spec. 7, 10, 13).
Claim 13 is exemplary of the claims on appeal:
13. A system for processing broadcast multimedia program content and
advertisements to provide a composite program datastream having
multimedia data content and user targeted advertisements to multiple
different users, comprising:
a processor operable to determine authorization of multiple broadcast
sources to concurrently provide broadcast multimedia program content to the
system, said broadcast multimedia program content comprises at least one of
(a) streamed audio data, (b) streamed video data, (c) voice representative
data, (d) voicemail data, and (a) a radio or video broadcast;
a scheduler operable to schedule time of insertion of a designated
advertisement into selected broadcast multimedia program content, said
scheduler being configured to receive and pre-cache advertisements from
multiple sources to provide candidate advertisements for selection of said

2 Claims 1-3 and 17-25 have been cancelled.
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designated advertisement for insertion in said selected multimedia program
content at a scheduled insertion time;
a multiplexer operable to provide multiple users with individualized
composite program datastream by performing in parallel for multiple users.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Kostreski US 5,734,589 Mar. 31, 1998
Monteiro US 5,778,187 Jul. 7, 1998
Srinivasan US 6,411,992 B1 Jun. 25, 2002

Claims 4-14, 16, and 26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Monteiro in view of Srinivasan.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Monteiro in view of Srinivasan and Kostreski.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed May 8, 2008) and the Examiner’s Answer (“Ans.,” mailed
July 25, 2008) for their respective details.

ISSUES
Appellants argue that insertion of advertising at the Playback/Control
Workstation is not contemplated to involve scheduled pre-storage of the
advertising stream (App. Br. 6). After conceding that the advertisements in
Monteiro “do need to be stored in some fashion prior to insertion,”
Appellant argues that Monteiro’s “Network Control Center is focused on
caching during preparation of the content stream rather than pre-caching,
i.e., caching prior to arrival of the content stream” (App. Br. 7). Lastly,
relying on the prior argument that Monteiro inserts advertising in real-time
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at the Playback/Control Workstation, Appellants argue that “[i]f the
advertising is inserted in real-time, there is no need for a scheduler” (App.
Br. 7).
Appellants’ contentions and the Examiner’s findings present us with
the following issues:
1. Does Monteiro teach a scheduler operable to schedule time of
insertion of a designated advertisement?
2. Does Monteiro teach a scheduler being configured to receive and
pre-cache advertisements from multiple sources to provide candidate
advertisements for insertion in a selected multimedia program?

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Monteiro
1. Monteiro teaches that “[r]eal-time insertion of paid commercial
advertising takes place at the Playback/Control Workstations and the
resulting integrated audio stream is delivered to the Primary Servers” (col. 4,
ll. 32-35).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 405
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(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
CLAIMS 4-14, 16, AND 26
We select claim 13 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
We are not persuaded by Appellants’ arguments, summarized supra.
We agree with the Examiner that pre-caching may fairly be interpreted as
caching prior to insertion of the advertisement (Ans. 10). Appellants do not
cite to support in the Specification for their definition of “pre-caching” –
“caching prior to arrival of the content stream” -- expressed in the Appeal
Brief. (We note that the term “pre-caching” does not appear in Appellants’
Specification.) Monteiro teaches that “[r]eal-time insertion of paid
commercial advertising takes place at the Playback/Control workstations and
the resulting integrated audio stream is delivered to the Primary Servers” (FF
1). Taking this teaching in combination with Appellants’ admission that
Monteiro’s advertisements need to be stored in some fashion prior to their
insertion into content (App. Br. 7), we agree with the Examiner’s finding
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that Monteiro teaches pre-caching within the meaning of representative
claim 13.
With respect to “a scheduler operable to schedule time of insertion” of
an advertisement, we agree with the Examiner that real-time ad insertion is
still time-oriented (Ans. 11). We adopt the Examiner’s finding that Monteiro
(inherently) teaches “a mechanism within the Playback/Control Workstation
… that indicates the proper time to insert an advertisement” (Ans. 11). We
therefore agree with the Examiner that Monteiro teaches a “scheduler” as
claimed.
Because we find that Monteiro teaches the scheduler and “pre-
caching” functionality recited in representative claim 13, we find that the
Examiner did not err in rejecting representative claim 13. Accordingly, we
will sustain the Examiner’s rejection of claims 4-14, 16, and 26 under § 103
as unpatentable over Monteiro in view of Srinivasan.
CLAIM 15
Appellants state that the patentability of claim 15 will stand or fall
with the patentability of claim 13 (App. Br. 8). As a result, we will sustain
the § 103 rejection of claim 15 for the reasons expressed with respect to
claim 13, supra.

CONCLUSIONS
1. Monteiro teaches a scheduler operable to schedule time of insertion
of a designated advertisement.
2. Monteiro teaches a scheduler being configured to receive and pre-
cache advertisements from multiple sources to provide candidate
advertisements for insertion in a selected multimedia program.
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ORDER
The Examiner’s rejection of claims 4-16 and 26 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

ELD