Ex Parte Wilson et al

Board of Patent Appeals and Interferences

Apr 15, 2010

09877718 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL C. WILSON, DANIEL A. BOULET,
SANDRO A. TORRIERI, and DEAN T. MICHAELS
_____________

Appeal 2009-006353
Application 09/877,718
Technology Center 2400
____________

Decided: April 15, 2010
____________

Before CARLA M. KRIVAK, ELENI MANTIS MERCADER,
and CARL W. WHITEHEAD, Jr., Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Non-Final
Rejection of claims 1-11, 23-25, and 29-38. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

INVENTION
Appellants’ claimed invention is directed to targeted advertising on a
multimedia network while ensuring subscriber privacy by making targeting
decisions at the subscriber equipment (e.g., a digital set top box) and
reporting the decision to a privacy manager that constructs aggregated
delivery statistics to be forwarded to an information manager. The delivery
statistics contain no information regarding the subscriber, Spec. ¶¶ [03],
[24].
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method of delivering targeted assets to subscribers of a broadcast
network, wherein each subscriber has subscriber equipment, the method
comprising the steps of:
operating a processor, at subscriber equipment, to determine
subscriber classification information, said processor being operative to
determine said subscriber classification information for a subscriber
currently present at said subscriber equipment based, at least in part, on
inputs to said subscriber equipment by said subscriber, said inputs being
substantially free of any input by said subscriber dedicated to identifying
said subscriber classification information;
receiving broadcast information directed to network subscribers, the
broadcast information including a plurality of assets and asset-related
information including target information for each of the assets;
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selecting an asset of the plurality of assets at the subscriber equipment
based on a comparison, conducted at the subscriber location equipment, of
the subscriber classification information to the target information for the
assets, wherein the asset played at the subscriber location equipment is
contingent upon the comparison and an aggregate audience size for said
asset is dependent on selections at subscriber equipment of network
subscribers; and
transmitting report information from said subscriber equipment to a
platform of said broadcast network, said report information reflecting said
selecting of said asset such that said report information can be used to
determine said aggregate audience size for said asset based on actual
reported playing information.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Herz US 5,758,257 May 26, 1998
Ngo US 7,134,132 B1 Nov. 7, 2006
The following rejection is before us for review:
The Examiner rejected claims 1-11, 23-25, and 29-38 under 35 U.S.C.
§ 103(a) as being unpatentable over Herz in view of Ngo.

ISSUE
The pivotal issue is whether the combination of Herz in view of Ngo
teaches the limitations of representative claim 1.

FINDINGS OF FACT (FF)
The following Findings of Fact (FF) are supported by a preponderance
of the evidence:
1. Herz teaches a one way distribution system, wherein the set top
multimedia terminals 412 (e.g., digital set top boxes) include software
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for determining an agreement matrix for each customer (col. 40, ll. 52-
56).
2. Herz’s agreement matrix suggests programming for “virtual channels”
and/or controls the tuners of the set top multimedia terminals to select
the most desirable programming for the customers based on each
customer’s profile (col. 40, ll. 56-60).
3. Herz also teaches a two way distribution system, wherein feedback
from the set top can be provided to the head end so adjustments can be
made to the video programming schedule and targeted advertising may
be provided by the head end (col. 41, ll. 20-25).
4. Herz further teaches a hybrid system that combines the one way video
distribution system with the two way distribution system (col. 48, ll.
23-47).
5. Herz teaches recognizing a particular profile as belonging to a
particular viewer, thereby making it unnecessary for users to input their
user IDs (col. 26, ll. 41-45).
6. Herz teaches that the customer decides whether to watch one of the
“virtual” channels in a one way video distribution system based on the
agreement matrix (col. 40, ll. 56-65). Herz further teaches that the
agreement matrix may be used to select advertisements that the
customer is most likely to watch (col. 47, ll. 63-66).
7. Ngo teaches that the set top box (STB) selects which advertisements
to display based on viewer information (col. 6, ll. 57-59).

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PRINCIPLES OF LAW
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court, citing In re
Kahn, 441 F.3d at 988, stated that “rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007).
The test for obviousness is what the combined teachings of the
references would have suggested to the artisan. Accordingly, one can not
show nonobviousness by attacking references individually where the
rejection is based on a combination of references. In re Keller, 642 F.2d
413, 426 (CCPA 1981).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference …. Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” Id. at
425.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.

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In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In determining whether
prior art references teach away from the claimed combination, the nature of
the teachings is highly relevant. Id.

ANALYSIS
Appellants argue that when Herz’s agreement matrix is executed at the
set top multimedia terminal (i.e., digital set top boxes) there is no feedback
provided to the head end (i.e., network) (App. Br. 14-15). We are not
persuaded by Appellants’ argument.
According to Herz’s one way distribution system, the set top
multimedia terminals 412 (e.g., digital set top boxes) include software for
determining an agreement matrix for each customer (FF 1). The agreement
matrix suggests programming for “virtual channels” and/or controls the tuners
of the set top multimedia terminals to select the most desirable programming
for the customers based on each customer’s profile (FF 2).
Herz also teaches a two way distribution system, wherein feedback
from the set top can be provided to the head end so that adjustments can be
made to the video programming schedule and so that targeted advertising may
be provided by the head end (FF 3).
Herz further teaches a hybrid system that combines the one-way video
distribution system with the two-way distribution system (FF 4).
Thus, we agree with the Examiner’s reasoning (Ans. 9) that Herz
teaches that the one way and two way systems are not rigid or static as
characterized by Appellants. Accordingly, based on Herz’s hybrid system, it
would have been obvious to one skilled in the art to provide feedback from
the top box of a one way distribution system to the head end, similar to the
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two way distribution system of Herz, for adjusting future programming and
targeting advertisement.
We are also not persuaded by Appellants’ argument (App. Br. 15-16)
that Ngo does not teach classification information free from an input
dedicated to identification. The Examiner (Ans. 10) relied on Herz, not on
Ngo, for the teaching of recognizing a particular profile as belonging to a
particular viewer, thereby making it unnecessary for certain users to input
their user IDs (FF 5). Appellants can not show nonobviousness by attacking
references individually (i.e., Ngo not teaching classification information free
from an input dedicated to identification) where the rejection is based on a
combination of references. See Keller, 642 F.2d at 426.
We are also not persuaded by Appellants’ argument that the Examiner
inappropriately combined Herz and Ngo (16-19). Appellants specifically
argue (App. Br. 18) that the user in Herz selects a channel to view rather
than the set top multimedia terminal 412 (FF 6). Appellants also argue that
Ngo (App. Br. 19) teaches away from transmitting information at the head
end.
Herz teaches that the user decides whether to view a particular
“virtual” channel or an advertisement (FF 6). We note that the Examiner
(Ans. 5) used Ngo for teaching that the digital set top box, rather than the
user as taught by Herz, selects which advertisements to display (FF 7). The
Examiner (Ans. 5-6) articulated as a rationale for modifying Herz with Ngo
the reason that Ngo allows the advertisement in Herz to be selected by the
digital set top box, rather than requiring the user to make that selection.
Accordingly, the Examiner’s articulated reasoning (i.e., the digital set top
box making the decision as to what advertisements to display rather than the
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user making those decisions) provides a rational underpinning that supports
the legal conclusion of obviousness. See KSR, 550 U.S. at 418.
Furthermore as stated supra, Herz was used for the teaching of a
hybrid system that transmits information at the head end (FF 1-4). The
Examiner used Ngo to modify Herz solely for the teaching of the digital set
top box, rather than the user, selecting which advertisements to display (FF
7). Thus, it would have been obvious to modify the set top box of Herz’s
hybrid system to select the advertisements as taught by Ngo. Accordingly,
we are not persuaded by Appellants’ argument (App. Br. 19) that Ngo
teaches away from transmitting information at the head end. The Examiner
did not propose to modify Ngo to introduce the teaching of transmitting
information to the head end, but rather, to modify Herz solely with Ngo’s
teaching of the set top box, rather than the user, making the selection of
which advertisements to display. Thus, the prior art references do not teach
away from the claimed combination because the nature of the teachings is
highly relevant. See Gurley, 27 F.3d at 553.
Accordingly, we will affirm the Examiner’s rejection of claim 1, and
for similar reasons the rejections of claims 2-11, 23-25, and 29-38. We note
that Appellants repeated the same arguments for claim 1 for claims 2-11, 23-
25, and 29-38, and merely recited what the claims require, which do not
constitute separate arguments of patentability. See In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987).

CONCLUSION
The combination of Herz in view of Ngo teaches the contested
limitations of Appellants claimed invention.
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ORDER
The decision of the Examiner to reject claims 1-11, 23-25, and 29-38
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

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