Ex Parte Wilson et al

Patent Trial and Appeal Board

Apr 26, 2017

12774529 (P.T.A.B. Apr. 26, 2017)

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.
12/774,529 05/05/2010 DANIEL C. WILSON 50196-00153 8189
25231 7590 04/28/2017
MARSH, FISCHMANN & BREYFOGLE LLP
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
BROWN, RUEBEN M
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
PTOMail @ mfblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL C. WILSON, DANIEL A. BOULET,
SANDRO A. TORRIERI, and DEAN T. MICHAELS
Appeal 2017-000184
Application 12/774,5291
Technology Center 2400
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 23—60. Appellants have canceled claims 1—22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Invidi Technologies
Corp. App. Br. 1.
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Application 12/774,529
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions relate to a method of
planning, purchasing, delivering and monitoring targeted advertising via
television. Spec. 11.
Exemplary Claim
Claim 23, reproduced below, is representative of the subject matter on
appeal (emphases added to contested limitations):
23. A method for use in connection with delivering
targeted assets to subscribers having subscriber equipment in a
broadcast network, the broadcast network primarily involving
synchronized distribution of broadcast content to multiple
users, comprising the steps of:
providing a processor based asset targeting system
operative to:
obtain, from asset providers, targeting information for
assets, said targeting information identifying target audiences
for said assets;
obtain audience classification information for
subscribers, said audience classification information comprising
personal information of said subscribers other than tracking
usage of said broadcast network, said personal information
including at least one of age, income, and gender for individual
subscribers; and
select assets for delivery to particular subscribers based
at least in part on said targeting information and said
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Jan. 15, 2016); Reply Brief ("Reply Br.," filed Sept. 27, 2016); Examiner's
Answer ("Ans.," mailed July 27, 2016); Final Office Action ("Final Act.,"
mailed Dec. 15, 2014); and the original Specification ("Spec.," filed
May 5, 2010).
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Application 12/774,529
classification information, wherein an asset delivered on a
particular occasion is based in part on personal information of
a subscriber, and
said asset targeting system being limited to components
involved in one or more of 1) selecting particular targeted assets
for delivery to particular subscribers based on personal
information of said particular subscribers, 2) effecting delivery
of selected targeted assets to particular subscribers based on
personal information of said particular subscribers, and
3) reporting delivery of selected targeted assets to particular
subscribers based on personal information of said particular
subscribers;
receiving, at said targeting system from one of said
subscribers, a consent related to said targeting system, said
consent indicating a willingness of said subscriber regarding a
use of subject personal information in said asset targeting
system such that said targeting system will not use said subject
personal information in the absence of said consent.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Herz et al. ("Herz") US 5,754,938 May 19, 1998
Hendricks et al. ("Hendricks") US 6,463,585 B1 Oct. 8, 2002
Rejection on Appeal
Claims 23—60 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings and suggestions of Hendricks and
Herz. Final Act. 8; Ans. 2.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 6—32), we decide the
appeal of the sole § 103 rejection of grouped independent claims 23, 34, 45,
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Application 12/774,529
and 53 on the basis of representative claim 23. See 37 C.F.R.
§ 41.37(c)(l)(iv). We address the rejection of dependent claims 24—33, 35—
44, and 46—52, not argued separately, infra.
ISSUES
Appellants argue the Examiner erred in rejecting claim 23 under §
103(a), as being taught or suggested by the combined teachings of Hendricks
and Herz. These contentions present us with the following issues:
Did the Examiner err in finding the cited prior art teaches or suggests
contested limitations:
(i) the broadcast network primarily involving synchronized
distribution of broadcast content to multiple users,
(ii) receiving, at said targeting system from one of said subscribers,
a consent related to said targeting system,
as recited in claim 23? 3
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
which Appellants could have made but chose not to make in the Briefs so
that we deem any such arguments as waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 23, and
we incorporate herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
3 We give the contested claim limitation the broadest reasonable
interpretation consistent with the Specification. See In Re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997).
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Application 12/774,529
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellants' arguments. We incorporate such findings, reasons, and
rebuttals herein by reference unless otherwise noted. However, we highlight
and address specific findings and arguments regarding claim 23 for
emphasis as follows.
Appellants contend, in summary:
o Hendricks doesn't disclose obtaining consent for use of
personal information.
o Herz relates to point-to-point networks (where the network
knows what you are doing anyway because they are interactive)
and only obtains consent to sell your profile to third-parties for
use in other systems.
Neither reference discloses the claimed subject matter related to
obtaining consent to use personal information in the same
broadcast network targeting system that obtained the personal
information. Neither system evinces any recognition of the
expectation of privacy that some subscribers may value in the
broadcast network context.
App. Br. 7.
We are not persuaded by Appellants' contentions because Appellants
are arguing the references separately. "[0]ne cannot show nonobviousness
by attacking references individually where... the rejections are based on
combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Although the Examiner finds Hendricks' withholding of the names of
households from demographic information sent to the server may suggest
"said targeting system will not use said subject personal information in the
absence of consent" (Final Act. 10), the Examiner primarily cites Herz, not
Hendricks, for teaching this "consent" limitation. Final Act. 10—11.
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However, the Examiner cites Hendricks for all the remaining limitations
argued by Appellants, with the exception of the recited consent limitation.
Regarding Appellants' argument concerning the disputed "same
broadcast" term, Appellants are arguing limitations not recited in claim 23.4
We agree with the Examiner that claim 23 does not explicitly recite,
"obtaining consent to use personal information in the same broadcast
network targeting system that obtained the personal information." Ans. 10.
We agree with the Examiner because claim 23 does not require the
"targeting system" to be confined to the "broadcast network," especially
because the claim preamble states "the broadcast network primarily
involving synchronized distribution of broadcast content to multiple users."
Ans. 10-11. Therefore, under a broad but reasonable interpretation, the
broadcast network may secondarily involve other types of distribution.
We agree with the Examiner that under a broad, but reasonable,
interpretation, the recited "targeting system" encompasses Herz's third party
providers that collect personal information from viewers. We agree with the
Examiner because the plain language of the claim limitation "targeting
system," which does not even appear in Appellants' specification, does not
preclude third party providers.5 Ans. 11.
4 See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[Appellant's
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.").
5 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Appellants further contend:
A fundamental difference between the claimed invention
and the various references cited by the Examiner is that the
references involve media distribution in a point-to-point fashion
(e.g., over the Internet), whereas the relevant steps of the
claimed invention involve an asset targeting system in a
broadcast network configured for the synchronized distribution
of broadcast content to multiple users. Distribution in a point-
to-point fashion is a completely different model than broadcast
programming, which distributes media in a one-to-many
fashion (e.g., synchronized distribution from a central network
platform, such as cable headend to a plurality of televisions, as
described in greater detail below).
App. Br. 8.
We are not persuaded by Appellants' contentions, and agree with the
Examiner's finding that Hendricks clearly teaches an asset targeting system
in a broadcast network. Ans. 12—13, citing Hendricks Fig. 1, col. 1, 52—59,
col. 3, 29—31, 42-45, col. 30, 33-36, col. 31, 32-37. In addition to these
citations, we observe the very first sentence of Hendricks' Abstract states:
"A novel multiple channel architecture is designed to allow targeted
advertising directed to television terminals connected to an operations center
or a cable headend." Hendricks, Abst.
Appellants also argue Hendricks "teaches away from the invention of
claim 23 by suggesting that individualized targeting can be accomplished
only through point-to-point architectures, such as the Internet." App.
Br. 15-16.
Appellants specifically contend:
In particular, Hendricks does not select assets for delivery to
particular subscribers of a broadcast network based on personal
information. Of critical note, Hendricks not only fails to teach
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Application 12/774,529
selecting assets for delivery to particular subscribers in a
broadcast network. Hendricks actively teaches away from this
concept by suggesting that targeting advertisement to individual
viewers can be accomplished only within a point-to-point
architecture.
App. Br. 18.
Our reviewing court guides, "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."
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We do not find that to be
the case here.
We disagree with Appellants' contention because our reviewing court
instructs that the mere failure of a reference to mention alternatives known
in the art does not constitute a teaching away from using the known
elements. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567
F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away [. . .] if
it merely expresses a general preference for an alternative invention but does
not 'criticize, discredit, or otherwise discourage' investigation into the
invention claimed").
Here, we agree with the Examiner that the relevant portion of
claim 23 ("select assets for delivery to particular subscribers based at least
in part on said targeting system information and said classification
information, wherein an asset delivered on a particular occasion is based in
part on personal information of a subscriber") does not restrict the selecting
and delivering of the advertisements as to exclude a point-to-point delivery.
Ans. 17. Therefore, we find the recited claim term "delivery" does not
preclude the delivery methods taught in Hendricks.
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Further, although Appellants raise additional arguments for
patentability of claim 23 (App. Br. 6—27), we find that the Examiner has
rebutted each of those arguments in the Answer by a preponderance of the
evidence. Ans. 8—29. Therefore, we adopt the Examiner's findings,
underlying reasoning, and legal conclusions, which we incorporate herein by
reference. Consequently, we find no reversible error in the Examiner's
rejections of claim 23.
In view of the lack of any substantive or separate arguments directed
to the obviousness rejection of dependent claims 24—33, 35—44, 46—52 under
§103 (see App. Br. 27—32), we sustain the Examiner's rejection of these
claims, as they fall with their respective independent claims. Arguments not
made are considered waived.6
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2—5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a reply brief that were not raised in
the appeal brief or are not responsive to arguments raised in the Examiner's
Answer will not be considered except for good cause, which Appellants
have not shown. See 37 C.F.R. § 41.41(b)(2).
6 When Appellants do not separately argue the patentability of dependent
claims, the claims stand or fall with the claims from which they depend. In
re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 23—60 under 35 U.S.C. § 103(a) over the cited prior art combination
of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 23—60.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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