Google LLC

Patent Trials and Appeals Board

Feb 1, 2021

2020002429 (P.T.A.B. Feb. 1, 2021)

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.
14/879,974 10/09/2015 Adam Champy 0715150.328-US1 3574
104433 7590 02/01/2021
Byrne Poh LLP/Google LLC
11 Broadway Ste 760
New York, NY 10004
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
02/01/2021 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):
info@byrnepoh.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADAM CHAMPY
________________

Appeal 2020-002429
Application 14/879,974
Technology Center 3600
____________

Before JAMES R. HUGHES, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–21.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Google LLC as the real party in
interest. Appeal Br. 3.
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Application 14/879,974

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STATEMENT OF THE CASE
Introduction
Appellant’s application “relates to presenting media content that was
advertised on a second screen device using a primary screen device, where
the advertisements and/or media content can be selected and/or presented
based on subscription information for one or more services associated with a
user account.” Spec. ¶ 2. Claim 1 is illustrative of the appealed subject
matter and reads as follows:
1. A method for presenting content to a user, the
method comprising:
receiving, using a hardware processor at a server, an
advertisement request from a computing device;
receiving, using the hardware processor, association
information indicating that the computing device is associated
with a media presentation device over a local area network,
wherein the media presentation device is a separate device that
is capable of receiving media content from a remote source and
causing the received media content to be presented by a display
device in which the media presentation device is connected and
wherein the computing device is associated with a user account;
receiving, using the hardware processor, user account
information associated with the user account;
in response to the advertisement request, selecting, using
the hardware processor, an advertisement for media content
based on the association information indicating that the computer
device is associated with the media presentation device over the
local area network and based on the user account information
indicating that the user being presented with the advertisement is
not currently subscribed to a service;
determining, using the hardware processor, whether an
indicator of subscription status of the user account to the service
is to be presented in connection with the selected advertisement
based on the user account information, wherein the determining
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Application 14/879,974

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whether the indicator of subscription status is to be presented in
connection with the selected advertisement includes determining
that the user of the user account is likely to subscribe to the
service;
causing, using the hardware processor, the advertisement
to be presented by computing device, wherein the advertisement
is associated with instructions that, in response to the computing
device receiving input indicating interaction with the
advertisement, cause the computing device to instruct the media
presentation device to present the media content and the indicator
of subscription status;
receiving, using the hardware processor, input indicating
that the indicator of subscription status has been selected; and
in response to receiving the input indicating that the
indicator of subscription status has been selected:
causing, using the hardware processor, an application
associated with the service to be installed on at least one of the
computing device and the media presentation device; and
causing, using the hardware processor, the media
presentation device to switch an input corresponding to the
media presentation device, execute the application, and initiate
presentation of the media content on the display device via the
media presentation device.

The Examiner’s Rejections
Claims 1, 2, 4–12, and 14–21 stand rejected under 35 U.S.C. § 103 as
unpatentable over Redford (US 9,173,005 B1; Oct. 27, 2015), Jin
(US 2015/0095143 A1; Apr. 2, 2015), and Thomas (US 2017/0094332 A1;
Mar. 30, 2017). See Final Act. 2–23.
Claims 3 and 13 stand rejected under 35 U.S.C. § 103 as unpatentable
over Redford, Jin, Thomas, and Barlin (US 2010/0280903 A1; Nov. 4,
2010). See Final Act. 23–24.
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ANALYSIS
The Examiner finds the combination of Redford, Jin, and Thomas
teaches all the limitations of representative independent claim 1, including
that Redford teaches “selecting . . . an advertisement for media content based
on the association information indicating that the computer device is
associated with the media presentation device over the local area network.”
Final Act. 5; Ans. 3–7.
Appellant argues the Examiner errs in rejecting claim 1 as obvious
because, although Redford teaches computer 282 may use criteria such as a
user’s profile to select messages, Redford does not teach the user profile
includes any information indicating a connection of devices or an
association of a computer device with a media presentation device over a
local area network. Appeal Br. 10 (citing Redford, 29:1–3). Appellant also
argues Redford does not teach or suggest selecting advertisements based on
a connection of devices. Id.
Appellant has persuaded us of Examiner error. Redford teaches using
a handheld screen to supplement a television screen where “[d]isplay of
social media messages and/or promotional messages on [the] handheld
screen is coordinated with the display of video on the television screen.”
Redford, code (57). In particular, computer system 250 receives video
request 301 from handheld device 200 and, in response, sends signal 312
carrying the requested video to Internet-enabled television 303, which is
typically located nearby. Id. at 12:24–30; Fig. 3A. In an embodiment,
computer 282, which is part of computer system 250, uses an identifier of
handheld device 200 (which originated video request 301) to perform a table
look up in a database 831 to find an identifier of a television 303 that has
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been previously associated with handheld device 200. Id. at 27:47–51.
Redford’s computer system 250 also sends another signal 311 containing
one or more messages to be displayed to the user by handheld device 200.
Id. at 12:45–49; Fig. 3A. The messages may include text and/or graphics
automatically selected by computer system 250 to complement the user-
selected video 302. Id. at 12:50–53. Computer 282 may use criteria such as
“the user’s profile (e.g. age, or gender) to select messages.” Id. at 28:34–
29:3.
The Examiner finds Redford’s determination of the selected messages
based on the user’s profile to be based on association information as the
profile would be dependent on the connection of the devices. Final Act. 5.
More specifically, the Examiner finds that “[i]n Redford, there are multiple
devices (i.e. a handheld device and a TV device)” that “are connected to a
network (data network in Figure 8B) as well as associated and in
communication with each other (Figure 8 B Step 250),” and that “Redford
would not be operational without the two devices being associated over a
local area network.” Ans. 4–5. The Examiner has not, however, shown that
Redford teaches “selecting . . . an advertisement . . . based on the association
information indicating that the computer device is associated with the media
presentation device over the local area network,” as recited in claim 1.
The Examiner incorrectly relies on Redford’s data network as meeting
the limitation of a local area network (see Ans. 4–5) because Redford
describes the data network as, for example, the “Internet or an internal
network of a cable TV service provider such as COMCAST.” Redford,
26:35–37. Moreover, we disagree with the Examiner that Redford would not
be operational without an association between the handheld device and the
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television over a local area network (see Ans. 5), because multiple
embodiments in Redford appear to omit any discussion of a local area
network (see, e.g., Figs. 3A and 8B). Nevertheless, Redford’s Figure 7
depicts signal 552, which is used by handheld device 200 to transmit
commands to data network interface circuit 392 that is connected to
television 303, which suggests local communication. Redford, 25:61–64.
And, as noted above, Redford stores an association between the handheld
device and television in a database. See, e.g., id. at 27:47–51; 43:47–50. But,
even though Redford’s handheld device and television may be locally
connected and an association may be stored in a database, the mere existence
of such association does not show that Redford’s messages are selected
based on the association. Rather, Redford selects messages based on
matching keywords or a user profile. See, e.g., id. at 28:34–29:3; 45:20–46.
Accordingly, we agree with Appellant that the Examiner errs in
finding the combination of Redford, Jin, and Thomas teaches “selecting . . .
an advertisement for media content based on the association information
indicating that the computer device is associated with the media presentation
device over the local area network,” as recited in claim 1.
For these reasons, we do not sustain the obviousness rejection of
independent claim 1, and independent claims 11 and 21, which recite
commensurate limitations.2 We also do not sustain the obviousness
rejections of dependent claims 2–10 and 12–20 for the same reasons.

2 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–12,
14–21
103 Redford, Jin,
Thomas
1, 2, 4–12,
14–21
3, 13 103 Redford, Jin,
Thomas, Barlin
3, 13
Overall
Outcome
1–21

REVERSED