Hamed Tadayon

Patent Trials and Appeals Board

Dec 11, 2019

13441721 - (D) (P.T.A.B. Dec. 11, 2019)

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.
13/441,721 04/06/2012 Hamed Tadayon 1334-P001001 3002
60984 7590 12/11/2019
Cotman IP Law Group, PLC
35 Hugus Alley, Suite 210
Pasadena, CA 91103
EXAMINER
ZIMMERMAN, JEFFREY P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/11/2019 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):
patents@cotmanlaw.com
uspto.docketing@cotmanip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAMED TADAYON
Appeal 2018-006241
Application 13/441,721
Technology Center 3600
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JASON M. REPKO, Administrative Patent Judges.

REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–20. 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(a). Appellant identifies the real party in interest as Hamed Tadayon.
Appeal Br. 1.
Appeal 2018-006241
Application 13/441,721
2
CLAIMED SUBJECT MATTER
The invention relates to synchronizing media and advertisements.
Spec. ¶ 1. According to the Specification, the invention makes it easier for
viewers to purchase advertised products in media content. See id. ¶¶ 3–4. To
accomplish this, the system uses a database of products associated with
media content and time codes for synchronizing the corresponding
advertisements with the media during playback. Id. ¶¶ 7–13.
Claims 1 and 20 are independent. Claim 1 is reproduced below with
emphasis on the limitation at issue.
1. A method for synchronizing media and targeted content
comprising:
a content management server establishing a network
connection with a mobile device;
said content management server receiving timing data
associated with playing media content from said mobile device,
wherein said playing media content is from a media outlet
disconnected from said content management server;
said content management server synchronizing with said
playing media content based on said timing data;
said content management server accessing advertisement
data associated with said playing media content;
said content management server providing at least one
synchronized advertisement to said mobile device for display in
synchronized time, wherein each synchronized advertisement is
associated with a time code associated with said playing media
content;
said content management server receiving a user response
from said mobile device as a result of one of said at least one
synchronized advertisement; and
said content management server initiating an e-commerce
transaction between said mobile device user and a sponsor of said
one of said at least one synchronized advertisement based on said
user response.
Appeal 2018-006241
Application 13/441,721
3
Appeal Br. 9, Claims App.2
REFERENCES
Name Reference Date
Matsunga US 2011/0035270 A1 Feb. 10, 2011
Chu US 2008/0243603 A1 Oct. 2, 2008
Bernosky US 2009/0063277 A1 Mar. 5, 2009
Sean Hollister, ABC app eavesdrops on your TV to synchronize
interactive content using Nielsen tech (video), Engaget, (Sept. 18, 2010)
(accessed Nov. 2, 2013), http://www.engadget.com/2010/09/18/abc-app-
eavesdrops-on-your-tv-to-synchronize-interactive-content/ (“ABC”)
Digital Watermarking, Civolution (Nov. 5, 2010),
https://www.civolution.com/technology/digital-audio-and-video-
watermarking/ (“Civolution”)

REJECTIONS
The Examiner rejects claims 1, 3–13, 15, and 18–20 under pre-AIA3
35 U.S.C. § 103(a) as unpatentable over Matsunaga and ABC. Final 3–12;
Ans. 2–3.
The Examiner rejects claims 2 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Matsunaga, ABC, and Chu. Final 12–14.
The Examiner rejects claim 16 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Matsunaga, ABC, and Bernosky. Final 14–16.

2 Throughout this opinion, we refer to the Final Office Action (“Final”),
mailed March 12, 2015; the Appeal Brief (“Appeal Br.”), filed December
10, 2015; and the Examiner’s Answer (“Ans.”), mailed June 16, 2016.
3 Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, § 3, 125
Stat. 284, 285–93 (2011).
Appeal 2018-006241
Application 13/441,721
4
OPINION
The Examiner’s Rejection over Matsunaga and ABC
The Examiner finds that Matsunaga teaches all limitations in claim 1
except for a content management server that receives the recited timing data
from a mobile device. Final 3–5. In concluding that the claimed subject
matter would have been obvious, the Examiner finds that ABC teaches this
limitation. Id. According to the Examiner, ABC’s mobile app uses audio
watermarks to identify the television show that the user is watching. Id. at 5.
In the Examiner’s view, ABC teaches that the user’s mobile device sends
timing data to a content management server. Id.; see also Ans. 4.
The Examiner presents a similar rationale in rejecting claim 20
(Final 10–12), which recites “receiving timing data associated with said
media content from said mobile device” (Appeal Br. 16).
Appellant’s Argument
Appellant argues that ABC’s timing data comes from the broadcasted
audio via the watermarks. Appeal Br. 9. So, in Appellant’s view, ABC’s
timing data originates from a media outlet, not from the mobile device as
required by claims 1 and 20. Id.
Issue
Did the Examiner err in finding that ABC teaches or suggests a
content management server that receives the recited timing data from a
mobile device in claims 1 and 20?
Analysis
Claim 1 recites, in part, “content management server receiving timing
data associated with playing media content from said mobile device.”
Appeal Br. 9, Claims App. Claim 20 recites a similar limitation. See
id. at 16.
Appeal 2018-006241
Application 13/441,721
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According to the Specification, timing data can include a start time or
the media content’s current play position. Spec. ¶ 17. The timing data may
also include an identifier or audio sample, among other things. Id. The server
uses the timing data to generate synchronization data. Id. ¶ 62. Although
these exemplary, non-limiting embodiments do not precisely define “timing
data,” they nevertheless inform our understanding of the limitation at issue,
which requires a server that receives the timing data from the mobile device.
Appeal Br. 9.
In rejecting claims 1 and 20, the Examiner finds that ABC’s audio
watermarks correspond to the recited timing data. Final 4. We, however,
agree with Appellant that the Examiner has not shown how a content server
receives these watermarks, or other timing data, from the mobile device.
Appeal Br. 9.
Specifically, ABC teaches that an iPad’s microphone captures audio
watermarks, which are embedded “in most every US television show.”
ABC 1. An app on the iPad then uses the audio watermarks to identify the
show and offer interactive content. Id.
But ABC does not expressly teach or suggest that a content
management server receives watermarks from the iPad. Indeed, the
Examiner does not provide any citation to the prior art of record to support
the findings about the server. See Ans. 4; see also Final 5. At most, ABC
teaches that the “app uses the [] audio watermarks.” See ABC 1 (emphasis
added). ABC is silent about what data, if any, is sent to a server from this
app. See id. So if the watermarks are timing data, as the Examiner finds
(Final 4), the timing data’s source is the media outlet, not the mobile device
(Appeal Br. 9).
Appeal 2018-006241
Application 13/441,721
6
Nor has the Examiner shown that the cited references inherently teach
or suggest a content management server that receives watermarks from the
iPad. See Final 4; Ans. 4. “Inherency . . . may not be established by
probabilities or possibilities.” PAR Pharm., Inc. v. TWI Pharms., Inc., 773
F.3d 1186, 1195 (Fed. Cir. 2014). Rather, there is “a high standard in order
to rely on inherency to establish the existence of a claim limitation in the
prior art in an obviousness analysis—the limitation at issue necessarily must
be present, or the natural result of the combination of elements explicitly
disclosed by the prior art.” Id. at 1195–96.
Here, the Examiner explicitly finds that Matsunaga lacks a content
management server that receives the recited timing data from a mobile
device. Final 4. And ABC is silent about communications with a server. To
sustain the Examiner’s rejection, we would have to speculate about how the
ABC app uses the audio watermarks and what is communicated to a server.
Constrained by this record and based upon a preponderance of the evidence,
Appellant has persuaded us that the Examiner erred in finding that the cited
references teach or suggest a content management server that receives the
recited timing data from a mobile device in claims 1 and 20. Appeal Br. 9–
10.
Thus, we do not sustain the rejection of independent claims 1 and 20,
and dependent claims 3–13, 15, 18, and 19.
The Remaining Obviousness Rejections
We also do not sustain the rejections of dependent claims 2, 14, 16,
and 17 for the same reasons discussed above in connection with claim 1.
Specifically, the Examiner did not rely on the additional references, Chu or
Bernosky, to teach the features missing from Matsunaga and ABC. See
Appeal 2018-006241
Application 13/441,721
7
Final 12–16. Thus, the Examiner does not show that Chu or Bernosky cures
the deficiency discussed above. See id.
CONCLUSION
We reverse the Examiner’s decision to reject claims 1–20.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–13, 15,
18–20
103 Matsunaga, ABC 1, 3–13,
15, 18–20
2, 14 103 Matsunaga, ABC,
Chu
2, 14
16, 17 103 Matsunaga, ABC,
Bernosky
16, 17
Overall
Outcome
1–20

REVERSED