THOMSON LICENSING

Patent Trials and Appeals Board

Dec 23, 2020

2019005418 (P.T.A.B. Dec. 23, 2020)

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.
15/232,564 08/09/2016 Chad Andrew Lefevre 2011P00110 US 1073
157362 7590 12/23/2020
InterDigital Madison Patent Holdings
4 Research Way
3rd Floor
Princeton, NJ 08543
EXAMINER
JOHNSON-CALDERON, FRANK J
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
12/23/2020 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):
PatentOPs.US@interdigital.com
donna.foligno@interdigital.com
patricia.verlangieri@interdigital.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parteCHAD ANDREW LEFEVRE
Appeal 2019-005418
Application 15/232,564
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–26, which are all the claims pending
in the application. See Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Real Parties in Interest are Thomson Licensing and Interdigital
Madison Patent Holdings. Appeal Br. 3.
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STATEMENT OF THE CASE2
The claims are directed generally to “advertising and, in particular to
allowing a user (viewer) of video services to change and impact the
advertising he/she views. That is, the present invention provides for
improved targeted advertising.” See Spec. (Field of Invention).
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphases added to contested prior-art limitations):
1. A method comprising:
presenting first content including a first commercial[;]
determining if the first commercial is exempted from a
ratings function by a content provider providing the first content
including the first commercial; and
if the first commercial is exempted from the ratings
function then disabling the ratings function; and
if the first commercial is not exempted from the ratings
function then:
receiving a user rating of the presented first
commercial;
modifying a commercial selection algorithm based
on the user rating; and

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Feb. 12, 2019); Examiner’s Answer (“Ans.,” mailed April 30, 2019); Final
Office Action (“Final Act.,” mailed Sept. 13, 2018); and the original
Specification (“Spec.,” filed Aug. 9, 2016). We note Appellant did not file a
Reply Brief to respond to the Examiner’s findings and conclusions in the
Answer.
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presenting second content including a second
commercial selected based on the modified commercial
selection algorithm.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Rosenberg US 2008/0032723 A1 Feb. 7, 2008
Jones et al. (“Jones”) US 2009/0125934 A1 May 14, 2009
Lawrence-Apfelbaum et al.
(“Lawrence-Apfelbaum”)
US 2009/0210899 A1 Aug. 20, 2009
REJECTION
Claims 1–26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lawrence-Apfelbaum, Jones and
Rosenberg. Final Act. 4.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 9, 12–13) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
obviousness Rejection of claims 1–26 on the basis of representative
claim 1.3

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does 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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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–26
and, unless otherwise noted, we incorporate by reference 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 (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. § 103 Rejection of Claims 1–26
Issue 1
Appellant argues (Appeal Br. 9–12) the Examiner’s rejection of claim
1 under 35 U.S.C. § 103 as being obvious over the combination of
Lawrence-Apfelbaum, Jones, and Rosenberg is in error. Appellant’s
contentions present us with the following issues:
(1) Did the Examiner err in finding the cited prior art combination
teaches or suggests a method that includes, inter alia, the conditional
limitations of “determining if the first commercial is exempted from a
ratings function by a content provider providing the first content including
the first commercial; and if the first commercial is exempted from the
ratings function then disabling the ratings function,” as recited in claim 1?
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(2) Did the Examiner err in combining the prior art in the manner
suggested because Rosenberg is allegedly non-analogous art?
Principles of Law
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations 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.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
Analysis
Issue (1): All Limitations are Taught or Suggested
The Examiner finds the combination of Lawrence-Apfelbaum, Jones
and Rosenberg teaches or suggests the contested limitations in paragraphs
13, 15, 17, 22, and 25 of Jones and paragraph 73 of Rosenberg. Final
Act. 5–6.
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Appellant contends:
However, it is respectfully submitted that providing a button for
a user to enable/disable a ratings function as in paragraph
[0025] of Jones does not disclose or suggest “determining if the
first commercial is exempted from a ratings function by a
content provider providing the first content including the first
commercial; and if the first commercial is exempted from the
ratings function then disabling the ratings function” as recited
in claim 1 (emphasis added). That is, a user operated button as
in Jones directly disables or enables ratings functions based on
user operation of the button, not based on “determining if the
first commercial is exempted from a ratings function by a
content provider providing the first content including the first
commercial” as claimed (emphasis added). Thus, both
Lawrence-Apfelbaum and Jones fail to disclose the claimed
invention including “determining if the first commercial is
exempted from a ratings function by a content provider
providing the first content including the first commercial” and,
therefore, the combination of Lawrence-Apfelbaum and Jones
does not disclose or suggest the claimed invention including the
determining feature.
Adding Rosenberg does not cure the described
deficiencies of the combination of Lawrence-Apfelbaum and
Jones. The Examiner’s reference to paragraph [0073] of
Rosenberg is noted (page 6 of the Final Office Action).
However, it is quite clear in paragraph [0073] that Rosenberg
merely teaches that content, i.e., songs, may be rated, e.g., “rate
the music playing within such places” (Abstract of Rosenberg).
Rosenberg teaches nothing regarding rating commercials.
“While Spencer teaches a number of different data elements
making up a hardware profile that is used for device
authentication, Spencer fails to teach or suggest using
application power usage as a hardware profile data element for
purposes of device authentication.”
Appeal Br. 10.
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The Examiner responds to this argument in the Answer by explaining
that Rosenberg’s teaching of “a server maintains a rating flag/listing to track
which users have already provided a rating; (¶0073) the server cross-checks
(i.e., determining) against such a listing, doing so the server can ensure that
only one rating value may be submitted (exempt from a second rating) from
a particular device.” Ans. 4.
The Examiner further clarifies “when Lawrence-Apfelbaum and
Jones’ method (which describes a method for rating commercial/advertising
content) is modified with the general teaching of ensuring that only one
rating value is submitted as taught by Rosenberg, the modified method of
Lawrence-Apfelbaum becomes configured to determine if a user has already
rated a commercial prior to performing other rating steps.” Id.
On this record, we are not persuaded the Examiner erred in finding
that the combined teachings of Lawrence-Apfelbaum, Jones and Rosenberg
at least suggest the contested limitations of claim 1. In particular, we find
Rosenberg’s teaching of an establishment media server which ensures that
each user is limited to no more than one rating per song, when combined
with Lawrence-Apfelbaum’s advertising selection method, teaches or at least
suggests the disputed limitation. See Rosenberg ¶ 73. We note Appellant
has not filed a Reply Brief and has therefore not rebutted the Examiner’s
clarifications, findings, and legal conclusions in the Answer.
Issue (2): Rosenberg is Analogous Art
The Examiner relies upon Rosenberg’s media server ensuring that
each user may only provide no more than one rating for a particular song for
teaching or suggesting “if the first commercial is exempted from the ratings
function then disabling the ratings function.” Final Act. 6. Therefore, “it
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would have been obvious to one of ordinary skill in the art . . . to modify
Lawrence-Apfelbaum to include restricting the user’s content rating in order
to achieve the predictable result of preventing users from providing multiple
ratings and skewing the results.” Final Act. 7.
Appellant’s argument focuses on whether the prior art references are
analogous. Appeal Br. 11. A rejection under 35 U.S.C. § 103 cannot be
based on non-analogous art. Innovention Toys, LLC, v. MGA Entertainment,
Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
Art is analogous when it is: (1) from the same field of endeavor as the
claimed invention; or (2) reasonably pertinent to the particular problem
faced by the inventor, if the art is not from the same field of endeavor.
Bigio, 381 F.3d at 1325–26. However, “[t]he Supreme Court’s decision in
KSR . . . directs us to construe the scope of analogous art broadly.” Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). “The field of
endeavor of a patent is not limited to the specific point of novelty, the
narrowest possible conception of the field, or the particular focus within a
given field.” Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed.
Cir. 2016).
Specifically, Appellant argues, “Rosenberg involves content such as
songs. Rosenberg teaches nothing regarding commercials, content including
commercials, and determining if a commercial is exempt from a ratings
function as claimed.” Appeal Br. 11.
We disagree with Appellant because, as found by the Examiner:
In this case, Rosenberg is in the field of applicant’s endeavor
(i.e., ratings) and is considered reasonably pertinent to the
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problem which the applicant is concerned (regarding this
limitation) of limiting/restricting the rating of content.
Lawrence-Apfelbaum would benefit from Rosenberg
modification in order to prevent users from providing multiple
ratings to commercials and skewing the results.
Ans. 5.
We determine that the field of endeavor to be user rating of content –
whether it be songs or commercials. However, even if Appellant were
correct in asserting that Rosenberg is not from the same field of endeavor as
Appellant’s claimed invention, we agree with the Examiner because
Rosenberg at least satisfies the second prong of the Bigio test, i.e.,
Rosenberg is reasonably pertinent to the particular problem faced by the
inventor, because Rosenberg prevent users from providing multiple ratings
to commercials and skewing the results, the same problem addressed by
Appellant’s claimed invention. Ans. 5, Rosenberg ¶ 73.
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitations of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 2–26 which fall therewith. See Claim Grouping, supra.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 1–26 under 35 U.S.C. § 103 over the cited prior art combination of
record, and we sustain the rejection.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C
§
Basis /
References Affirmed Reversed
1–26 103
Obviousness
Lawrence-
Apfelbaum, Jones,
Rosenberg
1–26
FINALITY AND RESPONSE
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). See 37
C.F.R. § 41.50(f).
AFFIRMED