William Dunn et al.

Patent Trials and Appeals Board

Jul 22, 2021

2020000453 (P.T.A.B. Jul. 22, 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.
12/422,037 04/10/2009 William Dunn MAN2241-005B 5787
8698 7590 07/22/2021
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
NEWLIN, TIMOTHY R
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
07/22/2021 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):
standleydocketing@standleyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM DUNN, DAVID WILLIAMS, and
GERALD FRASCHILLA
____________________

Appeal 2020-000453
Application 12/422,0371
Technology Center 2400
____________________

Before MAHSHID D. SAADAT, CARL W. WHITEHEAD, JR., and
ERIC S. FRAHM, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

1 Throughout this opinion, we refer to: (1) the Final Office Action mailed
November 9, 2018 (“Final Act.”); (2) the Advisory Action mailed January
30, 2019 (“Advisory Act.”); (3) the Appeal Brief filed April 11, 2019
(“Appeal Br.”); (4) the Examiner’s Answer mailed August 27, 2019
(“Ans.”); and (5) the Reply Brief filed October 25, 2019 (“Reply Br.”).

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STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134 from a rejection of claims
1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

DISCLOSED AND CLAIMED INVENTION
According to Appellant, the disclosed invention relates generally to
“video buffers used in advertisement delivery systems to ensure continuous
advertisement display” (Spec. ¶ 2), and is to be used by businesses to
advertise “in highly populated areas” or “locations that have a captive
audience” such as “at gas pumps, bathrooms, ticket lines, amusement parks,
stadiums, and other indoor/outdoor restaurants or entertainment venues”
(Spec. ¶ 3). Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for continuously displaying data on an
electronic display comprising:
a video data source adapted to provide a programming
packet having a beginning code and comprising a series of
advertisements; and
a video buffer located at the electronic display adapted to
[1] receive the programming packet from the video data source,
[2] store the programming packet, and [3] transmit
the programming packet to the display in a continuous loop such
that the series of advertisements are displayed over and over
without accepting any input from a viewer prior to the displaying
of any advertisements that would permit the viewer to change

2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). “The word ‘applicant’ when used in this title refers
to the inventor or all of the joint inventors, or to the person applying for a
patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Manufacturing Resources International,
Inc. (Appeal Br. 2).
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the content of the advertisements while simultaneously receiving
additional programming packets for transmission.

Appeal Br. 22, Claims Appendix (bracketed numbering, emphases added).

REJECTIONS
The Examiner made the following rejections:
(1) Claims 1, 2, 5–10, and 13–19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kinnear (US 2005/0289588 A1;
published Dec. 29, 2005) and Olesen et al. (US 2005/0127796 A1; published
June 16, 2005) (hereinafter, “Olesen”). Final Act. 4–6; Ans. 2–5.
(2) Claims 3, 4, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kinnear, Olesen, and Zigmond et al. (US
2011/0047567 A1; published Feb. 24, 2011) (hereinafter, “Zigmond”). Final
Act. 6–7.
(3) Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kinnear, Olesen, and Fishman et al. (US 2008/0163291
A1; published July 3, 2008) (hereinafter, “Fishman”). Final Act. 7–8.

ISSUE
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 9–
17) and the Reply Brief (Reply Br. 2–4),3 the following principal issue is
presented on appeal:

3 Appellant argues claims 1, 2, 5–10, and 13–19 as a group, without
discussing the specifics of any particular claim (see Appeal Br. 9–15; Reply
Br. 2–4). Appellant also argues remaining claims 3, 4, 11, 12, and 20 on the
same basis as claims 1, 2, 5–10, and 13–19 (see Appeal Br. 16–17; Reply Br.
4), adding that neither Zigmond nor Fishman cures the deficiencies of the
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Did the Examiner err in rejecting claims 1–20 under 35 U.S.C.
§ 103(a) as being unpatentable over the base combination of Kinnear and
Olesen because the combination is not properly combinable to teach or
suggest a video buffer that operates “such that the series of advertisements
are displayed over and over without accepting input from a viewer” as set
forth in representative claim 1, because Kinnear teaches away from the
claimed invention?

ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 4–8;
Advisory Act. 2; Ans. 2–5) in light of Appellant’s arguments (Appeal Br. 9–
17; Reply Br. 2–4) that the Examiner has erred, as well as the Examiner’s
response to Appellant’s arguments in the Appeal Brief (Ans. 2–5). With
regard to representative claim 1, we agree with and adopt as our own the
Examiner’s findings of facts and conclusions as set forth in the Final
Rejection (Final Act. 4–5), Advisory Action (Advisory Act. 2), and Answer
(Ans. 2–5). We provide the following explanation for emphasis only.
We emphasize that the Examiner’s ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Moreover, “‘the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.’” Merck & Co.

base combination of Kinnear and Olesen (see Appeal Br. 16–17; Reply Br.
2–8). Based on Appellant’s arguments, we (i) select claim 1 as
representative of claims 1, 2, 5–10, and 13–19; and (ii) decide the outcome
of the rejections of claims 3, 4, 11, 12, and 20 on the same basis as claims 1,
9, and 17 from which claims 3, 4, 11, 12, and 20 respectively depend.
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v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added); see also
MPEP § 2123. In this light, we agree with the Examiner that the combined
teachings and suggestions of Kinnear and Olesen support the legal
conclusion of obviousness as to claim 1.
Specifically, the Examiner finds (see Final Act. 4), and we agree, that
Kinnear teaches a video data source and video buffer as claimed, and Olesen
teaches “display in a continuous loop such that the series of advertisements
are displayed over and over without accepting any input from a viewer prior
to the displaying of any advertisements that would permit the viewer to
change the content of the advertisements while simultaneously receiving
additional programming packets for transmission,” as recited in claim 1.
And, the Examiner concludes (see Final Act. 4–5), and we agree, it would
have been obvious to combine the teachings of Kinnear and Olesen because
(i) “[b]uffering allows downloading new ad content without interrupting
displayed content, and targeting increases the chances of a positive
impression for the advertiser” (Final Act. 4); and (ii) the combination
provides the benefit of “allow[ing] advertising without requiring (or
allowing) user input, enabling display at varying locations (such as gas
pumps) to a wider audience” (Final Act. 4–5). The combination would
“encourage viewers to view ads and deliver effective impressions” (Ans. 5).
In view of the foregoing, Appellant’s contentions (see Appeal Br. 9–
15; Reply Br. 2–4) that there is no motivation to combine Kinnear and
Olesen are unpersuasive of Examiner error. Moreover, we are not persuaded
that modifying Kinnear and Olesen would not merely produce predictable
results or was “uniquely challenging or difficult for one of ordinary skill in
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the art” at the time of Appellant’s invention (see Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). This is evidenced by the fact
that both Kinnear and Olesen, as well as Appellant’s recited invention,
pertain to advertising on displays. Thus, Kinnear and Olesen are analogous
and pertain to “the same general video processing techniques and hardware
[that] are used across the video distribution art, whether implemented in a
consumer video recorder [e.g., as in Kinnear], or in a commercial setting
such as a gas pump [e.g., as in Olesen]” (Advisory Act. 2).
Appellant’s contentions (see Appeal Br. 9–13; Reply Br. 2–4) that
Kinnear teaches away from Appellant’s invention because Kinnear allows a
user to control, block, skip, and/or delete ads are not persuasive, because
Kinnear does not discourage the path taken by Olesen (or by Appellant). As
the Examiner determines, and we agree, “Kinnear never disparages this
method, but simply uses an alternative method of increasing the likelihood
of a successful ad impression” (Ans. 3), and the functions of Kinnear, such
as “ad targeting, media playback, recording, trick play, etc. . . . are not
frustrated simply by taking away the ability to skip ads” (Ans. 4).
“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.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994); see Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1090 (Fed. Cir. 1995). Furthermore, it is irrelevant that the
prior art and the present invention allegedly have different purposes. Nat’l
Steel Car, Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir.
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2004) (“A finding that two inventions were designed to resolve different
problems . . . is insufficient to demonstrate that one invention teaches away
from another.”). A prior-art reference that discloses alternatives does not,
simply by preferring some alternatives, “teach away” from the non-preferred
alternatives, In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004), and a
particular reference’s mere silence about a particular feature does not tend to
teach away from it, especially if it is disclosed elsewhere in the prior art,
Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
In other words, “[t]he prior art’s mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed . . . .” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
In the instant case, the Examiner relies on Olesen for teaching a
display showing a series of advertisements in a continuous loop such that the
series of advertisements are displayed over and over without accepting any
input from a viewer prior to the displaying of any advertisements that would
permit the viewer to change the content of the advertisements as set forth in
claim 1 (see Final Act. 4; citing Olesen ¶¶ 22, 24, 29, 35). And, although we
agree with Appellant that Kinnear teaches allowing a viewer to modify,
delete, or block video advertisement files (see Appeal Br. 12–13 citing
Kinnear ¶ 28), this teaching is merely a preference for one alternative, and
does not criticize, discredit, or otherwise discourage the solution claimed
(e.g., not allowing the viewer to change ad content). We agree with the
Examiner that “the primary purpose of Kinnear is not to have the user skip
ads, but rather to encourage the user to view the ads” (Ans. 4), and thus the
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“purpose of Kinnear is not frustrated, but is actually enhanced by the
addition of Olesen’s teaching” (Ans. 4). Therefore, one of ordinary skill in
the art, reading Kinnear and Olesen, would not be discouraged from
following the path set out in Olesen of not accepting user/viewer input for
changing ad content, and would not be led in a direction divergent from the
path that was taken by Appellant. See In re Gurley, 27 F.3d at 553; Para-
Ordnance Mfg., 73 F.3d at 1090.
In view of the foregoing, Appellant has not overcome the Examiner’s
prima facie case of obviousness with respect to independent claim 1. As a
result, we are not persuaded the Examiner erred in rejecting claim 1.
Accordingly, we sustain the Examiner’s rejection of (i) claim 1, as well as
claims 2, 5–10, and 13–19 grouped therewith; and (ii) claims 3, 4, 11, 12,
and 20 argued for similar reasons.

CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 5–10,
13–19
103(a) Kinnear, Olesen 1, 2, 5–10,
13–19

3, 4, 11,
12
103(a) Kinnear, Olesen,
Zigmond
3, 4, 11, 12
20 103(a) Kinnear, Olesen,
Fishman
20
Overall
Outcome
1–20

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).
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AFFIRMED