Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Status of Claims
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The following is a FINAL OFFICE ACTION in response to applicant’s amendments to and response for Application #18/060,729, filed on 01/20/2026.
Claims 1-21 are pending and have been examined.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, 4, 6-8, 11, 13, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ullah, Pre-Grant Publication No. 2011/0153429 A1 in view of Walden, et al., Pre-Grant Publication No. 2017/0228776 A1 and in further view of Birch, et al., Pre-Grant Publication No. 20120109755 A1.
Regarding Claim 1, Ullah teaches:
A method comprising:
receiving, by a gateway device at the premises, data associated with content being output on a user device at a premises (see [0061], [0065], and [0067] in which browser, received messages, and other activity data for one or more current mobile users proximate to the media device at the premises is received and analyzed by the gateway device in order to request further content such as ads for display to the user on the media device)
sending, by the gateway device, based on a content placement opportunity associated with content being output at a media device at the premises and the data associated with the content being output on the user device, a request for secondary content for output by the media device (see [0057]-[0059], especially [0059], in which a gateway device, namely the set-top box, is in communication with a user device, namely the mobile handset, and with a media device, namely a television, and in which a content placement opportunity is identified based on the user being in proximity to the media device/television such as in [0057] and [0059] in which GPS or other location technology is used, and the user watching television content, and in which the set-top box gateway device sends a secondary content request to the external server which then uses the received information to select advertisement for placement on the media device for the user to view, as in [0059] and [0061])
receiving by the gateway device the secondary content (see [0059], [0061])
causing the secondary content to be output via the media device according to the content placement opportunity (see [0059], [0061])
Ullah, however, does not appear to specify:
receiving, by a gateway device at a premises, a data packet associated with content being output on a user device at a premises
sending…based on the data packet
Walden teaches:
receiving, by a gateway device at a premises, a data packet associated with content being output on a user device at a premises and sending…based on the data packet (see [0023], [0090], [0104], [0118]-[0119], and [0127] in which data packet associated with the consumer mobile devices while they are at a premises is used to target content such as advertisements to the mobile user on media devices that are also at the premises)
It would be obvious to one of ordinary skill in the art to combine Walden with Ullah because Ullah already teaches data regarding content that is being output on the devices of mobile users, and also teaches data packets received with other mobile information in such as [0116], and receiving data packets for content being output on the device would allow for easily readable and useable information about the output content to be received by the gateway for further use rather than a need for the gateway to analyze or gather information in some other manner regarding the output content.
Ullah and Walden, however, does not appear to specify:
output by the media device to a display device, for display on the display device
Birch teaches:
output by the media device to a display device, for display on the display device (see [0036], [0083], [0103]-[0107], and [0131]-[0138] in which the media device is a set-top box, the display device is a television, and ads for display with the content are obtained from a remote server; further see Figure 4, [0083], [0103], and especially [0138] in which in one embodiment the content stream is routed through the network gateway so that advertisement opportunities can be identified by the gateway communicating with the content provider; the network gateway is separate from the set-top box and television)
It would be obvious to one of ordinary skill in the art to combine Birch with Ullah and Walden because Ullah already teaches a content stream with content placement opportunities being analyzed via a gateway device for the purpose of ad inclusion and subsequent delivery to a display device, and using a gateway device, media device and separate display device allows for the facilitating of the advertisement placement to be done separately from both the media device and display device, allowing for more efficient communication and for user information to be used for targeting from a content stream by an outside source even if not directly associated with the content stream.
**The examiner notes that at present the only amendment added to this independent claim is that there is now a separate display device that is not the media device. The terms “gateway device,” “media device,” and “display device” are still interpreted in light of the applicant’s specification, which gives various options for what component each of these could be. Therefore, the motivation to combine the three references seems to be very justifiable given the broadness of the claimed devices in light of the applicant’s specification.**
Regarding Claim 2, the combination of Ullah, Walden, and Birch teaches:
the method of claim 1
Ullah further teaches:
one or more of: a proximity of the user device to the media device (see at least [0057]-[0059], [0062]-[0063], [0084], and [0108] which the request is sent based on the proximity of the user/user device to the media device)
Regarding Claim 4, the combination of Ullah, Walden, and Birch teaches:
the method of claim 1
Ullah further teaches:
wherein the request for secondary content comprises one or more of: an identifier associated with the user device, an identifier associated with a user, or an identifier associated with a premises (see [0057]-[0061], [0066], [0069], [0075], [0077], and [0084] in which an identifier associated with a user device or a user is included in the request for secondary content and used to select secondary content)
Regarding Claim 6, the combination of Ullah, Walden, and Birch teaches:
the method of claim 1
Ullah further teaches:
wherein sending the request for secondary content comprises: determining demographic information (see [0064]-[0067], [0095], and [0099] in which actual or inferred demographics are determined)
sending, to a content device, based on the demographic information, the request for secondary content (see [0064]-[0067], [0095], and [0099])
Regarding Claim 7, the combination of Ullah, Walden, and Birch teaches:
the method of claim 1
Ullah further teaches:
determining, based on one or more of a proximity of the user device, an inbound content segment, or a user input, a user profile (see [0059], [0061], [0063]-[0067], [0069], [0077], [0079]-[0083], and [0099] in which a proximity of a user device or user input is used to determine a user profile)
Regarding Claim 8, Ullah teaches:
A method comprising:
a gateway device (see at least [0057]-[0060]) wherein the user device is associated with a user device identifier (see [0057], [0059], [0061], [0066], [0069], [0075], [0077], and [0084] which teach an identifier associated with a user device or a user)
based on receiving the data associated with first content item, determining a content placement opportunity associated with a media device (see [0059]-[0060], [0062], [0067]-[0068], and [0101]-[0102])
requesting by the gateway device, based on the user device identifier, and data associated with the first content item, a second content item for output by the media device (see [0059], [0061], and [0098]-[0102])
causing, based on the content placement opportunity, the second content item to be output via the media device (see [0059], [0061], and [0098]-[0102])
Ullah, however, does not appear to specify:
receiving a data packet associated with a first content item and requesting based on the data packet…
Walden teaches:
receiving a data packet associated with a first content item and requesting based on the data packet…(see [0023], [0090], [0104], [0118]-[0119], and [0127] in which data packet associated with the consumer mobile devices while they are at a premises is used to target content such as advertisements to the mobile user on media devices that are also at the premises)
It would be obvious to one of ordinary skill in the art to combine Walden with Ullah because Ullah already teaches data regarding content that is being output on the devices of mobile users, and also teaches data packets received with other mobile information in such as [0116], and receiving data packets for content being requested and output on the device would allow for easily readable and useable information about the output content to be received by the gateway for further use rather than a need for the gateway to analyze or gather information in some other manner regarding the requested and/or output content.
Ullah and Walden, however, does not appear to specify:
receiving, by a gateway device, data associated with a first content item bound for a user device
requesting, based on the data associated with the first content item requested by the user device, a second content item…
output by the media device to a display device
Birch teaches:
receiving, by a gateway device, data associated with a first content item bound for a user device and requesting, based on the data associated with the first content item requested by the user device, a second content item… (see [0060], [0108], and [0138]-[0142] in which the gateway device intercepts the incoming content and identifies content placement opportunities and facilitates insertion of advertisements, and the advertisements are received requested from an external server or system)
output by the media device to a display device (see [0036], [0083], [0103]-[0107], and [0131]-[0138] in which the media device causes output by the display device is a television, and ads for display with the content are obtained from a remote server
**The examiner notes that at present the only amendment added to this independent claim is that there is now a separate display device that is not the media device. The terms “gateway device,” “media device,” and “display device” are still interpreted in light of the applicant’s specification, which gives various options for what component each of these could be. Therefore, the motivation to combine the three references seems to be very justifiable given the broadness of the claimed devices in light of the applicant’s specification.**
It would be obvious to one of ordinary skill in the art to combine Birch with Ullah and Walden because Ullah already teaches users watching television or other content, and having ads inserted into the content, and teaches devices separate from the user device and allowing for inbound reception of the content would allow for analysis of content that has been requested for identification and placement of ads mid-route.
Regarding Claim 11, the combination of Ullah, Walden, and Birch teaches:
the method of claim 8
Ullah further teaches:
determining information associated with the user device, wherein the information associated with the user device comprises one or more of: an age of the user associated with the user device, a gender of the user associated with the user device, a location of the user associated with the user device, a gender identity of the user associated with the user device (see [0064]-[0067], [0095], and [0099] in which actual or inferred demographics are determined; see also [0059], [0062]-[0063], [0084], and [0108] which teach a proximity of a user device to the media device)
wherein determining the second content item comprises:
sending, based on the information, a request for secondary content (see [0064]-[0067], [0095], and [0099] in which actual or inferred demographics are determined and used for requesting content; see also [0059]-[0063], [0084], and [0108])
receiving, based on the request for secondary content, the second content item (see at least [0059]-[0061] and [0101]-[0103])
Regarding Claim 13, the combination of Ullah, Walden, and Birch teaches:
the method of claim 8
Ullah further teaches:
determining, based on the first content item, the user device is on a network associated with the gateway device and determining a proximity of the user device to the media device (see also [0059], [0062]-[0063], [0084], and [0108] which teach the set-top box determining the proximity of a user device to the media device)
Walden further teaches:
determining, based on receipt of the first content item…, the user device is on a network associated with the gateway device and determining a proximity of the user device to the media device (see [0021]-[0023] and [0091]-[0095])
It would be obvious to one of ordinary skill in the art to combine Walden with Ullah and Birch because Ullah already teaches data regarding content that is being output on the devices of mobile users, and also teaches data packets received with other mobile information in such as [0116], and receiving data packets for content being requested and output on the device would allow for easily readable and useable information about the output content to be received by the gateway for further use rather than a need for the gateway to analyze or gather information in some other manner regarding the requested and/or output content.
Regarding Claim 21, the combination of Ullah, Walden, and Birch teaches:
the method of claim 1
Ullah further teaches:
wherein the content being output on the user device comprises gaming content or streaming content (see [0122]-[0123] which teaches streaming content and [0107] and claims 5 and 11 which teach gaming content)
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Ullah, Pre-Grant Publication No. 2011/0153429 A1 in view of Walden, et al., Pre-Grant Publication No. 2017/0228776 A1 and in further view of Birch, et al., Pre-Grant Publication No. 2012/0109755 A1 and in further view of Chang, et al., Pre-Grant Publication No. 2012/0144291 A1 .
Regarding Claim 3, the combination of Ullah, Walden, and Birch teaches:
the method of claim 1
Ullah further teaches:
wherein the content placement opportunity comprises an area of a display (see [0059] and [0061] in which the content placement opportunity is an entire display which is an area of a display, [0101]-[0103] in which the content placement opportunity is determined at a portion of the visible content)
Birch further teaches:
wherein the media device comprises a set-top box, wherein the gateway device is a network gateway, and wherein the display device is a television (see [0036], [0083], [0103]-[0107], and [0131]-[0138] in which the media device is a set-top box, the display device is a television, and ads for display with the content are obtained from a remote server; further see Figure 4, [0083], [0103], and especially [0138] in which in one embodiment the content stream is routed through the network gateway so that advertisement opportunities can be identified by the gateway communicating with the content provider; the network gateway is separate from the set-top box and television)
It would be obvious to one of ordinary skill in the art to combine Birch with Ullah and Walden because Ullah already teaches a content stream with content placement opportunities being analyzed via a gateway device for the purpose of ad inclusion and subsequent delivery to a display device, and using a gateway device, media device and separate display device allows for the facilitating of the advertisement placement to be done separately from both the media device and display device, allowing for more efficient communication and for user information to be used for targeting from a content stream by an outside source even if not directly associated with the content stream.
Ullah, Walden, and Birch, however, does not appear to specify:
wherein the content placement opportunity comprises a blank area of a display
Chang teaches:
wherein the content placement opportunity comprises a blank area of a display (see Figure 9 and [0063])
It would be obvious to one of ordinary skill in the art to combine Chang with Ullah, Walden, and Birch because Ullah already teaches users watching television or other content, and having ads inserted into the content, and Birch teaches inserting ads into television content where there already is a spot for an advertisement and an assigned ad, and the selected content replaces that ad content, and insertion into blank areas would allow for best use of otherwise blank areas and maximize advertising availability.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ullah, Pre-Grant Publication No. 2011/0153429 A1 in view of Walden, et al., Pre-Grant Publication No. 2017/0228776 A1 and in further view of Birch, et al., Pre-Grant Publication No. 2012/0109755 A1 and in further view of Gardner, et al., Pre-Grant Publication No. 2008/0319852 A1 .
Regarding Claim 5, the combination of Ullah, Walden, and Birch teaches:
the method of claim 1
Ullah, Walden, and Birch, however, does not appear to specify:
wherein causing the secondary content to be output via the media device comprises one or more of: causing the secondary content to be overlaid over other content output via the media device or causing the secondary content to be displayed in a menu output via the media device
Gardner teaches:
wherein causing the content to be output via the media device comprises one or more of: causing the content to be overlaid over other content output via the media device or causing the content to be displayed in a menu output via the media device (see Figures 1 and 2 and [0027]-[0028])
It would be obvious to one of ordinary skill in the art to combine Gardner with Ullah, Walden, and Birch because Ullah already teaches users watching television or other content, and having ads inserted into the content, and using an overlay technique would allow for the advertisement to be very visible while still allowing the user to see the main content, especially in such as a sporting event which a lot of users want to see live.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Ullah, Pre-Grant Publication No. 2011/0153429 A1 in view of Walden, et al., Pre-Grant Publication No. 2017/0228776 A1 and in further view of Birch, et al., Pre-Grant Publication No. 2012/0109755 A1 and in further view of Muppirala, et al., Pre-Grant Publication No. 2015/0112807 A1.
Regarding Claim 9, the combination of Ullah, Walden, and Birch teaches:
the method of claim 8
Ullah, Walden, and Birch, however, does not appear to specify:
wherein the data packet is associated with an application running on the user device
Muppirala teaches:
wherein the data packet is associated with an application running on the user device (see at least Figures 1, 3, and 9 and [0022]-[0023], [0033], [0042], and [0090])
It would be obvious to one of ordinary skill in the art to combine Muppirala with Ullah, Walden, and Birch because Ullah already teaches user and device identifiers both stored on the advertisement side and identified and sent from the device side in order to match ads to content, and Birch teaches identifiers in association with content, and parsing a data packet associated with the content would allow for access to the device identifier even when transmitted in a manner better for content transmittal such as a data packet.
Regarding Claim 10, the combination of Ullah, Walden, Birch, and Muppirala teaches:
the method of claim 9
Muppirala further teaches:
wherein determining the user device identifier comprises parsing a data packet associated the inbound content item (see Figure 9 and [0090])
It would be obvious to one of ordinary skill in the art to combine Muppirala with Ullah, Walden, and Birch because Ullah already teaches user and device identifiers both stored on the advertisement side and identified and sent from the device side in order to match ads to content, and Birch teaches identifiers in association with content, and parsing a data packet associated with the content would allow for access to the device identifier even when transmitted in a manner better for content transmittal such as a data packet.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Ullah, Pre-Grant Publication No. 2011/0153429 A1 in view of Walden, et al., Pre-Grant Publication No. 2017/0228776 A1 and in further view of Birch, et al., Pre-Grant Publication No. 2012/0109755 A1 and in further view of Chang, et al., Pre-Grant Publication No. 2012/0144291 A1.
Regarding Claim 12, the combination of Ullah, Walden, and Birch teaches:
the method of claim 8
Ullah further teaches:
wherein causing the second content item to be output comprises sending, to the media device, the second content item (see at least [0059]-[0061] and [0101]-[0103])
Birch further teaches:
sending to the media device, the content item, displaying in the display device the second content item (see [0036], [0083], [0103]-[0107], and [0131]-[0138] in which the media device is a set-top box, the display device is a television, and ads for display with the content are obtained from a remote server; further see Figure 4, [0083], [0103], and especially [0138] in which in one embodiment the content stream is routed through the network gateway so that advertisement opportunities can be identified by the gateway communicating with the content provider; the network gateway is separate from the set-top box and television)
It would be obvious to one of ordinary skill in the art to combine Birch with Ullah and Walden because Ullah already teaches a content stream with content placement opportunities being analyzed via a gateway device for the purpose of ad inclusion and subsequent delivery to a display device, and using a gateway device, media device and separate display device allows for the facilitating of the advertisement placement to be done separately from both the media device and display device, allowing for more efficient communication and for user information to be used for targeting from a content stream by an outside source even if not directly associated with the content stream.
**The examiner notes that the “media device” and “display device” at present are still broadly defined by the specification and by claim 8 from which this depends. The terms “gateway device,” “media device,” and “display device” are still interpreted in light of the applicant’s specification, which gives various options for what component each of these could be. It could even be as known in the art and described in the specification and in the reference that the gateway device and media device could be integrated into one device. Therefore, the motivation to combine the three references seems to be very justifiable given the broadness of the claimed devices in light of the applicant’s specification.**
Ullah, Walden, and Birch, however, does not appear to specify:
displaying, in an otherwise blank portion of a display, the second content item
Chang teaches:
displaying, in an otherwise blank portion of a display, the second content item (see Figure 9 and [0063])
It would be obvious to one of ordinary skill in the art to combine Chang with Ullah, Walden, and Birch because Ullah already teaches users watching television or other content, and having ads inserted into the content, and insertion into blank areas would allow for best use of otherwise blank areas and maximize advertising availability.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Ullah, Pre-Grant Publication No. 2011/0153429 A1 in view of Walden, et al., Pre-Grant Publication No. 2017/0228776 A1 and in further view of Birch, et al., Pre-Grant Publication No. 2012/0109755 A1 and in further view of Gardner, et al., Pre-Grant Publication No. 2008/0319852 A1.
Regarding Claim 14, the combination of Ullah, Walden, and Birch teaches:
the method of claim 8
Ullah further teaches:
receiving an indication of a user input on the user device (see at least [0103])
Ullah, Walden, and Birch, however, does not appear to specify:
sending, based on the user input, to the user device, one or more of a hyperlink or a third content item
Gardner teaches:
sending, based on the user input, to the user device, one or more of a hyperlink or a third content item (see [0025]-[0026], [0028], and [0030] in which user input from a user device such as a mobile phone or remote control leads to display of other third content, links, etc. associated with the advertisement overlay)
It would be obvious to one of ordinary skill in the art to combine Gardner with Ullah, Walden, and Birch because Ullah already teaches users watching television or other content, and having ads inserted into the content, and teaches user interacting with the content such as in [0103], and the interaction leading to further content would allow the interested users to access further content while not needing to initially target and display all the further content.
Claims 15-16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Ullah, Pre-Grant Publication No. 2011/0153429 A1 in view of Birch, et al., Pre-Grant Publication No. 2012/0109755 A1 and in further view of Muppirala, et al., Pre-Grant Publication No. 2015/0112807 A1.
Regarding Claim 15, Ullah teaches:
A method comprising:
a gateway device at the premises (see [0057]-[0059] in which a gateway device, namely the set-top box, is in communication with a user device, namely the mobile handset, and with a media device, namely a television, and in which a content placement opportunity is identified based on the user being in proximity to the media device/television such as in [0057] and [0059] in which GPS or other location technology is used, and the user watching television content, and in which the set-top box gateway device sends a secondary content request to the external server which then uses the received information to select advertisement for placement on the media device for the user to view, as in [0059] and [0061])
determining, based on the user device identifier, a proximity of the user device associated with the user device identifier to a media device at the premises (see [0057], [0059]-[0062], [0067]-[0069], [0075], [0077], and [0084] which teach an identifier associated with a user device or a user; see also [0059]-[0063], [0084], [0088], [0099], and [0108] in which proximities of user devices to the media device at the premises, such as a residence, are determined based on the DSI identifiers)
based on determining the proximity of the user device to the media device, determining a content placement opportunity associated with the media device (see [0059]-[0063], [0084], [0088], [0099]-[0102], and [0108])
sending, by the gateway device, based on the content placement opportunity and the user device identifier, a request for secondary content device (see [0059]-[0063], [0084], [0088], [0099]-[0102], and [0108])
receiving by the gateway device, based on the request for secondary content, the secondary content (see [0059]-[0063] and [0098]-[0102])
Ullah, however, does not appear to specify:
sending, to the media device, the secondary content for output on a display device associated with the media device
Birch teaches:
sending, to the media device, the secondary content for output on a display device associated with the media device (see [0036], [0083], [0103]-[0107], and [0131]-[0138] in which the media device is a set-top box, the display device is a television, and ads for display with the content are obtained by the network gateway, provided to the set-top box, and displayed on the television)
It would be obvious to one of ordinary skill in the art to combine Birch with Ullah and Walden because Ullah already teaches a content stream with content placement opportunities being analyzed via a gateway device for the purpose of ad inclusion and subsequent delivery to a display device, and using a gateway device, media device and separate display device allows for the facilitating of the advertisement placement to be done separately from both the media device and display device, allowing for more efficient communication and for user information to be used for targeting from a content stream by an outside source even if not directly associated with the content stream.
**The examiner notes that at present the only amendment added to this independent claim is that there is now a separate display device that is not the media device. The terms “gateway device,” “media device,” and “display device” are still interpreted in light of the applicant’s specification, which gives various options for what component each of these could be. Therefore, the motivation to combine the three references seems to be very justifiable given the broadness of the claimed devices in light of the applicant’s specification.**
Ullah and Birch, however, does not appear to specify:
determining, based on a data packet requested by a user device at the premises, a user device identifier in the data packet
Muppirala teaches:
determining, based on a data packet requested by a user device at the premises, a user device identifier in the data packet (see at least Figures 1, 3, and 9 and [0022]-[0023], [0033], [0042], and [0090]; the examiner notes that Ullah already teaches a gateway device and a user device at the premises as well as determination of a user identifier and user location, so Muppirala is being used to teach the aspect of determination of the user identifier via a received and parsed data packet)
It would be obvious to one of ordinary skill in the art to combine Muppirala with Ullah and Birch because Ullah already teaches user and device identifiers both stored on the advertisement side and identified and sent from the device side in order to match ads to content, and parsing a data packet associated with the content would allow for access to the device identifier even when transmitted in a manner better for content transmittal such as a data packet.
Ullah and Muppirala, however, does not appear to specify:
sending…based on the user identifier in the data packet, a request for secondary content
Ullah does however teach sending, by the gateway device, based on the content placement opportunity and the user device identifier, a request for secondary content device in [0059]-[0063], [0084], [0088], [0099]-[0102], and [0108], and Muppirala teaches a user device identifier in the data packet at least in Figures 1, 3, and 9 and [0022]-[0023], [0033], [0042], and [0090]. Therefore, it would be obvious to one of ordinary skill in the art at the time of filing of the application to combine sending…based on the user identifier in the data packet, a request for secondary content with Ullah, Birch, and Muppirala because Ullah teaches sending, by the gateway device, based on the content placement opportunity and the user device identifier, a request for secondary content device and Muppirala teaches a user device identifier in the data packet and the user device identifier in the data packet would allow for easily readable and useable information about the user device and content to be received by the gateway for further use rather than a need for the gateway to analyze or gather information in some other manner.
. Regarding Claim 16, the combination of Ullah, Birch, and Muppirala teaches:
the method of claim 15
Muppirala further teaches:
wherein the data packet is associated with inbound data destined for the user device (see Figures 9-11B, [0032], [0040], and [0048] in which the content is various types of product information, and [0090])
It would be obvious to one of ordinary skill in the art to combine Muppirala with Ullah and Birch because Ullah already teaches user and device identifiers both stored on the advertisement side and identified and sent from the device side in order to match ads to content, and parsing a data packet associated with the content would allow for access to the device identifier even when transmitted in a manner better for content transmittal such as a data packet.
Regarding Claim 18, the combination of Ullah, Birch, and Muppirala teaches:
the method of claim 15
Ullah further teaches:
wherein determining the proximity of the user device comprises sending a low energy beacon (see such as [0057] and [0062] in which proximity of user devices is detected using low energy beacon type short range networks such as Bluetooth)
Regarding Claim 19, the combination of Ullah, Birch, and Muppirala teaches:
the method of claim 15
Birch further teaches:
causing the media device to send the secondary content to the display device (see [0036], [0083], [0103]-[0107], and [0131]-[0138] in which the media device is a set-top box, the display device is a television, and ads for display with the content are obtained by the network gateway, provided to the set-top box, and displayed on the television)
It would be obvious to one of ordinary skill in the art to combine Birch with Ullah and Walden because Ullah already teaches a content stream with content placement opportunities being analyzed via a gateway device for the purpose of ad inclusion and subsequent delivery to a display device, and using a gateway device, media device and separate display device allows for the facilitating of the advertisement placement to be done separately from both the media device and display device, allowing for more efficient communication and for user information to be used for targeting from a content stream by an outside source even if not directly associated with the content stream.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Ullah, Pre-Grant Publication No. 2011/0153429 A1 in view of Birch, et al., Pre-Grant Publication No. 2012/0109755 A1 and in further view of Muppirala, et al., Pre-Grant Publication No. 2015/0112807 A1 and in further view of Escula, et al., Patent No. 11,769,167 B1.
Regarding Claim 17, the combination of Ullah, Birch, and Muppirala teaches:
the method of claim 15
Muppirala further teaches:
wherein determining the user device identifier associated with the data packet comprises determining a destination device of the data packet (see [0090] in which the identifier parsed from the data includes device type, user profile information, and other information regarding the destination device of the content)
It would be obvious to one of ordinary skill in the art to combine Muppirala with Ullah and Birch because Ullah already teaches user and device identifiers both stored on the advertisement side and identified and sent from the device side in order to match ads to content, and identifying the destination device from parsing a data packet associated with the content would allow for access to the device identifier even when transmitted in a manner better for content transmittal such as a data packet.
Ullah, Birch, and Muppirala, however, does not appear to specify:
wherein determining the user device identifier associated with the data packet comprises determining a destination device indicated in the header of the data packet
Esclusa teaches:
wherein determining the user device identifier associated with the data packet comprises determining a destination device indicated in the header of the data packet (see at least Column 10, lines 6-67)
It would be obvious to one of ordinary skill in the art to combine Esclusa with Ullah, Birch, and Murripala because Ullah already teaches user and device identifiers both stored on the advertisement side and identified and sent from the device side in order to match ads to content, and Murripala already teaches identifying the destination device from parsing a data packet associated with the content to allow for access to the device identifier even when transmitted in a manner better for content transmittal such as a data packet, and the identifier in the header as taught by Esclusa would make it readily accessible.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Ullah, Pre-Grant Publication No. 2011/0153429 A1 in view of Birch, et al., Pre-Grant Publication No. 2012/0109755 A1 and in further view of Muppirala, et al., Pre-Grant Publication No. 2015/0112807 A1 and in further view of Malone, Pre-Grant Publication No. 2016/0029048 A1 and in further view of Gardner, et al., Pre-Grant Publication No. 2008/0319852 A1.
Regarding Claim 20, the combination of Ullah, Birch, and Muppirala teaches:
the method of claim 19
Ullah, Birch, and Muppirala, however, does not appear to specify:
causing the display device to overlay the secondary content on the primary content
Gardner teaches:
causing the display device to overlay the secondary content on the primary content (see Figures 1 and 2 and [0027]-[0028])
It would be obvious to one of ordinary skill in the art to combine Gardner with Ullah, Birch, and Murripala because Ullah already teaches users watching television or other content, and having ads inserted into the content, and using an overlay technique would allow for the advertisement to be very visible while still allowing the user to see the main content, especially in such as a sporting event which a lot of users want to see live.
Response to Arguments
Regarding the rejections based on 35 USC 103
Regarding the applicant’s argument on pages 8-10 of the response that Ullah does not teach all the limitations and components in claim 1 but teaches a combination as what is cited in Figure 2:
The examiner points out the following:
The independent claims are methods. Therefore, the claims recite a method or process for performing a set of steps.
The rejection does not use only Ullah, but Ullah, Walden and Birch in combination. Birch is shown to teach the media device outputting the content to the display device in the manner claimed, although technically claim 1 does not even require the media device to be a set-top box and the display device to be a television. This is only required by claim 3.
The combination of Ullah and Birch clearly teach in combination the gateway to be a network gateway, the media device to be a set-top box, the display device to be a television, and the user device to be a mobile device. Again, this is not required by claim 1, only by claim 3.
Ullah at [0058]-[0059] and Figure 2 clearly teaches four separate components- a Mobile device (user device) at #202, a set-top box at #204, a television (display device) at #208, and a server at #210. As will be laid out below, the applicant’s specification, at least when considering claim 1, gives multiple embodiments as to what roles these components can each have alone or in combination when it comes to being the “gateway,” the “media device,” and the “display device.”
The MEDIA DEVICE in [0018] of the filed specification is described as “a demodulator, decoder, frequency tuner, combinations thereof, and the like.”
The GATEWAY in [0022] of the filed specification is described as “e.g. router, modem, a gateway, switch, hub, a network terminal, combinations thereof, and the like.”
In [0032] of the filed specification it is stated that “it should be noted that in some configurations, some or all of the first access point 123, the gateway device 122, the media device 120, the display device 121 may be implemented as a single device.”
In [0048] of the filed specification it is stated that “At 340, the content may be caused to be output via the media device. For example, the gateway device, the set top box, the user device, a content server, or other computing device may cause the content to be output via the media device.”
In [0056] of the filed specification it is stated that “At 440, the second content item may be caused to be output via the media device. For example, the gateway device, the set top box, user device, or other computing device such as a content server may cause the second content item to be output via the media device.” Here the media device is clearly NOT the gateway device, the set top box, or the server.
For claim 1, it is clear from the above citations of the specification and other portions that for at least claim 1, the “gateway device,” the “media device,” and the “display device” can be interpreted to include multiple options which can be both all individual components or components that perform these roles in combination. For example, having an integrated set top box and router/modem or integrated television and set top box is well known in the communication arts. More importantly, the combination of Ullah and Birch seems well-supported in light of the above citations from the filed specification.
Regarding the applicant’s argument on pages 10-11 of the response that the motivation to combine the references is not supported:
The applicant seems to point to [0116] of Ullah as not sufficient. But that was a secondary rationale by the examiner just to generally point out that data packets can be used by the system of Ullah. The main point, as already stated in the motivation to combine, is that the use of data packets “would allow for easily readable and useable information about the output content to be received by the gateway for further use….” The applicant seems to be saying that there should be some explicit explanation of HOW the references would be combined. But the examiner points out that in this case Ullah ALREADY uses data to perform the same function as that of the claimed invention, namely it receives data at the gateway device at a premises associated with content being output on a user device, and then it sends a request for secondary content based on the data and other factors. The data is just not in the form of a data PACKET. But, this is not a chemical or mechanical application, in which an examiner might say it is obvious to add an additional compound or another apparatus onto an existing one, but there is a clear need to show how it would be obvious to combine the two elements. In this case, both DATA and DATA PACKETS are commonly used by gateway devices, servers, processors, etc. for gather information to be used in advertisement targeting decisions and requests. The use of a data packet versus data does not seem to need an explicit new and not already somewhat obvious rationale for combination. Therefore, the examiner explained that the use of a data PACKET would allow for easily readable and useable information about the output content to be received by the gateway for further use.
In many situations there is neither a motivation or evident lack of motivation to make a modification articulated in cited references. Numerous scenarios typically find the prior art reference disclosing aspects of claimed subject matter, but fail to specifically point the way toward the combination to arrive at Applicant’s invention. A judgment must be made whether a person of ordinary skill in the art would have had sufficient motivation to combine individual elements forming the claimed invention, as in this particular situation. In re Clinton, 527 F.2d 1226, 1228, 188 USPQ 365, 367 (CCPA 1976).
A suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art, as the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references. . . . The test for an implicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art. In re Leonard R. Kahn (CAFC, 04-1616, 3/22/2006).
KSR forecloses the argument that a specific teaching is required for a finding of obviousness (citing KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396). See Board decision Ex parte Smith, --USPQ2d--, slip op. at 20, (Bd. Pat. App. & Interf. June 25, 2007).
"It must be presumed that the artisan knows something about the art apart from what the references disclose. In re Jacoby, 309 F.2d 513, 135 USPQ 317 (CCPA 1962). The problem cannot be approached on the basis that artisans would only know what they read in references; such artisans must be presumed to know something about the art apart from what the references disclose. In re Jacoby. Also, the conclusion of obviousness may be made from common knowledge and common sense of a person of ordinary skill in the art without any specific hint of suggestion a particular reference. In re Bozek, 416 F.2d 1385, USPQ 545 (CCPA 1969). And, every reference relies to some extent on knowledge or persons skilled in the art to complement that which is disclosed therein. In re Bode, 550 F.2d 656, USPQ 12 (CCPA 1977)."
Therefore, the arguments are not persuasive and the rejection is sustained.
All other arguments have been considered in light of the applicant’s amendments to the claims but are MOOT in light of the new grounds of rejection necessitated by the applicant’s amendments.
Conclusion
Applicant amendment(s) necessitated any new grounds of rejection set forth in this Office Action. Therefore, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Luis A. Brown whose telephone number is 571.270.1394. The Examiner can normally be reached on Monday-Friday 8:30am-5:00pm EST. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, JESSICA LEMIEUX can be reached at 571.270.3445.
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/LUIS A BROWN/ Primary Examiner, Art Unit 3626
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