Ex Parte Barsade et al

Board of Patent Appeals and Interferences

Apr 30, 2009

09867223 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JONATHAN BARSADE,
STEVEN Y. CHO,
and
ADAM ZELL
____________

Appeal 2009-0419
Application 09/867,223
Technology Center 3600
____________

Decided:1 April 30, 2009
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0419
Application 09/867,223

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-42. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed to a banner ad which is
viewed between requested web pages, i.e., it is viewed during the time
period in which a first web page is being removed from a browser window
and a requested second web page is being downloaded onto a computer and
ready for viewing in the browser window (Spec. 3:26-29). Claim 1,
reproduced below, is representative of the subject matter of appeal.

1. A method of providing to a user computer
connected to a network an advertisement for a
network browser session, the method comprising
the steps of:

a) requesting a new network data stream for
display in the first network browser session;

b) serving up to a second network browser session
an advertisement data stream previously stored in
the memory of the user computer connected to the
network thereby forming an advertisement;

c) downloading to the user computer, from a server
on the network, the requested new network data
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stream which is viewable in the first network
browser session;
wherein, the advertisement is served up
while the new network data stream is being
downloaded to the user computer and in
association with a displayable status indicator of
the concurrent downloading activity of the new
network data stream, the advertisement data stream
was downloaded onto the memory of the user
computer prior to the step of requesting a new
network data stream, and the first and second
network browser sessions are the same session or
different sessions.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Slotznick US 6,011,537 Jan. 4, 2000
Slotznick US 6,609,146 B1 Aug. 19, 2003

The following rejections are before us for review:
1. Claims 1-42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Slotznick ‘537 in view of Slotznick ‘146.

THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejection of the claims.
This issue turns first with regard to claims 1-42 on whether it would
have been obvious to combine Slotznick ‘537 and Slotznick ‘146 under 35
U.S.C. § 103(a) to have the advertisement “served up…in association with a
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displayable status indicator of the concurrent downloading activity of the
new network data stream.”
This issue turns second with regards to claims 31-42 on whether the
combination of Slotznick ‘537 and Slotznick ‘146 under 35 U.S.C. § 103(a)
discloses a “banner activation code.”

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Slotznick ‘537 discloses displaying secondary information or a
banner image in place of the primary requested information during the delay
period which occurs upon request by the user of subsequent primary
information or upon direct request by the user of the full secondary
information (Col. 25:32-Col. 26:4).
FF2. Slotznick ‘537 discloses that a “page” is downloaded and may
contain primary and secondary data. The page may contain software (in any
form, language or code), programs, and scripts (Col. 8:44-63).
FF3. Slotznick ‘537 discloses that primary data is the virtual page
(Col. 9:66-10:5) and that the secondary information may include
advertisements such as banner ads on the Internet (Col. 24:35-38).
FF4. Slotznick ‘537 discloses that the secondary information is
contained in the primary information (Col. 9:66-10:5).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF5. Slotznick ‘146 discloses that some programs post estimated
processing times (particularly for downloads which can take hours) (Col.
4:23-25).
FF6. Slotznick ‘146 discloses that instead of blocking all
advertisements, the device may selectively block or filter information (Col.
5:13-15).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415-16, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 550 U.S. at 415, (citing Graham, 383 U.S.
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at 12 (emphasis added)), and reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
Arguments Concerning the Failure to Disclose Advertisements
Shown in Association with Status Indicator

The Appellants argue that the rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over Slotznick ‘537 in view of Slotznick ‘146 is
improper. Claim 1 includes the limitation that the advertisement is “served
up…in association with a displayable status indicator of the concurrent
downloading activity of the new network data stream.” The Appellant
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argues that while Slotznick ‘146 provides for some programs an estimate of
the processing time, there is no suggestion of this processing time being
shown in association with an advertisement (Br. 5). Further, the Appellants
argue that Slotznick ‘146 teaches away from displaying an advertisement
during processing by discussing blocking interstitial advertisements (Br. 5-6)
In contrast the Examiner has determined that the combination of
Slotznick ‘537 in view of Slotznick ‘146 discloses all the claimed limitations
of claim 1 and that it would have been obvious to combine the references to
inform the user of the download times (Ans. 3-4). The Examiner argues that
the Appellants’ arguments of nonobviousness presented in the Appeal Brief
have been made only by attacking the references individually (Ans. 8).
We agree with the Examiner. Slotznick ‘537 discloses displaying
secondary information or a banner image in place of the primary requested
information during the delay period which occurs upon request by the user
of subsequent primary information (FF1) and the Appellants have not
disputed this. Slotznick ‘146 discloses posting estimated processing times
during downloads (FF5).
The Appellants argued that Slotznick ‘537 and Slotznick ‘146 should
not be combined because Slotznick ‘146 teaches blocking advertisements
but we do not find this convincing. Slotznick ‘146 discloses that not all
advertisements may be blocked since this blockage can be done selectively
(FF6). Regardless, Slotznick ‘146 has been used in the rejection only as a
teaching that the display of estimated processing times was known in the art,
and the Appellants have attacked the references individually rather than
address the combined teachings. It is improper to attack references
individually where, as here, the obviousness rejection is based on their
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combined teachings. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413, 425-26 (CCPA 1981).
The modification of the system of Slotznick ‘537 to include posting
estimated processing times as disclosed by Slotznick ‘146 is an obvious and
predictable use of prior art elements according to their established functions
to enable the user to determine how much time is left before the download is
complete. For these reasons the Appellants’ arguments to show error in the
rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Slotznick
‘537 in view of Slotznick ‘146 are not persuasive. The Appellants have
presented these same arguments for claims 2-42 and error is not found for
the rejection of these claims in this regard for the same reasons given above.

Arguments Concerning the Failure to Disclose a
Banner Ad Activation Code

The Appellants argue that the rejection of claims 31-42 under 35
U.S.C. § 103(a) as unpatentable over Slotznick ‘537 in view of Slotznick
‘146 is improper because the references fail to disclose the claimed
limitations for a “BA activation code” (which refers to a “banner ad
activation code”). The Appellants also argue that Slotznick ‘537 fails to
disclose that two requests are made to obtain a web page with an
advertisement: first, a request for a data stream and a BA activation code,
and second, that the BA activation code initiate a request for the
advertisement (Reply Br. 3-4).
In contrast the Examiner has determined that Slotznick ‘537 discloses
such a “banner activation code” by disclosing 1) that the page includes
“software (in any form, language or code)” and “any data encoded or
compressed form” and 2) that secondary information (including
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advertisements) is contained in the primary information (or primary data or
virtual page) (Ans. 9-10). The Examiner has determined that Slotznick
discloses that the primary information includes code embedded in the page
which provides for the request of secondary information (the banner ad).
We agree with the Examiner. Slotznick ‘537 discloses that a webpage
or “page” contains primary and secondary data and may contain software (in
any form, language or code), programs, and scripts (FF2). Slotznick ‘537
also discloses that the secondary information may include advertisements
such as banner ads on the Internet (FF3). Thus, Slotznick discloses that
banner ads (FF3) (which are secondary information) have codes or scripts
(FF2) which must serve as “banner ad activation codes” since codes or
scripts would be required to display or “activate” the banner ads on the
webpage. Slotznick ‘537 requires a first request for a web page which
would generate and a second request for information for the banner ad
content from an appropriate server. For these reasons the arguments made
by the Appellant to show error in the rejection of claims 31-42 under 35
U.S.C. § 103(a) as unpatentable over Slotznick ‘537 in view of Slotznick
‘146 are not persuasive.

CONCLUSIONS OF LAW
We conclude that Appellants have failed to show that the Examiner
erred in rejecting claims 1-42 under 35 U.S.C. § 103(a) as unpatentable over
Slotznick ‘537 in view of Slotznick ‘146.
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DECISON
The Examiner’s rejection of claims 1-42 is affirmed.
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) (2007).

AFFIRMED

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