Ex Parte Bouve et al

Board of Patent Appeals and Interferences

May 30, 2012

10186537 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LINCOLN W. BOUVE, WILLIAM T. SEMPLE, and
STEVEN W. OXMAN
____________________

Appeal No. 2010-009466
Application No. 10/186,5371
Technology Center 2100
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Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Civix-DDI LLC.
Appeal No. 2010-009466
Application No. 10/186,537

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 92-94, 96, 97, 116, 124, 126, 159-161, 164-169, 171, 175-179, 181,
and 183.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ invention concerns a method for advertising over the
Internet. The method includes receiving at a database a request from one of
a plurality of ports, the request containing at least one user-selected category
and a user-selected geographic vicinity. The database determines a response
defining locations of a plurality of items of interest within the geographic
vicinity and based on the user-selected category. The database further
determines a plurality of advertisements to be included with the response.
The database then transmits, at least in part through the Internet, the
response to the port for graphical display at the port (Spec. 7, 9, 13).
Claim 92 is exemplary of the claims on appeal:
92. A method for advertising over the Internet,
comprising:
at a database, receiving at least in part through the
Internet, a request from one of a plurality of ports remotely
located from the database, the request containing (a) at least one
user-selected category and (b) a user-selected geographic
vicinity;
determining, at the database, a response to the request,
the response defining locations of a plurality of items of interest
within the user-selected geographic vicinity and based upon the
at least one user-selected category;

2 Claims 1-91, 95, 98-115, 117-123, 125, 127-158, 162, 163, 170, 172-174,
and 180 have been cancelled; claim 182 has been ruled by the Examiner to
contain allowable subject matter.
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Application No. 10/186,537

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determining, at the database, a plurality of advertisements
in response to the request the plurality of advertisements being
included within the response; and
from the database, transmitting, at least in part through
the Internet, the response to the port for graphical display at the
port wherein at least part of the graphical display is selectable
by the user.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Keithley US 5,584,025 Dec. 10, 1996
Bellesfield US 6,282,489 B1 Aug. 28, 2001
Claims 92-94, 96, 97, 116, 124, 126, 159-161, 164-169, 171,175-179,
181, and 183 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bellesfield in view of Keithley.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed January 6, 2010), the Reply Brief (“Reply Br.,” filed May
27, 2010), and the Examiner’s Answer (“Ans.,” mailed March 31, 2010) for
their respective details.
ISSUE
Appellants argue, inter alia, that neither Bellesfield nor Keithley
teaches or suggests transmission of advertising data at least partially through
the Internet, as the claims require (App. Br. 10).
Appellants’ contentions present us with the following issue:
Does the combination of Bellesfield and Keithley teach or suggest a
method of advertising over the Internet, receiving a request at a database at
least in part through the Internet, and transmitting a response to the request
from the database at least in part through the Internet?
Appeal No. 2010-009466
Application No. 10/186,537

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PRINCIPLES OF LAW
Section 103(a) 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. of Kansas City, 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.”).
ANALYSIS
Claim 92, the sole independent claim under appeal, recites a method
for advertising over the Internet, including receiving a request at least in part
through the Internet, and transmitting the response at least in part through
the Internet.
The Examiner finds that Keithley teaches “communication means,
said communication means enabling said server to interact with remote
terminals. Therefore, Keithley teaches Internet as claimed” (Ans. 10-11).
We disagree with the Examiner’s finding. The Examiner’s statement plainly
fails to support a conclusion that Keithley teaches communication over the
Internet. We have further reviewed Keithley and Bellesfield and find that no
Internet connection or communication is disclosed.
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Application No. 10/186,537

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The Examiner further finds that Appellants’ Specification describes a
large number of communications links, as well as communication over the
Internet (Ans. 11-12). From this, the Examiner concludes that “it is clear
that the specification is not limited to only Internet,” that the system is
similar to Bellesfield and Keithley, and that therefore it would have been
obvious to combine Bellesfield and Keithley to arrive at the invention under
appeal (Ans. 12). To the extent the Examiner reasons that the presence of
other examples in Appellants’ Specification means that the Examiner may
ignore the explicit recitation of the Internet in the claims, the Examiner’s
conclusion is erroneous.
We conclude that the Examiner erred in rejecting claims 92-94, 96,
97, 116, 124, 126, 159-161, 164-169, 171, 175-179, 181, and 183 under
§ 103 as being unpatentable over Bellesfield in view of Keithley. We will
not sustain the Examiner’s rejection.
CONCLUSIONS
The combination of Bellesfield and Keithley does not teach or suggest
a method of advertising over the Internet, receiving a request at a database at
least in part through the Internet, and transmitting a response to the request
from the database at least in part through the Internet.
ORDER
The Examiner’s rejection of claims 92-94, 96, 97, 116, 124, 126, 159-
161, 164-169, 171, 175-179, 181, and 183 is reversed.

REVERSED

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