Ex Parte Cleland et alDownload PDFPatent Trial and Appeal BoardSep 18, 201411827422 (P.T.A.B. Sep. 18, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TODD A. CLELAND and DARRYL GREIG ____________ Appeal 2012-003870 Application 11/827,422 Technology Center 2400 ____________ Before JEAN R. HOMERE, BRUCE R. WINSOR, and NATHAN A. ENGELS, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1–7 and 9–20, which constitute all the claims pending in this application. Claim 8 is cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest identified by Appellants is Hewlett-Packard Development Company, LP, a wholly-owned affiliate of Hewlett-Packard Company, and having HPQ Holdings, LLC, as its general or managing partner. (App. Br. 2.) Appeal 2012-003870 Application 11/827,422 2 STATEMENT OF THE CASE Appellants’ disclosure relates to the pricing of advertising displayed on a video display disposed in an advertising venue. (Abstract.) Claim 19, which is illustrative, reads as follows: 19. A system of providing advertising comprising: an electronic video display at an advertising venue; a sensor configured to detect orientation of faces of a number of people with respect to said electronic video display; a central processing element configured to determine attentiveness of said people based on the orientation of said faces, and a database that stores information regarding the attentiveness of a number of people in said audience, in which, if said central processing element determines that said people are inattentive, displaying different content, and in which an advertiser is charged an additional price for access to said information regarding the attentiveness of a number of people in said audience. The Examiner relies on the following prior art in rejecting the claims: Waters US 2002/0008626 A1 Jan. 24. 2002 Weisberg US 6,351,736 B1 Feb. 26, 2002 Giraud US 2002/0184098 A1 Dec. 5, 2002 Parry US 2003/0041005 A1 Feb. 27, 2003 Agostinelli US 2003/0088832 A1 May 8, 2003 Jain US 2007/0050251 A1 Mar. 1, 2007 Collins US 7,636,456 B2 Dec. 22, 2009 (filed Jan. 21, 2005) Claim 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Collins and Weisberg. (Ans. 5–7.) Claims 1–4 and 7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Agostinelli, Jain, Collins, and Weisberg. (Ans. 7–11.) Appeal 2012-003870 Application 11/827,422 3 Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Agostinelli, Jain, Collins, Weisberg, and Giraud. (Ans. 11–12.) Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Agostinelli, Jain, Collins, Weisberg, and Parry. (Ans. 12– 13.) Claims 11, 12, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Agostinelli and Weisberg. (Ans. 13–15.) Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Agostinelli, Weisberg, and Giraud. (Ans. 15–17.) Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Agostinelli, Weisberg, and Jain. (Ans. 17–18.) Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Agostinelli, Weisberg, Jain, and Waters. (Ans. 18–19.) Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Agostinelli, Weisberg, and Parry. (Ans. 19–20.) Rather than repeat the arguments here, we refer to the Briefs (“App. Br.” filed July 20, 2011; “Reply Br.” filed Dec. 21, 2011) and the Answer (“Ans.” mailed Oct. 21, 2011) for the respective positions of Appellants and the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). ISSUE(S) The issues presented by Appellants’ arguments are as follows: Appeal 2012-003870 Application 11/827,422 4 Does Weisberg, in combination with Collins, teach or suggest “an advertiser is charged an additional price for access to said information regarding the attentiveness of a number of people in said audience,” as recited in claim 19? Does Weisberg, in combination with Agostinelli, Jain, and Collins, teach or suggest “said pricing for said advertising is based on an advertiser's access to said information regarding said audience,” as recited in claim 1? Does Weisberg, in combination with Agostinelli, teach or suggest “charging an advertiser for access to said audience data,” as recited in claim 11? 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). “[T]he [obviousness] 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. at 418. “The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents.” Id. at 419. “A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning. Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” Appeal 2012-003870 Application 11/827,422 5 Id. at 421 (citation omitted). “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. “[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). “[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.” Id. at 426. “[I]t is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). ANALYSIS Although Appellants argue the patentability of claims 19, 1, and 11 separately, the argued limitations are similar and the arguments presented are substantially the same (compare App. Br. 11–14 (claim 19) with App. Br. 14–16 (claim 1) with App. Br. 17–19 (claim 11); compare Reply Br. 5–8 with Reply Br. 8–10 with Reply Br. 11–13). Therefore, we discuss the appeal by reference to the arguments made regarding claim 19. The Examiner relies on Weisberg to teach or suggest “an advertiser is charged an additional price for access to said information regarding the attentiveness of a number of people in said audience.” (See Ans. 7 (citing Weisberg col. 7, ll. 31–40).) The cited passage of Weisberg teaches as follows: Revenue is then preferably collected according to the step of displaying the advertisement. For example, the revenue could be charged to the provider of the advertisement, such as a Appeal 2012-003870 Application 11/827,422 6 merchant for example, according to the number of times that the advertisement is displayed, the frequency of the rate of the display, characteristics of the user viewing the display such as demographic data about the age of the user and so forth, the collected statistic(s), and/or the type of media in which the advertisement is displayed. (Weisberg col. 7, ll. 31–40.) The Examiner explains that one of ordinary skill in the art, reading Weisberg’s teaching, would infer that if an advertiser is being charged for an advertisement based on information such as demographic data and collected statistics, the advertiser would have access to the information that forms the basis of the charge. (See Ans. 21). Appellants contend as follows: Weisberg simply teaches that a fee is charged based on the characteristics (e.g., demographics such as age) of the people who are viewing the advertisement. Weisberg is silent regarding actual provision of demographics or statistical information to an advertiser, and is further silent regarding pricing the advertising based on the advertiser's access to the information regarding the audience. This subject matter is simply not taught or suggested by Weisberg. (App. Br. 12.) We agree with the Examiner. We note that the “additional price” is the only price recited by claim 19, so we conclude “an additional price” equates to “a price,” because it is not recited by claim 19 to be added to any other price. (See Ans. 21.) We find, as did the Examiner (Ans. 7, 21), that one of ordinary skill in the art would have understood that, in the normal course of business, the charge of a fee for the display of advertising, indeed the charge of virtually any fee, would be accompanied by the information upon which the charge is based. Such an understanding requires no more than simple common sense. Appeal 2012-003870 Application 11/827,422 7 See KSR, 550 U.S. at 421. We therefore find one of ordinary skill in the art would have inferred from the teaching of Weisberg, quoted supra, that the charging of the revenue based on, e.g., demographic data and collected statistics, also provides access to the demographic data and collected statistics. Therefore, the charged revenue is for both the advertising as well as access to the demographic data and collected statistics. See KSR, 550 U.S. at 418; Preda, 401 F.2d at 826. We are, therefore, unpersuaded that “[t]he differences between the cited references and the indicated claims are significant because the recitations of claim 19 provide for increased economic gain from advertising as well as an opportunity for the advertiser to evaluate the effectiveness of the advertising content as compared with a target demographic” (Reply Br. 8). Appellants argue that Weisberg’s collected statistics are different from the collected statistics, i.e., “attentiveness of a number of people in said audience,” recited in claim 19. (App. Br. 12–13 (citing Weisberg col. 7, ll. 41–47).) We are unpersuaded of error, because the Examiner relies on Collins, not Weisberg, to teach the nature of the collected statistics (see Ans. 6 (citing Collins col. 4, ll. 12–34; col. 5, ll. 11–14; col. 6, ll. 30–59; col. 8, ll. 29–36; col. 11, ll. 47–50; Fig. 10)). See Keller, 642 F.2d at 426. Accordingly, we sustain the rejections over various combinations of Weisberg with Collins, Agostinelli, Jain, Giraud, Parry, and Waters, of (1) claim 19; (2) independent claims 1 and 11, which are argued on substantially the same bases as claim 19 (see App. Br. 14–19; Reply Br. 8–13); and (3) claims 2–7, 9, 10, 12–18, and 20, which depend, directly or indirectly, from claim 1 or 11, and are argued relying on the arguments made for claims 1 and 11 (App. Br. 14, 17, 19–20; Reply Br. 8, 10–11, 13). Appeal 2012-003870 Application 11/827,422 8 ORDER The decision of the Examiner to reject claims 1–7 and 9–20 is affirmed.2 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). See 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED tj 2 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014. Copy with citationCopy as parenthetical citation