Ex Parte Addante

Board of Patent Appeals and Interferences

Jan 27, 2009

09851029 (B.P.A.I. Jan. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte FRANK ADDANTE 8
___________ 9
10
Appeal 2008-4617 11
Application 09/851,029 12
Technology Center 1700 13
___________ 14
15
Decided: January 28, 2009 16
___________ 17
18
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. 19
FETTING, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
26
STATEMENT OF THE CASE 27
Frank Addante (Appellant) seeks review under 35 U.S.C. § 134 of a 28
Final Rejection of claims 1-88, the only claims pending in the application on 29
appeal. 30
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 31
(2002).32
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Application 09/851,029

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We AFFIRM-IN-PART. 1
The Appellant invented a way of digital advertising via computer 2
networks, for monitoring and recording transactions of a user who is 3
redirected to a transaction site after selecting an advertisement (Specification 4
1:14-18). 5
An understanding of the invention can be derived from a reading of 6
exemplary claim 1, which is reproduced below [bracketed matter and some 7
paragraphing added]. 8
1. A computer network comprising: 9
[1] a user node to provide a request to perform a transaction and 10
a request to record the transaction; 11
[2] a transaction node to receive the request to perform the 12
transaction, to perform the transaction in response, and to 13
provide a transaction confirmation to the user node, the 14
transaction confirmation including a command to record the 15
transaction; and 16
[3] a monitor node to receive the request to record the 17
transaction provided by the user node in response to the 18
command to record the transaction, and to record the 19
transaction in response to the request to record the transaction. 20
21
This appeal arises from the Examiner’s Final Rejection, mailed May 22
30, 2006. The Appellant filed an Appeal Brief in support of the appeal on 23
July 2, 2007. An Examiner’s Answer to the Appeal Brief was mailed on 24
October 18, 2007. A Reply Brief was filed on December 14, 2007. 25
26
PRIOR ART 27
The Examiner relies upon the following prior art: 28
Davis US 5,796,952 Aug. 18, 1998 29
Messer WO 98/57285 Dec. 17, 1998 30
Angles US 5,933,811 Aug. 3, 1999 31
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REJECTIONS 1
Claims 1-12, 14, 16, 18-30, 33-52, 55-62, 64-78, 80-83, and 85-87 2
stand rejected under 35 U.S.C. § 102(b) as anticipated by Messer. 3
Claims 13, 15, 17, 31, 32, 53, 54, 63, 79, and 84 stand rejected under 4
35 U.S.C. § 103(a) as unpatentable over Messer and Angles. 5
Claim 88 stands rejected under 35 U.S.C. § 103(a) as unpatentable 6
over Messer and Davis. 7
8
ISSUES 9
The issues pertinent to this appeal are 10
• Whether the Appellant has sustained its burden of showing that the 11
Examiner erred in rejecting claims 1-12, 14, 16, 18-30, 33-52, 55-62, 12
64-78, 80-83, and 85-87 under 35 U.S.C. § 102(b) as anticipated by 13
Messer. 14
• Whether the Appellant has sustained its burden of showing that the 15
Examiner erred in rejecting claims 13, 15, 17, 31, 32, 53, 54, 63, 79, 16
and 84 under 35 U.S.C. § 103(a) as unpatentable over Messer and 17
Angles. 18
• Whether the Appellant has sustained its burden of showing that the 19
Examiner erred in rejecting claim 88 under 35 U.S.C. § 103(a) as 20
unpatentable over Messer and Davis. 21
The pertinent issue turns on whether Messer describes a user node that 22
provides a request to record the transaction and a monitor node to record the 23
transaction in response to the request to record the transaction. 24
25
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to 2
be supported by a preponderance of the evidence. 3
Messer 4
01. Messer is directed to a referral tracking and control system for 5
promoting goods and services on a wide area, public/private 6
access network, such as the Internet (Messer 1:5-7). 7
02. Messer describes transactions that occur between a Site Owner 8
server and Merchant server via a Clearinghouse server (Messer 9
7:6-25). 10
03. Messer’s Clearinghouse server is programmed to communicate 11
with the Merchants and Site Owner to facilitate the tracking and 12
accounting associated with the successful Merchant based 13
transactions (Messer 7:25-28). 14
04. In operation, when Messer’s USER selects a banner ad, the site 15
program inputs onto the USER command line the address for the 16
Clearinghouse. Accordingly, USER access is directed to the 17
Clearinghouse server, wherein the Clearinghouse server first 18
stores several pieces of information, such as a site (ID), banner 19
(ID), and USER (X). Immediately thereafter the Clearinghouse 20
server places onto the USER command line, the address for the 21
Merchant (HT'I'P) directing USER control to the Merchant's web 22
page. Information about the product described in the banner ad is 23
now displayed to the USER including the procedure for 24
purchasing the product (Messer 13: 24-36). 25
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05. Messer’s USER has the option of purchasing the product 1
advertised in the banner ad. If the USER does not make a 2
purchase, a cookie is placed on the USER by the Merchant server. 3
This cookie is tracked by the Merchant server if a subsequent 4
purchase is made. If the USER makes the purchase, information 5
relating to the purchase and the USER are transferred back to the 6
Clearinghouse server. Sales particulars including all co-7
promotion and commission payment are then calculated at the 8
Clearinghouse server. After information is received about the 9
purchase at the Clearinghouse server, a commission determination 10
is calculated. Once these terms have been implemented, final 11
accounting for the Merchant and Site Owner is implemented on 12
the Clearinghouse server, including payment of commission and 13
recording all transaction details. In this way, valuable records 14
detailing the activity of select banners in terms of revenue are 15
created on the Clearinghouse server (Messer 14:1-20). 16
Angles 17
06. Angles is directed to delivering customized advertisements 18
within interactive communications systems (Angeles 1:9-12). 19
Davis 20
07. Davis is directed to monitoring client use of and interaction 21
with a resource downloaded from a server on a computer network, 22
storing monitored data, creating a database including profiles 23
indexed by user and/or resource identity, and generating 24
customized resources based upon client profiles (Davis 1:8-13). 25
Facts Related To The Level Of Skill In The Art 26
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08. Neither the Examiner nor the Appellant has addressed the level 1
of ordinary skill in the pertinent arts of systems analysis and 2
programming, ecommerce transaction systems, and we will 3
therefore consider the cited prior art as representative of the level 4
of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 5
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings 6
on the level of skill in the art does not give rise to reversible error 7
‘where the prior art itself reflects an appropriate level and a need 8
for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. 9
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 10
Facts Related To Secondary Considerations 11
09. There is no evidence on record of secondary considerations of 12
non-obviousness for our consideration. 13
14
PRINCIPLES OF LAW 15
Claim Construction 16
During examination of a patent application, pending claims are 17
given their broadest reasonable construction consistent with the 18
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 19
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). 20
Limitations appearing in the specification but not recited in the claim 21
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 22
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 23
specification” without importing limitations from the specification into the 24
claims unnecessarily). 25
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Although a patent applicant is entitled to be his or her own 1
lexicographer of patent claim terms, in ex parte prosecution it must be 2
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 3
must do so by placing such definitions in the specification with sufficient 4
clarity to provide a person of ordinary skill in the art with clear and precise 5
notice of the meaning that is to be construed. See also In re Paulsen, 30 6
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 7
specific terms used to describe the invention, this must be done with 8
reasonable clarity, deliberateness, and precision; where an inventor chooses 9
to give terms uncommon meanings, the inventor must set out any 10
uncommon definition in some manner within the patent disclosure so as to 11
give one of ordinary skill in the art notice of the change). 12
Anticipation 13
"A claim is anticipated only if each and every element as set forth in 14
the claim is found, either expressly or inherently described, in a single prior 15
art reference." Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 16
(Fed. Cir. 1987). "When a claim covers several structures or compositions, 17
either generically or as alternatives, the claim is deemed anticipated if any of 18
the structures or compositions within the scope of the claim is known in the 19
prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). "The 20
identical invention must be shown in as complete detail as is contained in the 21
... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 22
1989). The elements must be arranged as required by the claim, but this is 23
not an ipsissimis verbis test, i.e., identity of terminology is not required. In 24
re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 25
Obviousness 26
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A claimed invention is unpatentable if the differences between it and 1
the prior art are “such that the subject matter as a whole would have been 2
obvious at the time the invention was made to a person having ordinary skill 3
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l Co. v. Teleflex Inc., 127 S. 4
Ct. 1727, 1729-30 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 5
(1966). 6
In Graham, the Court held that the obviousness analysis is bottomed 7
on several basic factual inquiries: “[(1)] the scope and content of the prior art 8
are to be determined; [(2)] differences between the prior art and the claims at 9
issue are to be ascertained; and [(3)] the level of ordinary skill in the 10
pertinent art resolved.” 383 U.S. at 17. See also KSR, 127 S. Ct. at 1734. 11
“The combination of familiar elements according to known methods is likely 12
to be obvious when it does no more than yield predictable results.” Id. at 13
1739. 14
“When a work is available in one field of endeavor, design incentives 15
and other market forces can prompt variations of it, either in the same field 16
or a different one. If a person of ordinary skill can implement a predictable 17
variation, § 103 likely bars its patentability.” Id. at 1740. 18
“For the same reason, if a technique has been used to improve one 19
device, and a person of ordinary skill in the art would recognize that it would 20
improve similar devices in the same way, using the technique is obvious 21
unless its actual application is beyond his or her skill.” Id. 22
“Under the correct analysis, any need or problem known in the field 23
of endeavor at the time of invention and addressed by the patent can provide 24
a reason for combining the elements in the manner claimed.” Id. at 1742. 25
26
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ANALYSIS 1
Claims 1-12, 14, 16, 18-30, 33-52, 55-62, 64-78, 80-83, and 85-87 rejected 2
under 35 U.S.C. § 102(b) as anticipated by Messer. 3
The Appellant argues these claims in two groups, viz., a group 4
consisting of claims 1-12, 14, 16, 18-30, 33-52, 55-62, and 64-77 and a 5
second group consisting of claims 78, 80-83, and 85-87. Accordingly, we 6
select claims 1 and 78 as representative of the groups. 7
37 C.F.R. § 41.37(c)(1)(vii) (2007). 8
The Examiner found that Messer anticipated claim 1 (Answer 3). 9
The Appellant contends that Messer does not describe a request from 10
a user node to record the transaction, or a transaction confirmation including 11
a command to record the transaction as required by the claims (Br. 5: First 12
full ¶). The Appellant contends that when Messer’s user makes a purchase, 13
the merchant site can track the purchase, and a clearinghouse server can 14
calculate various data (Br. 5: Second full ¶), but there is no suggestion that 15
any information is recorded based on a specific request from a user node to 16
record the transaction as required by the claims (Br. 9:Third ¶, beginning 17
“However”). 18
We disagree with the Appellant. 19
Initially we map Messer’s structure to the claim. Messer’s Site Owner 20
server corresponds to the claimed user node. Messer’s Merchant server 21
corresponds to the claimed transaction node. Messer’s Clearinghouse server 22
corresponds to the claimed monitor node (FF 03). 23
Next we describe Messer’s transaction flow. Messer’s transaction 24
begins when a user selects a banner ad, which passes a message to Messer’s 25
Clearinghouse server, which then passes a message to Messer’s Merchant 26
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server (FF 04). If a user purchases the product in a banner ad, a message 1
passes back to Messer’s Clearinghouse server with purchase information, 2
where transaction details are recorded (FF 05). Thus, the Clearinghouse 3
server stores information only after the Site Owner server and Merchant 4
server both pass messages to the Clearinghouse server. 5
Messer’s Site Owner, corresponding to the claimed user node, thus 6
provides a request to perform a transaction. The transaction requested is that 7
of the entire process flow described by Messer. Messer’s Merchant server, 8
the transaction node, receives the request to perform the transaction, 9
performs the transaction in response, and provides a transaction 10
confirmation to the user node via the Clearinghouse server. This message 11
passed from the Merchant to the Clearinghouse includes a command to 12
record the transaction. Messer’s Clearinghouse server, the monitor node, 13
receives the request to record the transaction and records the transaction. 14
The issues are then whether Messer’s Site Owner server provides a 15
request to perform a transaction and a request to record a transaction; 16
whether Messer’s Clearinghouse server receipt of the request to record the 17
transaction provided by the user node is in response to the command to 18
record the transaction; and whether Messer’s Clearinghouse server records 19
the transaction in response to the request to record the transaction. 20
Clearly the selection of Messer’s ad banner is a request to perform the 21
transaction that the ad banner is designed to promote. At the time of ad 22
banner selection, it is as yet unknown whether there will be a transaction to 23
record. But when a transaction is executed at the Merchant server, it is as a 24
result of the messages passed from the Site Owner and Clearinghouse 25
servers. Thus, when the Merchant site passes a message to the 26
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Clearinghouse server to record a transaction, that message is the result of the 1
original selection of a banner ad from the Site Owner server. 2
Limitation [1] of claim 1 requires that this request to record a 3
transaction be provided by the user node. There is no further limitation on 4
the mechanism of such provision. Limitation [1] does not require, in 5
particular, that the message that ultimately contains the request be itself 6
generated by the user node. It is sufficient for the act of providing that the 7
message causally result from some structure of or activity by the user node. 8
Because the message to record the transaction results from the selection of 9
the banner ad leading to the purchase, this message is provided by the 10
actions on the user node and therefore is provided by the user node. 11
Alternatively, a message to record the transaction is implicitly 12
contained within the transaction requesting the transaction by operation of 13
Messer’s process flow. The fact the message to record as a separate entity is 14
instantiated on a different server does not negate the original implicit 15
message to record within the message to perform at the time of the ad 16
selection by virtue of the operation of Messer’s system. 17
As to the second issue, Messer’s Clearinghouse server’s receipt of the 18
request to record the transaction is in response to the messages from the Site 19
Owner server to Clearinghouse server, Clearinghouse server to Merchant 20
server, and Merchant server back to Clearinghouse server, and is thus in 21
response to the command to record the transaction provided by the banner ad 22
selection as discussed supra. 23
As to the third issue, Messer’s Clearinghouse server receives the 24
transaction in response to the command now coming from the Merchant 25
server to record the transaction, and records the transaction. This 26
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recordation is in response to the original triggering of the transaction, viz., 1
selection of the ad banner, because the entire process flow is in response to 2
that trigger. 3
The Appellant has not sustained its burden of showing that the 4
Examiner erred in rejecting claims 1-12, 14, 16, 18-30, 33-52, 55-62, and 5
64-77 under 35 U.S.C. § 102(b) as anticipated by Messer. 6
As to independent claim 78, this claim requires formatting a cookie at 7
an ad server; storing a cookie at a user node of a user who made the 8
selection; and providing the cookie from the user node to the ad server 9
whenever the user makes a transaction at a sale site associated with the 10
advertisement. The Examiner found that Messer anticipated claim 78 11
(Answer 12-13). The Appellant argues that Messer does not refer to an ad 12
server and that the only server that formats a cookie in Messer, the Merchant 13
server, is not an ad server. 14
We agree with the Appellant. The Examiner cites Messer 13:24-14:8 15
for support. The Examiner further construed Messer’s content site to be an 16
ad server and found that the cookie was edited at several sites. We find that 17
the only description of editing a cookie at a specified server in Messer 18
occurs at the Merchant server (FF 05). The Examiner cites no specific 19
portion of Messer to support the finding that a cookie is edited at several 20
sites, and the portion the Examiner cited for general support refers only to 21
operations on the Merchant server. We find no portion of Messer to 22
describe editing at other than the Merchant server. An ad server is simply a 23
server for the administration of advertising. In Messer, this is performed by 24
its Clearinghouse server (FF 04 & 05). There is nothing in Messer that 25
suggests its Merchant server is an ad server. 26
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The Appellant has sustained its burden of showing that the Examiner 1
erred in rejecting claims 78, 80-83, and 85-87 under 35 U.S.C. § 102(b) as 2
anticipated by Messer. 3
4
Claims 13, 15, 17, 31, 32, 53, 54, 63, 79, and 84 rejected under 35 U.S.C. § 5
103(a) as unpatentable over Messer and Angles. 6
The Appellant relies on the arguments in support of claim 1, which we 7
found unpersuasive supra, and claim 78, which we found persuasive. The 8
Appellant has therefore not sustained its burden of showing that the 9
Examiner erred in rejecting claims 13, 15, 17, 31, 32, 53, 54, and 63, but has 10
sustained its burden of showing that the Examiner erred in rejecting claims 11
79 and 84, under 35 U.S.C. § 103(a) as unpatentable over Messer and 12
Angles. 13
14
Claim 88 rejected under 35 U.S.C. § 103(a) as unpatentable over Messer 15
and Davis. 16
The Appellant relies on the arguments in support of claim 78, which 17
we found persuasive supra. The Appellant has therefore sustained its 18
burden of showing that the Examiner erred in rejecting claim 88 under 35 19
U.S.C. § 103(a) as unpatentable over Messer and Davis. 20
21
CONCLUSIONS OF LAW 22
The Appellant has not sustained its burden of showing that the 23
Examiner erred in rejecting claims 1-12, 14, 16, 18-30, 33-52, 55-62, and 24
64-77 under 35 U.S.C. § 102(b) as anticipated by Messer. The Appellant 25
has sustained its burden of showing that the Examiner erred in rejecting 26
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claims 78, 80-83, and 85-87 under 35 U.S.C. § 102(b) as anticipated by 1
Messer. 2
The Appellant has not sustained its burden of showing that the 3
Examiner erred in rejecting claims 13, 15, 17, 31, 32, 53, 54, and 63 under 4
35 U.S.C. § 103(a) as unpatentable over the prior art. The Appellant has 5
sustained its burden of showing that the Examiner erred in rejecting claims 6
79, 84, and 88 under 35 U.S.C. § 103(a) as unpatentable over the prior art. 7
8
DECISION 9
To summarize, our decision is as follows: 10
• The rejection of claims 1-12, 14, 16, 18-30, 33-52, 55-62, and 64-77 11
under 35 U.S.C. § 102(b) as anticipated by Messer is sustained. 12
• The rejection of claims 78, 80-83, and 85-87 under 35 U.S.C. § 102(b) 13
as anticipated by Messer is not sustained. 14
• The rejection of claims 13, 15, 17, 31, 32, 53, 54, and 63 under 35 15
U.S.C. § 103(a) as unpatentable over Messer and Angles is sustained. 16
• The rejection of claims 79 and 84 under 35 U.S.C. § 103(a) as 17
unpatentable over Messer and Angles is not sustained. 18
• The rejection of claim 88 under 35 U.S.C. § 103(a) as unpatentable 19
over Messer and Davis is not sustained. 20
No time period for taking any subsequent action in connection with 21
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 22
23
AFFIRMED-IN-PART 24
25
26
27
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hh 1
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MINNEAPOLIS, MN 55440-1022 4