Ex Parte Choi et al

Board of Patent Appeals and Interferences

Jul 23, 2012

10508616 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/508,616 09/23/2004 Min Ju Choi 110989-05004577 8550
22429 7590 07/23/2012
LOWE HAUPTMAN HAM & BERNER, LLP
1700 DIAGONAL ROAD
SUITE 300
ALEXANDRIA, VA 22314
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
07/23/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte, MIN JU CHOI, KYEONG SEOK KIM,
JONG WOO CHOI, SUNG CHEOL HONG,
EON HWA JEONG, GI SEON NAM, and
JUN HYUNG KIM1
____________________

Appeal 2011-003944
Application 10/508,616
Technology Center 3600
____________________
Before, JOSEPH A. FISCHETTI, KEVIN F. TURNER, and
MICHAEL W. KIM, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE2
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3-12, and 14-19. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 SK Planet Co., Ltd., is the real party in interest. (See Assignment of
Interest, executed January 18, 2012.)
2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 21, 2010) and Reply Brief (“Reply Br.,” filed December 14,
2010), and the Examiner’s Answer (“Ans.,” mailed October 22, 2010).
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Application No. 10/508,616

2
THE INVENTION
Appellants’ disclosure relates to a method and system for providing
and controlling the advertising contents of a mobile terminal. (P. 1, ll. 7-20.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for providing a multimedia advertising service by
downloading multimedia contents from a server to a plurality of
mobile terminals, comprising the steps of:
uploading, from a mobile terminal to an advertising server,
display history information associated with currently
accumulated and stored multimedia content and a request for
multimedia content;
downloading the requested multimedia content and a display
condition information corresponding to the requested
multimedia content;
determining on the mobile terminal when an event corresponding
to the display condition information occurs; and
configuring the mobile terminal to execute and display the
downloaded content according to the display condition
information.
(App. Br., Claims Appendix 19.)

PRIOR ART REJECTIONS
The prior art reference relied upon by the Examiner in rejecting the
claims is:
De Boor WO 99/59283 Nov. 18, 1999

The Examiner rejected claims 1, 3-12, and 14-19 under 35 U.S.C.
§ 103(a) as unpatentable over De Boor and Official Notice.

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Application No. 10/508,616

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ISSUE
Does the combination of De Boor and Official Notice teach or suggest
the step of “uploading, from a mobile terminal to an advertising server,
display history information associated with currently accumulated and stored
multimedia content and a request for multimedia content,” as generally
recited by independent claims 1, 7, and 12, such that it renders obvious the
subject matter of claims 1, 3-12, and 14-19 under 35 U.S.C. § 103(a)?

FINDINGS OF FACT
1. De Boor is directed to a system and method for providing
integrated advertising capabilities to a wireless communication device 100
including a processor 124, memory 126, screen display 136, and keypad
128. (Abs.; p. 6, ll. 22-26.)
2. De Boor describes that the wireless communication device 100
stores in its memory 126 and executes an instance of a man-machine
interface (MMI) 102 which provides user interface functionality via user
interface manager 107 for wireless communication device 100. (P. 7, ll. 26-
28; p. 8, ll. 6-7.)
3. De Boor describes that “user interface manager 107 includes an
executive 106 advertising manager 108, an advertisement content handler
110, a transport manager 112, a phone book manager 114, and an
advertisement file store 118 that stores advertisement files.” (P. 9, ll. 28-30.)
4. De Boor describes that phone book manager 114 is responsible for
managing an internal phone book data store that stores phone book
information and contains arbitrary data, including URLs and other
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subscription services such as weather, sports, and travel information. (P. 10,
ll. 11-16.)
5. De Boor describes that “transport manager 112 is responsible for
receiving message packets containing data for advertisement files or for
phone book entries, and routing such message packets to either the
advertising manager 108 or the phone book manager 114 for construction of
files and storage of data.” (P. 10, ll. 19-22.)
6. De Boor describes that its system determines the duration that an
advertisement will be displayed based on a display limit, display count, or
date on which the advertisement expires. (P. 13, ll. 1-15.)
7. The Examiner has taken Official Notice that “impression based
advertising revenue models are well known and common.” (Ans. 7.)

ANALYSIS
Claims 1, 3-12, and 14-19 under 35 U.S.C. § 103(a) as unpatentable over
De Boor and Official Notice.
Appellants argue that the combination of De Boor and Official Notice
fails to teach or suggest the step of “uploading, from a mobile terminal to an
advertising server, display history information associated with currently
accumulated and stored multimedia content and a request for multimedia
content,” as generally recited by independent claims 1, 7, and 12. (App. Br.
10; Reply Br. 4-6.) Specifically, Appellants contend that the Examiner’s
Official Notice fails to establish that impression based advertising revenue
models render obvious uploading mobile terminal display information to an
advertising server. (App. Br. 12.) Additionally, Appellants assert that “the
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Examiner has, without any evidentiary support in the record, gone from
existence of impression based advertising revenue models to a conclusion of
obviousness concerning the teachings of these models without any
evidentiary support.” (Reply Br. 6.)
In response, the Examiner acknowledges that De Boor fails to teach or
suggest uploading display information history information to an advertising
server. However, the Examiner takes Official Notice that “impression based
advertising revenue models are well known and common” to address the
missing step. (FF 7.) Specifically, the Examiner concludes:
it would have been obvious to one having ordinary skill
in the art at the time of the invention that display
information along with the phone book update
information, subscription update information and other
requests all be uploaded to the central server in order to
report back what impressions were delivered for billing
purposes, new subscription services and delivery of
requests from mobile terminal.
(Ans. 7.)
We cannot agree with the Examiner.
While we may agree with the Examiner that impression-based
advertisement (e.g., pay-per-click) revenue schemes require some
confirmation that an advertisement was viewed, this general teaching,
without more, is an insufficient rationale to render obvious the step of
“uploading, from a mobile terminal to an advertising server, display history
information associated with currently accumulated and stored multimedia
content and a request for multimedia content,” when the Examiner has not
adequately articulated how this Official Notice would be implemented into
De Boor’s system, given the fact that De Boor’s system fails to teach
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uploading any information regarding the contents of the phone to a server.
(See FF 1-5.)
Furthermore, even if we accept that impression based advertisements
are well-known, we find that the Examiner has failed to establish that
impression based advertisements, in and of themselves, teach or suggest
uploading mobile terminal display information to an advertising server, as
presently claimed. Moreover, the Examiner has failed to articulate any
reasoning or demonstrate why one of ordinary skill in the art would be
motivated to modify De Boor’s advertising system to monetize the displayed
advertisements based on impressions when De Boor’s system generates
revenue from the advertisements based on a display limit, display count, or
date on which the advertisement expires. (FF 6.) “[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.” See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Accordingly, because the Examiner has not met the initial burden of
setting forth a proper case of prima facie obviousness, we will not sustain
the rejections of independent claims 1, 7, and 12 under 35 U.S.C. § 103(a).
For the same reason, we cannot sustain the rejection of claims 3-6, 8-11, and
14-19 which depend from claims 1, 7, and 12, respectively.

CONCLUSION
We conclude that combination of De Boor and Official Notice fails to
teach or suggest the step of “uploading, from a mobile terminal to an
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advertising server, display history information associated with currently
accumulated and stored multimedia content and a request for multimedia
content,” as generally recited by independent claims 1, 7, and 12, and as
such, we conclude that the combination of De Boor and Official Notice fails
to render obvious the subject matter of claims 1, 3-12, and 14-19 under 35
U.S.C. § 103(a).
DECISION
We reverse the Examiner’s rejection of claims 1, 3-12, and 14-19.

REVERSED

ack