Ex Parte Conrad et al

Board of Patent Appeals and Interferences

Sep 27, 2010

09903976 (B.P.A.I. Sep. 27, 2010)

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.
09/903,976 07/12/2001 Arthur Ernest Conrad 15213 9444
26884 7590 09/27/2010
PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
3097 SATELLITE BLVD., 2nd FLOOR
DULUTH, GA 30096
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
09/27/2010 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)

The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ARTHUR ERNEST CONRAD, GREGORY J. DECKER and
JOSEPH F. CELANO
____________

Appeal 2010-005641
Application 09/903,976
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-44. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a system and method for a web attract loop for
automatically displaying web content after detection of an idle period of
predetermined duration. (Specification 1:¶[0002])
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. A system for displaying a web content on a display of a
user computer, said system comprising:
a central computer;
software executing on said central computer for receiving
a request to transmit a web page;
software executing on said central computer for transmitting a
web page to the user computer in response to the request to
transmit a web page, the web page comprising attract loop code,
wherein the attract loop code monitors the user computer for a
user event, and only if the user event does not occur within a
specified time period, the attract loop code automatically
transmits a request for attract loop content to said central
computer;
software executing on said central computer for
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automatically transmitting attract loop content to the user
computer in response to the request for attract loop content; and
wherein the attract loop code causes the attract loop content to
be displayed on the display of the user computer.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Gerszberg US 6,084,583 Jul. 4, 2000
Park US 6,295, 061 B1 Sep. 25, 2001
Cho US 6,843,048 B1 Dec. 21, 2004

Barboza, David, “An Internet Newcomer is making by selling moving
ads as part of screen savers,” New York Times, New York, N.Y. Oct.
1, 1996, pg. D.7, 1 pgs.
Glaskin, Max, “Tiny pager gives big picture; Innovation,” The Times,
London, UK, Sep 24, 1995. pg. 1.
The following rejections are before us for review.
The Examiner rejected claims 1-44 under 35 U.S.C. 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner rejected claims 1, 2, 4, 6, 8-12, 14, 16, 18-24, 26, 28,
30-34, 36, 38 and 40-44 under 35 U.S.C. 103(a) as being unpatentable over
Gerszberg in view of Cho.
The Examiner rejected claims 3, 5, 13, 15, 25, 27, 35 and 37 under 35
U.S.C. 103(a) as being unpatentable over Gerszberg in view of Cho and
further in view of Park.
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The Examiner rejected claims 7, 17, 29 and 39 under 35 U.S.C. 103(a)
as being unpatentable over Gerszberg in view of Cho and further in view of
Barboza.
The Examiner rejected claims 1, 2, 4, 6, 8-12, 14, 16, 18-24, 26, 28,
30-34, 36, 38 and 40-44 under 35 U.S.C. 103(a) as being unpatentable over
Gerszberg in view of Glaskin.
The Examiner rejected claims 3, 5, 13, 15, 25, 27, 35 and 37 under 35
U.S.C. 103(a) as being unpatentable over Gerszberg et al. in view of Glaskin
and further in view of Park.
The Examiner rejected claims 7, 17, 29 and 39 under 35 U.S.C. 103(a)
as being unpatentable over Gerszberg in view of Glaskin and further in view
of Barboza.

ISSUES
Have Appellants shown that the Examiner erred in rejecting claims 1-
44 under 35 U.S.C. 112, first paragraph, as failing to comply with the
written description requirement in that the Specification as originally filed
shows that Appellants were in possession of the claimed feature of wherein
the attract loop code monitors the user computer for a user event, and only
if the user event does not occur within a specified time period, the attract
loop code automatically transmits a request for attract loop content to said
central computer?
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Have Appellants shown that the Examiner erred in rejecting claims 1-
44 on appeal as being unpatentable under 35 U.S.C. § 103(a) on the grounds
that the prior art discloses or makes obvious the “only if” feature recited in
the claims?
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. We adopt the Examiner’s findings as presented on pages 3-17 of
the Examiner’s Answer.
2. U.S. Provisional Patent Application No. 60/217,800 discloses
“determining if there is no activity at a device with an associated display,
said device being attached to said computer network….” (Claim 1)
3. U.S. Provisional Patent Application No. 60/217,800 discloses “[a]
web attract loop according to the invention is the automatic display of
compelling web content after detection of an idle period of predetermined
duration (the "screen saver embodiment") for the purpose of engaging the
attention of casual observers.” (Summary of the Invention)
4. The Examiner found that Gerszberg discloses the only if feature in
describing that “when it is determined that the activity timer has expired, the
controller displays a black screen on the touch sensitive display 141. An
advertisement is then placed in a section of the display 141….” (Col. 8, ll.
49-52).
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ANALYSIS
We affirm the rejection of claims 1-44 under 35 U.S.C. 112, first
paragraph and reverse as to the 35 U.S.C. § 103(a) rejections.
Rejection of Claims 1-44 Under 35 U.S.C. 112, First Paragraph
All independent claims 1, 11, 21, 22, 23, 33, 43 and 44 include the
limitation “…and only if the user event does not occur within a specified
time period, the attract loop code automatically transmits a request for attract
loop content to said central computer….” (Answer 5).
The Examiner found that while the Specification discloses “‘if the
user event does not occur within a specified time period, the attract loop
code automatically transmits a request for attract loop content to the central
computer.’ However, this does not state ‘only if’ a user event does not occur
is a request automatically transmitted.” (Answer 4).
Appellants argue that “[t]he Examiner ignores the fact that the concept
of "only if" is both implicit and inherent in the disclosure, and would clearly
be understood to be so by one skilled in the art, in favor of a "keyword
search" for the specific term ‘only if’”. (Appeal Br. 13).
We find with the Examiner that the term “only if” is not explicitly
used, or made implicit or inherent to the Specification when used in
connection with “the user event does not occur within a specified time
period”. Appellants maintain that the repeated use of the “screen saver” in
the Specification would make it clear to one skilled in the art that the
Specification supports the “only if” feature. (Appeal Br. 13). We disagree
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with Appellants because in order for the Specification to support an “only if”
event, it must disclose the term as the sole and exclusive contingency for
causing the attract loop code to automatically transmit a request for attract
loop content to the central computer- which the Specification does not do.
The Appellants further cite to “[t]he specification, as originally filed,
[maintaining it] goes into detail explaining how a timer is started when no
user activity is detected, that the timer is reset when the user is active, and
that the web content is displayed when the counter expires.” (Appeal Br. 13).
However, the Specification only describes:
. . . If, however, the specified time period has
expired, attract loop code 26 causes browser 16 to
transmit a request 36 for attract loop content to
central computer 12, in response to which in
central computer 12 transmits attract loop content
38 to browser 16. Attract loop code 26 causes the
received attract loop content 38 to be displayed on
the display of user computer 14, as illustrated at
step 40.
(Specification ¶[0024]).
Thus, the Specification, at best, generally provides a basis for the attract loop
causing content 38 to be displayed, if the specified time has expired, but not
as an only if condition as recited in the claims. That is, the Specification
fails to preclude all other conditions from acting with the specified time
condition to cause the attract loop to display the desired content.
Appellants’ assertion that the reference to “screen saver” in the
Specification, provides a basis in the Specification for the “only if” term is
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also unpersuasive because: (1) we find that the term, “screen saver”, is used
primarily in the Background where discussions of the prior art is made; and
(2) we find that given the myriad of “screen saver” type programs which
exist, we cannot summarily find that none of such programs would use
additional conditions, such as the time of day or a GSP location, to
additionally determine whether or not to cause content to be displayed in
addition to the specified time expiring.
Turning to Appellants’ Provisional Patent Application No.
60/217,800, we find it equally deficient insofar as it fails to support the
“only if” terminology. At best, the provisional application describes (1)
“determining if there is no activity at a device with an associated display,
said device being attached to said computer network…” and (2) “[a] web
attract loop according to the invention is the automatic display of compelling
web content after detection of an idle period of predetermined duration (the
"screen saver embodiment") for the purpose of engaging the attention of
casual observers.” (FF 2, 3). For the same reasons discussed above, this
provisional disclosure fails to convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, applicant was in possession of the
claimed only if feature. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-
64, (Fed. Cir. 1991). An Applicant shows possession of the claimed
invention by describing the claimed invention with all of its limitations using
such descriptive means as words, structures, figures, diagrams, and formulas
that fully set forth the claimed invention. Lockwood v. American Airlines,
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Inc., 107 F.3d 1565, 1572, (Fed. Cir. 1997). We find the single page which
makes up the totality of Provisional Patent Application No. 60/217,800 lacks
such requisite descriptive means to support the term only if as presently used
by Appellants in the application on appeal.
Therefore we will sustain the rejection of claims 1-44 under 35 U.S.C.
112, first paragraph.

The 35 U.S.C. § 103(a) rejection of claims 1, 2, 4, 6, 8-12, 14, 16, 18-24, 26,
28, 30-34, 36, 38 and 40-44 Over Gerszber and Cho et al.
Appellants argue that the rejection is in error because Cho is not prior
art to the present application based on date. In support, Appellants cite to
their U.S. Provisional Patent Application No. 60/217,800, filed July 12,
2000 on which priority is claimed, and argue that it predates the Cho filing
date.
However, as found supra, Appellants’ Provisional Patent Application
No. 60/217,800 does not support the “only if” terminology, and thus is
incapable of antedating Cho to the extent that the provisional application is
needed to overcome a prior art disclosure of a claimed feature.
That said, the Examiner found that Gerszberg discloses the only if
feature recited in the independent claims (Answer 5, 10). Looking to the
cited section of Gerszberg, we fail to find where Gerszberg discloses or
infers the “only if” feature for similar reasons enumerated above with respect
to the 35 U.S.C. 112, first paragraph rejection. That is, Gerszberg generally
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discloses that when it is determined that the activity timer has expired, the
controller displays a black screen on the touch sensitive display 141. An
advertisement is then placed in a section of the display 141. (FF 4) We find
that as between the screen going black and the placing of an advertisement
on the screen, nothing in Gerszberg precludes additional conditions, such as
the time of day or a GSP location, from additionally determining whether or
not to cause the advertisement to be displayed.
Therefore, we will not sustain the 35 U.S.C. § 103(a) rejection of
claims using Gerszberg.
The rejection of claims 1, 2, 4, 6, 8-12, 14, 16, 18-24, 26, 28, 30-34,
36, 38, and 40-44 are rejected under U.S.C. 103(a) as being unpatentable
over Gerszberg in view of Glaskin.
For the reasons set forth above, we will not sustain the 35 U.S.C. §
103(a) rejection of claims using Gerszberg.

CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred
in rejecting claims 1-44 under 35 U.S.C. 112, first paragraph, as failing to
comply with the written description requirement.
We conclude the Appellants have shown that the Examiner erred in
rejecting claims 1-44 under 35 U.S.C. § 103(a).

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DECISION
The decision of the Examiner to reject claims 1-44 is AFFIRMED.

MP

PAUL W. MARTIN
NCR CORPORATION, LAW DEPT.
3097 SATELLITE BLVD., 2nd FLOOR
DULUTH GA 30096