Ex Parte Dashefsky et al

Board of Patent Appeals and Interferences

Nov 10, 2010

10211997 (B.P.A.I. Nov. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte DONALD J. DASHEFSKY, KAREN FORE-POLONIEWICZ,
and GEORGE A. SHABABB
_____________

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048
Technology Center 3600
______________

Before ALLEN R. MACDONALD, ROBERT E. NAPPI, and MARC S.
HOFF, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL1

1 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.
Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 40 through 52, 54 through 73, 83 through 89, 107, and 109 through
117.
We affirm-in-part.
INVENTION
The invention is directed to a method and system for obtaining
consumer driving-activity market research information. See Column 6, lines
60 -65 of U.S. Patent 6,098,048. Claim 40 is reproduced below:
40. A method of generating market research information,
comprising:
selecting a plurality of persons from a population based on
demographic characteristics of the persons to form a survey panel that
represents the population;
providing portable data collection devices to the persons
forming the survey panel;
automatically collecting via the portable data collection devices
geographic location information associated with routes traveled by
persons from the survey panel;
determining a relationship between the geographic location
information and exposure of the persons from the survey panel to
advertising information; and
generating the market research information based on the
relationship.

REFERENCES
Degasperi US 5,097,981 Mar. 24, 1992
Kiefl US 5,382,970 Jan. 17, 1995
DeTemple US 5,995,015 Nov. 30, 1999
Hollenberg US 6,091,956 Jul. 18, 2000
2

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

Battelle Transportation Division (Battelle), “Lexington Area Travel Data
Collection Test,” Federal Highway Administration, US Dept. of
Transportation, September 15, 1997.

REJECTIONS AT ISSUE
The Examiner has rejected claims 109 through 114 and 117 under 35
U.S.C. § 112 as failing to comply with the enablement requirement. The
Examiner’s rejection is on pages 4 and 5 of the Answer.2
The Examiner has rejected claims 40 through 52, 54 through 73, 83
through 86, 89, 107, 109 through 112, and 117 under 35 U.S.C. § 102(a) as
being unpatentable over Battelle. The Examiner’s rejection is on pages 6
through 24 of the Answer.
The Examiner has rejected claims 87 and 88 under 35 U.S.C. § 103(a)
as being unpatentable over Battelle in view of Kiefl. The Examiner’s
rejection is on pages 30 and 31 of the Answer.
The Examiner has rejected claims 113 and 114 under 35 U.S.C.
§ 103(a) as being unpatentable over Battelle in view of Hollenberg. The
Examiner’s rejection is on page 31 of the Answer.
The Examiner has rejected claims 54 through 64, 107, 109 through
114, and 117 under 35 U.S.C. § 102(e) as being unpatentable over
Hollenberg. The Examiner’s rejection is on pages 24 through 27 of the
Answer.

2 Throughout this decision we refer to the Examiner’s Answer dated May 28,
2010.
3

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

The Examiner has rejected claims 40 through 52, 54 through 73, 83
through 89, and 107 under 35 U.S.C. § 103(a) as being unpatentable over
Applicant admitted prior art, Hollenberg, and DeTemple. The Examiner’s
rejection is on pages 27 through 30 of the Answer.
The Examiner has rejected claims 110 through 114 under 35 U.S.C.
§ 103(a) as being unpatentable over Hollenberg in view of Degasperi. The
Examiner’s rejection is on pages 30 through 31 of the Answer.

Rejection under 35 U.S.C. § 112
ISSUE
Appellants’ contentions, on pages 13 through 15 of the Brief3 and 4
through 7 of the Reply Brief, with respect to this rejection present us with
the issue: did the Examiner err in finding that Appellants’ Specification fails
to enable the skilled artisan to generate market research based upon data
collected regarding the amount of money spent, price paid, and credit card
use at the destination?

ANALYSIS
Appellants’ arguments have persuaded us that the Examiner erred in
rejecting claims 109 through 114 and 117 under 35 U.S.C. § 112. Claim 109
recites generating market research information based upon data associated
with the amount of money spent, the price paid or credit card use at a
business. Appellants, on pages 4 through 6 of the Reply Brief, cite to table

3 Throughout this decision we refer to the Appeal Brief dated April 22, 2010
and Reply Brief dated July 14, 2010.
4

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

VI and supporting description in the Specification as providing an enabling
example. We concur with Appellants that, while we note that Table VI does
not depict data relating to money spent, price, or credit card use, the
supporting description does (page citation). Further, given that the format of
the table in Figure VI merely depicts an organization of data, we consider
organizing the data by price to be within the ability of an ordinarily skilled
artisan. Accordingly, we will not sustain the Examiner’s rejection of claims
109 through 114 and 117 under 35 U.S.C. § 112.

Rejection under 35 U.S.C. § 102(a) based upon Battelle
ISSUES
Claims 40 through 52, 54 through 64 and 107
Appellants’ contentions, pages 13 through 18 of the Brief, with
respect to the rejection of claims 40 through 52, 54 through 64 and 107,
present us with the issue: did the Examiner err in finding that Battelle
teaches the advertising information as claimed?
Claims 65 through 73
Appellants’ contentions, on page 18 of the Brief, with respect to the
rejection of claims 65 through 73, present us with the issue: did the
Examiner err in finding that Battelle teaches merging location data with
vehicle classification information as claimed?
Claims 83 through 86 and 89
Appellants’ arguments, on page 18 and 19 of the Brief with respect to
the rejection of claims 83 through 86 and 89, present us with the issue: did
the Examiner err in finding that Battelle teaches generating marketing
campaign effectiveness information?
5

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

Claims 109 and 117
Appellants’ contentions, on pages 19 and 20 of the Brief with respect
to the rejection of claims 109 and 117, present us with the issue: did the
Examiner err in finding that Battelle teaches prompting the user for data
associated with an amount of money spent, a price paid, or credit card use?
Claim 110 through 112
We do not reach the issues raised by Appellants directed to these
claims as they are dependent upon claim 109 and the issue directed to claim
109 is dispositive of the rejection of these claims.

ANALYSIS
Claims 40 through 52, 54 through 64 and 107
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that Battelle teaches the advertising information as claimed.
Representative claim 40 recites “determining a relationship between … and
exposure of the persons from the survey panel to advertising information.”
The Examiner interprets the term advertising as “to make generally known.”
Answer 33. Appellants assert that “advertising information” encompasses
“information to be provided to persons to call attention to a particular
product, service, and/or business to influence . . . behavior.” Brief 16.
Further, Appellants state that “[t]he applicants do not dispute that the verb
‘advertise’ can be defined to mean ‘to make generally known.’” Brief 17.
However, Appellants assert that the Examiner improperly focuses on
“advertise” and not the claim term “advertisement information.” Brief 17.
As such, Appellants assert the Examiner improperly interpreted the claim
6

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

term and improperly found that Battelle’s trip purpose section meets the
claimed advertising information. Brief 16-17.
These arguments have not persuaded us of error in the Examiner’s
claim interpretation and accordingly have not persuaded us that the
Examiner erred in finding that Battelle teaches the claimed advertising
information. The Examiner has interpreted “advertise” as “to make
generally known.” Answer 33. While the Examiner has relied upon
extrinsic evidence in making this finding, we do not find that the Examiner’s
finding contradicts Appellants’ Specification, as the Specification does not
define “advertise” or “advertising information,” but discusses measuring the
effectiveness of an advertising campaign (cite). Thus, we consider the
Examiner’s interpretation of “advertising information,” as information
which makes things generally known, to be reasonable. With this claim
interpretation, Appellants’ arguments have not shown error in the
Examiner’s finding that Battelle teaches advertising information. We note
that Appellants’ arguments rely on extrinsic evidence to proffer an alternate
interpretation of advertise as “to call attention to a particular product,
service, and/or business to influence the behavior or thoughts.” Brief 16.
We decline to incorporate such a narrow definition into the claims, as we do
not find that the Specification necessitates such a narrow interpretation of
the term “advertising information.” Accordingly, Appellants’ arguments
directed to the Examiner’s rejection of claims 40 through 52, 54 through 64
and 107 under 35 U.S.C. § 102(a) based upon Battelle has not persuaded us
of error and we sustain the rejection.
7

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

Claims 65 through 73
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that Battelle teaches merging location data with vehicle
classification information as claimed. The Examiner makes specific
findings concerning Battelle’s teaching of this limitation on pages 13
through 17 and 33 of the Answer. Appellants’ statements on page 18 of the
Brief, merely assert that Battelle does not teach the limitation. We do not
find this assertion by the Appellants, which fails to address the Examiner’s
finding, to be persuasive of error in the Examiner’s rejection. Accordingly,
we sustain the Examiner’s rejection of claims 65 through 73 under 35 U.S.C.
§ 102(a) based upon Battelle.
Claims 83 through 86 and 89
Appellants’ arguments have not persuaded us that the Examiner erred
in finding Battelle teaches generating marketing campaign effectiveness
information as claimed. Appellants argue that the Examiner’s claim
interpretation reads out of the claim the term “marketing campaign
effectiveness” and that Battelle does not teach such information. Brief 19.
The Examiner states that the claim does not require the step of generating
information, but merely requires that the information be achieved. Answer
33-34. As such, the Examiner interprets the claim as only requiring the
collection of information. Answer 33-34. We concur with this claim
interpretation. Claim 83 does not recite a method step which functionally
relates to the marketing campaign effectiveness. The Examiner need not
give patentable weight to descriptive material absent a new and unobvious
functional relationship between the descriptive material and the substrate.
See In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); In re Ngai, 367
8

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

F.3d 1336, 1338 (Fed. Cir. 2004) and our recent final decision in Ex parte
Curry, 2005-0509 (BPAI 2005), 84 USPQ2d 1272 (Affirmed, Rule 36, Fed.
Cir., slip op. 06-1003, June 2006). Further, the Examiner has shown that
personal travel information would be useful for an effective marketing
campaign. Accordingly, Appellants’ arguments have not persuaded us of
error in the Examiner’s rejection of claims 83 through 86 and 89.
Claims 109 and 117
Appellants’ arguments have persuaded us that the Examiner erred in
finding that Battelle teaches prompting the user for data associated with an
amount of money spent, a price paid, or credit card use. In rejecting these
claims and in responding to these arguments, the Examiner has not identified
a teaching in Battelle that meets this limitation. Answer 23, 24 and 35.
Accordingly, we will not sustain the Examiner’s rejection of claims 109 and
117 under 35 U.S.C. § 102(a) based upon Battelle.
Claims 110 through 112
Claims 110 through 112 ultimately depend upon claim 109. As
discussed above, we will not sustain the Examiner’s rejection of claim 109.
Thus, we will not sustain the Examiner’s rejection of claims 110 through
112 as they include the limitations of claim 109.

Rejection under 35 U.S.C. § 103(a) based upon Battelle in view of
Kiefl.
ISSUE
Claims 87 and 88
Appellants’ contentions, on page 31 of the Brief with respect to the
rejection of claims 87 and 88, present us with the issue: did the Examiner err
9

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

in finding that the combination of Kiefl and Battelle teach the advertising
information as claimed?

ANALYSIS
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that the combination of Kiefl and Battelle teach the advertising
information. The Examiner has found that Battelle teaches this limitation.
As discussed above with respect to claim 40, Appellants’ arguments have
not persuaded us that the Examiner erred in finding that Battelle teaches the
advertising information.

Rejection under 35 U.S.C. § 103(a) based upon Battelle in view of
Hollenberg.
ISSUES
Claims 113 and 114
Appellants’ contentions, on page 30 of the Brief, with respect to the
rejection of claim 113 and 114 present us with the issue: did the Examiner
err in finding that the combination of Battelle and Hollenberg teaches
determining a change in frequency at which a person visits a business
establishment?

ANALYSIS
Appellants’ arguments have persuaded us that the Examiner erred in
rejecting claims 113 and 114. These claims ultimately depend upon claim
109. The Examiner relied upon the teachings of Battelle to teach the
limitations of claim 109. Answer 31. As discussed above, we will not
10

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

sustain the Examiner’s rejection of claims 113 and 114 as they include the
limitations of claim 109.

Rejection under 35 U.S.C. § 102(e) based on Hollenberg.

ISSUES
Claims 54 through 64
Appellants’ contentions on pages 21 through 23 of the Brief with
respect to the rejection of claims 54 through 64, present us with the issue:
did the Examiner err in finding that Hollenberg teaches that the portable data
collection devices are associated with plural persons forming a survey panel
as claimed?
Claim 107
Appellants’ contentions, on page 23 of the Brief, with respect to the
rejection of claim 107 presents us with the issue: did the Examiner err in
finding that Hollenberg teaches that the portable data collection devices are
associated with plural persons forming a survey panel as claimed?
Claims 109 through 114 and 117
Appellants’ contentions, on pages 23 and 24 of the Brief with respect
to the rejection of claims 109 through 114 and 117 present us with the issue:
did the Examiner err in finding that Hollenberg teaches prompting the user
for data associated with an amount of money spent, a price paid, or credit
card use?

11

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

ANALYSIS
Claims 54 through 64
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that Hollenberg teaches that the portable data collection devices
are associated with plural persons forming a survey panel as claimed.
Appellants’ arguments focus on a survey panel referring to “a group of
persons that has been purposefully limited in number and selected . . . from a
population of people to provide statistically meaningful results.” Brief 21.
Using this claim interpretation, Appellants argue that the Examiner has not
shown that the persons to which Hollenberg’s device is given are a survey
panel. Brief. 22. The Examiner responds stating claim 54 does not recite
any requirements concerning the makeup of the group of participants in the
survey group. Answer 36. We concur with the Examiner. Claim 54 does
not recite any limitations on how the survey group is populated, other than it
contains plural persons. Appellants’ Specification does not explicitly define
a survey panel as necessarily consisting of people selected to provide
statistically meaningful results. Rather, Appellants’ Specification discusses
consumer panels as a group of people who provide information. Col. 1, ll.
14-16, col. 7, ll. 16, of Appellants’ U.S. Patent 6,089,048. Thus, we decline
to import into claim 54 the limitation that the survey panel is “a group of
persons that has been purposefully selected from a population of people to
provide statistically meaningful results.” As such, Appellants’ argument,
that the group of people which uses Hollenberg’s device are not a survey
panel because they are indiscriminately selected, is not commensurate in
scope with the claim. Accordingly, these arguments have not persuaded us
of error in the Examiner’s finding that Hollenberg teaches the claim
12

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

limitation, and we sustain the Examiner’s rejection of claim 54 through 64
based upon Hollenberg.
Claim 107
Appellants’ arguments have persuaded us that the Examiner erred in
finding that Hollenberg teaches the portable data collections are associated
with plural persons forming a survey panel as claimed. Claim 107 is
dependent upon claim 40. We note that the Examiner has not shown that
Hollenberg anticipates the limitations of claim 40. Thus, the Examiner has
not shown that Hollenberg teaches the limitations of claim 107.
Accordingly, we will not sustain the Examiner’s rejection of claim 107 as
anticipated by Hollenberg.
Claims 109 through 114 and 117
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that Hollenberg teaches prompting the user for data associated
with an amount of money spent, a price paid, or credit card use. The
Examiner finds that Hollenberg teaches this limitation at column 13, lines
29-37; column 16, lines 18-39; and column 7, lines 26 through 30. Answer
26. Appellants’ arguments have not rebutted these findings by the
Examiner. We concur with these findings by the Examiner as they are
supported by ample evidence. We further note that claims 3 and 9 of
Hollenberg also provide a description of using the device to purchase and
track purchases (data associated with an amount of money spent, price paid,
and credit card use). As such, Appellants’ arguments have not persuaded us
of error in the Examiner’s rejection of claims 109 through 114 and 117 as
anticipated by Hollenberg

13

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

Rejection under 35 U.S.C. § 103(a) based upon Applicant admitted
prior art, Hollenberg, and DeTemple

ISSUES
Claims 40 through 52, 54 through 73 and 107
Appellants’ contentions, on pages 24 through 29 of the Brief, with
respect to the rejection of claims 40 through 52, 54 through 73, and 107
present us with the issue: did the Examiner err in finding that the skilled
artisan would combine the teachings of Hollenberg based upon the teachings
of DeTemple and Appellants’ admitted prior art?
Claims 83 through 89
Appellants’ contentions, on page 30 of the Brief, with respect to the
rejection of claims 83 through 89 under 35 U.S.C. § 103(a) present us with
the same issue as discussed above with respect to the rejection of claims 40
through 52, 54 through 73 and 107 under 35 U.S.C. § 103(a).

ANALYSIS
Claims 40 through 52, 54 through 73, and 107
Appellants’ arguments have not persuaded us that the Examiner erred
combining Hollenberg, DeTemple, and Appellants’ admitted prior art.
Appellants’ arguments assert that modifying Hollenberg’s device, to collect
survey data as suggested by the Examiner would render the survey data
collected by the device to be less valuable and possibly misleading. Brief 26
and 27. Appellants argue that eliminating the features of Hollenberg’s
device which provide advertisements would change the principle of
operation of Hollenberg’s device. Answer 28. Thus, Appellants assert that
14

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

Hollenberg’s device is unsuitable for an unbiased panel-based study or
survey of the behavior of a population. Brief 29.
This line of reasoning has not persuaded us of error in the Examiner’s
rejection. While claim 40 recites selecting persons based upon demographic
characteristics to form a survey panel, claim 40 does not recite that the
resultant research is unbiased nor does claim 40 recite any quantitative
measure of value associated with the data based upon the selection of people
on the survey panel. Thus, Appellants’ argument that data collected by
Hollenberg will be affected by the advertising information, has not
persuaded us of error. Further, as stated by the Examiner on page 37 of the
Answer, claim 40 does not restrict the source of the advertisement. The
Examiner has established that it is known in the art to collect survey data
from panels of people selected based upon demographic data and that such
surveys and the data logging of such surveys leads to inaccuracies which are
solved with automated systems. Answer 27, 28, and 37. We consider the
Examiner to have established that the combination of the references
represents the combination of known elements to perform their known
functions. Accordingly, we sustain the Examiner’s rejection of claims 40
through 52, 54 through 73 and 107 under 35 U.S.C. § 103(a).
Claims 83 through 89
As discussed above with respect to the rejection of claims 40 through
52, 54 through 73, and 107, the Examiner has provided a rationale for
combining Hollenberg, DeTemple, and Appellants’ admitted prior art.
Further, on pages 37 and 38 of the Answer, the Examiner has provided
further clarification of the rejection. As discussed above we consider the
Examiner to have established that the combination of the references
15

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

represents the combination of known elements to perform their known
functions. Accordingly, we sustain the Examiner’s rejection of claims 83
through 89 under 35 U.S.C. § 103(a).

Rejection under 35 U.S.C. § 103(a) based upon Hollenberg and
Degasperi.
Claims 110 through 114
ISSUE
Appellants’ contentions, on pages 31 and 32 of the Brief, with respect
to the rejection of claims 110 through 114 present us with the issue: did the
Examiner err in finding that the combination of Hollenberg and Degasperi
teach prompting the user for data associated with an amount of money spent,
a price paid, or credit card use?

ANALYSIS
Appellants’ arguments have not persuaded us that the Examiner erred
in finding that the combination of Hollenberg and Degasperi teaches
prompting the user for data associated with an amount of money spent, a
price paid, or credit card use. As discussed above with respect to the
rejection of claim 109 under 35 U.S.C. § 102(e) based upon Hollenberg,
Appellants’ arguments have not persuaded us of error in the Examiner’s
finding that Hollenberg anticipates the limitations of claim 109.
Accordingly, we sustain the Examiner’s rejection of claims 110 through 114
35 U.S.C. § 103(a) for the same reasons discussed above in the rejection of
claim 109 under 35 U.S.C. § 102(e) based upon Hollenberg.

16

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

CONCLUSION
Appellants’ arguments have persuaded us of error in the Examiner’s
rejection of:
1) Claims 109 through 114 and 117 under 35 U.S.C. § 112;
2) Claims 109 through 112 and 117 under 35 U.S.C. § 102(a) based
upon Battelle; and
3) Claims 107 under 35 U.S.C. § 102(e) based upon Hollenberg.

However, Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of:
1) Claims 40 through 52, 54 through 73, 83 through 86, 89, and 107,
under 35 U.S.C. § 102(a) based upon Battelle;
2) Claims 113 and 114 under 35 U.S.C. § 103(a) based Battelle and
Hollenberg;
3) Claims 87 and 88 under 35 U.S.C. § 103(a) as being unpatentable
over Battelle in view of Kiefl;
4) Claims 54 through 64, 109 through 117, and 117 under 35 U.S.C.
§ 102(e) based upon Hollenberg;
5) Claims 40 through 52, 54 through 73, 83 through 89, and 107 under
35 U.S.C. § 103(a) based on Applicant admitted prior art, Hollenberg, and
DeTemple; and
6) Claims 110 through 114 under 35 U.S.C. § 103(a) based on
Hollenberg in view of Degasperi

ORDER
The decision of the Examiner to reject claims 40 through 52, 54
17

Appeal 2010-010836
Application 10/211,997
Reissue Patent 6,098,048

through 73, 83 through 89, 107, and 109 through 117 is affirmed-in-part.
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)(iv).

AFFIRMED-IN-PART

ELD
HANLEY, FLIGHT & ZIMMERMAN, LLC
150 S. WACKER DR. SUITE 2100
CHICAGO, IL 60606
18