Ex Parte Gonzalez-Rivas

Board of Patent Appeals and Interferences

Sep 23, 2010

09882511 (B.P.A.I. Sep. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
TJnited States Patent and Trademark Office
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091882,511 0611 51200 1 Carlos G. Gonzalez-Rivas 6511 8335
APPLICATION NO.
22922 7590 09/27/20 10
REINHART BOERNER VAN DEUREN S.C.
EXAMINER
FILING DATE
ATTN: LINDA KASULKE, DOCKET COORDINATOR BOVEJA, NAMRATA
1000 NORTH WATER STREET
SUITE 2 100
FIRST NAMED INVENTOR
I ARTUNIT I PAPERNUMBER I
MILWAUKEE, WI 53202 3622
ATTORNEY DOCKET NO. CONFIRMATION NO.
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPAdmin @reinhartlaw.com
09/27/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte CARLOS G. GONZALEZ-RIVAS
Appeal 2009-01 1637
Application 09/882,5 11
Technology Center 3600
Before JAMES D. THOMAS, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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 2009-01 1637
Application 09/882,5 1 1
Carlos G. Gonzalez-Rivas (Appellant) seeks review under
35 U.S.C. 5 134 (2002) of a final rejection of claims 1-28, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. 5 6(b) (2002).
The Appellant invented a way of using a displayed website logo on a
television commercial to let consumers log onto the website and participate
in interactive online contests (Specification I:¶ 0001).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A method of increasing consumer awareness of products or
services which are advertised in television commercials,
comprising :
[I] enhancing a plurality of television commercials by
displaying a marketing website logo during each of said
plurality of enhanced television commercials;
[2] providing a marketing website which is associated with and
identified by said marketing website logo and which is
accessible by consumers;
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed September 5, 2008) and the Examiner's Answer ("Ans.," mailed
March 6, 2009).
Appeal 2009-01 1637
Application 09/882,5 1 1
[3] displaying to a consumer who has entered said marketing
website in response to viewing a particular enhanced television
commercial
a list of television networks on which enhanced
television commercials have aired, and
prompting the consumer
to select the particular television network on which the
consumer viewed the particular enhanced television
commercial;
[4] displaying to the consumer
a list of television shows broadcasted by the particular
television network during which television shows
enhanced television commercials have been broadcasted,
and
prompting the consumer
to select the particular television show during which the
consumer viewed the particular enhanced television
commercial;
[5] displaying to the consumer
a list of enhanced television commercials which were
broadcasted during the particular television show, and
prompting the consumer
to select the particular enhanced television commercial;
and
[6] providing a game or contest for the consumer to play
which game or contest provides information on or relates
to the particular product or service advertised by the
particular enhanced television commercial.
Appeal 2009-01 1637
Application 091882,5 1 1
The Examiner relies upon the following prior art:
Lesandrini US 200310036944 A1 Feb. 20,2003
Bacardi Brings Out the Bottle in Cable-TVAd for Amaretto - Spot Is
Firm's First to Blatantly Display Product O'Connell May 2001
Job-Hunting Web Sites' Ads Will Duel at Super Bowl Silverman et al.
Jan. 2001
Put your hiring into high gear! Introducing Monster MomentumTM
http://www. web.archive.org/web/20010418150929/momentum.Monster.c
om/ (last visited Apr. 18, 2001).
Claim 7 stands rejected under 35 U.S.C. 5 112, second paragraph, as
failing to particularly point out and distinctly claim the invention.'
Claims 1-3, 6, and 8-1 1 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over O'Connell, Silverman, and Official Notice.
Claims 4, 5, and 7 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over O'Connell, Silverman, Monster.com, and Official Notice.
Claims 12-26 stand rejected under 35 U.S.C. 5 103(a) as unpatentable
over O'Connell, Silverman, Lesandrini, and Official Notice.
Claim 27 stands rejected under 35 U.S.C. 5 103(a) as unpatentable over
O'Connell, Silverman, Monster.com, and Official Notice.
Claim 28 stands rejected under 35 U.S.C. 5 103(a) as unpatentable over
O'Connell, Monster.com, and Official Notice.
3 A similar rejection of claim 4 was withdrawn at Answer 28.
4
Appeal 2009-01 1637
Application 09/882,5 1 1
ISSUES
The issue as to indefiniteness hinges on whether one of ordinary skill
would have understood how a logo could identify a type of printed material.
The issue of obviousness hinges on whether the Examiner presented
evidence that the nested selection in the claims were known to those of
ordinary skill.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related To Dlferences Between The Claimed Subject Matter And
The Prior Art
01. The Examiner presented no findings as evidence that it was
known to use a series of nested prompts to obtain information.
ANALYSIS
Claim 7 rejected under 35 U.S. C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the invention.
Claim 7 recites displaying a readily recognizable logo or other indicia
that identifies a type of printed material. The Examiner found that a logo
does not identify the purpose of a printed material. Answer 28-29. The
Appellant responds that Fig. 8 Reference 102 shows a biller logo that
identifies a bill as a type of printed material. Appeal Br. 25. We agree that
the contents of a logo can express many things; including a type of printed
material and that the figure in the Appellant's disclosure is such an example.
Appeal 2009-01 1637
Application 09/882,5 1 1
Claims 1-28 rejected under 35 U.S.C. § 103(a) as unpatentable over
O'Connell, Oficial Notice, and various combinations of Silverman,
Monster.com, and Lesandrini.
All of the claims recite, using a website and indicia, providing
information, a contest, or a game. The Examiner found that the references
described these limitations. All of the claims except for claim 27, recite a
three step nested query to determine how a commercial was found. Claim
27 recites that the query occurs with a series of screens. The Examiner took
Official Notice of the notoriety of asking how a consumer found out about a
marketing promotion. The Examiner also took notice that it was predictable
to point to a query result with a mouse. Answer 4-6.
The Appellant argues that there is a lot more in the claims and so the
Official Notice is improper and the Examiner failed to present a prima facie
case. Appeal Br. 18-23. The Examiner responded that the Appellant's
traversal of the Official Notice is improper. Answer 26. While we agree
with the notoriety of querying for how a consumer found out about a
promotion, and that the Appellant has not properly traversed the Official
Notice, the Examiner's response misses the point.
The Examiner presented no findings as evidence that it was known to
use a series of nested prompts to obtain information. FF 01. This is the
import of the Appellant's arguments, viz. there is a lot in those limitations
(e.g. steps [3]-[5] of claim 1) that the Examiner made no findings toward.
We must agree with the Appellant that the Examiner failed to present a
prima facie case of obviousness as not all the limitations were shown to be
known.
Appeal 2009-01 1637
Application 09/882,5 1 1
CONCLUSIONS OF LAW
Rejecting claim 7 under 35 U.S.C. 5 112, second paragraph, as failing to
particularly point out and distinctly claim the invention is in error.
Rejecting claims 1-28 under 35 U.S.C. 5 103(a) as unpatentable over
O'Connell, Official Notice, and various combinations of Silverman,
Monster.com, and Lesandrini is in error.
DECISION
To summarize, our decision is as follows.
The rejection of claim 7 under 35 U.S.C. 5 112, second paragraph, as
failing to particularly point out and distinctly claim the invention is
not sustained.
The rejection of claims 1-3, 6, and 8-1 1 under 35 U.S.C. 5 103(a) as
unpatentable over O'Connell, Silverman, and Official Notice is not
sustained.
The rejection of claims 4, 5, and 7 under 35 U.S.C. 5 103(a) as
unpatentable over O'Connell, Silverman, Monster.com, and Official
Notice is not sustained.
The rejection of claims 12-26 under 35 U.S.C. 5 103(a) as
unpatentable over O'Connell, Silverman, Lesandrini, and Official
Notice is not sustained.
The rejection of claim 27 under 35 U.S.C. 5 103(a) as unpatentable
over O'Connell, Silverman, Monster.com, and Official Notice is not
sustained.
Appeal 2009-01 1637
Application 09/882,5 1 1
The rejection of claim 28 under 35 U.S.C. 5 103(a) as unpatentable
over O'Connell, Monster.com, and Official Notice is not sustained.
REVERSED
mev
Address
REINHART BOERNER VAN DEUREN S.C.
ATTN: LINDA KASULKE, DOCKET COORDINATOR
1000 NORTH WATER STREET
SUITE 2100
MILWAUKEE, WI 53202