10769945 (B.P.A.I. Nov. 29, 2010)

Ex Parte Mott et al

Board of Patent Appeals and InterferencesNov 29, 2010

10769945 (B.P.A.I. Nov. 29, 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. 10/769,945 02/02/2004 Elyse Mott 030004 (BLL-0013) 9579 36192 7590 11/30/2010 AT&T Legal Department - CC Attn: Patent Docketing Room 2A-207 One AT&T Way Bedminster, NJ 07921 EXAMINER AHN, SANGWOO ART UNIT PAPER NUMBER 2168 MAIL DATE DELIVERY MODE 11/30/2010 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) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ELYSE MOTT, HEATHER N. STEVENS, and STACY L. DUEITT ____________________ Appeal 2009-005665 Application 10/769,945 Technology Center 2100 ____________________ Before: JOSEPH L. DIXON, DEBRA K. STEPHENS, and JAMES R. HUGHES, Administrative Patent Judges. STEPHENS, 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 2009-005665 Application 10/769,945 2 Appellants appeal under 35 U.S.C. § 134(a) (2002) from a final rejection of claims 1, 3-7, 9-13, and 15-19. Claims 2, 8, 14 and 20 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2010). We AFFIRM. Introduction According to Appellants, the invention is a system and method for the creation of a presentation of data from a centralized database containing relevant account and marketing data, the presentation being generated in a predefined format. (Spec. 2, para. [0002]). STATEMENT OF CASE Exemplary Claim(s) Claim 1 is an exemplary claim and is reproduced below: 1. A computer program product, the product having a storage medium, readable by a processing circuit, storing instructions for execution by the processing circuit for: responding to user access information for accessing data at a database, responding to a product identifier relating to the data at the database, the product identifier including a sub- product identifier relating to the identified product, the product identifier identifying the product as telecommunication service advertising and the sub-product identifier relating to demographic data, heading data, changing market data, delivery data, distribution data, market resource data, media performance data, advertising data, size and color data, return on investment data, or any combination of data comprising at least one of the foregoing, and responding to a command for accessing the database for data relating to the product identifier; Appeal 2009-005665 Application 10/769,945 3 presenting an account history screen, the account history screen for generating account information including a recommendation worksheet with customer and market information; presenting a sales visuals screen, the sales visuals screen for generating a list of products offered in a market and visuals supporting the products; presenting a return on advertising dollar screen for computing a return on advertising dollar for specific accounts, the return on advertising dollar screen including a calculator function including information providing a number of calls per month, a number of calls per year, a percentage of new customers, a number of new customers, a number of new customers sold, a percentage of new customers referred by customers sold and a total of new customers; accessing and retrieving from the database, data relating to the product identifier; responding to a command for generating a presentation in one of at least two predefined formats; and displaying the retrieved data in the one of at least two pre-defined formats and in a finished form. Prior Art The prior art relied upon by the Examiner in rejecting the claims on appeal is: Florance US 2002/0065739 A1 May 30, 2002 Shapira US 6,925,442 B1 Aug. 2, 2005 Appeal 2009-005665 Application 10/769,945 4 REJECTIONS Claims 1, 3-7, 9-13, and 15-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Florance and Shapira. (Ans. 3). GROUPING OF CLAIMS 1) Appellants argue all of the appealed claims (1, 3-7, 9-13, and 15- 19 ) as a group on the basis of claim 1 (App. Br. 5-6). We accept independent claim 1 as the representative claim. We will, therefore, treat claims 3-7, 9-13, and 15-19 as standing or falling with representative independent claim 1. We accept Appellants’ grouping of the claims. See 37 C.F.R. § 41.37(c)(1)(vii). ISSUE 1 35 U.S.C. § 103(a): claims 1, 3-7, 9-13, and 15-19 Appellants assert their invention is not obvious over Florance and Shapira because neither reference, nor a combination thereof teach the step of “a return on advertising dollar screen . . . for specific accounts” as recited in claim 1 (App. Br. 5-6). More specifically Appellants contend that Florence does not disclose a “return on advertising dollar for specific accounts” or return on any advertising (App. Br. 5). Appellants further argue that Shapira does not cure this deficiency since Shapira only tracks various ad campaign results and “determines a return on investment for ads posted on referring websites” (id.). Appellants next argue that the Examiner improperly combined Florance and Shapira (id.). Specifically Appellants contend that in Shapira, Appeal 2009-005665 Application 10/769,945 5 the reporting return on investment for Internet ad campaigns has nothing to do with the financial real estate analysis of Florance (App. Br. 6). The Examiner finds Florance clearly discloses “a financial analysis screen capable of making various computations based on variables in different criteria” and that “Florance's overall system and method . . . can be implemented on any type of service or product” (Ans. 8). The Examiner additionally finds that Shapira teaches “return on investment for ads posted on referring websites” and thus teaches the recited “return on advertising dollar for specific accounts” (id.). Thus, the Examiner finds the combination teaches or suggests the invention as recited in claim 1. As to the proper combination of the two references, the Examiner finds that the primary reference Florance is a financial analysis tool that has computation capability using various variables, while Shapira is directed toward variables, formulas, and other computation methods that can be incorporated into Florance’s financial analysis tool. Issue 1: Has the Examiner erred in concluding the combination of Florance and Shapira teaches a return on advertising dollar screen for specific accounts as recited in claim 1. ANALYSIS We agree with and adopt the Examiner’s findings in the Answer (Ans. 8-9), and provide additional support therefore in the following analysis. Appellants’ arguments for patentability are that neither Florance nor Shapira discloses “a return on advertising dollar screen” (App. Br. 5). However, we find Appellants’ predicate their arguments on non-functional descriptive Appeal 2009-005665 Application 10/769,945 6 material. In particular, Appellants’ arguments urging patentability are directed to the content of the data viewed by a person on a display. The return on advertising dollar data is not positively recited as affecting the function of the computer program product and the claimed return on advertising dollar data is not functionally related to the recited “presenting” function (claims 1 and 13). The label or content of this nonfunctional descriptive material is not entitled to weight in the patentability analysis. Such nonfunctional descriptive material does not further limit the claimed invention either functionally or structurally. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) (discussing cases pertaining to non-functional descriptive material); Ex parte Mathias, No. 2005-1851 (BPAI 2005), aff'd. In re Mathias, 84 USPQ2d 1276 (BPAI 2005) (nonprecedential)(191 Fed. Appx. 959 (Fed. Cir. 2006)); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005), (nonprecedential) (Fed. Cir. Appeal No. 2006-1003, aff’d Rule 36 June 12, 2006) (both cases treating data as nonfunctional descriptive material). Even assuming arguendo we were to give “a return on advertising dollar” patentable weight, we agree with and adopt the Examiner’s findings that the combination of Florance and Shapira teach “a return on advertising dollar screen” (Ans. 8-9). We further find that the claimed calculator recitation only provides broad sweeping nonfunctional informational parameters in the telecommunications field which does not limit the invention of independent claim 1. Appeal 2009-005665 Application 10/769,945 7 We further agree with and adopt the Examiner’s findings regarding the motivation to combine the techniques of Shapira with the system of Florance (Ans. 9). CONCLUSION Appellants have not shown the Examiner erred in finding that the combination of references teaches a return on advertising dollar screen for specific accounts as recited in claim 1 and commensurately recited in claim 13. Thus, Appellants have not shown the Examiner erred in concluding claim 1 is obvious over Florance and Shapira. Since independent claim 13 and dependent claims 3-7, 9-12, and 15-19 were all argued collectively based on the arguments presented for claim 1, Appellants have not shown the Examiner erred in concluding claims 3-7, 9-13, and 15-19 are obvious over Florance and Shapira. Accordingly, Appellants have not shown the Examiner erred in rejecting claims 1, 3-7, 9-13, and 15-19 under 35 U.S.C. § 103(a) for obviousness over Florance and Shapira. DECISION The Examiner’s rejection of claims 1, 3-7, 9-13, and 15-19 under 35 U.S.C. § 103(a) as being obvious over Florance and Shapira is affirmed. 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) (2009). AFFIRMED Vsh Appeal 2009-005665 Application 10/769,945 8 AT&T LEGAL DEPARTMENT - CC ATTN: PATENT DOCKETING ROOM 2A-207 ONE AT&T WAY BEDMINSTER NJ 07921