Ex Parte Ozaki et al

Board of Patent Appeals and Interferences

Oct 21, 2009

09933766 (B.P.A.I. Oct. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TORU OZAKI, MAKOTO YOSHIOKA,
and HIDEFUMI AOE
____________

Appeal 2009-000700
Application 09/933,766
Technology Center 3600
____________

Decided: October 22, 2009
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
rejection of claims 1-9 and 28-29 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed a commerce
information distribution system having a station broadcasting a commercial
message broadcast and information relating to the broadcast. A terminal
transmits commercial message broadcast designation information to a
commerce outsourcing center. (Spec. 7:9-25). Claim 1, reproduced below,
is representative of the subject matter of appeal.
1. A commerce information managing method for managing
commerce information, comprising:
receiving a request to generate a commercial message broadcast
and commercial message information relating to the
commercial message broadcast from at least one of a
merchandise producer and a service provider;
requesting a concurrent broadcast of the commercial message
broadcast and the commercial message information relating to
the commercial message broadcast generated according to
commerce information, during broadcast of a main program;
and
receiving at a broadcast reception terminal device of a client, as
part of the commerce information, commercial message
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broadcast designation information contained in the commercial
message information and designating at least the commercial
message broadcast when the client sees the commercial
message broadcast, performs an instruction for displaying
the commercial message information relating to the commercial
message broadcast and purchases merchandise or a service in
the commercial message information relating to the commercial
message broadcast.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Mayer US 5,774,534 Jun. 30, 1998
Sahota US 2002/0010928A1 Jan. 24, 2002

The following rejections are before us for review:
1. Claims 1-3, 6-9, and 28-29 are rejected under 35 U.S.C.
§ 102(e) as anticipated by Sahota.
2. Claims 4-5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sahota and Mayer

THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
With regards to claims 1-7, 9, and 28-29, this issue turns on whether
the term “commercial message broadcast designation information
…designating at least the commercial message broadcast” as recited in
claim 1 for example is non-functional descriptive material and disclosed by
the Sahota reference.
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With regards to claim 8, this issue turns on whether the term “shop” is
broad enough to encompass an Internet retailer.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Sahota discloses a method and system for integrating Internet
advertising with television commercials (Title and Abstract).
FF2. Sahota discloses that Internet advertising content may be integrated
with TV commercial content for display (Abstract).
FF3. Sahota discloses the display of both a commercial 520 and an Internet
address 510 on a TV 104 (Fig. 5A).
FF4. Sahota discloses that a user of a TV can launch interactive services by
accessing content 510. For example, a user accessing interactive content
510 will begin interacting with a website as shown in Fig. 5B [0061].
FF5. Sahota discloses the use of Internet 10 systems in the method (Fig. 1).

PRINCIPLES OF LAW
Principles of Law Relating Claim Construction
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim.

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) In KSR, the Supreme Court emphasized “the need
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for caution in granting a patent based on the combination of elements found
in the prior art,” id. at 415-16.

ANALYSIS
1-7, 9 and 28-29
The Appellants argue that the rejection of claim 1 is improper because
Sahota fails to disclose “commercial message broadcast designation
information…designating at least the commercial message broadcast” as
recited in claim 1 at lines 10-11 (Br. 5, Reply Br. 2-4). The Appellants
argue that Sahota only discloses the website address of a retailer and that
this does not designate the commercial message in anyway (Br. 5). The
Appellants argue that nothing in Sahota suggests the content of the TV and
data broadcast might provide the capability to designate what commercial
was viewed by a client (Br. 5). The Appellants have also argued the cited
above limitation in claim 1 is not non-functional descriptive material but
required for the operations of the method and functionally related to the
recited method (Br.8-9, Reply Br. 5-7).
In contrast, the Examiner has determined that the cited limitation for
“commercial message broadcast designation information…designating at
least the commercial message broadcast” as recited in claim 1 is non-
functional descriptive material (Ans. 10-11). The Examiner has further
determined that Sahota anticipates claim 1 regardless of the limitation being
non-functional descriptive material (Ans. 8-10).
We agree with the Examiner. We begin first by determining whether
the cited limitation in claim 1 for “commercial message broadcast
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designation information…designating at least the commercial message
broadcast” is non-functional descriptive material.
Descriptive material can be characterized as either “functional
descriptive material” or “nonfunctional descriptive material.” Exemplary
“functional descriptive material” consists of data structures and computer
programs, which impart functionality when employed as a computer
component. “Nonfunctional descriptive material” includes but is not limited
to music, literary works and a compilation or mere arrangement of data.
When functional descriptive material is recorded on some computer readable
medium, it becomes structurally and functionally interrelated to the
medium and will be statutory in most cases since use of technology permits
the function of the descriptive material to be realized. Compare In re Lowry,
32 F.3d 1579, 1583-84 (Fed. Cir. 1994) (claim to data structure stored on
a computer readable medium that increases computer efficiency held
statutory) with In re Warmerdam, 33 F.3d 1354, 1361-62 (Fed. Cir. 1994)
(claim to computer having a specific data structure stored in memory held
statutory product-by-process claim but claim to a data structure that referred
to ideas reflected in nonstatutory process rather than referring to a physical
arrangement of the contents of a memory held nonstatutory).
When presented with a claim including nonfunctional descriptive
material, an Examiner must determine whether such material should be
given patentable weight. The Patent and Trademark Office (PTO) must
consider all claim limitations when determining patentability of an invention
over the prior art. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). The
PTO may not disregard claim limitations comprised of printed matter. See
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Gulack, 703 F.2d at 1384; see also Diamond v. Diehr, 450 U.S. 175, 191
(1981).
However, the PTO need not give patentable weight to descriptive
material absent a new and unobvious functional relationship between the
descriptive material and the substrate. See Gulack, 703 F.2d at 1386. See
also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d
1579, 1583-84 (Fed. Cir. 1994). The burden of establishing the absence of a
novel, nonobvious functional relationship rests with the PTO. In re Lowry,
32 F.3d at 1584. We conclude that when the prior art describes all of the
claimed structural and functional relationships between descriptive material
and the substrate, but the prior art describes a different descriptive material
than the claim, then the claimed descriptive material is non-functional and
will not constitute a sufficient difference from the prior art to establish
patentability. That is, we conclude that such a scenario presents no new and
unobvious functional relationship between the descriptive material and the
substrate.
Here with regards to claim 1 the Appellants argue that the last four
lines of claim 1 describe what happens after the information recited on lines
9-11 of claim 1 is received “at a broadcast reception terminal device of
a client” i.e., “the client….performs an instruction for displaying the
commercial message information relating to the commercial message
broadcast and purchase merchandise or a service in the commercial message
information relating to the commercial message broadcast” (Reply Br. 5-6).
We disagree. We find in claim 1 there is not a functional relationship
between the operation of the method steps and the “commercial broadcast
message designation information contained in the commercial message
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information” recited in the claim. Claim 1 requires receiving at a broadcast
reception device of a client “commerce information” which includes in part
data that is “commercial message broadcast designation information”
which as recited in the claim is merely provided data and which imparts no
functional relationship to the operation of the method step of receiving the
commerce information and is only data. Note that the term “commercial
message broadcast designation information” is not even referenced
anywhere else in the claim where a functional relationship could be shown
to occur. Thus, the claim limitations cited by the Appellants are considered
non-functional descriptive matter.
Here, Sahota discloses that the TV receives and displays both a
commercial 520 and an Internet address 510 (FF3) which serves as
“commercial message information” meeting the cited and argued claim
requirements in claim 1. We do not find the subject matter of the
operational data “designation information” to be a patentable distinction
since Sahota discloses the method steps and the “designation information” in
the claimed method does not functionally change the implemented method
in that it does not alter how the process steps are to be performed to achieve
the utility of the invention. Rather, these data elements are analogous to
printed matter in that they represent merely underlying data in a database.
See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994). As such, the
Appellants have failed to demonstrate error in the Examiner’s determination
of anticipation of claim 1 under 35 U.S.C. § 102(e) as unpatentable over
Sahota.
This case is distinguished from Lowry, because in Lowry the claims
were directed to data structures stored in memory that contained both
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information used by application programs and information regarding their
physical interrelationships within a memory. Id. As such, the court found
that the claimed data structures of Lowry's invention were not analogous to
printed matter because they managed information by imposing a physical
organization on the data and provided increased computing efficiency. Id.
By contrast, the present invention is directed to a method where the only
distinction to the prior art is the content of the data elements. Unlike in
Lowry, the data in the present case does not impose any functional
requirements on the claimed method or otherwise depend functionally on
the information content of the data elements which relate to commercial
message information. Nonfunctional descriptive material cannot render
nonobvious an invention that would have otherwise been obvious. In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the
invention form the prior art in terms of patentability). See also Ex parte
Mathias, No. 2005-1851 (BPAI Aug. 19, 2005), aff’d. In re Mathias, No.
2006-1103, 2006 WL 2433879 (Fed. Cir. Aug. 17, 2006) (Rule 36,
unpublished) and Ex parte Curry, No. 2005-0509 (BPAI Jun. 30, 2005),
aff'd. In re Curry, No. 2006-1003 (Fed. Cir. Jun. 12, 2006) (Rule 36,
unpublished) (both cases treating data as nonfunctional descriptive material).
Regardless, even if the limitation in claim 1 for “commercial message
broadcast designation information…designating at least the commercial
message broadcast” was not considered to be non-functional descriptive
material, we still find Sahota to disclose the cited limitation. Sahota
discloses that an Internet website 510 may be displayed as advertisement in
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Fig. 5A (FF3). Given the broadest reasonable interpretation, the Internet
address alone serves as a “commercial message information” and the
website address displayed serves as “commercial message broadcast
designation information.” There is no requirement in claim 1 that the
commercial message broadcast must consist of two components including
both the TV commercial and the Internet address. Sahota’s Internet address
alone may serve as “commercial message information” and “commercial
message broadcast designation information.” For these reasons, the rejection
of claim 1 is sustained. The Appellants have provided the same or similar
arguments for claims 4-5 and 28-29 and the rejection of these claims are
sustained as well.

Claim 8
The Appellants separately argue that the rejection of claim 8 is
improper because the word “shop” refers to a physical location and not an
Internet website.
We disagree. Turning to the Appellants’ Specification we note that it
refers to the use of Internet 7 systems (FF5). Giving the term “shop” its
broadest reasonable interpretation in light of the Specification we take this
to include Internet “shops.” For these reasons the rejection of claim is
sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-3, 6-9, and 28-29 under 35 U.S.C. § 102(e) as
anticipated by Sahota.
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We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 4-5 under 35 U.S.C. § 103(a) as unpatentable over Sahota
and Mayer.

DECISON
The Examiner’s rejection of claims 1-9 and 28-29 is sustained.

AFFIRMED

JRG

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