Ex Parte Salesin et al

Board of Patent Appeals and Interferences

May 16, 2012

10997521 (B.P.A.I. May. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID SALESIN, WILLIAM HILL, MICHAEL
STEVEN COOPER, and WILMOT WEI-MAU LI 1
____________________

Appeal 2011-002867
Application 10/997,521
Technology Center 3600
____________________
Before, MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE2
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Microsoft Corp. is the real party in interest.
2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed April 16, 2009) and Reply Brief (“Reply Br.,” filed August 10,
2009), and the Examiner’s Answer (“Ans.,” mailed June 10, 2009).
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THE INVENTION
Appellants’ disclosure relates to an on-screen advertising system that
employs paginated on-screen pages that adapt based on display and window
size based on a given relative paginated page size. (Abs.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for on-screen advertising, comprising:
a general purpose computing device; and
a computer program comprising program modules executable by
the computing device, wherein the computing device is directed
by the program modules of the computer program to,
author adaptable paginated pages for on-screen display wherein
the paginated pages can be adapted to a user’s display
characteristics and wherein the paginated pages comprise
advertising panes for receiving advertisements; and
create adaptable advertisements for placement in said advertising
panes in said adaptable paginated pages.
(App. Br., Claims Appendix 20.)

PRIOR ART REJECTIONS
The prior art reference relied upon by the Examiner in rejecting the
claims is:
Robotham et al. 6,704,024 B2 Mar. 9, 2004
Purvis 7,010,746 B2 Mar. 7, 2006
Hung 7,257,545 B1 Aug. 14, 2007
Abhyankar et al. 7,340,482 B2 Mar. 4, 2008

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The Examiner made the following rejections in the final rejection3:
 Claims 1-17 and 19-29 rejected under 35 U.S.C. § 103(a) as
unpatentable over Purvis, Hung, and Abhyankar.
 Claim 18 rejected under 35 U.S.C. § 103(a) as unpatentable over
Purvis, Hung, Abhyankar, and Robotham.
The Examiner entered the following new grounds of rejection in the
Examiner’s Answer:
 Claims 16-29 rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
 Claims 16-29 rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.

ISSUES4
Did the Examiner err in rejected that claims 16-29 are directed to non-
statutory subject matter under 35 U.S.C. § 101?
Did the Examiner err in rejecting claims 16-29 as being indefinite
under 35 U.S.C. § 112, second paragraph? The issue turns on whether
independent claims 16 and 24 fail to recite the necessary structure to

3 The rejection of claims 1, 15 and 16 under obviousness-type double
patenting has been rendered moot by Appellants’ Terminal Disclaimer filed
November 26, 2008. (See Ans. 14-15.)
4 We have considered in this decision only those arguments that Appellants
actually raised in the Briefs. Arguments which Appellants could have made
but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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perform the method steps for authoring adaptable paginated pages and
adaptable advertisement for on-screen display.
Does the combination of Purvis, Hung, and Abhyankar teach or
suggest the subject matter of claims 1-17 and 19-29 under 35 U.S.C.
§ 103(a)?
Does the combination of Purvis, Hung, Abhyankar, and Robotham
teach or suggest the subject matter of claim 18 under 35 U.S.C. § 103(a)?

FINDINGS OF FACT
Purvis
P1. Purvis is directed to a constraint-based document generator system
which finds document components and assembles them into a custom online,
web-based document. (Col. 1, ll. 6-20.)
P2. Purvis describes that its “document creator can specify any set of
variables/values/constraints, and then a constraint solving algorithm can
automatically create the final output document.” (Col. 5, ll. 42-45.)
P3. Purvis describes its document components can be advertisements
(e.g., embedded scripts, images) and specify their own set of dynamic
constraints such as size and content. (Col. 2, ll. 11-15; Col. 5, ll. 59-65.)

Hung
H1. Hung is directed to a portable electronic device which generates
configurable computer-readable coupons which are transmitted to the user’s
device and formatted locally on the device’s display. (Col. 2, ll. 6-15.)

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ANALYSIS
Claims 16-29 rejected under 35 U.S.C. § 101 as directed to non-statutory
subject matter.5
The Examiner finds that independent method claims 16 and 24 are
directed to non-statutory subject matter. Specifically, the Examiner finds
that neither of these method claims recites at least one significant step
performed by, or tied to a particular machine. (Ans. 14.) In response,
Appellants contend that “[c]laim 16 clearly calls out a computer and a
computing device’s display/user display” and “[c]laim 24 clearly calls out a
storage medium and a display of a computing device.” (Reply Br. 2-3.)
We are not persuaded by Appellants contention and in view of the
Supreme Court’s guidance in Bilski v. Kappos, 130 S. Ct. 3218 (2010),
conclude that independent claims 16 and 24 are directed to an abstract idea.
Turning first to independent claim 16, its first three steps recite
“obtaining,” “authoring,” and “creating,” none of which refer to a specific
machine by reciting structural limitations to any apparatus, or recite any
specific operations that would cause a machine to be the mechanism to
obtain a user’s computing device’s display characteristic, author pages for
on-screen display, or create adaptable advertisements. While we
acknowledge that the preamble states the claim is “[a] computer
implemented method,” we find this at best suggests a nominal use of a
general purpose computer and imposes no meaningful limits on the scope of
the claim apart from describing a field in which to conduct the process. See

5 Appellants argue claims 16-23 as a group and claims 24-29 as a group.
Accordingly, we select claims 16 and 24 as representative of each group. 37
C.F.R. § 41.37(c)(1)(vii) (2008).
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Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012)
(“Simply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render the claim patent
eligible”).
As such, under the broadest reasonable interpretation, the first three
steps of claim 16 could be performed in the human mind, or by a human
using a pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372 (Fed. Cir. 2011) (holding method for verifying the validity
of a credit card transaction over the Internet to be nonstatutory as an abstract
idea capable of being performed in the human mind or by a human using a
pen and paper). Nor do we find the “display screen” of claim 16 directs the
claim to statutory subject matter. Specifically, the last step of claim 16
recites “displaying . . . on the user’s display screen,” however, we find this
step to be no more than insignificant extra-solution activity which fails to
impart eligible subject matter into the claim. See Parker v. Flook, 437 U.S.
584, 590 (1978) (“The notion that post-solution activity, no matter how
conventional or obvious in itself, can transform an unpatentable principle
into a patentable process exalts form over substance”).
Likewise, independent claim 24 is substantially similar to claim 16,
but additionally recites the steps of “storing document content and
advertisements to a storage medium” and “rendering the adapted paginated
pages and adapted advertisements on the display.” However, Appellants
have failed to make any arguments which would persuade us that these
additional limitations direct claim 24 towards statutory subject matter.
Specifically, we find that the “storage medium” of claim 24 which
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Appellants “call out,” fails to constitute a particular machine, and in its
simplest form, we find that the “storing” step can reasonably be performed
by a human mind using pen and paper. Additionally, as discussed supra
with respect to the “display” step of claim 16, we find claim 24’s
“rendering” step to be no more than insignificant extra-solution activity
which fails to “impose meaningful limits on the claim’s scope.” See In re
Bilski, 545 F.3d 943, 61-62 (Fed.Cir.2008) (en banc).
“In considering patent eligibility under § 101, one must focus on the
claims. This is because a claim may “preempt” only that which the claims
encompass, not what is disclosed but left unclaimed.” Dealertrack v Huber
674 F.3d at 1334. Accordingly, we sustain the Examiner’s rejection of
claims 16-29 under 35 U.S.C. § 101 as directed to non-statutory subject
matter.

Claims 16-29 rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
The Examiner finds independent claims 16 and 24 indefinite for
failing to recite the structure necessary to perform the method steps for
authoring adaptable paginated pages and adaptable advertisement for on-
screen display. (Ans. 4.) We cannot agree.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). While we agree with the Examiner that claims 16 and 24 fail to
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recite a “particular machine,” we cannot agree with the Examiner that this
omission necessarily renders the claims unclear as to what is being claimed
by Appellants. Rather, the omission merely makes the claim broader than if
the specific structures were additionally recited. Breadth of a claim is not to
be equated with indefiniteness. In re Miller, 441 F.2d 689 (CCPA 1971).
Accordingly, we cannot sustain the Examiner rejection of claim 16-29
under 35 U.S.C. § 112, second paragraph.

Claims 1-17 and 19-29 rejected under 35 U.S.C. § 103(a) as unpatentable
over Purvis, Hung, and Abhyankar.
Independent claims 1, 15, 16, and 24
Appellants generally argue that the combination of Purvis, Hung, and
Abhyankar fails to teach or suggest all the limitations of independent claims
1, 15, 16, and 24. (App. Br. 8-9.) To support this argument, Appellants
make assertions based on Purvis, Hung, and Abhyankar, individually, rather
than the combination proposed by the Examiner. (App. Br. 8-18.)
Specifically, Appellants assert that Purvis fails to disclose on-screen selling
(App. Br. 10), Hung fails to disclose “adaptable paginated pages” (App. Br.
11), Abhyankar fails to disclose “adaptable paginated pages” (App. Br. 12),
and none of Purvis, Hung, or Abhyankar teach “‘adaptable paginated pages’
that have panes for accepting adaptable advertisements and adapt to a user's
display characteristics” (emphasis omitted),” as presently claimed. (App.
Br. 12.)
We are unpersuaded by Appellants’ assertions as they attack the
references separately, even though the rejection is based on the combined
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teachings of the references. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Contrary to Appellant’s assertions, the
Examiner relies on Purvis to disclose authoring and creating adaptable pages
with at least two advertising panes (e.g., Area A, Area B) using various
constraints. (Ans. 5.) Purvis’s system provides algorithms which can
automatically create a final output (e.g., HTML) document with different
components based on any set of variables, values, and/or constraints. (FF
P2.)
To address the feature wherein the “paginated pages are adapted to a
user’s display characteristics,” the Examiner relied on Hung. (Ans. 6.)
Hung describes a portable electronic device which generates configurable
computer-readable coupons which are transmitted to a user’s device and
formatted locally on the device for display. (FF H1.) Additionally, we find
that an ordinarily skilled artisan would understand and appreciate that the
variables, values, and constraints Purvis uses to format a HTML page could
include a user’s display size also. (FF P3.) Thus, we find that the
combination of Purvis and Hung teaches or suggests on-screen selling and
“authoring adaptable paginated pages for on-screen display wherein the
paginated pages can be adapted to a user’s display characteristics and
wherein the paginated pages comprise advertising panes for receiving
advertisements,” as generally recited by claims 1, 15, 16, and 24.
Moreover, we find that Appellants’ assertion that the combination of
Purvis, Hung, and Abhyankar fails to teach or suggest “‘adaptable paginated
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pages’ that have panes for accepting adaptable advertisements and adapt to a
user’s display characteristics” to be based on a paraphrased limitation rather
than an actual claimed limitation. (App. Br. 8-18.) Instead, we find that the
independent claims require “adaptable paginated pages” to be adapted to a
user’s display size, but do not require that the “adaptable advertisements” be
adaptable based on the user’s display size and characteristics. As such, we
find the advertisements taught by Purvis which specify their own set of
dynamic constraints such as size and content meet this limitation. (FF P3.)
Thus, the combination of Purvis, Hung, and Abhyankar teaches or suggests
the instant limitation.
Furthermore, contrary to Appellants’ contention that Purvis fails to
teach or suggest “authoring and creating adaptable pages for on-screen
display with one or more advertising panes” (App. Br. 11, 15), we find
Purvis expressly describes embedding one or more document components
(i.e., advertisements) into its web-based documents. (FF P1, P2.) In fact,
Purvis describes that its document components are adjustable based on their
own set of dynamic constraints, and can be embedded, thus suggesting that
the embedded document component be from a second server, as recited by
independent claim 15. (FF P3.) Accordingly, Appellants’ contention is
unpersuasive.

Dependent claims 2-14, 17, 19-23, and 25-29
Appellants do not separately argue claims 2-14, 17, 19-23, and 25-29,
which depend from independent claims 1, 16, and 24, respectively, and so
we sustain the rejection of these claims under 35 U.S.C. § 103(a) as
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unpatentable over Purvis, Hung, and Abhyankar for the same reasons we
found as to claims 1, 15, 16, and 24 supra.

Claim 18 rejected under 35 U.S.C. § 103(a) as unpatentable over Purvis,
Hung, Abhyankar, and Robotham.
Appellants make no new arguments with respect to claim 18, instead
Appellants assert that Robotham fails to cure the deficiencies of Purvis,
Hung, and Abhyankar as discussed supra with respect to independent claims
1, 15, 16, and 24. (App. Br. 18-19; Reply Br. 5.) Accordingly, we sustain
the rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over
Purvis, Hung, Abhyankar, and Robotham for the same reasons we found as
to claims 1-17 and 19-29, supra.

CONCLUSIONS
We conclude that the Examiner did not err in rejecting claims 16-29
under 35 U.S.C. § 101 as non- statutory subject matter, but did in fact err in
rejecting these same claims under 35 U.S.C. § 112, second paragraph.
Additionally, we conclude that the combination of Purvis, Hung, and
Abhyankar teaches or suggests the subject matter of claims 1-17 and 19-29
and the combination of Purvis, Hung, Abhyankar, and Robotham teaches or
suggests the subject matter of claim 18 under 35 U.S.C. § 103(a).

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DECISION
We affirm the Examiner’s rejections under 35 U.S.C. §§ 101 and
103(a), but reverse the Examiner’s rejection under 35 U.S.C. § 112, second
paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED

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