10127119 (B.P.A.I. May. 23, 2012)

Ex Parte Shaughnessy et al

Board of Patent Appeals and InterferencesMay 23, 2012

10127119 (B.P.A.I. May. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MONICA J. SHAUGHNESSY, MARK J. ALTENDORF, ARTHUR M. SAXBY, and GAURAV SOOD ____________ Appeal 2010-006594 Application 10/127,119 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006594 Application 10/127,119 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-2, 4-5, and 12-15 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 to user selectable desktop customizations that indirectly promote products and services (Spec. [0003]). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method comprising: installing an operating system on a computer system; installing a custom program by a computer manufacturer, the custom program provides sponsor-based customizations regarding operation of the operating system, the customizations advertising particular sponsors; and then allowing a user to choose at least one sponsor-based customization; applying the at least one sponsor-based customization; and obtaining revenue by the computer manufacturer from a sponsor for each user who chooses at least one sponsor-based customization. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Stedman US 6,262,726 B1 Jul. 17, 2001 Jenne US 2003/0122864 A1 Jul. 3, 2003 Appeal 2010-006594 Application 10/127,119 3 Willers US 2004/0204988 A1 Oct. 14, 2004 The following rejections are before us for review: 1. Claims 1-2, 4-5, and 12-15 are rejected under 35 U.S.C. § 101. 2. Claims 5 is rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 3. Claims 1-2, 4, and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Stedman and Jenne. 4. Claims 12-14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Stedman, Jenne, and Willers. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence:1 FF1. Stedman has disclosed a factory installing desktop components for an active desktop (Title). The installation files execute upon the first invocation of the operating system by the user and install the custom desktop components (Abstract). FF2. Stedman at col. 1:66-67 discloses that customers may request a particular customization such as an application to display the corporate PC usage guidelines. FF3. Stedman at col. 2:5-24 discloses that when invoked an installation program installs custom desktop components. FF4. Stedman at col. 5:48-67 discloses that a graphical image may be 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). Appeal 2010-006594 Application 10/127,119 4 marketing information from the manufacturer. FF5. Stedman at col. 1:66-67, col. 2:5-24, col. 5:48-67, and col. 7:55-61 does not disclose allowing a user to choose at least one sponsor-based customization. FF6. Jenne has disclosed a method for displaying commercial messages during a user waiting time (Title). FF7. Jenne at [0019] and [0020] discloses that advertising can generate additional revenue for a computer manufacturer ANALYSIS Rejections under 35 U.S.C. § 101 The Examiner has rejected claim 1 under 35 U.S.C. § 101 as reciting purely mental steps or insignificant extra-solution activity (Ans. 3-4, 11-13). In contrast, the Appellants argue that this rejection is improper (Br. 11-14, Reply Br. 3-4). We agree with the Appellants. Claim 1 includes method steps for “installing an operating system on a computer system”, “installing a computer program”, “applying the …customization”, and “obtaining revenue …from a sponsor” which are not abstract ideas or insignificant extra-solution activity in the context of the claim. We further find that claim 1 recites more than a computer aided method without specifying any level of involvement or detail of the computer because the claim requires a custom program which provides sponsor-based customizations regarding operation of the operating system, and the customizations advertising particular sponsors. Appeal 2010-006594 Application 10/127,119 5 For these reasons the rejection of the cited claims 1-2, 4-5, and 12-15 under 35 U.S.C. § 101 is not sustained. Rejection under 35 U.S.C. § 112, second paragraph The Examiner has rejected claim 5 under 35 U.S.C. § 112, second paragraph, because the phrase “at least one selected the group consisting of: a wallpaper setting; a cursor setting, and a screen saver” in the claim is unclear. The Appellants acknowledge at typographical error and that the phrase should recite “at least one selected [from] the group consisting of” but that it is clear as to what is being claimed (Br. 10-11, Reply Br. 1-2). We agree with the Appellants. The claim is considered to have a typographical error acknowledged by the Appellants (Reply Br. 1) and should read “at least one selected [from] the group consisting of”. This cited claim limitation is merely in Markush format (see M.P.E.P. 2173.05(h)) and it is clear as to what is being claimed as noted by the Appellants (Br. 10-11) and therefore this rejection of record is not sustained. The typographical error in the claim should be corrected by the Appellants or by an Examiner’s Amendment should the case pass to issue. Rejections under 35 U.S.C. § 103(a) The Appellants argue that the rejection of claim 1 is improper (Br. 14- 20). In contrast, the Examiner has determined that the rejection of record is proper (Ans. 5-6, 13-19). We agree with the Appellants. The Examiner has determined that the claim limitation for “allowing a user to choose at least one sponsor-based Appeal 2010-006594 Application 10/127,119 6 customization” is shown at col. 1:66-7, col. 2:5-24, and col. 5:48-67 (Ans. 5). These citations to Stedman do not show allowing a user to choose at least one sponsor-based customization (FF5) which would generate revenue for the computer manufacturer from a sponsor as the claim requires. Jenne at [0019] and [0020] does disclose that advertising can generate additional revenue for a computer manufacturer (FF7). Here, there is no articulated reasoning with rational underpinnings to modify Stedman with Jenne to meet the requirements of claim 1. Claim 1 sets forth the claimed limitations in a particular sequence (Reply Br. 5-6) and manner which has not shown to be obvious based on these cited prior art references. For these reasons the rejection of claim 1 and its dependent claims is not sustained. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims as listed in the Rejection section above. DECISION The Examiner’s rejection of claims 1-2, 4-5, and 12-15 is reversed. REVERSED MP