Ex Parte Suzuki

Board of Patent Appeals and Interferences

Sep 14, 2010

10301608 (B.P.A.I. Sep. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P Alexandria, 0 Box 1450 Virginia 22313- 1450
www uspto gov
23373 7590 09/16/2010
SUGHRUE MION, PLLC
APPLICATION NO.
EXAMINER
2100 PENNSYLVANIA AVENUE, N.W. LASTRA, DANIEL
101301,608 1112212002 Kei Suzuki Q73004 8959
FILING DATE
SUITE 800
WASHINGTON, DC 20037
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
ATTORNEY DOCKET NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
CONFIRMATION NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
09/16/2010 ELECTRONIC
sughrue@ sughrue.com
PPROCESSING@ SUGHRUE.COM
USPTO @ SUGHRUE.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Exparte KEI SUZUKI
Appeal 2009-014177
Application 10130 1,608
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W.
FETTING, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
1 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 2009-014177
Application 10130 1,608
STATEMENT OF THE CASE
Kei Suzuki (Appellant) seeks review under 35 U.S.C. 5 134 (2002) of a
final rejection of claims 1-2, 5-6, and 9-10, 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).
We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R §41.50(b).
THE INVENTION
The Appellant invented an advertisement inserting method and an
advertisement inserting service system for inserting an advertisement in a
receipt issued by a point of sale (POS) system. Specification 1:6-8.
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. An advertisement inserting method comprising:
[I] looking for an advertiser by providing advertisement
reception information for publicizing insertion of an
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed January 13, 2009) and Reply Brief ("Reply Br.," filed June 17,
2009), and the Examiner's Answer ("Ans.," mailed April 20, 2009), and
Final Rejection ("Final Rej .," mailed July 7, 2008).
Appeal 2009-014177
Application 10130 1,608
advertisement in a receipt to an advertiser terminal device
through a communication network;
[2] receiving advertisement insertion requirements indicating
desires of the advertiser applying for the insertion of the
advertisement and advertisement data generated by the
advertiser from the advertiser terminal device through the
communication network, and generating issuance instruction
information for issuing a detailed instruction about the insertion
of the advertisement based on the advertisement insertion
requirements; and
[3] transmitting the issuance instruction information and the
advertisement data to a POS terminal device, and allowing the
POS terminal device to print out the advertisement data to the
receipt based on the issuance instruction information when
issuing the receipt;
[4] receiving registration status information indicating a
registration status of the advertisement data from the POS
terminal device, and updating the advertisement reception
information showing possible advertisement data delivery
target shops and POS terminal devices based on the registration
status information; and
[5] excluding, at the step of updating, at least one delivery
target shop from the possible advertisement data delivery target
shops according to a number of advertisement data registered in
the POS terminal device.
THE REJECTIONS
The Examiner relies upon the following prior art:
Minowa US 200110034775 A1 Oct. 25,2001
Dedrick US 5,696,965 Dec. 9, 1997
Claims 1-2 and 5-6 stand rejected under 35 U.S.C. 5 102(e) as being
anticipated by Minowa.
Appeal 2009-014177
Application 10130 1,608
Claims 9-10 stand rejected under 35 U.S.C. 5 103(a) as unpatentable
over Minowa and Dedrick.
ISSUES
The issue of whether the Examiner erred in rejecting claims 1-2 and 5-6
under 35 U.S.C. 5 102(e) as being anticipated by Minowa turns on whether
Minowa describes limitation [5] of independent claim 1 and the same feature
in independent claim 5.
The issue of whether the Examiner erred in rejecting claims 9-10 under
35 U.S.C. 5 103(a) as unpatentable over Minowa and Dedrick turns on
whether the Appellant's arguments in support of independent claims 1 and 5
are found persuasive.
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 the Prior Art
Minowa
01. Minowa is directed to an advertisement placement system and
method for printing advertisements, introductions, event
announcements and other types of information to a receipt or
customer service number ticket issued by a point-of-sale (POS)
terminal. Minowa ¶ 0002.
Appeal 2009-014177
Application 10130 1,608
02. Minowa describes an applicationldistribution server (ADS)
system that manages advertisement information, including
receiving an application for advertisement placement and
distributing advertisement placement information. Minowa ¶
0050. A customer accesses the ADS system to request and
receive an application requiring the input of customer information
and advertisement information. Minowa ¶' s 0052-0053.
Submitted customer information and advertisement management
information is stored in storage units such as databases. Minowa ¶
0062. After the fee payment for the advertisement is received, the
system distributes advertisement information to the POS
terminals. Minowa ¶ 0054. The POS terminals print the received
advertisements on receipts issued by the POS terminal. Minowa ¶
0055. An information distribution manager terminates the
printing of advertisements if the advertising period has expired or
the maximum number of specified copies of the advertisement has
been exceeded. Minowa ¶ 0065.
03. While submitting an application for advertisement placement, a
customer enters advertisement management information. Minowa
¶ 0 10 1. The advertisement management information includes an
advertisement distribution area, advertisement placement,
advertisement period, and an advertisement target. Minowa ¶
0 10 1. The advertisement distribution area can be designated by
specific store names or geographic regions. Minowa ¶ 0101.
Advertising target refers to the type of customer, such as
Appeal 2009-014177
Application 10130 1,608
malelfemale or age ranges, whose receipts should carry a
particular advertisement. Minowa ¶ 0102 and Fig. 10.
Dedrick
04. Dedrick is directed to an appraisal agent that obtains electronic
information from electronic information servers on behalf of an
individual user. Dedrick 1 :7- 1 1.
ANALYSIS
Claims 1-2 and 5-6 rejected under 35 U.S. C. § 102(e) as being
anticipated by Minowa
The Appellant contends that Minowa fails to describe limitation [5] of
claim 1. App. Br. 10- 12 and Reply Br. 4-5. We agree with the Appellant.
Limitation [5] requires excluding a target shop from the possible
advertisement data based on the number of advertisement data registered in
the POS terminal. Minowa describes an advertisement placement system
that allows a customer to submit advertisement information to be placed on
receipts issued by a POS terminal. FF 01-02. Minowa further describes that
a customer can specify an advertisement distribution area, advertisement
placement, advertisement period, and an advertisement target when
submitting advertisement management information. FF 03. The
advertisement distribution area designates specific store names or
geographic regions that the advertisement is transmitted to. FF 03.
However, Minowa fails to specifically describe excluding a store that
can receive advertisement data based on a number of advertisement data
registered in the POS terminal. The Examiner argues that the Appellant is
Appeal 2009-014177
Application 10130 1,608
arguing limitation of excluding a shop from the possible shops and this
limitation is not found in the claims. Ans. 5. However, limitation [5] clearly
requires excluding at least one delivery target shop based on registered
advertisement data. That is, at least one shop that is originally targeted to
receive the advertisement data is to be excluded. The Examiner further
argues that Minowa describes terminating the further printing of
advertisements based on a number of actually printed advertisements. Ans.
5-6. However, limitation [5] requires that the shop be excluded from
receiving the advertisement data whereas Minowa describes that the target
shop has already received advertisement data but is stopped from printing
more advertisements. As such, this description in Minowa is not the same as
the limitations being claimed and the Examiner's argument is not found to
be persuasive.
Independent claim 5 recites this same feature and dependant claims 2
and 6 incorporate this feature by reference. As such, the Appellant's
arguments in support of these claims are found persuasive for the same
reasons discussed supra.
Claims 9-10 rejected under 35 U.S.C. § 103(a) as unpatentable over
Minowa and Dedrick
The Appellant contends that Minowa is deficient in describing
independent claims 1 and 5 and is therefore deficient in describing
dependant claims 9-10 for the same reasons presented supra. App. Br. 13.
We agree with the Appellant. The Appellant's arguments supra were found
persuasive and are found persuasive here for the same reasons.
Appeal 2009-014177
Application 10130 1,608
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. 5 41.50(b). Claims 1 and 5 are rejected under 35 U.S.C. 5 103(a)
as unpatentable over Minowa.
As discussed supra, Minowa describes an advertisement placement
system where a customer is enabled to specify store names or geographic
region to transmit advertisement data (FF 02-03), but fails to specifically
describe excluding a target delivery shop that can receive advertisement data
based on the number of advertisement data registered in the POS terminal.
Minowa further describes that advertisement management information and
customer information is stored in storage units such as databases. FF 02.
That is, Minowa describes the feature to exclude shops by specifying target
shops while omitted shops to be excluded in the advertisement management
information and further describes cataloging and registering advertisement
management information. A person with ordinary skill in the art would have
found it obvious to modify Minowa such that the maximum number of
registered advertisement data controlled centrally by the information
distribution manager is extended to the POS terminals and such a
modification would have been predictable to avoid saturation of
advertisement data. As such, claims 1 and 5 are obvious in view of Minowa.
Appeal 2009-014177
Application 10130 1,608
CONCLUSIONS OF LAW
The Examiner did err in rejecting claims 1-2 and 5-6 under 35 U.S.C.
5 102(e) as being anticipated by Minowa.
The Examiner did err in rejecting claims 9-10 under 35 U.S.C. 5 103(a)
as unpatentable over Minowa and Dedrick.
A new ground of rejection is entered 37 C.F.R. 5 41.50(b) in which
claims 1 and 5 are rejected under 35 U.S.C. 5 103(a) as unpatentable over
Minowa.
DECISION
To summarize, our decision is as follows.
The rejection of claims 1-2 and 5-6 under 35 U.S.C. 5 102(e) as
anticipated by Minowa is not sustained.
The rejection of claims 9-10 under 35 U.S.C. 5 103(a) as unpatentable
over Minowa and Dedrick is not sustained.
A new ground of rejection is entered pursuant to 37 C.F.R. 5 41.50(b).
o Claims 1 and 5 are rejected under 35 U.S.C. 5 103(a) as
unpatentable over Minowa.
This decision contains new grounds of rejection pursuant to 37 CFR
5 41.50(b). 37 CFR 5 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Appeal 2009-014177
Application 10130 1,608
37 CFR 5 41.50 (b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the claims
so rejected or new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard under
5 41.52 by the Board upon the same record . . . .
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
REVERSED
41.50(b)
mev
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