Ex Parte DeGross

Patent Trial and Appeal BoardApr 14, 2016

10022627 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 10/022,627 101034 7590 Lee M, DeGross 400 Park Place, # 1 H Fort Lee, NJ 07024 FILING DATE FIRST NAMED INVENTOR 12/17/2001 Lee Michael DeGross 04/14/2016 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 1204 EXAMINER ROSWELL, MICHAEL ART UNIT PAPER NUMBER 2615 MAILDATE DELIVERY MODE 04/14/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte LEE MICHAEL DEGROSS Appeal2014-005557 Application 10/022,627 Technology Center 2600 Before JEAN R. HOMERE, JASON V. MORGAN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellant, proceeding prose, appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1, 20, 29, and 38--40, the only claims pending in the application. (App. Br. 5). We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Appeal2014-005557 Application 10/022,627 STATEMENT OF THE CASE Appellant's invention is generally directed to blocking and revealing internet advertisements. (Spec. 3). Claims 1, 29, and 38, reproduced below, are representative of the claimed subject matter: 1. A first means for blocking and revealing internet advertising compnsmg: (a) a second means for placing an image or images of a blocking nature of sufficient size to substantially conceal an internet advertising, (b) a third means for using a selection method to choose and make the blocking image or images disappear and reveal said internet advertising, whereby a human can view and hear said internet advertising only if said human wants by using said selection method. 29. A process to reveal a covered internet advertisement compnsmg: (a) presenting a covered internet advertisement, (b) displaying a covering non-advertising image, ( c) having a selection method, ( d) constructing means for said covering non-advertising image to substantially conceal said covered internet advertisement, ( e) utilizing said selection method to choose said covering non- advertising image that substantially disappears to reveal said covered internet advertisement, whereby a person, without taking any action, is shielded from said covered internet advertisement by said covering non- advertising image, and 2 Appeal2014-005557 Application 10/022,627 whereby a person can view said covered internet advertisement only if said person wants by using said selection method. 38. A system for exhibiting a covered computer advertisement for a user to reveal the advertisement comprising: a computer; a screen of said computer; a selection method; a covered advertisement; a covering image; a process that substantially operates at a-d below: a. exhibiting said covered advertisement to have visual clutter substantially reduced on said screen; b. displaying said covering image that substantially blocked said covered advertisement so that a user will be spared from said covered advertisement without having to do anything; c. using said selection method for said user to select said covering image which substantially disappears to reveal said covered advertisement; and d. thereby said covered advertisement is displaying the advertisement only if said user wants. REJECTIONS Appellant seeks our review of the following rejections: 3 Appeal2014-005557 Application 10/022,627 Claim 38 stands rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Applicant regards as the invention. Claims 1, 29, 38, and 39 stand rejected under 35 U.S.C. Â§ 102(e) as being anticipated by Cragun et al. (US 6,324,553 Bl; issued Nov. 27, 2001) (hereinafter "Cragun"). Claims 20 and 40 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over the combination of Cragun and Reber et al. (US 5,903,729; issued May 11, 1999) (hereinafter "Reber"). ANALYSIS After considering each of Appellant's arguments, we agree with the Examiner. We refer to and adopt the Examiner's findings and conclusions as set forth in the Examiner's Answer and in the action from which this appeal was taken. (Ans. 2-7; Final Act. 2-11). Our discussions here will be limited to the following points of emphasis. 35U.S.C.Â§112, f 2 rejections of claim 38 "displaying said covering image that substantially blocked said covered advertisement" The Examiner concludes the limitation "displaying said covering image that substantially blocked said covered advertisement" is indefinite because it lacks antecedent basis because it connotes a past action of substantially blocking a covered advertisement by a covering image. (Final Act. 2; Ans. 2-3). 4 Appeal2014-005557 Application 10/022,627 Appellant contends because "blocked" is recited for the first time in that limitation, no antecedent basis is required, and the past tense "blocked" is a relationship structure element as well as a placement element. (App. Br. 19-20; Reply Br. 3). We agree with the Examiner. \Ve are not persuaded because "if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim ... indefinite." Ex parte Afiya::.aki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential). ln determining whether a claim is indefinite, "we employ a lower threshold of ambiguity when reviewing the pending claim for indefiniteness than th[at] used by post-issuance reviewing courts." id. We employ this standard "to guard the public against patents of ambiguous and vague scope" and "because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent." Id. at 1211-12. Here, the claim language "that substantially blocked said covered advertisement" modifies the claim language "said covering image." As presently written in the past tense, it is not clear whether this refers to the same "covering image" recited earlier in the claim or to a different "covering image" that has previously blocked a covered advertisement. For these reasons, on this record, we are not persuaded the Examiner erred in concluding the intended antecedent basis for the recited Hmitation is .. __ , unclear, and therefore indefinite, regarding claim 38. 5 Appeal2014-005557 Application 10/022,627 "visual clutter" The Examiner further concludes claim 3 8 is indefinite because the term "visual clutter" is a relative term that is not defined in the claim and Appellant's Specification does not provide a standard for ascertaining the requisite degree. (Final Act. 2; Ans. 2-3). Appellant argues the claim language "visual clutter substantially reduced on said screen," as well as similar language in the Specification, adequately defines the term. (App. Br. 20, citing Spec. 4, 14, 18; Reply Br. 3). We agree with the Examiner. 35 U.S.C. Â§ 112, second paragraph, requires the claims "be cast in clear-as opposed to ambiguous, vague, indefinite-terms." In re Packard, 751F.3d1307, 1313 (Fed. Cir. 2014) . . Although exact precision is not required, the claim language must be as reasonably precise as the subject matter pennits. Id. \Ve note the term "visual clutter" is used, but not meaningfully described or defined in the . ~ - Specification. (Spec. 2, 4, 12, 14, 18). For example, in the Abstract, "visual clutter" is described as "too many intem.et advertisernents." (Spec.; Abstract). As presently written, it is not readily apparent what constitutes "visual clutter" for purposes of the claim. For example, there could plausibly be different interpretations of what constitutes "too many internet advertisements." Both the claim language and the citations to the Specification provided by Appellant only describes reducing visual clutter, but do not define what visual clutter actually is, or what the visual clutter is being reduced from. Accordingly, we find that the meaning of the claim term "visual clutter'' is subject to different plausible interpretations, and thus, is vague and indefinite. See Ex Parte Miyazaki, 89 USPQ2d at 1211. 6 Appeal2014-005557 Application 10/022,627 For the foregoing reasons, we sustain the Examiner's 35 U.S.C. Â§ 112, paragraph 2 rejection of independent claim 38. 35 US.C Â§ 102(e) rejection (?lclairns 1, 29, 38, and 39 Appellant does not substantively argue the claims separately, but instead relies on the arguments as applied to claim 1 for all claims. (See App. Br. 22--45; Reply Br. 4--10). Appellant contends Cragun does not disclose the limitations of claim 1 for various reasons, which will be further elaborated upon below. (App. Br. 21--40; Reply Br. 4--10). We are not persuaded by Appellant's arguments. The Examiner finds, and we agree, that Cragun discloses the limitations of claim 1. (Final Act. 3--4; Ans. 3-7). For example, Figure 7a in Cragun depicts an advertisement 710 that may be blocked or hidden based on user selection. (Cragun col. 10, 11. 17-27). Figure 7 c depicts selected advertisement 710 blocked by icon 706. (Cragun col. 11, 11. 40--49). Such advertisement will be blocked unless the user selects to unblock the advertisement and may be blocked with a delay time of 0, which means it will not display at all. (Cragun col. 11, 11. 40--49; col. 13, 11. 40--46; Figs. 7b, 9a). Cragun describes that the user can unblock an advertisement by removing it from the blocking list. (Cragun col. 13, 11. 40--46). Such a selection method to remove an advertisement from the blocking list is depicted in Figure 7b and described in Figure 9a. (Cragun col. 13, 11. 40- 46). In other words, Cragun describes that "the user is allowed to decide which images are displayed and which are not." (Cragun Abstract). We also note that Cragun is titled "Apparatus and Method for the Manual Selective Blocking of Images." 7 Appeal2014-005557 Application 10/022,627 Appellant raises a number of arguments that we do not find persuasive. First, Appellant contends claim 1 does not recite certain functionality described in Cragun, such as a "web browser," "pop-up dialog," or "blocking list." (App. Br. 23-24; Reply Br. 4). Such arguments are not persuasive because the test for anticipation is not dependent on whether Cragun' s disclosure is found in Appellant's claim, but rather whether the limitations of Appellant's claim are disclosed in Cragun. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citing Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)) (In order to anticipate under 35 U.S.C. Â§ 102, a prior art reference "must not only disclose all elements of the claim within the four comers of the document, but must also disclose those elements 'arranged as in the claim."'). Appellant also contends Cragun does not "teach," "describe," or "write" specific words, such as "revealing," "disappear," "reveal," "de- select," "covering," "blocking image," "only if a user wants," and a "selection method." (App. Br. 24, 26, 38--40; Reply Br. 4, 6-8). These arguments are not persuasive because the test of whether a reference discloses a claim limitation is not whether the exact language is present. Cf In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (interpretation of references "is not an 'ipsissimis verbis' test," citing Akzo N. V. v. U.S. Int 'l Trade Comm 'n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)); Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991) ("[A] ... reference ... need not duplicate word for word what is in the claims."). In other words, that Cragun may not use the same verbiage as Appellant is not indicative that Cragun does not disclose the limitations in 8 Appeal2014-005557 Application 10/022,627 claim 1. For example, Appellant admits Cragun discloses "input devices," such as a "pointing device" or other "graphical-pointing devices," (App. Br. 39), which we find under the broadest reasonable interpretation of the claim language in light of Appellant's Specification disclose a "selection method." As described above, we agree with the Examiner's findings that Cragun discloses the remaining limitations in claim 1. Appellant advances a series of arguments that are not persuasive because they are not commensurate with the scope of the language of claim 1. During examination of a patent application, a claim is given its 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. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although, claims are to be interpreted in light of the specification, limitations from the specification are not to be read into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also, e.g., In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). An Applicant seeking a narrower construction must either show why the broader construction is unreasonable or amend the claim to expressly state the scope intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir. 1997). In claim construction, "the name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent of Protection and Interpretation of Claims - American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499 (1990)). For example, Appellant makes a series of arguments that Cragun discloses already displayed advertisements, so it does not disclose the limitations "as arranged and required in claim 1." (App. Br. 25-30; Reply 9 Appeal2014-005557 Application 10/022,627 Br. 4---6). Appellant contends that Cragun does not disclose revealing an internet advertisement as arranged and required in claim 1 because the advertisements in Cragun are already displayed. (App. Br. 25-26, 38; Reply Br. 5---6). Appellant cites to The Oxford Dictionary definition of "reveal," which states "[t]o disclose or make known (something previously unknown or kept secret) in speech or writing." (App. Br. 26). We disagree with Appellant's interpretation of Cragun' s disclosure. As described above, Cragun discloses that a blocked advertisement is not displayed unless the user removes it from the blocking list using a selection method. (Cragun Figs. 7a, 7c, 9a, 10, col. 10, 11. 17-27; col. 11, 11. 40-49; col. 13, 11. 40-46). We agree with the Examiner that in Cragun the user can selectively "unblock" a previously blocked image, which would "reveal" the newly unblocked image. (Ans. 5). Therefore, Cragun discloses both the scenario where a displayed advertisement is blocked by user selection, as well as the scenario where an advertisement is blocked from view at the outset. Appellant further contends Cragun does not teach placing an image of a blocking nature to conceal an internet advertisement before using a selection method as arranged and required by claim 1. (App. Br. 27-28). Appellant contends in Cragun "a user selects advertisements presented in windows before displaying the blocking window to block the advertisement." (App. Br. 27). Thus, Appellant contends Cragun works in reverse to claim 1. (App. Br. 27). Appellant's arguments are not commensurate with the scope of claim 1. Claim 1 describes a "second means for placing an image or images of a blocking nature of sufficient size to substantially conceal an internet advertising," and "a third means for 10 Appeal2014-005557 Application 10/022,627 using a selection method to choose and make the blocking image or images disappear and reveal said internet advertising." Under the broadest reasonable interpretation in light of the Specification, such "second means for placing an image or images of a blocking nature" as claimed does not prevent a user from selecting the advertisement in order to block the advertisement, or prevent the user from later using a selecting method to remove the block. (See Ans. 5). Appellant also argues Cragun "does not teach directly selecting a blocking image, as arranged and required in claim 1." (App. Br. 32-35; Reply Br. 7). However, again, Appellant's arguments are not commensurate with the scope of the claim language. Claim 1 recites a "third means for using a selecting method to choose and make the blocking image or images disappear and reveal said internet advertising." It does not require that the blocking image is directly selected. As such, we disagree with Appellant that the language is "a close equivalent." (See Reply Br. 7). Even if such disclosures are supported in Appellant's Specification, it is inappropriate to import limitations from the specification into the claims. See In re Van Geuns, 988 F.2d at 1184. We agree with the Examiner that Cragun's disclosure allowing a user to remove an advertisement from a blocking list so that the advertisement is not blocked anymore discloses the limitation as recited. (Ans. 5). Appellant also advances several arguments that are not pertinent to whether Cragun anticipates Appellant's claims. For example, Appellant argues "Cragun does not anticipate claim 1 because he does not teach utilizing an image and an advertising as two different features having different functions and roles respectively, as arranged and required in claim 11 Appeal2014-005557 Application 10/022,627 1." (App. Br. 30-32; Reply Br. 7). However, such limitations are not recited in claim 1. Appellant further advances a series of arguments pertaining to the alleged advantages of Appellant's invention, which likewise are not pertinent to the anticipation rejection, and not commensurate with the scope of the claim language. (App. Br. 36-38). Appellant also makes several arguments that are not responsive to the Examiner's findings. For example, Appellant contends Cragun does not teach viewable objects "of a blocking nature," as recited in claim 1. (App. Br. 24--25; Reply Br. 4--5). However, Appellant's argument refers to the Summary of the Invention (col. 2, 11. 26-3 7), the Description of the Preferred Embodiment (col. 4, 11. 42-64), and col. 16, 11. 36-41, which describes the embodiment in Figure 14a. (App. Br. 25). These citations are not what the Examiner relies upon to teach images of a blocking nature. (Final Act. 3; Ans. 4). Rather, as the Examiner explains, and we agree, "an 'icon' is displayed in the 'location at which the image would have been placed had it not been blocked."' (Ans. 4, citing Figs. 7a, 7b, 7c; col. 10, 11. 17-27; col. 11, 11. 41--40). Appellant further contends Cragun does not teach concealing an internet advertisement before revealing the internet advertisement as required in claim 1 because Cragun shows a displayed advertisement 715 in Figures 7a, 7c, and 7d that is never blocked. (App. Br. 26; Reply Br. 5-7). Appellant's argument is not persuasive because it does not address the Examiner's findings regarding advertisement 710, which is shown as blocked in Figure 7c, as discussed above. (See Ans. 4--5). Appellant also argues Cragun "does not teach the overall result and function of view internet advertising only if a human wants, as arranged and 12 Appeal2014-005557 Application 10/022,627 required in claim 1." (App. Br. 29). We are not persuaded by Appellant's arguments for the same reasons as set forth by the Examiner. (Ans. 6; see also Cragun Abstract ("the user is allowed to decide which images are displayed and which are not")). Appellants advance arguments that focus on a specific part of the disclosure of Cragun, while ignoring other portions relied on by the Examiner. For example, Appellant contends Cragun does not describe "internet advertising" and "covering" at column 11, lines 45--49. (App. Br. 23, 38). Appellant also contends Cragun does not describe advertising at column 16, lines 47-50. (App. Br. 39). Such arguments are not persuasive because they are not responsive to the Examiner's findings, which address additional disclosures in Cragun. For example, the Examiner relies on Figure 7, as well as column 2, lines 1-5 to disclose "internet advertising" in Cragun. (Ans. 3--4; Final Act. 3). Finally, Appellant raises two new issues in the Reply Brief. (Reply Br. 9, stating "appellant raises a new issue ... "). We remind Appellant that new arguments raised in the Reply Brief not in response to a shift in the Examiner's position in the Answer are waived because Appellant has not shown good cause for the belated presentation. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf with Optivus Tech., Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n issue not raised by an appellant in its opening brief ... is waived."). For the foregoing reasons, we sustain the Examiner's 35 U.S.C. Â§ 102(e) rejection of independent claim 1. For the same reasons, we sustain the Examiner's 35 U.S.C. Â§ 102(e) rejection of independent claims 29 and 13 Appeal2014-005557 Application 10/022,627 38 and dependent claim 39, for which Appellant has not provided separate substantive arguments. (App. Br. 40-43). 35 U.S.C. Â§ 103(a) rejection of claims 20 and 40 Appellant has not provided separate substantive arguments for the Examiner's 35 U.S.C. Â§ 103(a) rejection of dependent claims 20 and 40 (App. Br. 43--45), which depend from independent claims 1 and 38, respectively. Accordingly, for the same reasons as set forth above, we sustain the Examiner's 35 U.S.C. Â§ 103(a) rejection of dependent claims 20 and 40. DECISION1 For the above reasons, the Examiner's rejection of claims 1, 20, 29, and 3 8--40 is affirmed. 1 Our Decision is not the proper venue for advising prose Appellant as to how to or whether to proceed with this application; thus; we would suggest that Appellant obtain the services of a registered Patent Attorney or Agent or, if continuing to proceed pro se, refor to the Pro Se Assistance Program (hUp://www.uspto.gov/patents-getting-started/using-legaI-services/pro-se- assistance-program) and fam1Harize himself with the contents of the Jvfanua1 for Patent Exarnining Procedure (MPEP)(http://www.uspto.gov/web/ offices/pac/mpep ). In addition, we note that pro se Applicant may potentially avail themselves of limited guidance fimn and dialogue with the Examiner by way of an Examiner Interview using an appropriate procedure in view of the status of this application following our Decision. Present Office policy places great emphasis on telephone interviews initiated by the Examiner (e.g., See MPEP Â§ 408), however Applicant may also initiate Exarniner interviews. See MPEP Â§ 713. 14 Appeal2014-005557 Application 10/022,627 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 15