Ex Parte Fujisawa et al

Patent Trials and Appeals BoardJun 25, 2013

10484466 - (D) (P.T.A.B. Jun. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/484,466 01/22/2004 Tomonori Fujisawa K-2143 5577 32628 7590 06/25/2013 KANESAKA BERNER AND PARTNERS LLP 2318 Mill Road Suite 1400 ALEXANDRIA, VA 22314-2848 EXAMINER UBER, NATHAN C ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 06/25/2013 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 TOMONORI FUJISAWA and SHOUJI SATOU ____________ Appeal 2011-009110 Application 10/484,466 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and PHILIP J. HOFFMANN, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009110 Application 10/484,466 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 7-9, 11, and 12, 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 REVERSE. THE INVENTION The Appellants’ claimed invention is directed to transferring a banner advertisement to a plurality of clients linked via a network (Spec. 1:5-7). Claim 7, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 7. A computer-executable program tangibly embodied on a computer readable medium for implementing the steps comprising: forming a predetermined registered group wherein each registered member of the predetermined registered group has a banner advertisement to be seen by other registered members of the predetermined registered group, transferring, first, banner advertisements from a server to the registered members of the predetermined registered group by requests of the registered members, analyzing click signals for each banner advertisement which is transferred to the registered member, counting the click signals by each of the registered members registered in the server, and total number of the click signals by all the registered members, [1] deciding a ranking of each of the registered members in the group based on the click signals by each of the registered members with respect to the total number of the click signals by all the registered members in a predetermined time period, [2] and Appeal 2011-009110 Application 10/484,466 3 transferring, second, a banner advertisement to other registered members based on said ranking of each of the registered members when receiving the requests by other registered members. THE REJECTION The following rejection is before us for review: 1. Claims 7-9, 11, and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Merriman (US 5,948,061, iss. Sep. 7, 1999) and SmartAge: SmartClicks, found at http://www.smartclicks.com (hereinafter “SmartClicks”). FINDINGS OF FACT We find the following findings of fact used in the Analysis section below are supported at least by a preponderance of the evidence:1 ANALYSIS The Appellants argue that the rejection of claim 7 is improper because the cited prior art fails to disclose claim limitation [1] (App. Br. 7). Specifically, the Appellants argue that SmartClicks fails to disclose any ranking of the other members (App. Br. 7). Similar arguments are presented in the Reply Brief at page 2. In contrast, the Examiner has determined that the cited claim limitation is shown in SmartClicks at page 3 and that the rejection is proper in this regard (Ans. 4, 8-11). 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 2011-009110 Application 10/484,466 4 We agree with the Appellants. Claim limitation [1] requires [1] deciding a ranking of each of the registered members in the group based on the click signals by each of the registered members with respect to the total number of the click signals by all the registered members in a predetermined time period. (Claim 7). Thus, the claim requires that each member be ranked in the group of members based on click signals by each of the members with respect to the total number of clicks by all members in some manner. SmartClicks at page 3 fails to show this, instead showing statistics related to only an individual member’s click-thru ratio and click-thru percent without relation to any other member’s as specifically claimed. The Examiner has determined that the “ranking” is not required between the member and the group (Ans. 9) but we disagree as the claim language clearly requires this in some manner in order to get the ranking. Further, in the Specification, Figure 4 discloses ranking for click points (302), Figure 5 shows a member-specific count (526) and an all members count (528) used in calculation of the time of the banner advertisement, and page 12, lines 4-10 also discloses the ratio of the members count against all the members count which shows the features used in the claimed “ranking.” For these reasons, the rejection of claim 7 and its dependent claims is not sustained. CONCLUSIONS OF LAW We conclude that the Appellants have shown that the Examiner erred in rejecting claims 7-9, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over Merriman and SmartClicks. Appeal 2011-009110 Application 10/484,466 5 DECISION The Examiner’s rejection of claims 7-9, 11, and 12 is reversed. REVERSED mls