Ex Parte Joo

Patent Trial and Appeal BoardDec 10, 2012

12078114 (P.T.A.B. Dec. 10, 2012)

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. 12/078,114 03/27/2008 Jin-Yong Joo 122990-05163098con 9679 22429 7590 12/10/2012 LOWE HAUPTMAN HAM & BERNER, LLP 1700 DIAGONAL ROAD SUITE 300 ALEXANDRIA, VA 22314 EXAMINER BEKERMAN, MICHAEL ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 12/10/2012 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 JIN-YONG JOO ____________________ Appeal 2011-006079 Application 12/078,114 Technology Center 3600 ____________________ Before BIBHU R. MOHANTY, MICHAEL W. KIM, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006079 Application 12/078,114 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 12-14. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We REVERSE.1 BACKGROUND Appellant’s invention relates to an advertising system and method using an Internet web browser, in which one of a menu bar, location bar, tool bar, etc., in the screen of the web browser, that is not used for displaying information from a server, is used for displaying advertisements during a period of time for which function commands are not inputted, thereby improving effectiveness of advertisement (Spec. 1, ll. 5-10). Claim 12, reproduced below, is representative of the subject matter on appeal: 12. An advertising method using a web browser in a client PC connected to a network, the advertising method comprising: monitoring a position of a cursor of said client PC within a window of the web browser when said web browser is activated, said window of the web browser comprising a web content displaying region for displaying web content obtained by the web browser from the network, and an area outside said web content displaying region; and 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed October 4, 2010) and Reply Brief (“Reply Br.,” filed February 22, 2011) and the Examiner’s Answer (“Ans.,” mailed December 22, 2010). Appeal 2011-006079 Application 12/078,114 3 depending on the position of said cursor within the window of the web browser, displaying only one of the following at a time in said area: (1) an advertisement, and (2) at least one of a menu bar, a tool bar, a location bar, and a logo of the browser; wherein the advertisement is displayed in said area only when the cursor is outside said area. THE REJECTIONS The following rejections are before us for review: Claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Burke (US 6,032,162, iss. Feb. 29, 2000) in view of Harding (US 6,307,544 B1, iss. Oct. 23, 2001). Claims 13-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burke in view of Harding and further in view of Hoyle (US 6,628,314 B1, iss. Sep. 30, 2003). ANALYSIS Independent claim 12 We are persuaded of error on the part of the Examiner by Appellant’s argument that neither Burke nor Harding discloses or suggests “depending on the position of said cursor within the window of the web browser, displaying only one of the following at a time in said area: (1) an advertisement, and (2) at least one of a menu bar, a tool bar, a location bar, and a logo of the browser[,]” as recited in claim 1 (Emphasis added) (App. Br. 10-13 and 15 and Reply Br. 4-6). The Examiner cites Burke as disclosing, with reference to Figure 5, a user interface including a web page display area 530 and screen areas 540 Appeal 2011-006079 Application 12/078,114 4 and 550 located above and below the display area 530, which are used for displaying advertisements and menu icons for user initiation of web browser control functions (Ans. 4). See Burke, col. 8, ll. 26-34. The Examiner acknowledges that Burke does not teach “dynamic display of [advertisements and menus] based upon the user’s mousing properties,” and relies on Harding as teaching this feature at column 3, lines 10-21 and 55-67 and column 4, lines 1-5 (Ans. 4). We have reviewed the cited portion of Harding, on which the Examiner relies. And we agree with Appellant that this portion of Harding does not disclose or suggest “depending on the position of said cursor within the window of the web browser, displaying only one of the following at a time in said area: (1) an advertisement, and (2) at least one of a menu bar, a tool bar, a location bar, and a logo of the browser[,]” as recited in claim 1 (Emphasis added). Harding discloses a system for providing dynamic and proactive assistance to a user of a computer system (Harding, Abstr.). Harding thus describes, with reference to Figures 1 through 3, that when the system detects that a user might need assistance, as indicated by the user’s mouse entering a field and hovering for a moment, a pop-up assistance window is displayed (see Fig. 1). If the user does not require assistance, Harding describes that the user can “dismiss” the assistance window and continue working. Otherwise, the user can place the mouse pointer over the assistance window, which causes the assistance to progress to the next level, providing a cascading menu of information types, as shown in Figure 2. Additional levels of menus are displayed, as shown in Figure 3, when a user Appeal 2011-006079 Application 12/078,114 5 selects one of the information types. See Harding, col. 3, l. 53 – col. 4, line 13. The Examiner relies on Harding as teaching that the mouse cursor position can influence the appearance of a menu and also influence the disappearance of the menu, and the Examiner further maintains that: [w]hen Harding is combined with the advertisement display of Burke, the combination yields the result that when the mouse cursor is moved into an area of the screen where an advertisement of Burke is also displayed, that the mouse-over menu of Harding will appear, thus covering the advertisement of Burke. When the mouse cursor is moved from this area of the screen, the advertisement returns to view as the menu disappears. (Ans. 7). The flaw in the Examiner’s reasoning is that there is no disclosure or suggestion in Harding that when the cursor is moved into an area of the screen where the advertisement is displayed, the mouse-over menu would “appear, thus covering the advertisement of Burke.” Instead, it clearly appears from Harding that both the advertisement and the menu will be displayed when the cursor is moved into the display area to cause the assistance window to appear (see, e.g., Harding, Figs. 1-3). Stated differently, in the Examiner’s proposed combination, the method would not display “only one of the [advertisement and menu in the area] at a time,” as recited in claim 12 (Emphasis added). In view of the foregoing, we will not sustain the Examiner’s rejection of claim 12 under 35 U.S.C. § 103(a). Appeal 2011-006079 Application 12/078,114 6 Claims 13 and 14 Claims 13 and 14 depend from claim 12. The Examiner has not established on this record that Hoyle cures the deficiencies of Burke and Harding as set forth above. Therefore, we also will not sustain the Examiner’s rejection of claims 13 and 14. DECISION The Examiner’s rejections of claims 12-14 under 35 U.S.C. § 103(a) are reversed. REVERSED hh