Ex Parte Marshall

Patent Trial and Appeal Board

May 29, 2013

10926974 (P.T.A.B. May. 29, 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.
10/926,974 08/27/2004 John Marshall 4200 0003 1310
27886 7590 05/30/2013
DEETH WILLIAMS WALL LLP
150 YORK STREET
SUITE 400
TORONTO, M5H 3S5
CANADA
EXAMINER
DANG, THANH HA T
ART UNIT PAPER NUMBER
2163
MAIL DATE DELIVERY MODE
05/30/2013 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 JOHN MARSHALL1
____________

Appeal 2011-006342
Application 10/926,974
Technology Center 2100
____________

Before JENNIFER S. BISK, JAMES B. ARPIN, and DAVID C. McKONE,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-3, 6-8, 15-20, and 22-36. Claims 4, 5, 9-14, and 21

1 John Marshall is the real party-in-interest.
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are cancelled. App. Br. 5. 2 We have jurisdiction over these rejections under
35 U.S.C. § 6(b). We affirm.
INVENTION
Appellant’s invention relates to systems and methods for displaying
classified and inventory-based, real estate listings within a browser-
displayed banner using Flash technology on an electronic network. See
generally Spec. [0001]. Claim 1 is illustrative and is reproduced below with
disputed limitations emphasized:
1. A system for dynamic web display of real estate data in a
browser on an electronic network, comprising:

an inventory repository server containing inventory data, the
inventory data comprising a plurality of listings;

a web page with at least one banner enabled with dynamic
messaging technology, the at least one banner in electronic
communication with the inventory repository server through the
electronic network;

a controller embedded in the banner for receiving user input
from a user, and inventory data from the inventory repository
server;

wherein a target data set, the target data set being a subset
of the inventory data, is compiled by the inventory repository
server in a data string comprising one or more such listings
and customized rendering instructions; the data string being
retrieved by the at least one banner in response to a request
from the user, the target data set being displayed within at least
one banner in accordance with the customized rendering
instructions.

2 Throughout this opinion, we refer to (1) the Appeal Brief (App. Br.) filed
September 24, 2010; (2) the Examiner’s Answer (Ans.) mailed December
22, 2010; and (3) the Reply Brief (Reply Br.) filed February 22, 2011.
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The Examiner relies on the following as evidence of
unpatentability:
Verba
Cantrell
Sealand
Green
Wise
US 6,236,977 B1
US 2002/0103698 A1
US 6,484,176 B1
US 2005/0091111 A1
US 6,985,902 B2

May 22, 2001
Aug. 1, 2002
Nov. 19, 2002
Apr. 28, 20053
Jan. 10, 2006 (filed
Feb.5, 2002)

THE REJECTIONS
1. The Examiner objects to the amendment to the Specification, filed on
Dec. 18, 2008, as improperly introducing new matter under 35 U.S.C.
§ 132(a). Ans. 20-23.
2. The Examiner rejects claims 1, 6, 15, 16, 18-20, 22-24 under 35
U.S.C. § 103(a) as unpatentable over Green and Sealand. Id. at 4-6,
10-11, 16-18.4
3. The Examiner rejects claims 2, 3, 7, and 8 under 35 U.S.C. § 103(a) as
unpatentable over Green, Sealand, and Verba. Id. at 6-8, 12-13.
4. The Examiner rejects claims 25-36 under 35 U.S.C. § 103(a) as
unpatentable over Green, Sealand, and Cantrell. Id. at 8-10, 13-16.

3 A division of U.S. Patent Application No. 09/655,759, filed September 5,
2000.
4 Although the Examiner lists the references in a different order for certain
of the rejections, the listed order does not affect our analysis of the
rejections. In re Bush, 296 F.2d 491, 496 (CCPA 1961) (“where a rejection
is predicated on two references each containing pertinent disclosure which
has been pointed out to the applicant, we deem it to be of no significance,
but merely a matter of exposition, that the rejection is stated to be on A in
view of B instead of on B in view of A, or to term one reference primary and
the other secondary.”)
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5. The Examiner rejects claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Green, Sealand, and Wise. Id. at 18-19.

NEW MATTER OBJECTION TO SPECIFICATION AMENDMENTS
Appellant seeks review of the Examiner’s objection to the
amendments to the Specification proposed in the response accompanying the
Request for Continued Examination, filed Dec. 18, 2008. App. Br. 11-15.
Nevertheless, such objections are reviewable by petition under 37 C.F.R.
§ 1.181 (see MPEP §§ 1002 and 1201) and, thus, are not within the
jurisdiction of the Patent Trial and Appeal Board (the “Board”). In re
Mindick, 371 F.2d 892, 894 (CCPA 1967); see also 35 U.S.C. § 132(a)
(“Petition may be taken to the Director in the case of objections or
requirements not involved in the rejection of any claim (§ 1.181).”).
Here, the Examiner has entered the alleged, new matter and
considered the new matter in maintaining the obviousness rejections; the
Examiner does not reject pending claims as a result of the alleged, new
matter (e.g., under 35 U.S.C. § 112, ¶ 1); and the Examiner does not contend
that the priority date given the amended claims is relevant to the obviousness
rejections to the pending claims.5 Ans. 20-23; Final Rej. 3-11. Therefore,
we do not reach the Examiner’s objection to the Specification.

5 It is not disputed that each of the cited references is prior art as of the filing
date of U.S. Provisional Patent Application No. 60/497,915, from which the
appealed application claims the benefit. See App. Br. 15.
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OBVIOUSNESS REJECTION OVER GREEN AND SEALAND
Regarding representative claim 1, the Examiner finds that Green
teaches all of the limitations of Appellant’s claim 1, except that “Green does
not expressly teach an inventory repository server containing inventory data,
the inventory data comprising a plurality of listings.” Ans. 4-5.
Nevertheless, the Examiner finds that Sealand teaches this missing
limitation. Id. at 5-6.
Appellant contests the Examiner’s rejection of claim 1 on the basis of
four alleged errors. Appellant argues that (1) the use of Flash in the context
of the invention was not obvious, (2) the claimed data string is not disclosed
in the cited art, (3) the use of customized rendering instructions is not taught
by Green, and (4) the combination of Green and Sealand is improper.
Ans.16-23. Appellant supports argument (1) above by asserting that the use
of Flash banner advertising with a database system is non-obvious, as
evidenced by the commercial success of Appellant’s product embodying the
invention. See App. Br. 16 (citing Declaration of John F. Marshall
(hereinafter “Decl.”), ¶¶ 13-14 (dated Dec. 8, 2008)).
ISSUES
(1) Under § 103(a), has the Examiner erred by finding that Green and
Sealand, collectively, teach or suggest:
(a) “at least one banner enabled with dynamic messaging technology,
the at least one banner in electronic communication with the inventory
repository server through the electronic network” (emphasis added),
as recited in claim 1? and
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(b) “a target data set . . . compiled by the inventory repository server
in a data string comprising one or more such listings and customized
rendering instructions” (emphases added), as recited in claim 1?
(2) Is the Examiner’s reason to combine the teachings of these
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?
(3) Has Appellant established that the claimed invention has had
commercial success, with sufficient evidence to rebut a prima facie case of
obviousness?
ANALYSIS
1. Claim Construction.
We begin by construing disputed limitations of claim 1 which calls
for, in pertinent part, “at least one banner enabled with dynamic messaging
technology, the at least one banner in electronic communication with the
inventory repository server through the electronic network . . . [and] a target
data set . . . compiled by the inventory repository server in a data string
comprising one or more such listings and customized rendering
instructions.” In construing these limitations, we apply the broadest
reasonable meaning of the claim terms in their ordinary usage, as those
terms would be understood by one of ordinary skill in the art, taking into
account any definitions supplied by Appellant’s Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir.1997).
a. Banner.
Appellant does not expressly define the term “banner” in the
Specification. In the Summary of Claimed Subject Matter portion of the
Appeal Brief, Appellant indicates that the term “banner,” as recited in claim
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1, is supported by the disclosure of the use of a “Flash banner” in a preferred
embodiment. App. Br. 8 (citing Spec. ¶ [0014] (as filed on Aug. 27, 2004)).6
A pertinent definition of the term “banner” is “[a] section of a Web page
containing an advertisement that is usually an inch or less tall and spans the
width of the Web page. The banner contains a link to the advertiser’s Web
site.” MICROSOFT COMPUTER DICTIONARY, 51 (5th ed. 2002). A pertinent
definition of the term “Flash” is “[a] vector graphics file format (extension
.swf) developed by Macromedia to enable designers to add animation and
interactivity to multimedia Web pages. Flash files can be played back with a
downloadable Shockwave plug-in or a Java program. The file format has
been released by Macromedia as an open standard for the Internet.” Id. at
216 (emphasis added).
As filed, claim 1 recited a “Flash banner,” but we note that, in
response to the Examiner’s rejection, Appellant amended claim 1 to replace
the term “Flash banner” with the term “banner.” App. Br. 13-14. At that
time, Appellant stated that “Appellant intends only to claim a banner
implemented in Flash.” Id. Further, Appellant amended the Specification to
state that “[a] banner as used in this application refers to a FlashTM banner.”
Spec. ¶ [0005]. Nevertheless, in Paragraph [0027], Appellant states that the
description in the Specification relates to preferred embodiments “by way of
example only” and that variations are within the scope of the claims,
“whether or not expressly described.”

6 In the note accompanying this portion of the Appeal Brief, Appellant states
that “the bracketed and parenthetical citations . . . refer to the appellants’
[sic] specification as filed by paragraph number . . ..” App. Br. 8 (emphasis
added).
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“It is the applicants’ burden to precisely define the invention, not the
USPTO’s.” Morris, 127 F.3d at 1056. Here, Appellant has chosen to use
the term “banner” unmodified by “Flash” in claim 1. Appellant’s later
attempt to narrow the definition with added language to the Specification
(Spec. ¶ [0005]) is unsuccessful given the expansive language of Paragraph
[0027]. Moreover, even with the additional language, the Specification fails
to provide a description of what banners are included in “a Flash banner,” as
of the filing date of the provisional application. Appellant argues that a
person skilled in the relevant art would recognize immediately that
“FlashTM” in the amended Specification describes nothing more than what
was described in the provisional application, from which the current
application claims benefit. App. Br. 15. This description, however, may not
adequately describe what is meant by this term. See Ariad Pharmaceuticals,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (citing
Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571-72 (Fed Cir. 1997)).
Although Appellant indicates that MacroMedia, Inc., began selling
Flash MX 2004 on Sept. 10, 2003 (Decl.,¶ 10), we note that, in its in-use
trademark application, Serial No. 75/336392, for the mark “Flash,”
MacroMedia indicates that this mark was first used in commerce with the
identified computer software on Feb. 20, 1997. Ans. 16-17. Thus, we do
not find definitive Appellant’s attempt to limit the scope of the term
“banner” by reference in the Specification to “FlashTM banners.” Spec.
¶ [0005]; see Reply Br. 4-5. Instead, we construe the term “banner,” as
recited in claim 1, to describe a section of a Web page containing an
advertisement and a link to the advertiser’s Web site, including, but not
limited to, such banners generated using vector graphics file formatting
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software, the source of which was identified by the Flash trademark and that
was available commercially from MacroMedia, Inc., on or before Aug. 27,
2003, the earliest possible filing date of this application.7
b. Data string.
Appellant also does not expressly define the term “data string” in the
Specification. In the Summary of Claimed Subject Matter portion of the
Appeal Brief, Appellant indicates that the term “data string,” as recited in
claim 1, is supported by the disclosure of the use of an “XML string”8 in an
embodiment. App. Br. 8 (citing Spec. ¶ [0019] (as filed on Aug. 27, 2004)).
A pertinent definition of the term “string” is “[a] data structure composed of
a sequence of characters usually representing human-readable text.”
MICROSOFT COMPUTER DICTIONARY at 500. Further, a pertinent definition
of the term “data structure” is “[a]n organizational scheme, such as a record
or array, that can be applied to data to facilitate interpreting the data or
performing operations on it.” Id. at 145. Thus, within the context of this
invention, we construe the term “data string,” as recited in claim 1, to mean
an organizational scheme for data composed of a sequence of characters that
may represent human-readable text.

7 We note that use of the Flash trademark in the claims to identify a
particular product or structure, rather than a source of that product, could
implicate indefiniteness. See MPEP § 2173.05(u) (“If the trademark or trade
name is used in a claim as a limitation to identify or describe a particular
material or product, the claim does not comply with the requirements of the
35 U.S.C. 112, second paragraph.”). See Reply Br. 4.
8 XML is an acronym for “eXtensible Markup Language.” MICROSOFT
COMPUTER DICTIONARY at 578.
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c. Customized rendering instructions.
Again, Appellant does not expressly define the term “customized
rendering instructions” in the Specification. In the Summary of Claimed
Subject Matter portion of the Appeal Brief, Appellant indicates that the term
“customized rendering instructions,” as recited in claim 1, is supported by
the disclosure that “the Ad Server receives a request from an embedded
banner ad . . . and preferably generates an XML stream containing
information on what listings to render and in what formats.” App. Br. 8
(citing Spec. ¶ [0019] (as filed on Aug. 27, 2004)). A pertinent definition of
the term “render” is “[t]o produce a graphic image from a data file on an
output device such as a video display or printer.” MICROSOFT COMPUTER
DICTIONARY at 449. Further, a pertinent definition of the term “instruction”
is “[a]n action statement in any computer language.” Id. at 276. Thus, in the
context of this invention and applying the ordinary meaning of the word
“customized,” we construe the term “customized rendering instruction[],” as
recited in claim 1, to mean an action statement directed to a computer, for
example, in XML, to format a graphic image from a data file for display
according to an individual specification or preference. See also RANDOM
HOUSE WEBSTER’S COLLEGE DICTIONARY 328 (2nd Random House ed.
1999) (defining “customize”)
2. Appellant’s Arguments.
a. Non-Obvious Use of Flash.
Appellant argues that, although the banner recited in claim 1 is a Flash
banner, Flash, at the time the present application was filed, was used “for
developing multimedia presentations and contained limited interactivity.”
App. Br. 19 (emphasis added). Appellant further argues that MacroMedia
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Flash MX 2004, which became available after the claimed priority date of
the present application, contained features that made Flash technology better
suited to the uses recited in claim 1. Id. at 19-20. Nevertheless, Green
describes software for implementing interactive elements using Java and
JavaScript or using a Common Gateway Interface. Green, ¶¶ [0015]-[0026];
see App. Br. 19. From this description, Appellant concludes that “[t]he use
of Flash in the context of this invention was not obvious.” Id. at 18.
As noted above, we construe the term “banner,” as recited in claim 1,
to describe a section of a Web page containing an advertisement and a link
to the advertiser’s Web site, including, but not limited to, such banners
generated using vector graphics file formatting software, the source of which
was identified by the Flash trademark and that was commercially available
from MacroMedia, Inc., on or before Aug. 27, 2003. Referring to Figure 7,
Green teaches display 110 (e.g., a web page) including a banner ad 330.
Green, ¶¶ [0137]-[0138]; see Ans. 30. Further, referring to Figure 25, Green
describes that a mouse pointer 332 (e.g., a cursor) may linger over a content
sensitive area 339 to trigger interactions with a display 325 (e.g., an ad
space). Green, ¶¶ [0269]-[0270]; see Ans. 30. The Examiner finds that the
interactive operation described in Green is similar to the banner recited by
Appellant. We agree.
In addition, as noted above, a pertinent definition of the term “Flash”
is “[a] vector graphics file format (extension .swf) developed by
Macromedia to enable designers to add animation and interactivity to
multimedia Web pages. Flash files can be played back with . . . a Java
program.” MICROSOFT COMPUTER DICTIONARY at 216 (emphasis added).
Consequently, we do not conclude that Green’s teachings regarding the use
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of Java or JavaScript to implement interactive elements distinguishes the
invention disclosed by Green from Flash software, as described by
Appellant. See App. Br. 19-20.
Moreover, relying upon the Declaration of John F. Marshall (App. Br.
(Appendix B)), Appellant argues that
[a]t the time this application was filed, the combining of Flash
banner advertising with a database system was not conceived of
in the industry nor were any methods to make such a
combination work disclosed in the prior art. Furthermore, at the
time, it was a surprising result that such a combination could
be made to work in a useful manner and it is therefore not
obvious to combine Flash banner advertising with a database
system.

App. Br. 16 (emphasis added). Although MacroMedia apparently began
using the Flash trademark in commerce as early as 1997, the Declarant’s
statements regarding the use of Flash banner advertising in the industry at
the time of the invention are directed to a version of Macromedia’s Flash
software that became available after the claimed priority date of the present
application. See Decl. ¶ 10 (“MacroMedia announced and began selling
Flash MX2004 on September 10, 2003”). Further, the Declarant provides no
objective evidence to corroborate the statements regarding the use of Flash
banner advertising in the industry at the time of the invention. See In re
Soni, 54 F.3d 746, 753 (Fed. Cir. 1995) (citing In re Lindner, 457 F.2d 506,
508-09 (CCPA 1972)).
Appellant attempts to show commercial success of the invention
through evidence of acceptance and praise of its licensed “Search&Display”
technology and increased click rates achieved by this technology. Decl. ¶¶
13-14. The Examiner found that this evidence of commercial success did
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not establish a sufficient nexus with the claimed invention, was not
commensurate in scope with the claims, and is not clear enough to exclude
the possibility of commercial success due to other factors other than the
claimed invention. Ans. 26-28. We agree. Thus, we are not persuaded that
Appellant demonstrates that the claimed invention has had commercial
success, with sufficient evidence to rebut the prima facie case of
obviousness.
Thus, in view of the foregoing discussion, we are persuaded that
Green teaches this limitation of Appellant’s claim 1.
b. Failure to Disclose Data String.
Appellant argues that Green does not teach a data string compiled
from a subset of the inventory data to be displayed to the user of the system,
as recited in claim 1. App. Br. 17. Instead, Appellant argues that Green’s
“cki function is a program that generates HTML code, which it stores in the
variable ‘launchString.’” Id. Appellant contends that a string is “simply a
sequence of characters and does not imply anything in the nature of the
claimed data string.” Id. Further, Appellant contends that “[t]he string is
not data compiled for presentation to the user.” Id. We disagree.
As noted above, a pertinent definition of the term “string” is “[a] data
structure composed of a sequence of characters usually representing human-
readable text.” MICROSOFT COMPUTER DICTIONARY at 500 (emphasis
added). Further, as the Examiner notes, Green describes that
[t]he web page author can, however, simply use the cki function
(to be described below) to link the particular text . . . with a
predetermined keyword . . . and leave the interactive advertising
server support systems to provide a targeted ad from a vendor
selling the product.

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Green, ¶ [0251] (emphases added); see Ans. 29. Thus, in view of the
construction given to the term “data string” in Appellant’s claim 1, we are
persuaded that Green teaches this limitation of Appellant’s claim 1.
c. Failure to Disclose Customized Rendering Instructions.
Appellant contends that customized rendering instructions are
“directives on how, where, and when the inventory data is to be presented on
a rich media advertisement.” App. Br. 21 (quoting Spec. ¶ [0010] (as filed)).
Appellant argues that Green does not teach customized rendering
instructions (1) because Green does not teach a data string which may be
manipulated in accordance with customized rendering instructions, and
(2) because “customization,” as identified by Green in Figure 19, refers to
the process of determining whether the browser can run an interactive
element and, if so, the characteristics of the hardware on which the element
is to be rendered. App. Br. 22. We disagree.
Initially, we note that, in view of the foregoing discussion, we are
persuaded that Green teaches or suggests a data string, as recited in
Appellant’s claim 1. In addition, Green teaches that
[a] second method of implementing a banner ad involves
displaying an animated GIF instead of a simple image. This
format was the first to permit animations that can easily be
integrated into a Web page. Most browsers can show them
without any plug-ins or helper applications, and they are easy to
make. An animated GIF includes, within a single image file,
multiple frames to be sequentially displayed, the information as
to how long each is to be displayed, and whether the sequential
display is to be repeated.

Green, ¶ [0041] (emphasis added). Green explains that “Web page
appropriate JavaScript commands can enable the banner ad to change from
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one image to another in response to the user moving his pointing device (i.e.
mouse) over the ad.” Id. at ¶ [0043] (emphasis added). Therefore, we are
persuaded that Green teaches or suggests “customized rendering
instructions,” as recited in claim 1, which may instruct a system to display a
graphic image from a data file according to a specified or preferred format.
d. Improper Combination of Green and Sealand.
Appellant argues that Green and Sealand are only broadly related in
the field of data processing (App. Br. 16 (quoting Final Rej. 19)) and that
Sealand describes a remotely accessible real estate database system and is
not related to advertising on a web page (App. Br. 16). Initially, we note
that, “[w]hen a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or a different one.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(emphasis added). Thus, regardless of the degree of similarity between their
fields of endeavor, relevant teachings of Green and Sealand may be properly
combined. See Ans. 24-25. Moreover, we do not agree that Green and
Sealand are “only broadly related.” As explained by the Examiner, both
Green and Sealand relate to remote interactive access to information on a
web page. Ans. 24. In addition, while Sealand does not relate solely to
advertising, it does discuss advertising. Id. Thus, we do not find this
argument persuasive.
We conclude that the Examiner’s reason to combine the teachings of
Green and Sealand is supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion. Therefore,
we are not persuaded by Appellant’s arguments or the Declarant’s
statements that the proposed combination of Green and Sealand is improper.
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For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of: (1) independent claim 1; (2) independent claims 6 and 15,
which include corresponding limitations and are not argued separately with
particularity (App. Br. 23, 26); and (3) dependent claims 16, 18-20, 22-24,
which are not separately argued with particularity (App. Br. 23-24).
Therefore, we sustain the obviousness rejection to these claims.

OBVIOUSNESS REJECTION OVER GREEN, SEALAND, AND VERBA
The Examiner rejects claims 2, 3, 7, and 8 under § 103(a) as
unpatentable over Green, Sealand, and Verba. Ans. 6-8, 12-13. Initially,
Appellant argues that these claims are dependent from independent claim 1
or 6 and that Verba does not supply the alleged deficiencies in Green and
Sealand, which we discussed above with respect to claims 1 and 6. App. Br.
24, 26. For the reasons set forth above, we find this argument regarding the
teachings of Green and Sealand unpersuasive. See Ans. 35, 47.
Appellant next argues that, because Verba relates to a marketing
system, it is improper to combine Verba’s teachings with those of Green and
Sealand. App. Br. 24, 26. For the reasons set forth above, we determine that
the combination of Green and Sealand is not improper. See Ans. 23-25.
Further, Appellant’s assertion that Verba relates to marketing systems is
insufficient to demonstrate that the combination of teachings of Verba with
those of Green and Sealand is improper.9 Id. at 35-36, 47-49. It is well
settled that arguments of counsel cannot take the place of factually supported
objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir.
1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, the

9 See KSR, 550 U.S. at 417 (discussed above).
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Examiner explains that Verba relates to a marketing system for advertising
on a web site, similar to both Green and Sealand. See Ans. 36 (citing Verba,
Figs. 2, 4, 10-14). The Examiner’s reason to combine the teachings of these
three references is supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion.
Finally, Appellant argues that this combination of references fails to
teach all of the limitations of claims 2, 3, 7, and 8. App. Br. 24-27. We
disagree.
Claims 2 and 7 recite that “each of the listings comprises a data record
set describing property listing information organized according to individual
real estate agent, the data record set containing all information comprising
ad display duration time, publisher selection, campaign ID, campaign
duration, and listing details” (emphases added). Appellant argues that the
duration of Verba’s campaign does not teach the “ad display time duration”
recited in claims 2 and 7. App. Br. 24, 26. Nevertheless, the Examiner finds
that, referring to Figure 12, Verba teaches a start and end date for
“Campaign” and for “CampaignActivity.” Ans. 37, 49-50 (citing Verba, col.
17, ll. 5-10). Because, as reasonably construed, “advertising” and, thus, “ad
display time” can be a part of “CampaignActivity,” we are not persuaded by
Appellant’s argument. Id. (citing Verba, col. 17, ll. 34-36).
Claims 3 and 8 recite that the system or method comprises “a client
campaign management tool and a system administrator module.” Appellant
argues that Verba’s “person database 201” does not teach the “system
administrator module” recited in claims 3 and 8. App. Br. 24-25, 26-27.
The Examiner finds, however, that, referring to Figures 2 and 7, Verba
teaches that the telemarketing call process “begins with the user requesting
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through a virtual systems administrator interface (SA) that the computerized
marketing system (CARS) be started” (emphasis added). Ans. 38, 51 (citing
Verba, col. 11, ll. 52-55).10 Consequently, we are not persuaded by
Appellant’s argument that Verba’s systems administrator interface does not
teach or suggest Appellant’s system administrator module.
For reasons discussed above, Appellant has not persuaded us of error
in the rejection of claims 2, 3, 7, and 8. Therefore, we sustain the
obviousness rejection of these claims.

OBVIOUSNESS REJECTION OVER GREEN, SEALAND, AND
CANTRELL
The Examiner rejects claims 25-36 under § 103(a) as unpatentable
over Green, Sealand, and Cantrell. Ans. 38-46, 51-54. Initially, Appellant
argues that these claims are dependent from independent claim 1, 6, or 15
and that Cantrell does not supply the alleged deficiencies in Green and
Sealand, which we discussed above with respect to claims 1, 6, and 15.
App. Br. 25, 27. For the reasons set forth above, we find this argument
regarding the teachings of Green and Sealand unpersuasive. See Ans. 23-25.

10 The Examiner relies on this finding for the first time in the Answer.
Records from the USPTO’s PATENT APPLICATION LOCATING AND
MONITORING electronic database (PALM) contain no evidence that
Appellant filed a petition under 37 C.F.R. § 1.181 to challenge the
Examiner’s untimely introduction of the new grounds of rejection.
Accordingly, we treat any potential challenge as waived (see MPEP §
1207.03(IV)), and we have considered the merits of the Examiner’s
rejection, as amended.

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Appellant next argues that, because Cantrell relates to advertising
campaigns, it is improper to combine Cantrell’s teachings with those of
Green and Sealand. App. Br. 25, 27. For the reasons set forth above, we
determine that the combination of Green and Sealand is not improper. See
Ans. 23-25. Further, Appellant’s assertion that Cantrell relates to
advertising campaigns is insufficient to demonstrate that the combination of
teachings of Cantrell with those of Green and Sealand is improper.11 Id. at
39-40, 43-44, 52-53. It is well settled that arguments of counsel cannot take
the place of factually supported objective evidence. See, e.g., Huang, 100
F.3d at 139-40; De Blauwe, 736 F.2d at 705. Moreover, the Examiner
explains that Cantrell relates to systems and processes for on-line
advertising, similar to both Green and Sealand. See Ans. 39-40 (citing
Cantrell, Figs. 2, 4-21). The Examiner’s reason to combine the teachings of
these three references is supported by articulated reasoning with some
rational underpinning to justify the Examiner’s obviousness conclusion.
Finally, Appellant argues that this combination of references fails to
teach all of the limitations of claims 25-36. App. Br. 25-27. We disagree.
With respect to each of claims 25-36, Appellant argues that these
claims are directed to customized rendering instructions that “are directives
on how and where the target data set is to be presented within the banner,
and are transmitted dynamically as part of the data string in response to user
input.” App. Br. 25 (emphasis added). In particular, Appellant argues that
the cited portions of Cantrell “refer to static characteristics of the banner and
have nothing at all to do with the placement of target data within a banner.”

11 See KSR, 550 U.S. at 417 (discussed above).
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Id. (emphases added). The Examiner finds, however, that Cantrell teaches a
system in which
an advertiser is capable of designing a banner ad that is
dynamic in its appearance and interactivity. As such, the
banner ads that are capable of being created by the user
interface are superior to conventional static banner ads that
comprise one or more image graphic files (e.g., GIFs).

Cantrell, ¶ [0042] (emphases added); see Ans. 41. Further, the Examiner
finds that Cantrell teaches that banner layout format options are selectable,
so that a user may “quickly select the relative locations of the item image,
item name, item ID, item price, item quantity, and item description.”
Cantrell, ¶ [0077]; see Final Rej. 26-27. Because Cantrell teaches the
capability of selecting “how and where” data is located on a banner and
distinguishes its system from that interfacing with “conventional static
banner ads,” we are not persuaded by Appellant’s arguments. Further,
because the limitations of claims 25-28 correspond to those of both claims
29-32 and claims 33-36, we find Appellant’s application of the arguments
raised with respect to claims 25-28 equally unpersuasive with respect to
claims 29-32 and claims 33-36. See App. Br. 25-27
For reasons discussed above, Appellant has not persuaded us of error
in the rejection of claims 25-36. Therefore, we sustain the obviousness
rejection of these claims.

OBVIOUSNESS REJECTION OVER GREEN, SEALAND, AND WISE
The Examiner rejects claim 17 under § 103(a) as unpatentable over
Green, Sealand, and Wise. Ans. 18-19. Initially, Appellant argues that this
claim is dependent from independent claim 15 and that Wise does not supply
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the alleged deficiencies in Green and Sealand, which we discussed above
with respect to claim 15. App. Br. 27. For the reasons set forth above, we
find this argument regarding the teachings of Green and Sealand
unpersuasive. See Ans. 54-55.
Appellant next argues that, because Wise relates to database methods,
it is improper to combine Wise’s teachings with those of Green and Sealand.
App. Br. 27. For the reasons set forth above, we determine that the
combination of Green and Sealand is not improper. See Ans. 23-25.
Further, Appellant’s assertion that Wise relates to database methods is
insufficient to demonstrate that the combination of teachings of Wise with
those of Green and Sealand is improper.12 Id. at 55-56. It is well settled that
arguments of counsel cannot take the place of factually supported objective
evidence. See, e.g., Huang, 100 F.3d at 139-40; De Blauwe, 736 F.2d at
705. Moreover, the Examiner explains that Wise relates to interactive
computer program products for digital gathering, recording, and sending
property listing information, similar to both Green and Sealand. See Ans.
55-56 (citing Wise, Figs. 2, 3, 5A-C). The Examiner’s reason to combine
the teachings of these three references is supported by articulated reasoning
with some rational underpinning to justify the Examiner’s obviousness
conclusion.
Finally, Appellant argues that this combination of references fails to
teach all of the limitations of claim 17. App. Br. 27-28. We disagree.
Claim 17 recites that “the at least one banner provides controls for the
user to rotate through the items comprising the target data set when
displaying the target data set within the at least one banner” (emphasis

12 See KSR, 550 U.S. at 417 (discussed above).
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added). By the amendment to the Specification of Apr. 24, 2008, Appellant
removed the term “rotate through” and instead described the target set data
as “displayed, one item at a time.” Spec. ¶ [0018]. Appellant argues that
claim 17 requires that the rotation is done within the banner and that Wise
does not disclose a banner, displaying within a banner, or rotating through
items comprising a target data set. App. Br. 27-28. Nevertheless, the
Examiner finds that Wise discloses navigation bar 522 that is equivalent to a
banner and provides an icon to rotate items corresponding to the target data
set. Ans. 56; see also Wise, Figs. 2B (depicting scrollbar 233), 3C
(depicting scroll bar 320). Because Wise teaches scrolling, by which items
are displayed one at a time, we are not persuaded by Appellant’s arguments.
For reasons discussed above, Appellant has not persuaded us of error
in the rejection of claim 17. Therefore, we sustain the obviousness rejection
of this claim.

CONCLUSION
The Examiner did not err in rejecting claims 1-3, 6-8, 15-20, and
22-36 under § 103(a).
DECISION
The Examiner’s decision rejecting claims 1-3, 6-8, 15-20, and 22-36
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

pgc