Ex Parte Tokuhara

Patent Trials and Appeals BoardMar 15, 2019

14239414 - (D) (P.T.A.B. Mar. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/239,414 02/18/2014 513 7590 03/19/2019 WENDEROTH, LIND & PONACK, L.L.P. 1030 15th Street, N.W., Suite 400 East Washington, DC 20005-1503 FIRST NAMED INVENTOR Tsunemi Tokuhara 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. 2014-0152A 2070 EXAMINER KIM, PATRICK ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 03/19/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): eoa@wenderoth.com kmiller@wenderoth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TSUNEMI TOKUHARA Appeal 2017-011261 Application 14/239,414 Technology Center 3600 Before JUSTIN BUSCH, JOHN P. PINKERTON, and NORMAN H. BEAMER, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 files this Appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-7, which constitute all of the claims pending in this Application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 Appellant, Tsunemi Tokuhara, identifies himself as the real party in interest. App. Br. 2. Appeal 2017-011261 Application 14/239,414 STATEMENT OF THE CASE Introduction Appellant's disclosed and claimed invention is generally described as follows: An electronic advertisement system is provided by which an advertiser can present advertisement on Internet terminals without having an economic risk by a configuration in which, when an advertisement effect corresponding to a billing condition is not obtained, the advertiser does not have to pay the advertisement rate. An advertiser- side computer for sending billing tag-attached electronic advertisement data describing a billing condition, a multitude of member-side terminal computers, and an advertisement agency-side administration computer are connected via the Internet. Under the control by the advertisement agency-side administration computer, the billing tag-attached electronic advertisement data outputted from the advertiser-side computer is added with the corrected billing tag and the resultant data is sent to the respective member-side terminal computers. The member-side terminal computer determines whether the corrected billing condition of the received electronic advertisement data is achieved or not by analyzing the input data from the electronic device. The advertisement agency-side administration computer counts the corrected billing condition determination data from the member- side terminal computer and generates billing charge data to be processed by the advertiser-side computer. Abstract. 2 Claim 1 is illustrative and reproduced below: 1. A billing electronic advertisement system, comprising: 2 Our Decision refers to the Final Office Action mailed Dec. 1, 2016 ("Final Act."), Appellant's Appeal Brief filed Mar. 22, 2017 ("App. Br.") and Reply Brief filed Aug. 31, 2017 ("Reply Br."), the Examiner's Answer mailed July 27, 2017 ("Ans."), and the original Specification filed Feb. 18, 2014 ("Spec."). 2 Appeal 2017-011261 Application 14/239,414 an advertiser-side computer that generates and outputs billing tag-attached electronic advertisement data, the billing tag-attached electronic advertisement data including a tag with information describing a billing condition; a plurality of member-side terminal computers each including an electronic device that acquires a situation in front of a screen as input data; and an advertisement agency-side administration computer that receives the billing tag-attached electronic advertisement data and generates and outputs a corrected billing tag obtained by deleting a counting part from the billing condition; wherein the advertiser-side computer, the plurality of member-side terminal computers and the advertisement agency- side computer are connected via an Internet and, under the control by the advertisement agency-side administration computer, the billing tag-attached electronic advertisement data outputted from the advertiser-side computer is added with the corrected billing tag and a resultant data is sent to a member- side terminal computer and electronic advertisement data based on the resultant data is displayed on the screen of the member- side terminal computer, the member-side terminal computer includes a video camera as the electronic device and an advertisement data reception processing program stored on a non-transitory computer-readable recording medium which when executed by the member-side terminal computer processes the electronic advertisement data, the advertisement data reception processing program including an input video analysis means and being downloaded from the advertisement agency-side administration computer, and the member-side terminal computer determines whether the corrected billing condition of the received electronic advertisement data is achieved or not by analyzing the input data from the electronic device, the member-side terminal computer uses the advertisement data reception processing program to recognize a line of sight of a person in front of the video camera and count a 3 Appeal 2017-011261 Application 14/239,414 watch time by the person of the advertisement data displayed on the screen of the member-side terminal computer, and the advertisement agency-side administration computer includes a program stored on a non-transitory recording medium which when executed by the advertisement agency- side administration computer collects corrected billing condition determination data sent from the member-side terminal computer to determine whether the billing condition of the electronic advertisement data is achieved or not and, when the billing condition is achieved, generates billing charge data that is to be processed by the advertiser-side computer. Rejections on Appeal3 Claims 1-3 and 5-7 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Bowra (US 2010/0280876 Al; published Nov. 4, 2010), Lewis et al. (US 2009/0197582 Al; published Aug. 6, 2009) ("Lewis"), Williams et al. (US 2009/0150253 Al; published June 11, 2009) ("Williams"), and Tsukizawa et al. (US 2009/0273687 Al; published Nov. 5, 2009) ("Tsukizawa"). Final Act. 7-12. Claim 4 stands rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Bowra, Lewis, Williams, and Weidmann (US 2010/0191631 Al; published July 29, 2010). Final Act. 13. 4 3 Although the Examiner rejected claims 1-7 under 35 U.S.C. Â§ 112, first paragraph, for failing to comply with the written description requirement, and under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter (see Final Act. 4--7), the Examiner withdrew these rejections. Ans. 2. 4 We note the Examiner erroneously omitted Tsukizawa from the heading of the rejection of claim 4. Claim 4 indirectly depends from claim 1, and the Examiner does not find Weidmann teaches every limitation allegedly taught or suggested by Tsukizawa. Should this matter undergo further prosecution, we recommend clarifying the rejection. 4 Appeal 2017-011261 Application 14/239,414 ANALYSIS The dispositive issue raised by Appellant's arguments5 is whether the combination of Bowra, Lewis, Williams, and Tsukizawa teaches or suggests: the member-side terminal computer includes a video camera as the electronic device and an advertisement data reception processing program stored on a non-transitory computer- readable recording medium which when executed by the member-side terminal computer processes the electronic advertisement data, the advertisement data reception processing program including an input video analysis means and being downloaded from the advertisement agency-side administration computer, as recited in claim 1. App. Br. 24 (Claims App'x) (emphasis added). The Examiner finds that Tsukizawa teaches "a video camera as the electronic device," which is the image processing apparatus of claim 1. Ans. 3 ( citing Tsukizawa ,r,r 36, 46, 273). The Examiner also finds that Tsukizawa teaches "a direction detection section program" as "an advertisement data reception processing program" that detects head and eye direction of a person (to provide the claimed "an input video analysis means") installed on the device. Id. ( citing Tsukizawa ,r,r 47,270). The Examiner further finds that under the broadest reasonable interpretation of the disputed limitation, the image processing apparatus coupled to a personal computer that executes a program to detect head and eye direction of a person teaches the claimed "video camera as the electronic device and an advertisement data reception processing program including an input video analysis means and being downloaded from the advertisement agency-side administration computer." 5 Appellant raises other issues in the Briefs, but we do not reach them because this issue is dispositive of the appeal. 5 Appeal 2017-011261 Application 14/239,414 Id. at 3--4. We are persuaded by Appellant's arguments that the Examiner erred. We agree with the Examiner that Tsukizawa teaches that (1) the direction detection section of the image processing apparatus installed on the device detects head and eye direction of a person (see Tsukizawa ,r 47) and (2) the image processing apparatus can be implemented as a computer "program" performing the functions of the apparatus (see id. ,r 270). However, we do not agree with the Examiner that these portions of Tsukizawa teach or suggest an advertisement data reception processing program, including an input video analysis means, "being downloaded from the advertisement agency-side administration computer," as recited in claim 1. Instead, based on our review of Tsukizawa, we agree with Appellant that Tsukizawa does not disclose or suggest an advertisement data reception processing program with an input video analysis means "downloaded from an advertisement agency-side administration computer." App. Br. 22; Reply Br. 3--4. The Examiner provides no analysis or support concerning how Tsukizawa teaches or suggests the downloading portion of the disputed limitation under the broadest reasonable interpretation. Although one of ordinary skill in the art might recognize downloading is a known method of obtaining a program, the Examiner provides no explanation or rationale why such a modification of the proposed combination would have been obvious. Accordingly, on this record, we are constrained to find the Examiner erred because the Examiner has not shown that the combination of Bowra, Lewis, Williams, and Tsukizawa teaches or suggests "the advertisement data reception processing program including an input video analysis means and being downloaded from the advertisement agency-side administration 6 Appeal 2017-011261 Application 14/239,414 computer," as recited in claim 1, by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) ("preponderance of the evidence is the standard that must be met by the PTO in making rejections"). Thus, we do not sustain the Examiner's rejection of claim 1, and dependent claims 2, 3, and 5-7, for obviousness underÂ§ 103(a). The Examiner does not find Weidmann cures the deficiencies identified above. Therefore, we do not sustain the Examiner's rejection of claim 4. DECISION We reverse the Examiner's decision rejecting claims 1-7 under 35 U.S.C. Â§ 103(a). REVERSED 7