Jeung Ho Kim

Patent Trials and Appeals BoardNov 27, 2020

2020001832 (P.T.A.B. Nov. 27, 2020)

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. 14/362,400 09/23/2014 Jeung Ho Kim 113768-1 (FE12023/PCT/US) 4627 24256 7590 11/27/2020 DINSMORE & SHOHL LLP 255 EAST FIFTH STREET, SUITE 1900 CINCINNATI, OH 45202 EXAMINER ANSARI, AZAM A ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 11/27/2020 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): CincyPAIR@dinsmore.com elise.merkel@dinsmore.com jennifer.baker@dinsmore.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEUNG HO KIM Appeal 2020-001832 Application 14/362,400 Technology Center 3600 Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and BRADLEY B. BAYAT, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5, 6, 10, 12, 18, 22, 23, 41, and 42. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER A NEW GROUND OF REJECTION. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as the inventor, Jeung Ho Kim. Appeal Br. 2. Appeal 2020-001832 Application 14/362,400 2 CLAIMED SUBJECT MATTER The claimed invention: relates to a method and system for making a profit on a private shop, wherein when a display unit is installed in the private shop and an advertisement (e.g., video, image, contents or the like) is provided from an advertisement provider to an information providing server, the information providing server automatically displays the advertisement on the display unit of the private shop, which the advertisement provider has designated or the information providing server has analyzed and selected, and a company of the information providing server receives an advertisement fee from the advertisement provider and distributes the advertisement fee to a person of the private shop. Spec. 1:5–14. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A non-transitory computer-readable recording medium having stored thereon a computer program for executing a method for displaying an advertisement, comprising the steps of: (a) on the basis of media analysis information for each of a plurality of display units installed in a plurality of private shops located in a plurality of places and properties of an advertisement provided from an advertisement provider terminal, searching, by means of an information providing server, for display units suitable for displaying the advertisement from among the plurality of display units; (b) when the advertisement provider terminal selects at least one display unit from among the searched display units, transmitting the advertisement to the at least one selected display unit by means of the information providing server; (c) displaying the advertisement by means of the at least one selected display unit; (d) by means of the information providing server, calculating an advertisement fee for the advertisement and determining at least a portion of the calculated advertisement fee as a profit of an entity who has provided the at least one selected display unit; and Appeal 2020-001832 Application 14/362,400 3 (e) transmitting the information on the portion of the calculated advertisement fee to a device of the entity in response to determining the portion of the calculated advertisement fee as the profit of the entity, wherein in step (a), the information providing server searches for display units suitable for displaying the advertisement on the basis of an associative relation between at least one of the properties of the advertisement and the advertisement fee, and a media analysis evaluation score of each of the plurality of display units, wherein a display unit installed in a private shop dealing with a type of business not related to the properties of an advertisement is given a greater associative relation value with respect to the advertisement than another display unit installed in another private shop dealing with another type of business related to the properties of the advertisement, wherein the media analysis evaluation score is derived on the basis of the media analysis information for each of the plurality of display units and given to each of the plurality of display units, and wherein the media analysis information includes at least one of information on a location of each of the plurality of display units, information on an installation space of each of the plurality of display units, information on a target audience of each of the plurality of display units, and information on types of advertising materials of each of the plurality of display units. REJECTION The Examiner rejected claims 1–3, 5, 6, 10, 12, 18, 22, 23, 41, and 42 under 35 U.S.C. § 103(a) as unpatentable over Khare et al. (US 2011/0166925 A1, published July 7, 2011) (“Khare”) and Sugiura et al. (US 2013/0110649 A1, published May 2, 2013) (“Sugiura”). OPINION Independent claims 1 and 18 recite a step of “searching . . . for display units suitable for displaying” an advertisement. The claim further recites Appeal 2020-001832 Application 14/362,400 4 that the searching is “on the basis of an associative relation between at least one of the properties of the advertisement and the advertisement fee, and a media analysis evaluation score of each of the plurality of display units,” and that “a display unit installed in a private shop dealing with a type of business not related to the properties of an advertisement is given a greater associative relation value with respect to the advertisement than another display unit installed in another private shop dealing with another type of business related to the properties of the advertisement.” Emphases added. The claim thus bases display unit selection on a relation between “properties of the advertisement and the advertisement fee,” but also gives “greater associative relation value” to a display unit in a business “not related to the properties of an advertisement,” than to a business “related to the properties of an advertisement.” The Specification describes that “the associative relations may be established such that the display units in the private shops dealing with the properties different from those of the advertisement are evaluated to be in close relation.” Spec. 13:2–6 (emphasis added, cited at Appeal Br. 7 in support of the “wherein” clause at issue). We note that the Specification’s use of the term “different from” does not match the claim terms “not related to.” In addition, the Specification is silent on what it means to be “related to” or “not related to,” and is silent on what the “properties of an advertisement” encompass in this determination. For example, it is unclear if a business must be “not related” to all, or just some, properties of an advertisement to be considered “not related” to those properties. Because we do not know what the properties of an advertisement encompass, and have no direction on what determines whether a business is Appeal 2020-001832 Application 14/362,400 5 “related,” or “not related,” to those properties, we are unable to determine what is required by the claims for determining if a business is “not related to the properties of an advertisement.” For example, a product that is the subject of an advertisement may be offered for sale at one business, but not another, and this may suggest that the first business is “related” to the advertisement, but not the second. But if the second business sells a competitive product, we cannot determine if that is enough to be “related to” the product, as a property of the advertisement, or “not related to” the product, because it is a similar, though different, product. Or, for example, if someone who produced the advertisement frequents the second business, we cannot determine if that makes the second business “related” to a property of the advertisement, or not. Because there is no limit provided for “properties of an advertisement,” and no required algorithm for the “related” determination, the amount of speculation possible on these matters is infinite. An example of the problem this creates in this case comes from how this situation makes it impossible to resolve the dispute advanced by the Appellant. The Appellant provides an example of this analysis, stating that: for cosmetics related advertisements, a display unit installed in a private shop dealing with food business (e.g., a restaurant) is given a greater associative relation value with respect to the advertisement of cosmetics than a display unit installed in another private shop dealing with another type of business related to the properties of the advertisement of cosmetics (e.g., a beauty shop). Appeal Br. 17. Then, the Appellant argues: Sugiura does not teach or fairly suggest that a display unit installed in a private shop dealing with a type of business (e.g., restaurant) not related to the properties of an advertisement (e.g., Appeal 2020-001832 Application 14/362,400 6 cosmetics advertisement) is given a greater associative relation value with respect to the advertisement than another display unit installed in another private shop dealing with another type of business (e.g., cosmetics retail) related to the properties of the advertisement (e.g., cosmetics advertisement). Emphasis omitted. Appeal Br. 16. In contrast, the Examiner finds2 that a “specifying count of an advertisement display area” is a “property of an advertisement.” Ans. 5 (citing Sugiura ¶¶ 127, 143). The Examiner finds that a “specifying count of an advertising display area” is not related to a property of an advertisement. Ans. 5. As above, this raises additional problems with interpreting the meaning of the claim language. For example, an advertisement for a product may be said to be “not related” to a business that does not sell that product, but if the business uses the product, it is unclear if the business is related to the product, and thus to a property of the advertisement. Or, if a property of an advertisement is the number of times the advertisement has appeared in a particular portion of a display’s area, and may be said to not be related to a business, it is unclear if that is the only property that determines relatedness, or whether all of the conceivably-identifiable properties of an advertisement must be considered in the unbounded relatedness analysis. In this case, we are unable to determine if the Examiner’s assertion, that “specifying count of an advertisement display area” is “not related” to a business, is correct. This is because this requires us to understand whether one factor like a “specifying count” is sufficient for making that 2 The Examiner also finds that a “product of interest” is a property of an advertisement. Final Act. 6. Appeal 2020-001832 Application 14/362,400 7 determination. Additionally, we are unable to determine whether this property is “related,” or “not related” to a business, because the Specification and claims do not guide us sufficiently to understand how “related,” or “not related,” is determined, and how “properties of an advertisement” are utilized in the determination. Because we are unable to determine the meaning of whether a business is “related” or “not related” to “the properties of an advertisement,” we are unable to determine exactly what steps the claimed medium and system recite. Therefore, we are unable to resolve the dispute of whether the Examiner has shown by a preponderance of the evidence that the claims are obvious over a combination of Khare and Sugiura. Claims 1 and 18, therefore, are indefinite. Where claims do not particularly point out and distinctly claim the invention as required by the second paragraph of 35 U.S.C. § 112, a § 103 rejection of the claims must be reversed as impermissibly involving speculative assumptions as to the meaning of the claims. In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). If no reasonably definite meaning can be ascribed to certain terms in the claim, “the subject matter does not become obvious— the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). Therefore, we reverse the rejection under 35 U.S.C. § 103(a) of claims 1–3, 5, 6, 10, 12, 18, 22, 23, 41, and 42. Using our authority under 37 C.F.R. § 41.50(b), we reject independent claims 1 and 18 under 35 U.S.C. § 112, second paragraph, as indefinite, based on our inability to determine the precise meaning of “related to” and “not related to the properties of an advertisement” in claims 1 and 18. We also reject dependent claims 2, 3, 5, Appeal 2020-001832 Application 14/362,400 8 6, 10, 12, 22, 23, 41, and 42, because they depend from the rejected independent claims, and therefore recite the same indefinite language. CONCLUSION The Examiner’s rejection is reversed. We enter a new ground of rejection of claims 1–3, 5, 6, 10, 12, 18, 22, 23, 41, and 42 under 35 U.S.C. § 112, second paragraph, as indefinite. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–3, 5, 6, 10, 12, 18, 22, 23, 41, 42 103(a) Khare, Sugiura 1–3, 5, 6, 10, 12, 18, 22, 23, 41, 42 1–3, 5, 6, 10, 12, 18, 22, 23, 41, 42 112, second paragraph Indefiniteness 1–3, 5, 6, 10, 12, 18, 22, 23, 41, 42 Overall Outcome 1–3, 5, 6, 10, 12, 18, 22, 23, 41, 42 1–3, 5, 6, 10, 12, 18, 22, 23, 41, 42 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (2018). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-001832 Application 14/362,400 9 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same Record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)