Russell Gottesman et al.

Patent Trials and Appeals Board

Aug 28, 2020

12259092 - (D) (P.T.A.B. Aug. 28, 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.
12/259,092 10/27/2008 Russell Gottesman 10700-100203 1303
12271 7590 08/28/2020
Dennemeyer & Associates, LLC
2 North Riverside Plaza
Suite 1500
Chicago, IL 60606
EXAMINER
HENRY, RODNEY M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/28/2020 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):
dgurfinkel@dennemeyer-law.com
docket@dennemeyer-law.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUSSELL GOTTESMAN and
KATHERINE GOTTESMAN
____________

Appeal 2018-008657
Application 12/259,092
Technology Center 3600
____________

BEFORE DENISE M. POTHIER, CARL L. SILVERMAN, and
MELISSA A. HAAPALA, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–3, 6–8, and 11–20.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
Commuter Advertising, Inc., as the real party in interest. Appeal. Br. 2.
2 Although there is confusion in the record, it is our understanding that
claims 30 and 31 are also pending. These claims were added by the
amendment dated Oct. 20, 2016 prior to the Final Rejection of Mar. 7, 2017.
Although the Final Action does not list claims 30 and 31 in the summary
page, it does identify these claims as rejected under 35 U.S.C. § 112(a). See
Final Act. 1, 3. As the Examiner withdrew the § 112 rejection (Ans. 3) and
these claims are not rejected under any other ground, they are not before us
on appeal.
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STATEMENT OF THE CASE
The invention relates to targeted advertising in a moving vehicle to
increase advertising revenue. Abstract; Spec. 1 (Field of the Invention), 3–4
(Summary of the Invention), Figs. 1a, 4. Claim 12 reproduced below, is
exemplary of the subject matter on appeal (emphasis added):
12. A method of more advantageously assigning advertising
space in a moving public transit vehicle and thereby securing
increased advertising revenue, including the steps of:
providing a public transit vehicle having a public address
system, comprising at least a speaker and a means to cause
sounds to be heard by passengers throughout the vehicle, with
message storage and playback devices, the playback devices
addressing the entire passenger portion of the transit vehicle;
providing a microprocessor, a global positioning system
(GPS), an electronic storing device for storing advertising
messages comprising data including location and business hour
data, software and a communication device all traveling with the
public transit vehicle, the microprocessor programmed to
continuously reviewing one or more advertising messages in the
electronic storing device and compare data from the advertising
message against GPS information continuously received;
providing storage and public playback of advertising
messages on the public address system on the public transit
vehicle;
creating the advertisement and producing an audio
message, comprising advertisement information and at least
location and time data;
storing the audio message and data in the message storage
device of a public transit vehicle for continuous review by the
microprocessor and playback through the transit vehicle public
address system;
determining with the microprocessor, the GPS and the
location and business hour data in the advertising message, the
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Application 12/259,092
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one or more geographic locations on the route of the public
transit vehicle at which the advertising message can be played
and mapping those one or more geographic locations on a public
transit system map in the electronic storing device for review by
the microprocessor and playback at desired times and geographic
locations;
playing, with no added impetus from the vehicle
passengers, the advertising message at the one or more of the
predetermined geographic locations, and
charging an increased fee to an advertiser promulgating
the advertising message for the dissemination of the advertising
message at the targeted geographic location.
Appeal Br. 153. (Claims Appendix).
REFERENCES
Prior art relied upon by the Examiner:
Name Reference Date
Hamilton et al US 2002/0057212 A1 May 16, 2002
Murray. US 2002/0068583 A1 June 6, 2002
Schmier et al. US 2002/0069017 June 6, 2002
Chandra et al. US 2007/0242643 A1 Oct. 18, 2007

3 Our cites to the Claims Appendix continue the numbering from the Appeal
Brief.
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THE REJECTIONS4
Claims 8 and 12 are rejected under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Schmier. Final Act. 4–9.
Claims 1–3, 6, 7, 11, 13–15, 17, 18, and 20 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Schmier and Hamilton.
Final Act. 10–18.
Claim 16 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Schmier and Chandra. Final Act. 19.
Claim 19 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Schmier and Murray. Final Act. 19–20.
ANALYSIS
The § 102 rejection of independent claims 8 and 12
Appellant argues the Examiner errs in finding Schmier disclosed the
invention of independent claims 8 and 12. Appeal Br. 4–9; Reply Br. 7–10.
Appellant argues:
Schmier discloses a public transit vehicle arrival
information system. Schmier does not disclose a method for
increasing the revenue of a transit system. The inclusion of
advertising messages in Schmier does tend to cause revenue to
be generated, but Schmier does not teach that the users of the
method create advertisements and thereby further increase the
revenue of the system. This is because the invention of Schmier
is for use by the transit vehicle company in running a transit
system. The invention is designed to notify persons waiting at
bus stops that a bus is coming, letting the persons know the
amount of time before the bus arrives, letting the persons know
if there are seats available in the bus. The system includes some
information about providing advertisements relevant to the

4 The 35 U.S.C § 112 rejection of claims 1–3, 6, 7, 30, and 31 is withdrawn.
See Ans. 3.
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location of the bus, its next position and retailers near by, but this
is seen as mere advertising by Schmier and not an opportunity
for increased revenues. In addition, the system is only directed
to buses, as the focus of the invention includes signage outside
of the vehicle for use by persons at bus stops.
Appeal. Br. 7–8 (emphasis added).
Appellant concedes Schmier “shows one embodiment wherein the
elements of claim 8 are substantially shown, with the exception of the
showing of a method for increasing revenue.” Id. at 8. Appellant then refers
to independent claim 12,5 which includes the following limitations (also
referred to as “disputed limitations”):
(1) creating the advertisement and producing an audio
message, comprising advertisement information and at
least location and time data;
(2) charging an increased fee to an advertiser promulgating
the advertising message for the dissemination of the
advertising message at the targeted geographic location.

Id. at 8 (emphasis added by Appellant) (“(1)” and “(2)” added and also
referred to herein as “disputed limitations (1) and (2)”). According to
Appellant, these limitations are “seminal to the present invention” and are
shown in the Specification “where invoicing for advertising and the splitting
the revenue between the user of the invention and the transit agency is
shown.” Id. (citing Schmier, Figure la, at 14, Figure 1b at 34).
Appellant argues the Examiner errs in finding Schmier’s offer of a
sale that could be shown or broadcast in proximity to an advertiser’s store
discloses ad creation because Schmier does not disclose who created that

5 Appellant notes that, in an amendment after final, Appellant cancelled all
independent claims (claims 1 and 8), except claim 12; but the amendment
was not entered. Appeal Br. 8–9; see Advisory Act. 2.
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advertisement or that the advertisement could be sold at an increased rate.
Id. at 9 (citing Schmier ¶ 92; emphasis added). Appellant argues “[u]sers of
the present invention, in contrast, are persons or companies desirous of
making money by advertisement in transit systems, including splitting such
revenues with the transit company (Figure 1b at 36) so as to secure a
contract to do such services.” Id. According to Appellant, “[n]othing in
Schmier discloses a method of increasing revenues nor is there any
disclosure that the user of Schmier would create advertisements in order to
increase revenues of a transit system.” Id. at 9–10.
In the Answer, the Examiner notes that “who has created” the
advertisement and “selling for an increased rate” are not recited in the
claims. Ans. 3–4. The Examiner refers to Schmier and finds:
Paragraph [0090] states that advertisement such as “how
about a scoop of pralines and cream?” can be a real boon to
neighborhood business. The Examiner further interprets that
“such a boon” can indeed cause longer and more frequent
advertisement by vendors such as the ice cream vendor, which
results in increase fees being charged for longer and more
frequent running of the ads (selling of ad time [0089]).
Additionally it was a typographical error that paragraph 0095
was cited. It should have been paragraph 94 which states,
“Advertising opportunities on the cases of public display units
can also be licensed for revenue. Since all transit riders are
likely to regularly observe such displays (hints at advertising
time longevity and hence increased fees), and since advertising
can be made so site specific, advertising as a part of this system
should be of significant value and affordable to a variety of
national, local and neighborhood businesses.”. See also
paragraph [0089] which discusses that the advertising system
provides needed revenue, and sells advertising time.
Additionally the Appellant's Specification is silent of
“advertisement sold at an increased rate or fee”.
Id. at 4.
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In the Reply Brief, regarding claim 12, Appellant argues the
Examiner’s arguments are unclear. Reply Br. 2. According to Appellant:
As in most method claims, the actor is the person or entity
following the steps of the method. As explained in the
application (as noted in the Appeal Brief) a person or company
would create a transit system or forge agreements with an
existing system to use or provide the listed elements that allow
the method to run, create the advertisements, store the
advertisements in the system, play the advertisements at
advantageous places and times and charge increased fees to
advertisers for those advertisements and their play. In most
cases, municipalities already have transit systems, which often
offer general advertisements in and without their vehicles to
create revenue (which allows the systems to run more
economically and at less expense to the riders), the user of the
present invention would then utilize such transit systems to
increase the revenue from advertisement by targeting
advertisements to desirable locations at desirable time and
charging advertisers more because their advertisements would be
more effective and thereby increase the advertiser’s revenues.
Id. at 2–3.
Appellant argues that an increased advertising fee will increase
advertising revenue and the Examiner’s interpretation of Schmier resulting
in an increase misunderstands the invention in which increased fees are for
targeted advertisements, not the length or frequency of advertisements. Id.
at 3. Appellant argues Schmier’s teaching of a bus stop ad is not a transit
vehicle and is in contrast to the invention method of targeting advertisement
in a moving vehicle. Id. at 3 (citing Schmier ¶ 90).
We are persuaded by Appellant’s arguments that the Examiner has not
presented sufficient evidence as required for anticipation. A claim is
anticipated only if each and every element as set forth in the claims is found,
either expressly or inherently described in a single prior art reference, and
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arranged as required by the claim. Verdegaal Bros., Inc. v. Union Oil Co. of
Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).

Regarding disputed limitation (1), Schmier discloses creating
advertisements that include audio advertisement with location and time data.
Schmier, paragraph 92, description of “Roses $4.95 a dozen.” Appellant’s
argument as to who created the advertisement is unpersuasive because the
limitation broadly recites “creating the advertisement” and the
advertisements of Schmier are certainly created, e.g., the Roses
advertisement. Although Appellant argues the significance of creating the
advertisement and describes details, such as creating the advertisement by
parties outside the transit system and splitting revenue, the claim does not
recite such limitations, but merely recites “creating the advertisement.”

However, on the record before us, the Examiner has not sufficiently
shown that Schmier discloses claim 12 disputed limitation (2) “charging an
increased fee to an advertiser promulgating the advertising message for the
dissemination of the advertising message at the targeted geographic
location” (emphasis added). Schmier does not disclose “charging an
increased fee . . . for the dissemination of the advertising message at the
targeted geographic location,” but instead refers to the “power of the
message” and describes generally that advertising “can be licensed for
value” and “should be of significant value and affordable.” See Schmier ¶¶
90–95. The Examiner’s reliance on longer or more frequent advertising is
not disclosed in Schmier and this finding does not meet the requirement for
anticipation.
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Independent claim 8 includes a similar limitation to claim 12 disputed
limitation (2) regarding advertising that recites “wherein revenue is
increased by charging an increased fee to an advertiser promulgating the
advertising message for the dissemination of the advertising message at the
targeted specific geographic locations (emphasis added; also referred to as
“disputed limitation”).” For the same reasons as discussed supra regarding
the anticipation rejection of claim 12, the Examiner’s finding is insufficient
to support anticipation of claim 8..”
In view of the above, we do not sustain the anticipation rejection of
claims 8 and 12.
The § 103 rejections of claims 1–3, 6, 7, 11, and 13–20
In addition to the arguments discussed above in the analysis of the
anticipation rejection, Appellant also argues the combination of Hamilton
and Schmier “fails to disclose a system for increasing revenues and does not
disclose a system where the user creates and sells advertisements to increase
the revenue of a transit system.” Appeal Br. 10. Appellant further argues
the claims of the present invention indicate that advertisement messages are
played “with no added impetus from the vehicle passengers” and that
Hamilton requires a passenger make some effort to hear an advertisement.
Id.
We are not persuaded by Appellant’s arguments and agree, instead,
that the findings and conclusion of the Examiner support obviousness. As
stated by the Supreme Court, an obviousness “analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”
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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
Much of Appellant’s arguments are directed to an unreasonably
narrow interpretation of the disputed limitations, and an unreasonably
narrow interpretation of the teachings of Schmier and Hamilton. For
example, contrary to Appellant’s assertion, Schmier is not limited to a bus
stop ad and, instead, is generally concerned with transit vehicles and
advertising revenue. Schmier ¶¶ 90–95. Appellant’s reference to specific
aspects involved in creating the advertising and splitting revenue are not
recited in claim 1 (or claims 8 and 12 discussed supra).
Further to our discussion of claims 8 and 12, supra, the Examiner
finds that site specific advertising, as disclosed by Schmier, is of significant
value. Ans. 4. Schmier further discloses advertising revenue can be
obtained by selling advertising time associated with the display panels.
Schmier ¶ 89. We determine that, one of ordinary skill in the art would
understand that Schmier’s targeted advertising would have higher value than
non targeted advertising and this teaching suggests its fee would be
increased relative to non targeted advertising. See Schmier ¶¶ 89–95; Final
Act. 12. For example, Schmier, paragraph 92 reproduced below (emphasis
added), describes the “power” of targeted advertising in transit vehicles:
Similarly, advertising messages can appear in transit
vehicles that are relevant to the location of the transit
vehicle and the time of day. Consider the power of the
message ‘Roses $4.95 a dozen, next stop, next bus ten
minutes behind’ for the flower retailer and for romance in
general!
One of ordinary skill in the art would understand, under an obviousness
analysis, that this targeted advertising for the Roses would have suggested
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higher value than non targeted advertising, and its fee would be increased,
resulting in “charging increased fees to the advertisers . . .”
Regarding no additional input (“no added impetus from the vehicle
passengers”), we are not persuaded the combination of Schmier and
Hamilton fails to teach this limitation. In particular, Schmier broadly
teaches broadcast of visual and audio messages without any input from
passengers, and Hamilton teaches both situations without input, and
situations with input (button). See Schmier ¶¶ 90–95; Hamilton ¶ 61.
In view of the above, we sustain the obviousness rejection of claim 1.
We also sustain the rejection of dependent claims 2, 3, 6, 7, 11, and 13–20
over Schmier and Hamilton, and the additional cited references (for claims
16 and 19) as the Examiner’s findings and conclusions are reasonable, and
these claims are not argued separately. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8, 12 102(b) Schmier 8, 12
1–3, 6, 7,
11, 13–15,
17, 18, 20
103(a) Schmier, Hamilton 1–3, 6, 7, 11,
13–15, 17,
18, 20

16 103(a) Schmier, Chandra 16
19 103(a) Schmier, Murray 19
Overall
Outcome
1–3, 6, 7, 11,
13– 20
8, 12

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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).
AFFIRMED-IN-PART