Ex Parte Abulhasan

Patent Trial and Appeal Board

May 31, 2016

11213783 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111213,783 08/30/2005 Mohammed Bader Abulhasan
22429 7590 06/02/2016
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
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.
3348115 1371
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
EAnastasio@IPFirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMMED BADER ABULHASAN
Appeal2013-009934
Application 11/213, 7 83
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claim 19. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal2013-009934
Application 11/213, 7 83
BACKGROUND
Appellant's invention is directed to multimedia advertising methods
and more particularly to methods for selling and distributing multimedia
advertisements using the Internet. Spec. 1.
Claim 19 is the only claim on appeal and recites:
19. A method for selling and distributing multimedia
advertisements from a single provider using the Internet, said
method comprising the steps of:
establishing an Internet site as a single source of
multimedia advertising with selectable categories wherein
advertisers compose and place initial advertisements in selected
categories and in specific media on the Internet and for
multimedia distribution;
forming partnerships and/or contractual agreements with
the purveyor of media advertising for sharing income from
multimedia ads with the purveyor of such advertisements in
other media;
generating preselected parameters with the purveyors of
such advertisements in other media pursuant to said partnership
and/or contractual agreements including word count, column
length, font sizes, choice of fonts, photos and size of photos and
establishing a fee schedule and posting said preselected
parameters and fee schedules on said Internet site so that an
advertiser can compare coverage verses costs and decide which
media to select;
generating an advertising campaign within said
parameters from a remote terminal and transmitting said
advertising campaign to said Internet site;
selecting multimedia distribution including selected
media and categories from the remote terminal and making
payment online for an Internet advertisement in a selected
category and in selected media; and
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Application 11/213, 7 83
said single provider providing an ID number, a second
website and limited data storage, for each advertiser for storage
of additional sales literature pertaining to said initial
advertisement and listing said ID number for access to said
second website with said advertisement on the Internet and in
each selected medium with instructions for ordering and paying
for advertised items;
generating and posting additional sales literature through
said Internet site by a link to said ID number;
providing an automatic audio response to telephone
inquiries identified by said ID number;
forwarding orders and responses from said site and from
other media to said advertiser; and
sharing income from multimedia ads with the purveyors
of such advertisements in other media pursuant to said
partnership and/or contractual agreements.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Stone
Heene
Turcotte
US 2003/0080999 Al
US 2004/0254853 Al
US 2006/0259424 Al
Appellant appeals the following rejection:
May 1, 2003
Dec. 16, 2004
Nov. 16, 2006
Claim 19 under 35 U.S.C. § 103(a) as unpatentable over Stone, Heene, and
Turcotte.
ISSUE
Did the Examiner err in rejecting the claim because (1) the Examiner
failed to explicitly make a finding regarding the level of skill in the art, (2)
the individual teachings of the references do not disclose the invention as
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Appeal2013-009934
Application 11/213, 7 83
claimed, and (3) there is no reason to combine the teachings to arrive at the
claimed invention?
FACTUAL FINDINGS
We adopt the Examiner's findings as our own. Final Act. 3-9
Additional findings of fact may appear in the Analysis that follows.
ANALYSIS
We are not persuaded of error on the part of the Examiner by the
Appellant's argument that the Examiner did not make a finding regarding
the level of skill in the art and that the skilled artisan in the field of the
invention has an undergraduate degree in computer science or an equivalent
amount of industrial experience and familiarity with internet programming.
Appeal Br. 8.
'l:'(T ~ ~i ~ i C" ~,~ ;',i i i r~ 1~ i ~111 ~ , we nm:e rnar an express aenmnon or me ieve1 or oramary sKm 1s nor
required in a11 situations, as the level of ordinary skill in the art can be
reflected in the cited prior art references. See Okajima v. Bourdeau,
261F.3d1350, 1355 (Fed. Cir. 2001) ("the absence of specific findings on
the level of skiII in the art does not give rise to reversible eITor 'where the
prior art itself reflects an appropriate level and a need for testimony is not
shown.'" (quoting Litton Indus. Prods., inc. v. Solid State S)'s. Corp.,
755 F.2d 1585 163 (Fed. Cir. 1986)); In re GPAC Inc., 57 F.3d 1573, 1579
(Fed. Cir. 1995). \Ve find the level of ordinary skill in the art to be reflected
in the cited references, and we determine that no express statement of the
level of ordinary skill in the art is required in this case. In addition, it is not
clear how the detennination of the level of skill in the art made by the
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Application 11/213, 7 83
Appellant impacts the rejection of the Examiner as the Appellant has not
argued that a person of ordinary skill in the art, according to Appellant's
definition, would not have the skill to cmnbine the applied references as
advanced by the Examiner to arrive at the claimed invention.
We are not persuaded of error on the part of the Exam in er by
Appe11ant's argurnent that the claimed invention is "far rnore complex than
the Telefax invention as involved in the KSR decision.~' Appeal Br. 8. The
Appellant supports this argument by restating claim 19, clause by clause. Id
at 8-10. This argument fails because, as detailed in the Final Action, each of
~ . .
the limitations of the claim is taught by the prior art.
In addition, the Appellant argues that the rejection is based on three
references with each containing numerous figures and pages of specification.
This argurnent is likewise not persuasive because it is we11 settled that the
number of required references to shmv obviousness does not, by itself~
demonstrate that the claimed subject matter would have been unobvious to
an ordinary artisan. See In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991)
(affirming obviousness rejection over thirteen references) ("The criterion ...
is not the number of references, but what they would have meant to a person
of ordinary skill in the field of the invention.'~ (citing l(ybritech, inc. 11.
lvlonoclonal Antibodies, Inc., 802 F.2d 1367, 1383 (Fed. Cir. 1986), cert.
denied, 480 U.S. 947 (1987))).
\Ve are not persuaded of error on the part of the Examiner by
Appellant's argmnent that Turcotte does not require an internet service or
entering a message by typing a message and has no provision for placing
multimedia advertisements or the other steps recited in claim 19 and that
Heene does not disclose providing automatic audio response, because these
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Application 11/213, 7 83
arguments are directed to the teachings of Turcotte and Heene alone. The
rejection, hmvever, is based on the combined teachings of references. The
test for obviousness is what the combination of references would have
suggested or taught one of ordinary skm in the art at the time of the
invention. In re Keller, 642 F.2d413, 425 (CCPA 1981). In this regard,
Stone is relied on for teaching most of the invention as recited in claim 19.
Heene is relied on for teaching a unique identifier associated with an on line
classified advertisement, and Turcotte is relied on for teaching an interactive
voice response system.
\Ve are not persuaded of error on the part of the Examiner by
AppeHanf s argurnent that the rejection is based cm hindsight Appeal
Br. 13. \Ve agree with the Examiner's response to this argurnent found on
page 8 of the Answer.
\Ve have considered the other arguments advanced by the Appellant,
1 J C'" i A°1 ~ ~ ,.._ ,1 A ,.._ ,1 ,-, ~
om: nna inese argumern:s unpersuasive or error on rne pan or me t:<.xammer.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 19.
DECISION
The decision of the Examiner is affirmed.
TIME PERIOD
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)(l) (2009).
ORDER
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AFFIRMED
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