Ex Parte Boyd

Board of Patent Appeals and Interferences

Oct 8, 2010

10221974 (B.P.A.I. Oct. 8, 2010)

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.
10/221,974 09/16/2002 John E Boyd JEB00-0013 8689
7590 10/08/2010
John Boyd
9 Beechwood Lane
Ridgefield, CT 06877
EXAMINER
CARLSON, JEFFREY D
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
10/08/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN E. BOYD
___________

Appeal 2010-000466
Application 10/221,974
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000466
Application 10/221,974

2
STATEMENT OF THE CASE
John E. Boyd (Appellant) seeks our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 23-26, 30, 31, 33-37, 41-43, 61, 64-67,
69, 70, 71, and 73. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM. 2

THE INVENTION
This invention is “advertising devices which communicated
advertisements to targeted individuals based on information relating to the
individual’s personal profile.” Specification 1:6-9.
Claim 23, reproduced below, is illustrative of the subject matter on
appeal.
23. An electronic entertainment device configured
for delivering entertainment services and one or
more targeted advertisements to one or more
individuals comprising;
(a) an input element configured for
receiving identifying information from said one or
more individuals; and
(b) a communication element configured for
providing said entertainment services to said one
or more individuals for free, wherein said
entertainment services is selected from music,

2 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Aug. 28, 2008) and the Examiner’s Answer (“Answer,” mailed Nov.
25, 2008).

Appeal 2010-000466
Application 10/221,974
3
radio, television, and/or electronic games;
wherein said electronic entertainment device
is configured to deliver said one or more targeted
advertisements to said one or more individuals
based on said identifying information.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Klayh US 2003/0103644 A1 Jun. 5, 2003
The Examiner took official notice “that it is well known for arcade
games to operate with predetermined time periods.” Answer 4. [Hereinafter,
Official Notice I].
The Examiner took official notice “that most arcade games included
security features such as a cabinet/housing with a lock to keep members of
the public from accessing the inside of the machines.” Answer 5.
[Hereinafter, Official Notice II].
The Examiner took official notice “that it is well known for
electronic-based advertising in an interactive environment to allow the user
to interact with the advertising so as to request more information or event o
purchase the advertised item.” Answer 5. [Hereinafter, Official Notice III].
The following rejections are before us for review:
1. Claims 23-25, 30, 31, 34-36, 41-43, 61, 64-67, 70, 71, and 73
are rejected under 35 U.S.C. §102(e) as being anticipated by
Klayh.
2. Claims 26, 31, 33, 37, 42, 67, and 69 are rejected under 35
U.S.C. §103(a) as being unpatentable over Klayh and Official
Notice I-III.
Appeal 2010-000466
Application 10/221,974
4

ISSUES
The first issue is whether claims 23-25, 30, 31, 34-36, 41-43, 61, 64-
67, 70, 71, and 73 are anticipated under 35 U.S.C. §102(e) by Klayh.
Specifically, the major issue is whether the Examiner has unreasonably
broadly construed “free” when finding that Klayh describes providing
entertainment services to one or more individuals for free.
The second issue is whether claims 26, 31, 33, 37, 42, 67, and 69 are
unpatentable under 35 U.S.C. §103(a) over Klayh and Official Notice I-III.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. We adopt the Examiner’s findings of fact regarding Klayh as our
own. Answer 3-5.
2. Further, we find that Klayh describes that a “card number” is read
from the ID card of a player. Klayh [0062].
3. Klayh describes that in order to play the game, the customer
swipes an ID card, which stored the identification of the customer
(Klayh [0039]), on a card reader of the arcade game. Klayh
[0062]. See also Klayh [0065] and [0070].
4. The Specification does not contain an express definition of “free.”

Appeal 2010-000466
Application 10/221,974
5
ANALYSIS
The rejection of claims 23-25, 30, 31, 34-36, 41-43, 61, 64-67, 70, 71, and
73 under §102(e) as being anticipated by Klayh.
Apparatus claims 23, 25, 30, 61, 65, and 66
Independent claims 23 and 61 recite “a communication element
configured for providing said entertainment services to said one or more
individuals for free.” The Appellant and the Examiner dispute whether the
claimed communication element that is configured to provide entertainment
services for free reads on Klayh’s description of an arcade game uses loyalty
points for game playing. See Br. 4-8 and Answer 5-6. The Appellant,
citing Webster’s Dictionary, construes “free” to mean “provided without, or
not subject to, charge or payment.” Br. 6. The Appellant then argues that
because Klayh describes earning and redeeming loyalty points in exchange
for the game play, the game play is not free. Br. 6-8. The Examiner
construes “free” to mean not requiring monetary payment and argues that
using loyalty points for game playing is free game play. Answer 6. The
Examiner notes that this is consistent with the Appellant’s cited definition of
“free.” Id.
We find that the Appellant has not shown that the Examiner has
unreasonably broadly construed the meaning of “free.”
Some cases state the standard as “the broadest
reasonable interpretation,” see, e.g., In re Van
Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057,
1059 (Fed. Cir. 1993), others include the qualifier
“consistent with the specification” or similar
language, see, e.g., In re Bond, 910 F.2d 831, 833,
15 USPQ2d 1566, 1567 (Fed. Cir. 1990). Since it
would be unreasonable for the PTO to ignore any
interpretive guidance afforded by the applicant's
Appeal 2010-000466
Application 10/221,974
6
written description, either phrasing connotes the
same notion: as an initial matter, the PTO applies
to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary
usage as they would be understood by one of
ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or
otherwise that may be afforded by the written
description contained in the applicant's
specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Initially, we note that the Specification does not contain an express
definition of “free” (FF 4) and that the Examiner’s construction is not
inconsistent with the Specification, which describes providing free services
on pages 24 and 25. Further, we agree with the Examiner, that the
Examiner’s construction is consistent with the Appellant’s cited dictionary
definition. Answer 6. The Appellant has not shown that the Examiner’s
bona fide construction of “free” is unreasonable.
The Appellant does not make separate arguments directed to
dependent claims 25, 30, 65, and 66 and therefore, these claims stand or fall
with independent claims 23 and 61. See In re Dance, 160 F.3d 1339, 1340
n.2 (Fed. Cir. 1998)(“Although Dance mentions the content of the dependent
claims, he does not argue their merits separately from those of independent
claim 33, or attempt to distinguish them from the prior art. Nor were the
dependent claims argued separately before the Board. Accordingly we find
that the Appellant has not overcome the rejection of claims 23 and 61, and
claims 25, 30, 65, and 66, dependent thereon, under 35 U.S.C. § 102(e) as
being anticipated by Klayh.

Appeal 2010-000466
Application 10/221,974
7
Method claims 34, 36, 41, 43, 70, and 73
Claims 34 and 70 recites a step of “providing said entertainment
services to said one or more individuals for free.” The Appellant traverses
the rejection of claims 34 and 70 for reasons similar to that discussed with
regards to claims 23 and 61. For the reasons above, we find that the
Appellant has not overcome the rejection of claims 34 and 70, and claims
36, 41, 43, and 73, dependent thereon, under 35 U.S.C. § 102(e) as being
anticipated by Klayh. We note that the Appellant does not make separate
arguments directed to dependent claims 36, 41, 43, and 73 and therefore,
these claim stand or fall with independent claims 34 and 70.

Claims 24, 35, 64, and 71
Claims 24 and 64 recite “wherein said device is configured to provide
said entertainment services for free in exchange for said one or more
individuals providing said identifying information.” Claims 35 and 71 recite
a similar step. The Appellant argues that these claims require that a user
provides identifying information to the device and in turn receives free
entertainment services (Br. 9) and that Klayh’s description of a customer
redeeming loyalty points for game play does not teach this limitation (Br.
10-11). The Examiner argues “that the free gameplay of Klayh requires that
information be provided.” Answer 6
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Appeal 2010-000466
Application 10/221,974
8
We find that Klayh describes this limitation. Klayh describes that in
order to play the game, the customer swipes an ID card, which stored the
identification of the customer, on a card reader of the arcade game. FF 3.
We find that the limitation at issue reads on this description since the
customer is allowed to play the game in exchange for the customer
identification from the ID card.
Accordingly, we find that the Appellant has not overcome the
rejection of claims 24, 35, 64, and 71 under 35 U.S.C. § 102(e) as being
anticipated by Klayh.

Claims 31, 42, and 67
Claims 31, 42, and 67 each require that the identifying information
include a credit card number. The Appellant argues that Klayh does not
describe that the identifying information includes a credit card number and
that this limitation is not anticipated by any number, as the Examiner asserts
(see Answer 4). Br. 11-13.
Initially we note that Klayh does describe identifying information that
includes a card number. Klayh describe that a “card number” is read from
the ID card of a player. FF 2. Klayh does not characterize that card number
as a credit card number.
The claimed “credit card number” is clearly information, albeit the
information is specifically characterized as “credit.” The Appellant has not
come forward with evidence sufficient to show that the structure of the
information, i.e., the data, is functionally affected by it being, specifically, a
credit card number. Absent such evidence, it was reasonable for the
Examiner to conclude that the credit card aspect of the information was
Appeal 2010-000466
Application 10/221,974
9
descriptive and not functionally related to any structure of the claimed
invention and as such fell under the category of patentably inconsequential
subject matter. The fact that the claim requires the card number to be a credit
card number does not change the fact that the identifying information
includes a number but that aspect of the information which characterized as
a credit card number is properly considered to be nonfunctional and
descriptive. See Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005)
(informative) (“Common situations involving nonfunctional descriptive
material are: - a computer-readable storage medium that differs from the
prior art solely with respect to nonfunctional descriptive material, such as
music or a literary work, encoded on the medium, - a computer that differs
from the prior art solely with respect to nonfunctional descriptive material
that cannot alter how the machine functions (i.e., the descriptive material
does not reconfigure the computer), or - a process that differs from the prior
art only with respect to nonfunctional descriptive material that cannot alter
how the process steps are to be performed to achieve the utility of the
invention. Thus, if the prior art suggests storing a song on a disk, merely
choosing a particular song to store on the disk would be presumed to be well
within the level of ordinary skill in the art at the time the invention was
made. The difference between the prior art and the claimed invention is
simply a rearrangement of nonfunctional descriptive material.).” See also Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative).
Accordingly, we find that the Appellant has not overcome the
rejection of claims 31, 42, and 67 under 35 U.S.C. §102(e) as being
anticipated by Klayh.

Appeal 2010-000466
Application 10/221,974
10
The rejection of claims 26, 31, 33, 37, 42, 67, and 69 under §103(a) as being
unpatentable over Klayh and Official Notice I-III.
Claims 26 and 37
As with claims 23 and 37 above, the Appellant argues that neither
Klayh nor Official Notice I teach providing entertainment services for free.
Br. 13-14. As discussed above, we find the Appellant’s argument
unpersuasive and that Klayh teaches an arcade game, which provides
entertainment services for free. Accordingly, we find that the Appellant has
not overcome the rejection of claims 26 and 37 under 35 U.S.C. § 103(a)
over Klayh and Official Notice I.

Claim 33
As with claims 23 above, the Appellant argues that neither Klayh nor
Official Notice II teach providing entertainment services for free. Br. 14.
As discussed above, we find the Appellant’s argument unpersuasive and that
Klayh teaches an arcade game, which provides entertainment services for
free. Accordingly, we find that the Appellant has not overcome the rejection
of claim 33 under 35 U.S.C. § 103(a) over Klayh and Official Notice II.

Claims 31, 42, and 67
The Examiner alternatively rejected claims 31, 42, and 67 under 35
U.S.C. § 103(a) and found that that “indexing user accounts with credit card
numbers is a common and well known practice that one of ordinary skill
would find predictably successful for such purposes.” Answer 5. For the
same reasons as discusses above with regards to the rejection of claims 31,
42, and 67 under 35 U.S.C. § 102(e) above, we find that the Appellant has
Appeal 2010-000466
Application 10/221,974
11
not overcome the rejection of claims 31, 42, and 67 under 35 U.S.C. §
103(a) over Klayh.

Claim 69
As with claims 61 above, the Appellant argues that neither Klayh nor
Official Notice II teach providing entertainment services for free. Br. 14.
As discussed above, we find the Appellant’s argument unpersuasive and that
Klayh teaches an arcade game, which provides entertainment services for
free. Accordingly, we find that the Appellant has not overcome the rejection
of claim 69 under 35 U.S.C. § 103(a) over Klayh and Official Notice II.

DECISION
The decision of the Examiner to reject claims 23-26, 30, 31, 33-37,
41-43, 61, 64-67, 69, 70, 71, and 73 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

mev

JOHN BOYD
9 BEECHWOOD LANE
RIDGEFIELD CT 06877