Ex Parte Carrez et al

Board of Patent Appeals and Interferences

Dec 3, 2010

10969916 (B.P.A.I. Dec. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
TJnited States Patent and Trademark Office
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SUGHRUE MION, PLLC
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APPLICATION NO.
EXAMINER
HOAR, COLLEEN A
101969,916 10/22/2004 Francois Carrez 484226 1784
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CONFIRMATION NO.
12/07/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte FRANCOIS CARREZ and
THIERRY LESTABLE
Appeal 2010-004034
Application 10/969,9 16
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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 2010-004034
Application 10/969,9 16
STATEMENT OF THE CASE
Francois Carrez, et al. (Appellants) seek our review under 35 U.S.C.
5 134 (2002) of the final rejection of claims 1-19. We have jurisdiction
under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
THE INVENTION
The invention relates to "the field of displaying of content, and more
particularly without limitation, to displaying of advertisements."
Specification 1 : 14- 15.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of displaying contents on a display, the method
comprising :
determining at least one active user device of a wireless
telecommunication network being located in a proximity of the
display;
selecting a content among the contents depending on a user
profile being assigned to a user of the at least one active user device;
and
displaying the content on the display,
wherein, for the selecting and displaying the content on the
display, a statistic evaluation of information on the user profile is
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed Apr. 24, 2009) and Reply Brief ("Reply Br.," filed Dec. 4, 2009),
and the Examiner's Answer ("Answer," mailed Oct. 5, 2009).
Appeal 2010-004034
Application 10/969,9 16
carried out, and a display time is allocated to the content in proportion
to distribution of interests of the user.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability :
Waters US 200210008626 A1 Jan. 24,2002
Otobe US 200410010599 A1 Jan. 15,2004
The following rejections are before us for review:
1. Claims 1-3 and 5- 10 are rejected under 35 U.S.C. 5 102(b) as being
anticipated by Waters.
2. Claims 4 and 1 1- 19 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Waters and Otobe.
ISSUES
Did the Examiner err in rejecting the claims over the cited prior art?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1-3 and 5-1 0 under 35 U.S. C. $1 02(b) as being
anticipated by Waters.
The Appellants argued claims 1-3 and 5-10 as a group (App. Br. 8-9
and Reply Br. 4-5). We select claim 1 as the representative claim for this
Appeal 2010-004034
Application 10/969,9 16
group, and the remaining claims 2, 3, and 5-10 stand or fall with claim 1. 37
C.F.R. 9 41.37(c)(l)(vii) (2007).
The following claim limitation is at issue:
wherein, for the selecting and displaying the content on the display, a
statistic evaluation of information on the user profile is carried out,
and a display time is allocated to the content in proportion to
distribution of interests of the user.
(Claim 1)
This being a rejection under §102(b), the question is whether Waters
describes the claimed invention, expressly or inherently. "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., Znc. v. Union Oil Co. of Cal., 814 F.2d 628, 63 1 (Fed. Cir.
1987). Thus, in order for Waters to anticipate the claimed invention, Waters
must either expressly or inherently describe the claim 1 step of carrying out
a statistic evaluation of information on the user profile and allocating a
display time to the content in proportion to distribution of interests of the
user for the selecting and displaying the content on the display.
In that regard, the Examiner took the position that Waters at [0034]
discloses the claim limitation at issue (see Answer 5 and 13). "The viewers
interest is indicated by the amount of time the viewer spends within the
presence zone of the display." Answer 13.
The Appellants disagree, arguing that "Waters does not disclose" the
claim limitation at issue. App. Br. 8. In general, the Appellants argue that
the display time in Waters is controlled by the user's presence while the
display in the claimed invention, "necessarily represent a level of interest."
Reply Br. 5. In particular, the Appellants argue that the claimed invention
distinguishes over Waters because (a) "the claim indicates that, without
Appeal 2010-004034
Application 10/969,9 16
regard to a specific user's spending, a user's interest distribution determines
the display time for a (particular) content" (App. Br. 8); and, (b) "the claim
indicates that, after selecting a content among contents, a display time is
allocated to the (selected) content in proportion to distribution interests of
the user" (App. Br. 9).
The Appellants' arguments are not commensurate in scope with what
is claimed. Cf. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("Many of
appellant's arguments fail from the outset because, . . . they are not based on
limitations appearing in the claims . . . ."). Claim 1 is not limited so as to
have the level of interest control the display time. Nor is claim 1 limited so
as to require the display time to be determined by a user's interest
distribution. Finally, nothing in claim 1 limits the allocating of a display
time in proportion to distribution interests of the user to a point after the
selecting step.
Claim 1 simply requires allocating a display time to the content in
proportion to a distribution of interests of the user. This means there is a
comparative relation between the display time of the content and a user's
distribution of interests. The ordinary and customary meaning of
"proportion" is "the comparative relation between parts, things, or elements
with respect to size, amount, degree, etc.; ratio." (See Webster's New World
Dictionary 1079. (3rd Ed. 1988.)(Entry 1. for "proportion") But the claim
does not specify in what way they are comparatively related. The
Appellants interpret the claim such that, for example, "if a user is more
interested in product A (a content), more display time is allocated to product
A (the content)." Reply Br. 4. However, as the claim is presently drafted it
is not limited such that a user's distribution of interests drives the allocation
Appeal 2010-004034
Application 10/969,9 16
of a content's display time. So long as the content's display time is in
comparative relation to a distribution of interests of the user, the claim
broadly encompasses factors other than a user's distribution of interests,
such as a user's presence (i.e., Waters) to allocate the display time.
Because the Appellants' arguments are based on an unduly narrow
construction of claim 1, the arguments are not persuasive as to error in the
rejection. We reach the same conclusion as to the rejection of claims 2, 3,
and 5-10 which stand or fall with claim 1.
The rejection of claims 4 and 11 -1 9 under 35 U.S. C. $1 03(a) as being
unpatentable over Waters and Otobe.
The Appellants have not separately addressed this rejection but relied
on the arguments challenging the rejection of independent claim 1. App. Br.
9. Given that we have found those arguments unpersuasive, we find them
equally unpersuasive as to the rejection of claims 4 and 11-19 under 35
U.S.C. §103(a) as being unpatentable over Waters and Otobe.
DECISION
The decision of the Examiner to reject claims 1-19 is affirmed.
AFFIRMED
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