Ex Parte DeGross

Patent Trial and Appeal Board

Apr 14, 2016

10022627 (P.T.A.B. Apr. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
10/022,627
101034 7590
Lee M, DeGross
400 Park Place, # 1 H
Fort Lee, NJ 07024
FILING DATE FIRST NAMED INVENTOR
12/17/2001 Lee Michael DeGross
04/14/2016
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.
1204
EXAMINER
ROSWELL, MICHAEL
ART UNIT PAPER NUMBER
2615
MAILDATE DELIVERY MODE
04/14/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte LEE MICHAEL DEGROSS
Appeal2014-005557
Application 10/022,627
Technology Center 2600
Before JEAN R. HOMERE, JASON V. MORGAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant, proceeding prose, appeals under 35 U.S.C. § 134(a) from
the Examiner's Final Rejection of claims 1, 20, 29, and 38--40, the only
claims pending in the application. (App. Br. 5). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal2014-005557
Application 10/022,627
STATEMENT OF THE CASE
Appellant's invention is generally directed to blocking and revealing
internet advertisements. (Spec. 3). Claims 1, 29, and 38, reproduced below,
are representative of the claimed subject matter:
1. A first means for blocking and revealing internet advertising
compnsmg:
(a) a second means for placing an image or images of a
blocking nature of sufficient size to substantially conceal an internet
advertising,
(b) a third means for using a selection method to choose and
make the blocking image or images disappear and reveal said internet
advertising,
whereby a human can view and hear said internet advertising
only if said human wants by using said selection method.
29. A process to reveal a covered internet advertisement
compnsmg:
(a) presenting a covered internet advertisement,
(b) displaying a covering non-advertising image,
( c) having a selection method,
( d) constructing means for said covering non-advertising image
to substantially conceal said covered internet advertisement,
( e) utilizing said selection method to choose said covering non-
advertising image that substantially disappears to reveal said
covered internet advertisement,
whereby a person, without taking any action, is shielded from
said covered internet advertisement by said covering non-
advertising image, and
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whereby a person can view said covered internet advertisement
only if said person wants by using said selection method.
38. A system for exhibiting a covered computer advertisement for a
user to reveal the advertisement comprising:
a computer;
a screen of said computer;
a selection method;
a covered advertisement;
a covering image;
a process that substantially operates at a-d below:
a. exhibiting said covered advertisement to have visual
clutter substantially reduced on said screen;
b. displaying said covering image that substantially
blocked said covered advertisement so that a user will
be spared from said covered advertisement without
having to do anything;
c. using said selection method for said user to select said
covering image which substantially disappears to
reveal said covered advertisement; and
d. thereby said covered advertisement is displaying the
advertisement only if said user wants.
REJECTIONS
Appellant seeks our review of the following rejections:
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Claim 38 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which Applicant regards as the invention.
Claims 1, 29, 38, and 39 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Cragun et al. (US 6,324,553 Bl; issued Nov. 27, 2001)
(hereinafter "Cragun").
Claims 20 and 40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cragun and Reber et al. (US
5,903,729; issued May 11, 1999) (hereinafter "Reber").
ANALYSIS
After considering each of Appellant's arguments, we agree with the
Examiner. We refer to and adopt the Examiner's findings and conclusions
as set forth in the Examiner's Answer and in the action from which this
appeal was taken. (Ans. 2-7; Final Act. 2-11). Our discussions here will be
limited to the following points of emphasis.
35U.S.C.§112, f 2 rejections of claim 38
"displaying said covering image that substantially
blocked said covered advertisement"
The Examiner concludes the limitation "displaying said covering
image that substantially blocked said covered advertisement" is indefinite
because it lacks antecedent basis because it connotes a past action of
substantially blocking a covered advertisement by a covering image. (Final
Act. 2; Ans. 2-3).
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Appellant contends because "blocked" is recited for the first time in
that limitation, no antecedent basis is required, and the past tense "blocked"
is a relationship structure element as well as a placement element. (App. Br.
19-20; Reply Br. 3).
We agree with the Examiner. \Ve are not persuaded because "if a
claim is amenable to two or more plausible claim constructions, the USPTO
is justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim ... indefinite."
Ex parte Afiya::.aki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential). ln
determining whether a claim is indefinite, "we employ a lower threshold of
ambiguity when reviewing the pending claim for indefiniteness than th[at]
used by post-issuance reviewing courts." id. We employ this standard "to
guard the public against patents of ambiguous and vague scope" and
"because the applicant has an opportunity and a duty to amend the claims
during prosecution to more clearly and precisely define the metes and
bounds of the claimed invention and to more clearly and precisely put the
public on notice of the scope of the patent." Id. at 1211-12. Here, the claim
language "that substantially blocked said covered advertisement" modifies
the claim language "said covering image." As presently written in the past
tense, it is not clear whether this refers to the same "covering image" recited
earlier in the claim or to a different "covering image" that has previously
blocked a covered advertisement.
For these reasons, on this record, we are not persuaded the Examiner
erred in concluding the intended antecedent basis for the recited Hmitation is .. __ ,
unclear, and therefore indefinite, regarding claim 38.
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"visual clutter"
The Examiner further concludes claim 3 8 is indefinite because the
term "visual clutter" is a relative term that is not defined in the claim and
Appellant's Specification does not provide a standard for ascertaining the
requisite degree. (Final Act. 2; Ans. 2-3). Appellant argues the claim
language "visual clutter substantially reduced on said screen," as well as
similar language in the Specification, adequately defines the term. (App. Br.
20, citing Spec. 4, 14, 18; Reply Br. 3).
We agree with the Examiner. 35 U.S.C. § 112, second paragraph,
requires the claims "be cast in clear-as opposed to ambiguous, vague,
indefinite-terms." In re Packard, 751F.3d1307, 1313 (Fed. Cir. 2014) .
. Although exact precision is not required, the claim language must be as
reasonably precise as the subject matter pennits. Id. \Ve note the term
"visual clutter" is used, but not meaningfully described or defined in the
. ~ -
Specification. (Spec. 2, 4, 12, 14, 18). For example, in the Abstract, "visual
clutter" is described as "too many intem.et advertisernents." (Spec.;
Abstract). As presently written, it is not readily apparent what constitutes
"visual clutter" for purposes of the claim. For example, there could
plausibly be different interpretations of what constitutes "too many internet
advertisements." Both the claim language and the citations to the
Specification provided by Appellant only describes reducing visual clutter,
but do not define what visual clutter actually is, or what the visual clutter is
being reduced from. Accordingly, we find that the meaning of the claim
term "visual clutter'' is subject to different plausible interpretations, and
thus, is vague and indefinite. See Ex Parte Miyazaki, 89 USPQ2d at 1211.
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For the foregoing reasons, we sustain the Examiner's 35 U.S.C. § 112,
paragraph 2 rejection of independent claim 38.
35 US.C § 102(e) rejection (?lclairns 1, 29, 38, and 39
Appellant does not substantively argue the claims separately, but
instead relies on the arguments as applied to claim 1 for all claims. (See
App. Br. 22--45; Reply Br. 4--10).
Appellant contends Cragun does not disclose the limitations of claim
1 for various reasons, which will be further elaborated upon below. (App.
Br. 21--40; Reply Br. 4--10). We are not persuaded by Appellant's
arguments. The Examiner finds, and we agree, that Cragun discloses the
limitations of claim 1. (Final Act. 3--4; Ans. 3-7). For example, Figure 7a
in Cragun depicts an advertisement 710 that may be blocked or hidden based
on user selection. (Cragun col. 10, 11. 17-27). Figure 7 c depicts selected
advertisement 710 blocked by icon 706. (Cragun col. 11, 11. 40--49). Such
advertisement will be blocked unless the user selects to unblock the
advertisement and may be blocked with a delay time of 0, which means it
will not display at all. (Cragun col. 11, 11. 40--49; col. 13, 11. 40--46; Figs. 7b,
9a). Cragun describes that the user can unblock an advertisement by
removing it from the blocking list. (Cragun col. 13, 11. 40--46). Such a
selection method to remove an advertisement from the blocking list is
depicted in Figure 7b and described in Figure 9a. (Cragun col. 13, 11. 40-
46). In other words, Cragun describes that "the user is allowed to decide
which images are displayed and which are not." (Cragun Abstract). We
also note that Cragun is titled "Apparatus and Method for the Manual
Selective Blocking of Images."
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Appellant raises a number of arguments that we do not find
persuasive. First, Appellant contends claim 1 does not recite certain
functionality described in Cragun, such as a "web browser," "pop-up
dialog," or "blocking list." (App. Br. 23-24; Reply Br. 4). Such arguments
are not persuasive because the test for anticipation is not dependent on
whether Cragun' s disclosure is found in Appellant's claim, but rather
whether the limitations of Appellant's claim are disclosed in Cragun. See
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
(citing Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
1983)) (In order to anticipate under 35 U.S.C. § 102, a prior art reference
"must not only disclose all elements of the claim within the four comers of
the document, but must also disclose those elements 'arranged as in the
claim."').
Appellant also contends Cragun does not "teach," "describe," or
"write" specific words, such as "revealing," "disappear," "reveal," "de-
select," "covering," "blocking image," "only if a user wants," and a
"selection method." (App. Br. 24, 26, 38--40; Reply Br. 4, 6-8). These
arguments are not persuasive because the test of whether a reference
discloses a claim limitation is not whether the exact language is present. Cf
In re Bond, 910 F.2d 831, 832-33 (Fed. Cir. 1990) (interpretation of
references "is not an 'ipsissimis verbis' test," citing Akzo N. V. v. U.S. Int 'l
Trade Comm 'n, 808 F.2d 1471, 1479 & n.11 (Fed. Cir. 1986)); Standard
Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir.
1991) ("[A] ... reference ... need not duplicate word for word what is in
the claims."). In other words, that Cragun may not use the same verbiage as
Appellant is not indicative that Cragun does not disclose the limitations in
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claim 1. For example, Appellant admits Cragun discloses "input devices,"
such as a "pointing device" or other "graphical-pointing devices," (App. Br.
39), which we find under the broadest reasonable interpretation of the claim
language in light of Appellant's Specification disclose a "selection method."
As described above, we agree with the Examiner's findings that Cragun
discloses the remaining limitations in claim 1.
Appellant advances a series of arguments that are not persuasive
because they are not commensurate with the scope of the language of claim
1. During examination of a patent application, a claim is given its broadest
reasonable construction "in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Although, claims are to be
interpreted in light of the specification, limitations from the specification are
not to be read into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993); see also, e.g., In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir.
1989). An Applicant seeking a narrower construction must either show why
the broader construction is unreasonable or amend the claim to expressly
state the scope intended. In re Morris, 127 F.3d 1048, 1057 (Fed. Cir.
1997). In claim construction, "the name of the game is the claim."
In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles
Sutherland Rich, Extent of Protection and Interpretation of Claims -
American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L. 497, 499
(1990)).
For example, Appellant makes a series of arguments that Cragun
discloses already displayed advertisements, so it does not disclose the
limitations "as arranged and required in claim 1." (App. Br. 25-30; Reply
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Br. 4---6). Appellant contends that Cragun does not disclose revealing an
internet advertisement as arranged and required in claim 1 because the
advertisements in Cragun are already displayed. (App. Br. 25-26, 38; Reply
Br. 5---6). Appellant cites to The Oxford Dictionary definition of "reveal,"
which states "[t]o disclose or make known (something previously unknown
or kept secret) in speech or writing." (App. Br. 26).
We disagree with Appellant's interpretation of Cragun' s disclosure.
As described above, Cragun discloses that a blocked advertisement is not
displayed unless the user removes it from the blocking list using a selection
method. (Cragun Figs. 7a, 7c, 9a, 10, col. 10, 11. 17-27; col. 11, 11. 40-49;
col. 13, 11. 40-46). We agree with the Examiner that in Cragun the user can
selectively "unblock" a previously blocked image, which would "reveal" the
newly unblocked image. (Ans. 5). Therefore, Cragun discloses both the
scenario where a displayed advertisement is blocked by user selection, as
well as the scenario where an advertisement is blocked from view at the
outset.
Appellant further contends Cragun does not teach placing an image of
a blocking nature to conceal an internet advertisement before using a
selection method as arranged and required by claim 1. (App. Br. 27-28).
Appellant contends in Cragun "a user selects advertisements presented in
windows before displaying the blocking window to block the
advertisement." (App. Br. 27). Thus, Appellant contends Cragun works in
reverse to claim 1. (App. Br. 27). Appellant's arguments are not
commensurate with the scope of claim 1. Claim 1 describes a "second
means for placing an image or images of a blocking nature of sufficient size
to substantially conceal an internet advertising," and "a third means for
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using a selection method to choose and make the blocking image or images
disappear and reveal said internet advertising." Under the broadest
reasonable interpretation in light of the Specification, such "second means
for placing an image or images of a blocking nature" as claimed does not
prevent a user from selecting the advertisement in order to block the
advertisement, or prevent the user from later using a selecting method to
remove the block. (See Ans. 5).
Appellant also argues Cragun "does not teach directly selecting a
blocking image, as arranged and required in claim 1." (App. Br. 32-35;
Reply Br. 7). However, again, Appellant's arguments are not commensurate
with the scope of the claim language. Claim 1 recites a "third means for
using a selecting method to choose and make the blocking image or images
disappear and reveal said internet advertising." It does not require that the
blocking image is directly selected. As such, we disagree with Appellant
that the language is "a close equivalent." (See Reply Br. 7). Even if such
disclosures are supported in Appellant's Specification, it is inappropriate to
import limitations from the specification into the claims. See In re Van
Geuns, 988 F.2d at 1184. We agree with the Examiner that Cragun's
disclosure allowing a user to remove an advertisement from a blocking list
so that the advertisement is not blocked anymore discloses the limitation as
recited. (Ans. 5).
Appellant also advances several arguments that are not pertinent to
whether Cragun anticipates Appellant's claims. For example, Appellant
argues "Cragun does not anticipate claim 1 because he does not teach
utilizing an image and an advertising as two different features having
different functions and roles respectively, as arranged and required in claim
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1." (App. Br. 30-32; Reply Br. 7). However, such limitations are not
recited in claim 1. Appellant further advances a series of arguments
pertaining to the alleged advantages of Appellant's invention, which
likewise are not pertinent to the anticipation rejection, and not
commensurate with the scope of the claim language. (App. Br. 36-38).
Appellant also makes several arguments that are not responsive to the
Examiner's findings. For example, Appellant contends Cragun does not
teach viewable objects "of a blocking nature," as recited in claim 1. (App.
Br. 24--25; Reply Br. 4--5). However, Appellant's argument refers to the
Summary of the Invention (col. 2, 11. 26-3 7), the Description of the
Preferred Embodiment (col. 4, 11. 42-64), and col. 16, 11. 36-41, which
describes the embodiment in Figure 14a. (App. Br. 25). These citations are
not what the Examiner relies upon to teach images of a blocking nature.
(Final Act. 3; Ans. 4). Rather, as the Examiner explains, and we agree, "an
'icon' is displayed in the 'location at which the image would have been
placed had it not been blocked."' (Ans. 4, citing Figs. 7a, 7b, 7c; col. 10, 11.
17-27; col. 11, 11. 41--40).
Appellant further contends Cragun does not teach concealing an
internet advertisement before revealing the internet advertisement as
required in claim 1 because Cragun shows a displayed advertisement 715 in
Figures 7a, 7c, and 7d that is never blocked. (App. Br. 26; Reply Br. 5-7).
Appellant's argument is not persuasive because it does not address the
Examiner's findings regarding advertisement 710, which is shown as
blocked in Figure 7c, as discussed above. (See Ans. 4--5).
Appellant also argues Cragun "does not teach the overall result and
function of view internet advertising only if a human wants, as arranged and
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required in claim 1." (App. Br. 29). We are not persuaded by Appellant's
arguments for the same reasons as set forth by the Examiner. (Ans. 6; see
also Cragun Abstract ("the user is allowed to decide which images are
displayed and which are not")).
Appellants advance arguments that focus on a specific part of the
disclosure of Cragun, while ignoring other portions relied on by the
Examiner. For example, Appellant contends Cragun does not describe
"internet advertising" and "covering" at column 11, lines 45--49. (App. Br.
23, 38). Appellant also contends Cragun does not describe advertising at
column 16, lines 47-50. (App. Br. 39). Such arguments are not persuasive
because they are not responsive to the Examiner's findings, which address
additional disclosures in Cragun. For example, the Examiner relies on
Figure 7, as well as column 2, lines 1-5 to disclose "internet advertising" in
Cragun. (Ans. 3--4; Final Act. 3).
Finally, Appellant raises two new issues in the Reply Brief. (Reply
Br. 9, stating "appellant raises a new issue ... "). We remind Appellant that
new arguments raised in the Reply Brief not in response to a shift in the
Examiner's position in the Answer are waived because Appellant has not
shown good cause for the belated presentation. Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative). Cf with Optivus Tech.,
Inc. v. Ion Beam Appl'ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) ("[A]n
issue not raised by an appellant in its opening brief ... is waived.").
For the foregoing reasons, we sustain the Examiner's 35 U.S.C.
§ 102(e) rejection of independent claim 1. For the same reasons, we sustain
the Examiner's 35 U.S.C. § 102(e) rejection of independent claims 29 and
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38 and dependent claim 39, for which Appellant has not provided separate
substantive arguments. (App. Br. 40-43).
35 U.S.C. § 103(a) rejection of claims 20 and 40
Appellant has not provided separate substantive arguments for the
Examiner's 35 U.S.C. § 103(a) rejection of dependent claims 20 and 40
(App. Br. 43--45), which depend from independent claims 1 and 38,
respectively. Accordingly, for the same reasons as set forth above, we
sustain the Examiner's 35 U.S.C. § 103(a) rejection of dependent claims 20
and 40.
DECISION1
For the above reasons, the Examiner's rejection of claims 1, 20, 29,
and 3 8--40 is affirmed.
1 Our Decision is not the proper venue for advising prose Appellant as to
how to or whether to proceed with this application; thus; we would suggest
that Appellant obtain the services of a registered Patent Attorney or Agent
or, if continuing to proceed pro se, refor to the Pro Se Assistance Program
(hUp://www.uspto.gov/patents-getting-started/using-legaI-services/pro-se-
assistance-program) and fam1Harize himself with the contents of the Jvfanua1
for Patent Exarnining Procedure (MPEP)(http://www.uspto.gov/web/
offices/pac/mpep ). In addition, we note that pro se Applicant may potentially
avail themselves of limited guidance fimn and dialogue with the Examiner
by way of an Examiner Interview using an appropriate procedure in view of
the status of this application following our Decision. Present Office policy
places great emphasis on telephone interviews initiated by the Examiner
(e.g., See MPEP § 408), however Applicant may also initiate Exarniner
interviews. See MPEP § 713.
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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)(l )(iv).
AFFIRMED
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