11105106 (B.P.A.I. Feb. 15, 2011)

Ex Parte Dupree

Board of Patent Appeals and InterferencesFeb 15, 2011

11105106 (B.P.A.I. Feb. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P 0 Box 1450 Alexandria, Virginia 22313- 1450 www uspto go". APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. I 111105,106 0411 312005 Linda Dupree 52579-1 13 180 2654 23644 7590 02/17/2011 BARNES & THORNBURG LLP P.O. Box 2786 CHICAGO, IL 60690-2786 EXAMINER BOYCE, ANDRE D r ARTUNIT 1 PAPERNUMBER 1 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. DELIVERY MODE Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): Patent-ch@btlaw.com 02/17/2011 ELECTRONIC PTOL-90A (Rev. 04107) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte LINDA DUPREE Appeal 2009-008492 Application 1 111 05,106 Technology Center 3600 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent Judges. FETTING, Administrative Patent Judge. ERRATA The prior Decision mailed on October 26, 2010 is withdrawn and this Decision entered in its place to correct an error in the Legal Conclusions and Decision sections. 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 2009-008492 Application 1 111 05,106 Linda Dupree (Appellant) seeks review under 35 U.S.C. 5 134 (2002) of a final rejection of claims 1-12, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b) (2002). The Appellant invented a way of gathering data on the usage of publications and exposure to products and/or presence in a commercial establishment (Specification Â¶ 0002). An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below [bracketed matter and some paragraphing added]. 1. A system for gathering data concerning exposure of an individual to predetermined products and usage of a publication thereby, the system comprising [I] a portable monitor [2] capable of being carried on the person of the individual, [3] the portable monitor comprising [3a] a product exposure monitor and 2 Our decision will make reference to the Appellant's Appeal Brief ("App. Br.," filed May 19, 2008) and the Examiner's Answer ("Ans.," mailed July 3 1, 2008), and Final Rejection ("Final Rej .," mailed December 18, 2007). Appeal 2009-008492 Application 1 111 05,106 [3b] a publication usage monitor. The Examiner relies upon the following prior art: Overhultz US 6,837,427 B2 Jan. 4,2005 Percy US 7,038,619 B2 May 2,2006 Claims 1- 12 stand rejected under 35 U.S.C. 5 103(a) as unpatentable over Percy and Overhultz. ISSUES The issue of obviousness hinges on whether Overhultz describes a publication usage monitor and whether it was predictable to combine this with a product exposure monitor. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Percy 01. Percy is directed to assessing the effectiveness of media displays by tracking individuals and their exposures to media displays using a satellite positioning system. Percy 1:20-23. 02. Percy tracks individuals with monitoring devices carried on the persons. Percy 2:46-50. 03. Percy describes people carrying such monitoring devices being exposed to media displays advertising products and the Appeal 2009-008492 Application 1 111 05,106 monitoring devices relay which such displays are exposed. Percy 7:59-64. Overhultz 04. Overhultz is directed to monitoring compliance with a Point of Purchase (POP) advertising program that displays advertising signs or marketing materials, by monitoring exposure to advertising signs or marketing materials displayed in stores. Overhultz 1:15-20. 05. Overhultz monitors whether a sign is displayed by monitoring tags attached to the signs. Overhultz 4:23-34. The monitoring is done with handheld devices. Overhultz 9:38-40. Facts Related to Claim Construction 06. The disclosure defines "publication" as a physical object disseminated publically or privately to convey data in printed form to persons. Specification Â¶ 001 1. 07. Publication usage data concerns a participant's usage of a publication. Specification Â¶ 0054. 08. In one embodiment, product exposure data records presence in predetermined exposure areas wherein people are able to perceive the predetermined products. Specification Â¶ 0 197. Appeal 2009-008492 Application 1 111 05,106 ANALYSIS A claimed invention is unpatentable if the differences between it and the prior art are "such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." KSR Znt'l Co. v. Telejlex Znc., 550 U.S. 398,406 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). Claims 1 and 5 are the only independent claims and are similar except for claim 1 being a system and claim 5 being a somewhat broader method. These are the only claims argued, save for claim 8. There are really only two significant limitations in claim 1, viz. a product exposure monitor [3a] and a publication usage monitor [3b], and the Appellant argues that [3b] is not described by the art. As the Appellant correctly acknowledges, "[tlhe crux of the disagreement [I is rooted in the interpretation and the application of the claimed terms [I to the cited documents." Percy clearly describes limitations [I], [2], and [3a] which are uncontested (FF 01, 02, and 03). Percy clearly monitors exposure of a customer to product advertising and Overhultz clearly monitors the presence of a sign at various times. FF 02, 03, and 05. Also see Ans. 4. So the issue is squarely whether Overhultz describes a publication usage monitor. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Prater ,415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, (Fed. Cir. 2004). Limitations appearing in the specification but not recited in the claim are not read into the claim. E- Pass Techs., Znc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Appeal 2009-008492 Application 1 111 05,106 First we find that the Examiner has adequately responded to the Appellant's arguments and accordingly, we adopt the Examiner's findings and analysis at Answer 3-4 and 7-1 1. The Appellant argues that Overhotlz's display of signage usage is not "publication usage"; that Percy and Overhultz are inconsistent with the Examiner's construction of "publication usage" and product exposure"; and there is no reason to combine the references. Appeal Br. 12-16. As to the first argument, we find that a publically accessible sign is a publication. As to the second argument, we find that publication usage refers to the usage of the media conveying the message, whereas product exposure refers to exposure to the product content of the media. This is consistent with both references and the Specification (FF 06-08). Finally, the Appellant argues the references cannot be combined. But as the Examiner found at Answer 11, the claim merely combines known devices for their respective functions. Certainly one of ordinary skill would have known to combine measuring efficacy of both the display medium and the advertising displayed on the medium. Contrary to the Appellant's arguments at Appeal Br. 16 that there is no distinction between what is measured by Percy and Overhultz, it is precisely this distinction that is consistent with both the claims and the references. As to the argument at Appeal Br. 15- 16 that one could not physically combine the references, " [t] he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981). See also In re Appeal 2009-008492 Application 1 111 05,106 Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[Ilt is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 967(CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). Claims 1 and 5 recite no particular structure, merely function. Clearly one of ordinary skill would have known how to record both product exposure and media usage by any number of techniques. Whether the specific implementations in the references were combinable is irrelevant absent specific structural limitations in the claims. We agree with the Appellant at Appeal Br. 15 that the Examiner has not presented a prima facie case as to claim 8 (and claims 10- 12), reciting "the publication usage monitor gathers data indicating at least one of grasping of the publication, turning a page of the publication, and flexing a page of the publication." The Examiner cited Overhultz's description of a user turning pages to scan information. Ans. 7. Overhultz does not explicitly or implicitly describe gathering data about turning pages. The fact that one turned a page to enter data simply does not imply the fact that a page was turned is recorded. CONCLUSIONS OF LAW Rejecting claims 1-7 and 9 under 35 U.S.C. 5 103(a) as unpatentable over Percy and Overhultz is not in error. Appeal 2009-008492 Application 1 111 05,106 Rejecting claim 8 and 10- 12 under 35 U.S.C. 5 103(a) as unpatentable over Percy and Overhultz is in error. DECISION To summarize, our decision is as follows. The rejection of claims 1-7 and 9 under 35 U.S.C. 5 103(a) as unpatentable over Percy and Overhultz is sustained. The rejection of claim 8 and 10-12 under 35 U.S.C. 5 103(a) as unpatentable over Percy and Overhultz is not sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R. 5 1.136(a)(l)(iv) (2007). AFFIRMED-IN-PART mev Address KATTEN MUCHIN ROSENMAN LLP / ARBITRON INC. (C/O PATENT ADMINISTRATOR) 2900 K STREET NW, SUITE 200 WASHINGTON DC 20007-5 118