Ex Parte Feeley

Board of Patent Appeals and Interferences

Mar 16, 2010

10294144 (B.P.A.I. Mar. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte MICHAEL A. FEELEY
____________________
Appeal 2009-013246
Application 10/294,144
Technology Center 3600
____________________
Decided: March 17, 2010
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Final
Rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
A continuation-in-Part Application, 10/954,543, of the present
Application, is currently on appeal, Appeal No. 2009-012656, and is being
concurrently decided.

SUMMARY OF THE DECISION
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION UNDER 37 C.F.R. § 41.50(b).1,2

THE INVENTION
Appellant’s claimed invention relates to a method and system of
offering advertising services to a client for advertising a client website on
the Internet. (Abs.).
Independent claims 1 and 11, which are deemed to be representative,
read as follows:
1. A method of offering advertising services to a
client for advertising a client website on the Internet, said
method comprising the steps of:

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed Dec. 15, 2008) and the Examiner’s Answer (“Ans.,” mailed Apr. 1,
2009).
2 For purposes of clarity, we note that the present application contains two
identical Examiner’s Answers with the only difference being the additional
signature of Supervisory Patent Examiner Eric Stamber. Accordingly, we
make reference only to the second Examiner’s Answer mailed on Apr. 1,
2009.
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identifying a web host, said web host receiving
client information for establishing a client account with
said web host for hosting said client website;
cooperating with said web host to prompt said
client as to whether an advertising account is desired;
and,
if an advertising account is desired, using said
client information received by said web host to establish
said advertising account.

11. A system for offering advertising services to a
client for advertising a client website on the Internet, said
system comprising:
a computer system having stored thereon a search
engine website and an advertising account database
associated with said search engine website;
programming code for conditionally opening an
advertising account for promoting said client website and
writing client information to said advertising account
database, wherein said client information is originally
entered into said computer system through a website
other than said search engine website.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rinebold et al. 6,968,513 B1 Nov. 22, 2005
The Examiner rejected claims 1-15 under 35 U.S.C. § 102(b) as being
anticipated by Rinebold.

ISSUES
Appellant argues with regard to independent method claim 1 that inter
alia, Rinebold fails to disclose the step of identifying a web host, said web
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host receiving client information for establishing a client account with said
web host for hosting said client website. (Br. 4). Specifically, Appellant
argues, “[i]t is the web host, not the advertising site, that receives client sign-
up information.” (Br. 4). Additionally, with regard to independent system
claim 11, Appellant argues Rinebold fails to disclose a computer system
with a search engine programmed to conditionally open an advertising
account using client information originally entered through a website other
than the search engine website. (Br. 5). The Examiner finds, regarding
claim 1, that Rinebold discloses a web host which shares information
between the host system and third parties. (Ans. 8). Additionally, with
regard to claim 11, the Examiner finds, that the “. . . origination or
acquisition of the data does not limit the system itself which merely must
contain code for creating accounts from stored data.” (Ans. 9).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
but chose not to make in the Brief have not been considered and are deemed
to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner are:
Has Appellant shown reversible error in that Rinebold fails to disclose
the step of identifying a web host, said web host receiving client information
for establishing a client account with said web host for hosting said client
website, as recited by independent claim 1?
Has Appellant shown reversible error in that Rinebold fails to disclose
a computer system with a search engine programmed to conditionally open
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an advertising account using client information originally entered through a
website other than the search engine website, as recited by independent
claim 11?
FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).
Claim Interpretation
1. Appellants’ Specification describes that a “web host”
“. . . provide[s] services and web servers for establishing and maintaining
web pages and websites for clients.” (Spec. ¶ [0004]).

Rinebold
2. Rinebold is directed to online interactive advertising system
comprising a business referral system linked to one or more listed web sites
of businesses in a particular locality or geographical area. (col. 1, ll. 21-24).
3. Rinebold describes that users access the system through an Internet
browser. (col. 10, ll. 51-61).
4. Rinebold describes that its system and database include an around
the clock (“24/7") host monitoring staff. (col. 69, ll. 9-30).
5. Rinebold describes that merchants manage their accounts through
the use of a password to change one or more features of the system through
the account manager. (col. 18, ll. 35-40 and Figs. 19A, 20, 21).
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6. Rinebold describes that merchants can add and delete the
information business listings and advertisements for display on the system.
(col. 4, ll. 10-13).

PRINCIPLES OF LAW
Anticipation
Anticipation is established when a single prior art reference discloses
expressly or under the principles of inherency each and every limitation of
the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342,
1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79
(Fed. Cir. 1994). Under the principles of inherency, a reference anticipates
if it necessarily includes or functions in accordance with the claimed
limitations. Atlas Powder, 190 F.3d at 1347. Inherency may be established
by extrinsic evidence, but "[s]uch evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill."
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir.
1991). Inherency may not be established by probabilities or possibilities,
and "[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient." Id. at 1269
It is well established that while the features of an apparatus claim may
be recited functionally, the apparatus must be distinguished from the prior
art in terms of structure, rather than function. See In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997).

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Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented 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 to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
ANALYSIS
Claims 1-15 rejected under 35 U.S.C. § 102(b) as being anticipated by
Rinebold.
Claim 1
Appellant argues that Rinebold fails to disclose the step of identifying
a web host, said web host receiving client information for establishing a
client account with said web host for hosting said client website, as recited
in independent claim 1. (Br. 4). Specifically, Appellant argues, “[i]t is the
web host, not the advertising site, that receives client sign-up information.”
(Br. 4). In response, the Examiner finds that Rinebold discloses a web host
which shares information between the host system and third parties. (Ans.
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8). Specifically, the Examiner found that, “. . . appropriate client
identification information is shared between host system and third party
brokers to provide accounting, billing, revenue sharing, and compensation in
an efficient manner.” (Ans. 8).
While we agree with the Examiner that Rinebold shares information
between a host system and third party, we cannot agree with the Examiner
that the information shared in Rinebold is client information received for
establishing a client account for hosting a client website, as claimed by
Appellant. Additionally, even though the Examiner has cited to a host
monitoring staff disclosed in Rinebold (FF 4), Rinebold does not disclose
that the web host receives client information for hosting said client website;
rather the information received is for managing an advertising account. (FF
5, 6). Thus, commensurate with Appellant’s Specification which specifies
that a web host establishes and maintains websites for clients (FF 1), we
agree with Appellant that Rinebold fails to disclose the step of identifying a
web host, said web host receiving client information for establishing a client
account with said web host for hosting said client website, as recited by
independent claim 1.
Accordingly, we conclude that Appellant has shown that the Examiner
erred in rejecting claims 1 under 35 U.S.C. § 102(b) as anticipated by
Rinebold. As such, we find that the rejections of claims 2-10 were also
made in error for the same reasons discussed supra.

Claim 11
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Appellant argues Rinebold fails to disclose a computer system with a
search engine programmed to conditionally open an advertising account
using client information originally entered through a website other than the
search engine website. (Br. 5). We are not persuaded by Appellant’s
arguments and find that Rinebold discloses a system for offering advertising
services to a client for advertising a client website on the Internet using an
Internet browser. (FF 2, 3). Accordingly, we find the system disclosed in
Rinebold to be capable of accessing a search engine through its browsing
software and further capable of conditionally opening an advertising
account, as recited in claim 11. It is well established that while the features
of an apparatus claim may be recited functionally, the apparatus must be
distinguished from the prior art in terms of structure, rather than function.
See In re Schreiber, 128 F.3d at 1477. Here, Appellant’s arguments are
directed towards the functional expressions that serve to define the system’s
intended use rather than the system’s structure. Therefore, Appellant’s
arguments are not persuasive as to error in the rejection since they are
directed towards fully functional limitations which do not serve to
distinguish the present claim from the system disclosed in Rinebold.
Claims 12-15
Appellant does not separately argue claims 12-15, which depend from
claim 11 respectively, and so has not sustained their burden of showing that
the Examiner erred in rejecting claims 12-15 under 35 U.S.C. § 102(b) as
anticipated by Rinebold for the same reasons we found as to claim 11, supra.
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CONCLUSION OF LAW
We conclude that Appellant has shown reversible error in that
Rinebold fails to disclose the step of identifying a web host, said web host
receiving client information for establishing a client account with said web
host for hosting said client website, as recited by independent claim 1.
We conclude that Appellant has not shown reversible error in that
Rinebold fails to disclose a computer system with a search engine
programmed to conditionally open an advertising account using client
information originally entered through a website other than the search
engine website, as recited by independent claim 11.

NEW GROUNDS OF REJECTION
The following new grounds of rejection are entered pursuant to 37
C.F.R. § 41.50(b).
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Rinebold.
Rinebold discloses a method of offering advertising services to a
client for advertising a client website on the Internet (FF 2, 3), comprising
the steps of:
identifying a website, said website receiving client information for
establishing a client account with said website (FF 5);
cooperating with said website to prompt said client as to whether an
advertising account is desired (FF 6); and,
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if an advertising account is desired, using said client information
received by said website to establish said advertising account (FF 5, 6).
While Rinebold discloses the above limitations, Rinebold does not
explicitly disclose wherein the website is a web host and the information
received by the website is client information for establishing an account for
hosting a website.
However, Rinebold discloses that its system and database include an
around the clock (“24/7") host monitoring staff (FF 4) which we find
suggests that Rinebold’s online interactive advertising system (FF 2)
includes a web host to establish and maintain the individual listings of
websites and advertisements maintained by Rinebold’s system. While we
acknowledge that Rinebold’s web host does not receive client information
for establishing a client account with said web host for hosting said client
website, Rinebold does indeed receive client account information related to
establishing an advertising account. (FF 5, 6). Thus, we find that it would
have been well within the capabilities of one of ordinary skill in the art at the
time of the invention to have used the client information received from a
website or web host to establish an advertisement account. Therefore, one
of ordinary skill in the art at the time of the invention would have known this
and found it obvious to incorporate this information sharing technique with a
reasonable expectation of success in order to reduce the time consuming and
costly problems associated with creating and establishing an online
advertisement account.
While we have not addressed the patentability of the dependent
claims, this does not evidence that those claims are allowable. It is expected
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that the Examiner will consider the patentability of the dependent claims
under the new grounds of rejection and the remaining art of record.

DECISION
The Examiner’s rejections of claims 1-10 before us on appeal are
REVERSED.
The Examiner’s rejections of claims 11-15 before us on appeal are
AFFIRMED.
We enter new ground of rejection over claim 1 under 35 U.S.C. §
103(a) as unpatentable over Rinebold under 37 C.F.R. § 41.50(b).

Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“[a]ppellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record. . . .
Should the Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellants elect prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.
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-IN-PART
41.50b
ack

cc:

Appeal 2009-013246
Application 10/294,144

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