Ex Parte Fujisawa et al

Patent Trials and Appeals Board

Jun 25, 2013

10484466 - (D) (P.T.A.B. Jun. 25, 2013)

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.
10/484,466 01/22/2004 Tomonori Fujisawa K-2143 5577
32628 7590 06/25/2013
KANESAKA BERNER AND PARTNERS LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314-2848
EXAMINER
UBER, NATHAN C
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
06/25/2013 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 TOMONORI FUJISAWA and SHOUJI SATOU
____________

Appeal 2011-009110
Application 10/484,466
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and PHILIP
J. HOFFMANN, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-009110
Application 10/484,466

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 7-9, 11, and 12, which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to transferring a banner
advertisement to a plurality of clients linked via a network (Spec. 1:5-7).
Claim 7, reproduced below with the numbering in brackets added, is
representative of the subject matter on appeal.

7. A computer-executable program tangibly embodied on a
computer readable medium for implementing the steps comprising:
forming a predetermined registered group wherein each
registered member of the predetermined registered group has a
banner advertisement to be seen by other registered members of the
predetermined registered group,
transferring, first, banner advertisements from a server to
the registered members of the predetermined registered group by
requests of the registered members,
analyzing click signals for each banner advertisement which
is transferred to the registered member,
counting the click signals by each of the registered members
registered in the server, and total number of the click signals by
all the registered members,
[1] deciding a ranking of each of the registered members in the
group based on the click signals by each of the registered members
with respect to the total number of the click signals by all the
registered members in a predetermined time period, [2] and
Appeal 2011-009110
Application 10/484,466

3
transferring, second, a banner advertisement to other
registered members based on said ranking of each of the
registered members when receiving the requests by other
registered members.

THE REJECTION
The following rejection is before us for review:
1. Claims 7-9, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Merriman (US 5,948,061, iss. Sep. 7, 1999) and
SmartAge: SmartClicks, found at http://www.smartclicks.com (hereinafter
“SmartClicks”).

FINDINGS OF FACT
We find the following findings of fact used in the Analysis section
below are supported at least by a preponderance of the evidence:1

ANALYSIS
The Appellants argue that the rejection of claim 7 is improper because
the cited prior art fails to disclose claim limitation [1] (App. Br. 7).
Specifically, the Appellants argue that SmartClicks fails to disclose any
ranking of the other members (App. Br. 7). Similar arguments are presented
in the Reply Brief at page 2.
In contrast, the Examiner has determined that the cited claim
limitation is shown in SmartClicks at page 3 and that the rejection is proper
in this regard (Ans. 4, 8-11).

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2011-009110
Application 10/484,466

4
We agree with the Appellants. Claim limitation [1] requires
[1] deciding a ranking of each of the registered members in the
group based on the click signals by each of the registered members
with respect to the total number of the click signals by all the
registered members in a predetermined time period. (Claim 7).
Thus, the claim requires that each member be ranked in the group of
members based on click signals by each of the members with respect to the
total number of clicks by all members in some manner. SmartClicks at page
3 fails to show this, instead showing statistics related to only an individual
member’s click-thru ratio and click-thru percent without relation to any
other member’s as specifically claimed. The Examiner has determined that
the “ranking” is not required between the member and the group (Ans. 9) but
we disagree as the claim language clearly requires this in some manner in
order to get the ranking. Further, in the Specification, Figure 4 discloses
ranking for click points (302), Figure 5 shows a member-specific count
(526) and an all members count (528) used in calculation of the time of the
banner advertisement, and page 12, lines 4-10 also discloses the ratio of the
members count against all the members count which shows the features used
in the claimed “ranking.” For these reasons, the rejection of claim 7 and its
dependent claims is not sustained.

CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 7-9, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable
over Merriman and SmartClicks.

Appeal 2011-009110
Application 10/484,466

5
DECISION
The Examiner’s rejection of claims 7-9, 11, and 12 is reversed.

REVERSED

mls