Ex Parte Glaser

Board of Patent Appeals and Interferences

Mar 21, 2007

09270710 (B.P.A.I. Mar. 21, 2007)

The opinion in support of the decision being entered today was not written 1
for publication and is not binding precedent of the Board. 2
3
UNITED STATES PATENT AND TRADEMARK OFFICE 4
__________ 5
6
BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES 7
__________ 8
Ex parte LAWRENCE F. GLASER 9
__________ 10
11
Appeal 2007-0922 12
Application 09/270,7101 13
Technology Center 3600 14
__________ 15
Decided: March 21, 2007 16
__________ 17
18
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and 19
JENNIFER D. BAHR, Administrative Patent Judges. 20
21
HUBERT C. LORIN, Administrative Patent Judge. 22
23
DECISION ON APPEAL 24
25
26
27
STATEMENT OF THE CASE 28

1Filed 16 March 1999.

Appeal 2007-0922
Application 09/270,710

2
The appeal is from a decision of the Examiner rejecting claims 1-26 1
over the prior art. 35 U.S.C. § 134 (2002). We have jurisdiction under 35 2
U.S.C. § 6 (b) (2002). 3
We AFFIRM. 4
Appellants, in the Brief2, argue independent claims 1, 20, and 24 5
separately. Pursuant to the rules, the Board selects representative claims 1, 6
20 and 24 to decide the appeal. 37 CFR § 41.37(c)(1)(vii) (2005). 7
Dependent claims stand or fall with their respective independent claims. 8
Claims 1, 20, and 24 read as follows: 9
1. A method of transmitting an advertisement from a 10
sending party to a receiving party comprising the steps of: 11
initiating a communication from a data processing system of a 12
sending party; 13
associating at least one pre-selected advertisement with said 14
communication within the data processing system of the sending 15
party; and 16
transmitting said communication with said at least one 17
advertisement embedded therein to the recipient. 18
19
20. A method of transmitting an electronic communication 20
including at least one advertisement from a data processing system of 21
a sending party to a data processing system of a receiving party 22
comprising the steps of: 23
locating a data file containing signature information on the data 24
processing system of the sending party, said signature information 25
being appended to electronic communications originating from the 26
sender’s data processing system; 27

2 Our decision will make reference to Appellant’s Appeal Brief (“Brief,”
filed 8 March 2006), the Examiner’s Answer (“Answer,” mailed 31 May
2006), and Appellants’ Reply Brief (“Reply,” filed 31 July 2006).

Appeal 2007-0922
Application 09/270,710

3
modifying the information stored within said signature file to 1
include at least one advertisement; and 2
transmitting an electronic communication using the sender’s 3
data processing system to the data processing system associated with 4
the recipient, said electronic communication including said 5
information stored within said signature file including said at least one 6
advertisement. 7
8
24. A method of transmitting an advertisement from a sending 9
party to a receiving party comprising the steps of: 10
initiating a communication from a data processing system of a 11
sending party; 12
associating at least one pre-selected advertisement with said 13
communication within the data processing system of the sending 14
party, wherein the pre-selected advertisement is under the local 15
control of the sending party; and 16
transmitting said communication with said one advertisement 17
embedded therein to the recipient. 18
19
ISSUES 20
21
The issue on appeal is whether Appellants have shown that the 22
Examiner erred in concluding that a prima facie case of obviousness is made 23
by the prior art. 24
25
FINDINGS OF FACT - BACKGROUND 26
27
The following findings of fact (FF) are believed to be supported by at 28
least a preponderance of the evidence. 29
30
Appeal 2007-0922
Application 09/270,710

4
1. The invention is directed to a method of transmitting an 1
advertisement. 2
2. The Examiner finally rejected claims 1-19 and 23-25 as being 3
unpatentable under 35 U.S.C. § 103 over Goldschmitt in view of 4
Bezos (Answer 3). 5
3. The Examiner finally rejected claims 20-21, 22 and 26 as being 6
unpatentable under 35 U.S.C. § 103 over Goldschmitt in view of 7
Bezos and Uomini (Answer 8 with respect to claims 20-21 and 26 and 8
Answer 12 with respect to claim 22). 9
4. WO 96/24213 (“Goldschmitt”) published on 8 August 1996 and 10
therefore qualifies as prior art under 35 U.S.C. § 102(b). 11
5. Goldschmitt describes a method of transmitting an advertisement by 12
email involving storing a subscriber’s email message in a mail server 13
where, upon request of the email’s addressee, an advertisement is 14
appended to the email message and the email, with the appended 15
advertisement, is transmitted to the addressee for viewing. 16
6. U.S. Patent 6,029,141 (“Bezos”) issued on 22 February 2000 on an 17
application filed on 27 June 1997 and therefore qualifies as prior art 18
under 35 U.S.C. § 102(e). 19
7. Bezos describes a method of selling items from associate merchants 20
involving a website with browsable web pages from which customers 21
can electronically purchase items and which include hyperlinks to 22
associate merchant’s websites. 23
Appeal 2007-0922
Application 09/270,710

5
8. U.S. Patent 6,018,761 (“Uomini”) issued on 25 January 2000 on an 1
application filed on 11 December 1996 and therefore qualifies as prior 2
art under 35 U.S.C. § 102(e). 3
9. Uomini describes a method of obtaining context information about an 4
email sender using a mail processing program. 5
6
FINDINGS OF FACT RE THE REJECTION OF CLAIM 1 7
10. The Examiner finds that 8
[a]s per claim 1, Goldschmitt discloses a method of transmitting 9
an advertisement from a sending party to a receiving party (see 10
abstract and Fig. 4) comprising the steps of: 11
• initiating a communication from a data processing system 12
of the sending party (see Fig. 1 and page 8, line 26 – page 13
9, line 2); 14
• [associating a preselected advertisement with said 15
communication (page 9, lines 8-13); and,] 16
transmitting said communication with said at least one 17
advertisement therein to the recipient (see abstract)[.] 18
19
(Answer 3). 20
11. Appellant does not dispute this finding. 21
12. The Examiner finds that Goldschmitt differs from the claimed subject 22
matter because 23
Goldschmitt does not explicitly disclose: 24
• embedding the advertisement within the 25
communication[, and] 26
• associating the preselected advertisement with said 27
communication within the user-managed data 28
processing system[.] 29
30
(Answer 3-4). 31
Appeal 2007-0922
Application 09/270,710

6
13. The Examiner relies on Bezos to show “embedding the advertisement 1
within the communication and associating the preselected 2
advertisement with said communication within the user-managed data 3
processing system …” . (Answer 4). 4
14. The Examiner finds that “[i]t would have been obvious to one of 5
ordinary skill in the art at the time of Applicant’s invention to include 6
the aforementioned limitations as disclosed by Bezos within 7
Goldschmitt for the motivation of efficiently marketing and selling 8
goods …”. (Answer.4). 9
15. Appellant indicates that the Examiner’s finding with regard to the 10
difference between the method claimed and that of Goldschmitt (see 11
FF 12) is inaccurate, pointing out that claim 1 actually reads as 12
follows: 13
associating at least one pre-selected advertisement with 14
said communication within the data processing system of the 15
sending party; and 16
transmitting said communication with said at least one 17
advertisement embedded therein to the recipient. 18
19
(Br. 6). 20
16. Appellant contends that “Goldschmitt fails to teach, disclose or 21
suggest at least the step of embedding the advertisement within the 22
communication or associating at least one pre-selected advertisement 23
with the communication within the data system of the sending party, 24
as recited in claim 1.” (Br. 5). 25
17. Appellant contends that “Bezos fails to teach, disclose or suggest the 26
step of embedding the advertisement within the communication or 27
Appeal 2007-0922
Application 09/270,710

7
associating the pre-selected advertisement with said communication 1
within the data processing of the sending party, as recited in claim 1.” 2
(Brief 5). 3
18. Appellant further contends that “there is no suggestion or motivation 4
to combine their respective teachings [and thus] their combination in 5
the § 103(a) rejection is improper. (Brief 5). 6
19. Appellant argues that Bezos does “not have advertisements embedded 7
[in the web pages selling products] as required by the pending claims 8
… contrary to the Examiner’s understanding, Bezos does not teach the 9
association of advertisements in a communication and transmitting the 10
communicating with the embedded advertisement to a recipient.” 11
(Brief.8)(emphasis original). 12
20. Appellant argues that “Appellant has clearly distinguished a hyperlink 13
from an embedded advertisement. That is, in Appellant’s claimed 14
invention, referral hyperlinks are not themselves an advertisement, 15
which is inherently different from the Examiner’s interpretation of the 16
referral hyperlink of Bezos.” (Brief 11). 17
18
FINDINGS OF FACT RE THE REJECTION OF CLAIM 24 19
21. Claim 24 differs from claim 1 in further defining the pre-selected 20
advertisement as one which “is under the local control of the sending 21
party.” 22
22. The Examiner finds that “Goldschmitt does not explicitly disclose 23
wherein the pre-selected advertisement is under the local control of 24
the sending party.” (Answer 8). 25
Appeal 2007-0922
Application 09/270,710

8
23. The Examiner finds that “Bezos discloses the pre-selected 1
advertisement is under the local control of the sending party.” 2
(Answer 8). 3
24. The Examiner finds that “[i]t would have been obvious to one of 4
ordinary skill in the art at the time of Applicant’s invention to include 5
the aforementioned limitation as disclosed in Bezos within 6
Goldschmitt for the motivation stated above for claim 1.” (Answer. 7
8). 8
25. Appellant's principal argument is that in limiting the pre-selected 9
advertisement to one which is "under the local control of the sending 10
party" the claimed method contrasts with the method of Goldschmitt 11
because the Goldschmitt method involves the "appending of an 12
advertisement to an email . . . performed at a remote mail server 13
associated with the sponsors" whereas "claim 24 of the present 14
invention recites, among other features, the pre-selected advertisement 15
is under the control of the sending party." (Brief 12). 16
17
FINDINGS OF FACT RE THE REJECTION OF CLAIM 20 18
26. The Examiner finds that 19
[a]s per claim 20, Goldschmitt discloses a method of 20
transmitting an electronic communication including an advertisement 21
from a user managed data processing system associated with a 22
sending party to a data processing system associated with a receiving 23
party (abstract) comprising the steps of: 24
• transmitting an electronic communication using the data 25
processing system associated with the sending party to the 26
Appeal 2007-0922
Application 09/270,710

9
data processing system associated with the recipient (see 1
abstract). 2
3
(Answer 9). 4
5
27. Appellant does not dispute this finding. 6
28. The Examiner finds that Goldschmitt differs from the claimed subject 7
matter because 8
Goldschmitt does not explicitly disclose: 9
• embedding the advertisement within the 10
communication[, and] 11
• associating the preselected advertisement with said 12
communication within the user-managed data 13
processing system wherein said at least one 14
advertisement optionally includes a hyperlink[.] 15
16
(Answer 9). 17
18
29. The Examiner relies on Bezos to show “embedding the advertisement 19
within the communication and associating the preselected 20
advertisement with said communication within the user-managed data 21
processing system … wherein said at least one advertisement 22
optionally includes a hyperlink … ” . (Answer 9). 23
30. The Examiner finds that “[i]t would have been obvious to one of 24
ordinary skill in the art at the time of Applicant’s invention to include 25
the aforementioned limitations as disclosed by Bezos within 26
Goldschmitt for the motivation of efficiently marketing and selling 27
goods …”. (Answer 9). 28
29
Appeal 2007-0922
Application 09/270,710

10
31. The Examiner further finds that Goldschmitt and Bezos differ from 1
the claimed subject matter because 2
Goldschmitt and Bezos do not explicitly disclose: 3
• locating a data file containing signature information 4
on the data processing system associated with the 5
sending party, said signature information being 6
appended to electronic communications originating 7
from the user managed data processing system 8
associated with the sending party; 9
• modifying information stored within said signature 10
file to include an advertisement; and 11
• said electronic communication including said 12
information stored within said signature file including 13
said advertisement. 14
15
(Answer 10). 16
32. The Examiner finds that “Uomini discloses an electronic messaging 17
system that attaches information to the mail messages… [, and a] 18
signature block (i.e. context data) is used to transmit information to 19
the recipient and is attached to the sender’s message … [where] the 20
signature block may contain business information (i.e. advertisement) 21
… ,” relying on column 1, ll. 8-10; column 3, ll. 1-5; and, column 5, 22
ll. 6-18. (Answer 10). 23
32. The Examiner finds that 24
[i]t would have been obvious to one of ordinary skill in the art at the 25
time of Applicant’s invention to include locating a data file containing 26
signature information on the data processing system associated with 27
the sending party, said signature information being appended to 28
electronic communications originating from the data processing 29
system associated with the sending party, modifying information 30
stored within said signature file to include an advertisement and said 31
Appeal 2007-0922
Application 09/270,710

11
electronic communication including said information stored within 1
said signature file including said advertisement as disclosed by 2
Uomini within the Goldschmitt and Bezos system for the motivation 3
stated above [i.e., “to attach information to the mail message,” Answer 4
10]. 5
6
(Answer 10-11). 7
8
33. Appellant argues that "Uomini does not suggest or motivate 9
modifying the information stored in the signature file to include an 10
advertisement … ." (Brief 16). 11
12
PRINCIPLES OF LAW 13
14
1. A prima facie case of obviousness is established by presenting 15
evidence that would have led one of ordinary skill in the art to combine the 16
relevant teachings of the references to arrive at the claimed invention. See 17
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and 18
In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). 19
2. “The prima facie case is a procedural tool of patent examination, 20
allocating the burdens of going forward as between examiner and applicant. 21
In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3 (Fed. Cir. 22
1990). The term “ prima facie case” refers only to the initial examination 23
step. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 24
1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 25
1976). As discussed in In re Piasecki, the examiner bears the initial burden, 26
on review of the prior art or on any other ground, of presenting a prima facie 27
Appeal 2007-0922
Application 09/270,710

12
case of unpatentability. If that burden is met, the burden of coming forward 1
with evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d, 2
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). 3
3. Claims are given the broadest reasonable construction consistent with 4
the Specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 5
1027 (Fed. Cir. 1997). 6
4. The goal of claim construction is “to interpret what the patentee 7
meant by a particular term or phrase in a claim.” Renishaw PLC v. Marposs 8
Societa’ per Azioni, 158 F.3d 1243, 1249, 48 USPQ2d 1117, 1121 (Fed Cir 9
1998). 10
5. In interpreting what Appellant means by a particular term or phrase, 11
the Board looks first at the claim. 12
The claims of the patent provide the concise formal definition of the 13
invention. They are the numbered paragraphs which “particularly 14
[point] out and distinctly [claim] the subject matter which the 15
applicant regards as his invention.” 35 USC §112. It is to these 16
wordings that one must look to determine whether there has been 17
infringement. Courts can neither broaden nor narrow the claims to 18
give the patentee something different than what he has set forth. No 19
matter how great the temptations of fairness or policy making, courts 20
do not rework claims. They only interpret them. 21
22
EI Du Pont de Nemours & co v. Phillips Petroleum Co, 849 F.2d 1430, 23
24
1433, 7 USPQ2d 1129, 1131 (Fed Cir 1988). 25
26
6. “Absent a special and particular definition created by the patent 27
applicant, terms in a claim are to be given their ordinary and accustomed 28
Appeal 2007-0922
Application 09/270,710

13
meaning.” York Prods, Inc v. Central Tractor Farm & Family Ctr, 99 F.3d 1
1568, 1572, 40 USPQ2d 1619, 1622-23 (Fed Cir 1996). 2
7. “[I]t is always necessary to review the specification to determine 3
whether the inventor has used any terms in a manner inconsistent with their 4
ordinary meaning.” Vitronics Corp v. Conceptronic, Inc, 90 F.3d 1576, 5
1582, 39 USPQ2d 1573, 1577 (Fed Cir 1996). 6
8. “The problem is to interpret claims ‘in view of the specification’ 7
without unnecessarily importing limitations from the specification into the 8
claims.” E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 9
USPQ2d 1947, 1950 (Fed. Cir. 2003). 10
11
ANALYSIS 12
13
Re the rejection of Claim 1 14
We have carefully reviewed the record and find that Appellant has 15
not shown that the Examiner erred in concluding that a prima facie case of 16
obviousness is made by the prior art for the subject matter of claim 1. 17
Moreover, after giving claim 1 the broadest reasonable construction 18
consistent with the Specification, we find claim 1 reads on Goldschmitt 19
alone. 20
We begin our analysis with the claim. Claims define that which 21
Appellant regards to be his invention. In re Moore, 439 F.2d 1232, 1235, 22
169 USPQ 236, 238 (CCPA 1971). 23
Appeal 2007-0922
Application 09/270,710

14
A disagreement about the scope of the claim underlies the differing 1
positions taken in the Answer and the Brief on the question of the 2
obviousness of the claim over the prior art. However, neither the Examiner 3
nor Appellant has taken the step of clearly explaining their view of the scope 4
that should be given the claim. Appellant indicates that the Examiner has 5
not accurately assessed the differences between what is claimed and what 6
Goldschmitt discloses, suggesting that the Examiner has misconstrued the 7
scope of the claim. FF 15. According to the Examiner, claim 1 includes 8
steps of “embedding the advertisement within the communication” and 9
“associating the preselected advertisement with said communication within 10
the user-managed data processing system.” But the words “embedding” and 11
“user-managed” do not appear in claim 1. Accordingly, as Appellant 12
suggests, the Examiner has given claim 1 a scope more narrow than it is 13
warranted from a plain reading of the claim. However, apart from indicating 14
that the Examiner has not accurately assessed the differences between what 15
is claimed and what Goldschmitt discloses, Appellant has not dissuaded the 16
Examiner from giving the claim an overly-narrow breadth of scope.3 17
Examiner’s position is identical to the one taken at the start of the 18
prosecution of this application4 and repeated in numerous non-final Office 19

3 Appellant has instead made an effort to persuade the Examiner that the
claim patentably distinguishes over Bezos. The Brief (pp. 7-11) presents a
history of that effort.

4 See non-final Office action mailed 13 February 2001 (p. 2).

Appeal 2007-0922
Application 09/270,710

15
actions5 and Final Rejections6 since and yet never do we find Appellant 1
explaining to the Examiner that the claim is broader than the Examiner 2
believes it to be. In fact, except for a single conclusory sentence in the Brief 3
to the effect that Goldschmitt does not disclose all the claimed limitations 4
(FF 16), Goldschmitt is not otherwise discussed. All the attention is on 5
Bezos, giving the impression that Appellant not only agrees with the 6
Examiner’s narrow construction of the claim but also goes further, urging an 7
even more narrow construction for the claim. For the following reasons, in 8
contradistinction to the constructions Appellant and the Examiner have 9
given the claim, we construe the claim more broadly. 10
The term “embedded” appears in the last step of the claimed method: 11
“transmitting said communication with said at least one advertisement 12
embedded therein to the recipient.” 13
The ordinary and customary meaning of the word “embed” is to set or 14
fix firmly in place.7 Appellant does not point to a definition for “embed” in 15
the specification, nor can we find any, which gives the word a meaning 16
inconsistent with this ordinary and customary meaning. 17
Furthermore, one of ordinary skill in the art reading the claim as a 18
whole would understand the phrase “advertisement embedded therein” as 19

5 See non-final Office actions 10 April 2002 (pp. 2-3), 6 November 2002 (p.
3), 4 December 2003 (p. 3), and 26 January 2004 (p. 3).

6 See Final Rejections mailed 6 November 2001 (pp. 5-6), 9 May 2003 (p.
9), 9 September 2004 (p. 3), and 1 April 2005 (pp. 2-3).

7 Webster’s New World Dictionary, Third College Edition, 1988, p. 442,
definition 2.
Appeal 2007-0922
Application 09/270,710

16
describing the result obtained from the claim’s previous step, i.e., 1
“associating at least one pre-selected advertisement with said 2
communication within the data processing system of the sending party.” The 3
advertisement “embedded” in the communication per the claimed method 4
results from (a) associating the advertisement with the communication and 5
(b) doing so “within the data processing system of the sending party.” 6
The plain meaning of the word “associating” to one of ordinary skill 7
in the art is an act of joining together, combining or connecting one thing 8
with another. The Specification does not define “associating” inconsistent 9
with the plain meaning of the word. Accordingly, in reading the claim as a 10
whole, one of ordinary skill in the art would understand the phrase 11
“associating at least one pre-selected advertisement with said 12
communication” to mean joining together, combining or connecting pre-13
selected advertising information with communicating information. Any 14
method joining together, combining or connecting a pre-selected 15
advertisement with a communication associates the advertisement with the 16
communication. 17
Goldschmitt describes a method of transmitting an advertisement by 18
email wherein the advertisement is appended to the email message and both 19
the email and the appended advertisement are transmitted to the addressee 20
for viewing. FF 5. Because appending an advertisement to an email causes 21
the advertisement to join together, combine or connect the advertisement 22
with the communication, Goldschmitt discloses the step of “associating at 23
least one pre-selected advertisement with said communication.” It follows 24
from this that Goldschmitt moreover discloses, per the claim, “transmitting 25
Appeal 2007-0922
Application 09/270,710

17
said communication with said at least one advertisement embedded therein 1
to the recipient” if Goldschmitt also further discloses conducting the 2
appending procedure “within the data processing system of the sending 3
party.” 4
Before we determine whether Goldschmitt also further discloses 5
conducting the appending procedure “within the data processing system of 6
the sending party” in accordance with the claim, we construe the first step of 7
the claim: "initiating a communication from a data processing system of a 8
sending party." The plain meaning of "initiating" is an act of starting. The 9
specification does not give the term a meaning inconsistent with its plain 10
meaning. One of ordinary skill in the art reading the claim as a whole would 11
understand "initiating" to mean starting a communication, the same 12
communication which, as described later in the claim, will be joined 13
together, combined or connected with a pre-selected advertisement. Given 14
its broadest reasonable construction consistent with the Specification, this 15
step simply calls for a sending party's data processing system to start a 16
communication. 17
The plain meaning of “within” to one of ordinary skill in the art is 18
inside of something. The Specification does not define “within” inconsistent 19
with this plain meaning of the word. The phrase “within the data processing 20
system of the sending party” therefore refers to the inside or interior of a 21
sending party’s data processing system. The “sending party” is the same 22
"sending party" referred to in the first step of the claim discussed above. 23
Therefore, the step of “associating at least one pre-selected advertisement 24
with said communication within the data processing system of the sending 25
Appeal 2007-0922
Application 09/270,710

18
party” is construed to mean joining together, combining or connecting pre-1
selected advertising information with communicating information inside a 2
sending party’s data processing system. 3
That leaves the question of the scope to be given the phrase “the data 4
processing system of the sending party.” Clearly, this refers to an 5
information-manipulating system or apparatus. The type of information-6
manipulating system or apparatus is left open. The Specification mentions 7
as examples workstations and servers (Specification 5:5-6) and even devices 8
accessing an external server such as an internet based server from which 9
advertising information is obtained for inclusion in the originated message 10
(Specification 5:18-20). Therefore, in light of the Specification, one of 11
ordinary skill would construe the phrase “the data processing system of the 12
sending party” to cover a broad range of information-manipulating systems 13
ranging from, with respect to manipulating electronic information, a home 14
computer to computer networks. 15
In accordance with the Goldschmitt process, a subscriber initiates a 16
communication, a server receives the communication, appends an 17
advertisement thereto and transmits the combination to the recipient. All 18
this occurs within the "sending party's" network, the "sending party" 19
comprising the subscriber who sends the communication and an entity 20
operating the server with whom the subscriber has agreed may append an 21
advertisement to the subscriber's communication. We find therefore that 22
Goldschmitt discloses conducting the appending procedure “within the data 23
processing system of the sending party” in accordance with the claim. Since 24
Goldschmitt discloses the step of “associating at least one pre-selected 25
Appeal 2007-0922
Application 09/270,710

19
advertisement with said communication," as earlier explained, it follows that 1
Goldschmitt describes the step of “transmitting said communication with 2
said at least one advertisement embedded therein to the recipient.” 3
Accordingly, giving the claim the broadest reasonable construction 4
consistent with the Specification, we find that the claimed method reads on 5
Goldschmitt's described method. 6
As a result, the Examiner's reliance on Bezos to reject the claim as 7
unpatentable over the prior was not necessary. Accordingly, we will not 8
address it or Appellant's arguments challenging it. 9
The rejection of claim 1, and claims 2-19, 22, 23, and 25 standing or 10
falling with claim 1, is affirmed. 11
12
Re the rejection of Claim 24 13
Claim 24 differs from claim 1 only in that the pre-selected 14
advertisement is further defined to be "under the local control of the sending 15
party." The purpose of limiting the pre-selected advertisement to one which 16
is "under the local control of the sending party" is to contrast the method 17
claimed from that of Goldschmitt which, according to Appellant, involves 18
"appending of an advertisement to an email …. performed at a remote server 19
associated with the sponsors" FF 25. 20
However, because the Specification does not give the term "local" a 21
definition different from its plain meaning, the plain meaning being a 22
particular area, limiting the pre-selected advertisement to one which is 23
"under the local control of the sending party" does little to distinguish the 24
method claimed over that of Goldschmitt. Given the breadth of the phrase 25
Appeal 2007-0922
Application 09/270,710

20
"local control," the claim broadly encompasses a "sending party" conducting 1
the actions of both an email subscriber sending a communication and a 2
remote entity operating a server with whom the subscriber has agreed may 3
append an advertisement to the subscriber's email, an arrangement 4
Goldschmitt discloses. 5
Even if we were to construe, arguendo, the phrase "under the local 6
control of the sending party" to mean the step of associating the 7
advertisement is conducted within the very computer a user uses to send a 8
communication, thereby excluding using a remote server under someone 9
else's control, 8 the method claimed would nevertheless have been obvious to 10
one of ordinary skill in the art reading Goldschmitt at the time of the 11
invention. An arrangement by which one user handles all the tasks of 12
initiating a communication, appending an advertisement to the 13
communication and sending the combination to a recipient is an expedient 14
one of ordinary skill in the art practicing the Goldschmitt process would 15
readily foresee. In fact, if the claim were to be so construed it would read on 16
SPAM, i.e., unsolicited commercial email; something Appellant has 17
admitted is old in the art (Specification 3) and a commercial but common 18
application for the typical process of sending an email with an attachment 19
(see Goldschmitt's Background discussion (p. 1)). 20

8 The prosecution history shows Appellant attempting to limit the scope of
the claim so that the step of associating the advertisement with the
communication is conducted by the very user initiating and sending the
communication. At one point the step was limited to the "user-managed"
data processing system but that limitation, and others similar thereto, no
Appeal 2007-0922
Application 09/270,710

21
Accordingly, after giving the claim the broadest reasonable 1
construction consistent with the Specification, the claimed subject matter is 2
not patentably distinguishable from the method Goldschmitt discloses. 3
As a result, the Examiner's reliance on Bezos to reject the claim as 4
unpatentable over the prior was not necessary. Accordingly, we will not 5
address it or Appellant's arguments challenging it. 6
The rejection of claim 24 is affirmed. 7
8
Re the rejection of Claim 20 9
We will also affirm this rejection. 10
The Examiner relies on Uomini as evidence that the steps of 11
locating a data file containing signature information on the data 12
processing system of the sending party, said signature information 13
being appended to electronic communications originating from the 14
sender’s data processing system; [and,] 15
modifying the information stored within said signature file to 16
include at least one advertisement, 17
18
recited in claim 20, were known in the prior art. FF 32. The Examiner 19
characterizes Uomini as disclosing a system that attaches a signature block 20
containing, for example, name and address to an electronic communication. 21
FF 32. To be accurate, Uomini is directed to a method of obtaining the 22
context information (name, address, etc.) of an email. (Uomini, col. 2, ll. 56-23
62). Uomini seeks to improve on the need to use such bandwidth-wasting 24
methods as attaching a business card (i.e., a "vCard") to provide an email's 25

longer appear in claims 1 and 24. See, e.g., the amendment filed 12 August
2003.
Appeal 2007-0922
Application 09/270,710

22
context information (Uomini, col. 2) by, for example, searching the message 1
itself for the existence of any context information (Uomini, col. 6, ll. 58-59). 2
Notwithstanding the improvement, Uomini does disclose it is known in the 3
prior art to attach signature information to an email in the form of a business 4
card. A business card normally contains a name, address and other relevant 5
business information, including advertising information (e.g., logo). One of 6
ordinary skill in the art would understand an electronic business card to be 7
one which a user locates and modifies as changes to the information become 8
necessary. In view of Uomini, one of ordinary skill in the art would have 9
been led to append user information, including business cards with relevant 10
advertising information, to a communication. A preponderance of the 11
evidence suggests that one of ordinary skill in the art would have been led to 12
combine Goldschmitt’s disclosure (see Background, p. 1) of appending 13
attachments to emails with Uomini’s disclosure of appending business cards 14
to arrive at the claimed invention involving appending signature information 15
with advertising information to an electronic communication. A prima facie 16
case of obviousness has thus been established. In re Kahn, 441 F.3d 977, 17
985, 78 USPQ2d 1329, 1338 (Fed. Cir. 2006) 18
Appellant argues that “vCards cannot be and are not inserted or 19
embedded into an email signature file.” Brief 17. The difficulty with this 20
argument is two-fold. 21
First, the claim makes no mention of inserting or embedding as 22
Appellant argues. Claim 20 simply calls for locating a data file which 23
contains signature information to be appended to an electronic 24
communication, modifying it to include advertising information, and 25
Appeal 2007-0922
Application 09/270,710

23
transmitting the communication/signature/advertisement combination. In our 1
view, one of ordinary skill in the art would have been led to combine the 2
relevant teachings of the references to arrive at these steps. 3
Second, to accept Appellant’s argument we would have to conclude 4
that one of ordinary skill in the art would construe “signature file” to be 5
something that electronically-attached business cards are not, namely a data 6
file instructed to place signature information in an email message. However, 7
the claim does not define “signature file” to be anything more than “a data 8
file containing signature information on the data processing system of the 9
sending party.” The specification does not provide a definition any more 10
precise. The relevant disclosure can be found on pages 14 and 15 of the 11
Specification. There it merely states, in part, that “[i]n the event that the user 12
already includes a signature having, for example, his name and address, then 13
the advertisement would be added to this information and placed directly 14
below this user information” (Specification 14). Consistent with this 15
disclosure, the broadest reasonable construction to be given “signature file” 16
as used in the claim as interpreted by one of ordinary skill in the art would 17
be an electronic file containing data about the user. Since the business card 18
Uomini discloses is such a data file, we agree with the Examiner that Uomini 19
discloses a “signature file.” 20
Accordingly, we do not find Appellant’s argument persuasive as to 21
error in the rejection and therefore affirm the rejection of claim 20, as well 22
as claims 21 and 26 standing or falling with claim 20. 23
Appeal 2007-0922
Application 09/270,710

24
CONCLUSION OF LAW 1
On the record before us, the Examiner’s evidence and rationale is 2
sufficient to make out a prima facie case of obviousness under 35 U.S.C. 3
§ 103(a) for claims 1-26. On the record before us, Appellant has not shown 4
that the Examiner erred in concluding that a prima facie case of obviousness 5
for these claims is made by the prior art disclosures. 6
7
DECISION 8
The Examiner’s rejection of claims 1-26 is affirmed. 9
10
No time period for taking any subsequent action in connection with 11
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 12
§ 1.136(a)(1)(iv) (2006). 13
AFFIRMED 14
15
16
17
18
19
hh 20
NIXON PEABODY, LLP 21
401 9TH STREET, NW 22
SUITE 900 23
WASHINGTON, DC 20004-2128 24
25