Ex Parte Glazer

Board of Patent Appeals and Interferences

Jul 21, 2008

09545875 (B.P.A.I. Jul. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte AVRAM GLAZER
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Appeal 2008-1755
Application 09/545,875
Technology Center 3600
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Decided: July 21, 2008
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Avram Glazer (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-14 and 44-50. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We REVERSE.1
THE INVENTION
The claimed invention relates to providing a consistent and
comprehensive approach to the use of banners as a source of access to
information and services on networked computer system. (Specification
2:25 – 3:1.)
Claim 1, reproduced below, is representative of the subject matter on
appeal.2
1. (Currently Amended) A method for providing multiple types of
content for users of the Internet, comprising the steps of:
storing at least one file on at least one file server that provides Internet
users with access to a plurality of different types of information and
services;
establishing a connection between said file and at least one web page
that is displayed at an Internet web site stored on a second server; and
causing at least some of the contents of said file to appear within a
banner displayed within the web page at a communications device whenever
the communications device, interfaced with the [first] file server and the
second server, downloads said page for display.

1 Our decision will refer to Appellant’s Appeal Brief (“App. Br.,” filed Feb.
23, 2006), Reply Brief (“Reply Br.,” filed Jul. 18, 2007), and the Examiner’s
Answer (“Answer,” mailed May 18, 2007).
2 The Examiner stated in the Answer that the claims in the appendix were
correct. (Answer 3.) However, claim 1 in the appendix contains an error.
The term “first” was replaced with the term “file” in the amendment of Nov.
18, 2004. As such, we have used claim 1 from this amendment to represent
the subject matter on appeal.
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Application 09/545,875

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THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Wolfe US 6,336,131 B1 Jan. 1, 2002
Getchius US 6,496,843 B1 Dec. 17, 2002
Davis US 6,643,696 B2 Nov. 4, 2003

THE REJECTIONS
The following rejections are before us for review:
Claims 1 and 44 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Wolfe.
Claims 1-14 and 44-50 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wolfe and Davis in conjunction with the Examiner’s
position of Official Notice as evidenced by Getchius.

ISSUES
The first issue whether the Appellant has shown that the Examiner
erred in rejecting claims 1 and 44 as anticipated by Wolfe. The second issue
is whether the Appellant has shown that the Examiner erred in rejecting
claims 1-14 and 44-50 as obvious with Wolfe and Davis. Both issues turn
on whether Wolfe describes causing the contents of a file to appear within a
banner displayed within a web page at a communications device whenever
the communications device downloads the web page for display.

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Application 09/545,875

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FINDINGS OF FACT
We find that the following enumerated findings of fact are supported
by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849
F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
“Banner” is a specific term of art and has a specific definition understood
by those skilled in the art.
1. The Appellant’s Specification discloses a “banner” is “a portion of a
web page whose content is determined by a source which is separate
from the source of the underlying content of the web page to which
the browser has connected.” (Specification 2:1-4.)
2. Wolfe shows a “banner” 312 at the top of the web page 306 that is
displayed on display 304, see figure 3. Wolfe describes the
information within the banner could relate to another service provided
by the publisher of the web page or advertisement space the publisher
may wish to sell to a third party. (Wolfe, col. 4, ll. 55-65.)
Wolfe
3. Wolfe describes after requesting a web page over the network, a first
window displays the web page. Concurrently displayed is a second
window containing information related to the information displayed in
the first window. (See e.g. Wolfe, Fig. 19 and col. 10, l. 60 to col. 11,
l. 29.)

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Application 09/545,875

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PRINCIPLES OF LAW
We determine the scope of the claims in patent applications not solely
based on the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “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).
It is well settled that in order for the examiner to establish a prima
facie case of anticipation, each and every element of the claimed invention,
arranged as required by the claim, must be found in a single prior art
reference, either expressly or under the principles of inherency. See
generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997);
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78 (Fed. Cir.
1988); Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick,
730 F.2d 1452, 1458 (Fed. Cir. 1984).
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472.
Obviousness is then determined based on the evidence as a whole and the
relative persuasiveness of the arguments. Id.

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ANALYSIS
Scope of the claims
The Appellant limits the claimed invention to displaying the contents
of the file on the file server to a banner displayed within a web page (Claim
1). The Appellant contends Wolfe fails to describe the content of a file from
the file server appearing “within any banner displayed within a web page, as
recited in Appellant[’s] claim 1.” (Reply Br. 4) (emphasis omitted.) Given
this argument, the claim language, the definition found within the
Appellant’s Specification, and the evidence provided by Wolfe, we find the
claimed invention requires displaying the information from the file server in
a “banner” as that term is specifically understood by those of skill in the art.
(Facts 1 and 2.)
35 U.S.C. § 102(e) rejection
In addition to contending the claimed invention is limited to
displaying the contents of the file server within a banner, the Appellant
contends that in Wolfe a separate window displays the information from the
file server. (App. Br. 11-12 and Reply Br. 3.) We agree. (Fact 3.) The
Examiner does not rely on Davis or Getchius for any teaching that would
cure the deficiencies of Wolfe. As such, we will not sustain the Examiner’s
rejection of claim 1 with Wolfe. Claim 44 depends from and further limits
claim 1, and as such, Wolfe also does not anticipate claim 44.
35 U.S.C § 103(a) rejection
The Appellant contends Davis and Getchius fail to overcome the
deficiencies of Wolfe for independent claim 1 and the dependent claims 2-14
and 44-50 further distinguish themselves from Wolfe. (App. Br. 12.) The
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Examiner does not rely on Davis or Getchius for any teaching that would
cure the deficiencies of Wolfe, and thus dependent claims 2-14 and 44-50
are not obvious. As such, we will not sustain the Examiner’s rejection of
claims 1-14 and 44-50 with Wolfe, Davis, and Getchius used as evidence for
the Examiner’s position of Official Notice.

CONCLUSIONS OF LAW
We conclude that the Appellants have shown the Examiner erred in
rejecting under 35 U.S.C. § 102(e) claims 1 and 44 with Wolfe and under
35 U.S.C. § 103(a) claims 1-14 and 44-50 with Wolfe, Davis, and Getchius.

DECISION
The Examiner’s decision to reject claims 1-14 and 44-50 is reversed.

REVERSED

vsh

JAMES A LABARRE
BURNS DOANE SWECKER & MATHIS LLP
P O BOX 1404
ALEXANDRIA VA 22313-1404