Ex Parte Hensen et alDownload PDFBoard of Patent Appeals and InterferencesMay 23, 201110123360 (B.P.A.I. May. 23, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KELLY P. HENSEN and RICK LATTANZIO ____________ Appeal 2010-001981 Application 10/123,360 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kelly P. Hensen, et al. (Appellants) seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-25 and 27-33. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2010-001981 Application 10/123,360 2 SUMMARY OF DECISION We AFFIRM.1 THE INVENTION The invention “provides both a method and system for managing a Distributed Branding Program and a method and system for creating marketing materials in compliance with such a Distributed Branding a [sic] [P]rogram.” Specification 4:20-22. Claim 12, reproduced below, is illustrative of the subject matter on appeal. 12. A system for managing a Distributed Branding Program comprising: a database having a plurality of templates and assets stored thereon, said templates having Asset Display Locations configured to receive and display assets, wherein said assets are associated with an Asset Display Location; an application server configured to retrieve said templates and said assets from said database and to communicate with a user terminal over a computer network to selectively display said templates and said assets in response to user input entered at said user terminal. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: 1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,” filed Dec. 8, 2008) and the Examiner’s Answer (“Answer,” mailed Mar. 13, 2009). Appeal 2010-001981 Application 10/123,360 3 Evans US 2002/0036654 A1 Mar. 28, 2002 The following rejections are before us for review: 1. Claims 1-11 and 14-25 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter. 2. Claims 1-25 and 27-33 are rejected under 35 U.S.C. §102(e) as being anticipated by Evans. DISPOSITION OF THE APPEAL The Examiner entered a new ground of rejection in the Examiner’s Answer against claims 1-11 and 14-25 under 35 U.S.C. §101 as being directed to nonstatutory subject matter. Answer 3-4. The Examiner properly gave notice of the new ground of rejection (Answer 23-24) and the Technology Center Director approved it. Answer 25. As the Answer indicated (Answer 23-24), the Appellants were required to respond to the new ground of rejection within two months in either of two ways: 1) reopen prosecution (see 37 CFR 41.39(a)(2)(b)(1)); or 2) maintain the appeal by filing a reply brief as set forth in 37 CFR 41.41 (see 37 CFR 41.39(a)(2)(b)(2) ), “to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection.” Answer 23. According to the record before us, neither option appears to have been exercised. Accordingly, the appeal as to claims 1-11 and 14-25, subject to the new ground of rejection under 35 U.S.C. § 101 as being directed to nonstatutory subject matter, stands dismissed. Upon return of the application to the Examiner, the Examiner should (1) cancel claims 1-11 and 14-25 subject to the new ground of rejection and (2) notify the Appellants that the appeal as to claims 1-11 and 14-25, subject Appeal 2010-001981 Application 10/123,360 4 to the new ground of rejection under 35 U.S.C. §101, as being directed to nonstatutory subject matter, is dismissed and that claims 1-11 and 14-25 are cancelled. See Manual of Patent Examining Procedure (MPEP) § 1207.03, 8th ed., Rev. 8, Jul. 2010. Given that the appeal as to claims 1-11 and 14-25 stands dismissed, the rejection before us for review is reduced to as follows: 1. Claims 12, 13, and 27-33 are rejected under 35 U.S.C. §102(e) as being anticipated by Evans. ISSUE The issue is whether Evans describes, expressly or inherently, a system comprising “a database having a plurality of templates and assets stored thereon, said templates having Asset Display Locations configured to receive and display assets, wherein said assets are associated with an Asset Display Location; [and] an application server configured to retrieve said templates and said assets from said database and to communicate with a user terminal over a computer network to selectively display said templates and said assets in response to user input entered at said user terminal.” (claim 12). FINDINGS OF FACT We rely on the Examiner’s factual findings stated in the Answer. Additional findings of fact may appear in the Analysis below. ANALYSIS The Appellants argued two groups of claims: (a) independent claim 12 Appeal 2010-001981 Application 10/123,360 5 and dependent claim 13 (Br. 14); and, (b) independent claims 27 and 33, and claims 28-32 dependent on claim 27 (Br. 15-18). We select claims 12 and 27 as the representative claims for these groups, respectively, and the remaining claims 13 and 28-32 stand or fall with claim 12 and 27, respectively. 37 C.F.R. § 41.37(c)(1)(vii) (2007). Claim 12 Claim 12 describes a system comprising two elements: (1) a database and (2) an application server. According to the claimed system, the (1) database has stored thereon a plurality of “templates” and “assets.” The templates have “Asset Display Locations.” According to the Specification, a template provides the format of the information from which marketing materials are created. “[M]arkerting artwork is created based on the format of the template.” Specification 6:11. “The template is created having one or more predefined areas (hereafter, Asset Display Locations) that may be edited by a user.” Specification 5:12- 13. Templates are “predefined layouts that can be used to create new marketing materials.” Specification 16:18-19. According to the Specification, “assets” can refer to “product photographs, advertising slogans, logos and the like” (Specification 5:11). Thus the database as claimed contains layouts (“templates”) with predefined areas (Asset Display Locations) and information in the form of images or text. According to the claimed system, the predefined areas in the templates (i.e., “Asset Display Locations”) are “configured to receive and Appeal 2010-001981 Application 10/123,360 6 display assets” (claim 12). Furthermore, the assets “are associated with an Asset Display Location” (claim 12). No express definition is given for the claim term “association” in the claim or in the Specification. Accordingly, it is given its plain meaning, which is to join together. Further, claim 12 does not spell out how the information stored in the database (the “assets”) is “associated,” or joined together, with any particular predefined area in the template (i.e., “Asset Display Location”). Thus, the database of the claimed system is reasonably broadly construed to store a plurality of layouts having pre-defined areas (i.e., “templates” with “Asset Display Locations”) configured to receive and display stored text and/or images (i.e., “assets) and joined together with stored text and/or images. The claimed system further includes “an application server configured to retrieve said templates and said assets from said database and to communicate with a user terminal over a computer network to selectively display said templates and said assets in response to user input entered at said user terminal” (claim 12). The application server of the claimed system is reasonably broadly construed as a computer capable of allowing a user to selectively display the templates and assets via a user terminal. Having construed the claim, we now turn to the question of anticipation. The Examiner takes the position that Evans describes the claimed system. Answer 9-10. There is no dispute that Evans describes computer templates with predefined areas. That is clearly shown in Fig. 4. See also discussion in [0010]. The Evans’ computer has a template database and a product Appeal 2010-001981 Application 10/123,360 7 database and the product database contains images and text. Thus Evans’ database stores “assets” as that term is used in the claim. Furthermore, Evans teaches placing image/text on a template with predefined areas and a computer that is capable of allowing a user to selectively display the templates and assets via a user terminal. The computer accesses software that is capable of incorporating: a template selector for selecting at least one template from the template database; a product selector for selecting at least one product reference from the product database, each of the at least one product reference including at least one of an image and text; and a design interface for controlling the placement of a selected product reference on a selected template in order to create a proposed advertisement. . . . a user may access the computer in order to create a proposed advertisement. [0010]. The image/text placed in the predefined areas of the template are necessarily joined together and thus “associated” as that term is broadly used in the claim. Thus, Evans teaches a database with assets and plurality of layouts having pre-defined areas (i.e., “templates” with “Asset Display Locations”) configured to receive and display stored text and/or images (i.e., “assets) and joined together (“associated”) with stored text and/or images and a computer capable of allowing a user to selectively display the templates and assets via a user terminal as claimed. Accordingly, the Examiner has made out a prima facie case of anticipation. The Appellants disagree. We have reviewed the Brief. A single recurring argument is made. Although “Evans teaches choosing a product reference and incorporating Appeal 2010-001981 Application 10/123,360 8 that reference into an advertising area such that the advertising area is configured to fit the product reference.” (Br. 13), “the reference group is not associated with a specific advertising area.” (Br. 13, emphasis added.) See also Br. 14: “rather than providing specific assets associated with specific display locations, [Evans] teaches templates already having per-determined ads along with custom blocks of space.” (emphasis added). The Appellants’ argument is unpersuasive. It is premised on the claimed system “providing specific assets associated with specific display locations.” (Br. 14). However, the claimed system is not so limited. “Many of appellant's arguments fail from the outset because, . . . they are not based on limitations appearing in the claims . . . .” In re Self, 671 F.2d 1344, 1348 (CCPA 1982). The scope of claimed system is not limited to “providing specific assets associated with specific display locations.” Rather, it reasonably broadly covers providing assets that are associated, or joined together, with a predefined area on a template (i.e., an Asset Display Location). The Evans system accomplishes this. For the foregoing reasons, we are unpersuaded as to error in the prima facie case of anticipation of claim 12 and claim 13 which stands or falls with claim 12. Claim 27 The Appellants challenge the rejection of claim 27 for the same reasons used to challenge the rejection of claim 12. See Br. 17: “The fact that an asset is ''placed in ad areas within a template" does not mean that a specific asset is associated with a specific ad area within the template. It simply discloses the action of placing an asset in an ad area rather than Appeal 2010-001981 Application 10/123,360 9 teaching the association between asset and ad area.” (emphasis added). However, as we explained above for claim 12, we find likewise for claim 27. Nothing in claim 27 limits the system such that a specific asset is associated with a specific location on the template. Claim 27 reads: “the templates having Asset Display Locations for receiving assets, each Asset Display Location having at least one asset associated there with.” This reasonably broadly covers a system such as Evans which joins together any asset with any location on the template. For the foregoing reasons, we are unpersuaded as to error in the prima facie case of anticipation of claim 27 and claims 28-33 which stand or fall with claim 27. DECISION The decision of the Examiner to reject claims 12, 13, and 27-33 is affirmed. 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 erc Copy with citationCopy as parenthetical citation