Ex Parte Hensen et al

Board of Patent Appeals and Interferences

May 23, 2011

10123360 (B.P.A.I. May. 23, 2011)

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).

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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).
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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
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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
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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
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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
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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
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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
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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

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