Ex Parte Hobbs

Board of Patent Appeals and Interferences

Feb 14, 2008

09734290 (B.P.A.I. Feb. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE BRADLEY HOBBS
____________

Appeal 2007-4198
Application 09/734,290
Technology Center 3600
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Decided: February 14, 2008
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Before MURRIEL E. CRAWFORD, DAVID B. WALKER, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-26 and 29-34. Claims 27-28 and 35-40 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). We
REVERSE.
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THE INVENTION
The Appellant’s claims are directed to a method of processing a print
job of a customer and directing advertising to the customer. The method
includes defining a print processing controller having an advertisement
registered therewith, defining a network link between the customer and print
processing controller, processing a job ticket for the print job, and presenting
the advertisement to the customer via the network link when processing the
print job (Specification 2). Claim 21 reproduced below is representative of
the subject matter of appeal.

21. A system for processing a print job of a customer and directing
advertising to the customer, the system comprising:
a print processing system controller configured to have an
advertisement registered therewith; and
a customer interface configured to communicate with the print
processing system controller to transmit a job ticket for the print job to
the print processing system controller,
wherein the print processing system controller is adapted to
process the job ticket for the print job and display the advertisement
on the customer interface when processing the job ticket.

THE REJECTION
The Examiner relies upon the following as evidence in support of the
rejections:
Dutta US 6,891,635 B2 May 10, 2005
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The following rejection is before us for review:
1. Claims 1-26 and 29-34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dutta.

THE ISSUE
At issue is whether the Appellants have shown that the Examiner
erred in rejecting the claims 1-26 and 29-34 under 35 U.S.C. § 103(a).
This issue turns on whether it would have been obvious to modify
Dutta to “display the advertisement on the customer interface when
processing the job ticket” instead of on the printed documents.

FINDINGS OF FACT
We find the following enumerated findings of fact:
1. Dutta discloses a printing system in which advertisements are
inserted into documents to be printed (Col. 3:24-45).
2. Dutta states that “[a] challenge with Internet based advertisements
is that they only appear for a brief time to the user. Often when the
user changes screens or visits another web page, they forget the
information” (Col. 1:61-65).

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
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the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18, (1966). See
also KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007) (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“the principles laid down in Graham reaffirmed the ‘functional approach’ of
Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739 (citing Graham, 383 U.S.
at 12 (emphasis added)), and reaffirmed principles based on its precedent
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
The Court also stated “[i]f a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 1740. The
operative question in this “functional approach” is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.
The Court noted that “[t]o facilitate review, this analysis should be
made explicit.” Id. at 1741 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
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can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.

ANALYSIS
The Examiner does not dispute that the Dutta reference does not
disclose displaying the advertisement on the customer’s interface (computer
screen or display) while receiving or processing the print job instead of
printing the advertisement together with the customer’s document (Ans. 7).
The Examiner argues that the rejection under 35 U.S.C. § 103(a) is
proper because one of ordinary skill in the art would have been motivated to
modify Dutta to display the advertisements on the computer screen instead
of printing them for cleaner printed output, to save paper and to reduce
processing time (Ans. 11-12).
The Appellant argues that the Dutta reference teaches away from
displaying advertisements (Br. 7-8) and that the rejection under 35 U.S.C. §
103(a) is not proper. The Appellant argues that Dutta teaches away from
using advertisements such as banners on Internet web pages (Br. 7) and that
the Dutta reference deals with subsidized printing in exchange for
advertising space (Reply Br. 3). The Appellant argues “[m]odifying the
Dutta patent … to display the advertisement instead of plac[ing] the
advertisements on the printout…would simply return the method…to the
arrangement of the stated problem and result in the actual situation the Dutta
patent is trying to overcome.” (Reply Br. 5.)

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We agree that the Dutta reference does teach away from the proposed
modification.
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant. The
degree of teaching away will of course depend on the particular facts;
in general, a reference will teach away if it suggests that the line of
development flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Dutta states the challenge
of Internet based advertisements only appearing for a brief time and the user
forgetting the information (FF 2). Dutta also states that if users do not write
down the information or store it as a bookmark, they may not be able to
remember the advertised goods or services (Col. 1:60-66). Given that the
line of development in the Dutta reference is specifically directed to moving
away from the disadvantages of using Internet advertising to using the
advantages of printing advertisements instead, we find the reference to
clearly teach away from the proposed modification in the rejection. The
articulated reasoning for the proposed modification of Dutta in view of the
reference itself teaching away is not sufficient to support the conclusion of
obviousness.
As the Dutta reference applied in the rejection fails to “display the
advertisement on the customer interface when processing the job ticket”
instead of on the printed documents and teaches away from such a
modification, we cannot sustain the rejection.

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CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-26 and 29-34 under 35 U.S.C. § 103(a) as unpatentable
over Dutta.

DECISON

The decision of the Examiner to reject claims 1-26 and 29-34 is
reversed.
REVERSED

hh

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