Ex Parte Issa

Board of Patent Appeals and Interferences

Jun 15, 2012

11231836 (B.P.A.I. Jun. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/231,836 09/21/2005 Alfredo C. Issa 1104-008 7524
74548 7590 06/15/2012
FlashPoint Technology and Withrow & Terranova
100 Regency Forest Drive
Suite 160
Cary, NC 27518
EXAMINER
BRUCKART, BENJAMIN R
ART UNIT PAPER NUMBER
2478
MAIL DATE DELIVERY MODE
06/15/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALFREDO C. ISSA
____________

Appeal 2010-004079
Application 11/231,836
Technology Center 2400
____________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and BRYAN F. MOORE,
Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004079
Application 11/231,836

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-15 and 17-20 which are all of the claims remaining in
this application. Claim 16 was cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

Invention
Appellant’s invention relates to hosting digital images embedded in
external websites and adding additional content to the digital images when
serving the digital images to guests of the external websites. (Spec. [0001].)

Illustrative Claim
Claim 1, which is illustrative of the invention, is reproduced below
with key disputed language emphasized:

1. A web server in a system for hosting a digital image
embedded in an external website comprising:
a) a communication interface coupled to a network; and
b) a control system associated with the communication
interface and adapted to:
i) receive a request from a requesting node for one of a
plurality of digital images embedded within the external
website;
ii) obtain the one of the plurality of digital images from
an image database;
iii) analyze metadata associated with the one of the
plurality of digital images to provide selection criteria;
iv) select additional content to add to the one of the
plurality of digital images based on the selection criteria;
Appeal 2010-004079
Application 11/231,836

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v) modify the one of the plurality of digital images to add
the additional content, thereby generating a modified image;
and
vi) provide the modified image to the requesting node.

Prior Art
The Examiner relies on the following references as evidence:
DUTTA US 2002/0109729 A1 Aug. 15, 2002
(filed Dec. 14, 2000)

FIELDS US 6,704,797 B1 Mar. 9, 2004

SVENDSEN US 2004/0207657 A1 Oct. 21, 2004
(filed Apr. 2, 2003)

HAMPTON US 7,062,572 B1 Jun. 13, 2006

RHOADS US 2006/0041591 A1 Feb. 23, 2006
(filed Aug. 4, 2005)

Examiner’s Rejections
The Examiner rejected claims 1-4, 6, 7, 9-14, 17, and 19 under 35
U.S.C. § 102(b) as being anticipated by Dutta.
Claims 5 and 20 were rejected as unpatentable under 35 U.S.C. §
103(a) as being obvious over Dutta and Rhoads.
Claim 8 was rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over Dutta and Svendsen.
Claim 15 was rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over Dutta and Fields et al.
Claims 18 was rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over Dutta and Hampton.

Appeal 2010-004079
Application 11/231,836

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Appellant’s Contention
Appellant contends that Dutta fails to disclose analyzing metadata
associated with a requested digital image in order to provide selection
criteria as recited in independent claims 1, 13, and 19. (App. Br. 11-14;
Reply Br. 2-7.)

ISSUE
Based upon our review of the record and Appellant’s contention, we
have determined that the following issue is dispositive in this appeal:
Did the Examiner err in determining that Dutta teaches or suggests the
claimed “analyze metadata associated with the one of the plurality of digital
images to provide selection criteria?” (Claim 1.)1

ANALYSIS
Appellant argues that Dutta fails to disclose the claimed “analyze
metadata associated with the one of the plurality of digital images to provide
selection criteria.” (See App. Br. 11-14; Reply Br. 2-7.) Specifically,
Appellant argues that “the [selection] criterion in Dutta is external to the
image itself and is not related at all to the images themselves, nor metadata
that is associated with the images.” (App. Br. 14.) We agree with
Appellant.

1 We recognize that Appellant’s arguments present additional issues.
However, we were persuaded of error by this issue and as such we do not
reach the additional issues as this issue is dispositive of the appeal.
Appeal 2010-004079
Application 11/231,836

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The Examiner responds that in Dutta “a database is created in the ad
server, associating web pages with advertisements . . . [and t]he information
in the database may reflect marketing decisions, based on geographic region,
shopping season, etc.” (Ans. 7.) However, while it is true that
advertisements are associated with a web page (and associated digital
images), we find that the Examiner has not presented a reasonable rationale
why the “marketing decisions based on geographic region, shopping season”
represent metadata that is associated with the digital image. (Ans. 6-9.)
In view of the foregoing, Appellant has shown that the Examiner erred
in rejecting claims 1, 13, and 19, and we will not sustain the Examiner’s
rejection of claims 1-4, 6, 7, 9-14, 17, and 19 under § 102(b) as being
anticipated by Dutta.
We also agree with Appellant’s arguments (App. Br. 17-18; Reply Br.
7-8) that the secondary references do not overcome the deficiencies of Dutta.
Therefore, based on the factual findings relating to the § 102(b) rejection as
discussed supra, we will also not sustain the Examiner’s rejections of claims
5, 8, 15, 18 and 20 under § 103(a).

CONCLUSION
Appellant has persuaded us of error in the Examiner’s decision to
reject claims 1-15 and 17-20.

DECISION
The decision of the Examiner to reject claims 1-15 and 17-20, is
reversed.

Appeal 2010-004079
Application 11/231,836

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REVERSED

ke