Ex Parte Joo

Patent Trial and Appeal Board

Dec 10, 2012

12078114 (P.T.A.B. Dec. 10, 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.
12/078,114 03/27/2008 Jin-Yong Joo 122990-05163098con 9679
22429 7590 12/10/2012
LOWE HAUPTMAN HAM & BERNER, LLP
1700 DIAGONAL ROAD
SUITE 300
ALEXANDRIA, VA 22314
EXAMINER
BEKERMAN, MICHAEL
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
12/10/2012 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JIN-YONG JOO
____________________

Appeal 2011-006079
Application 12/078,114
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006079
Application 12/078,114

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 12-14. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

BACKGROUND
Appellant’s invention relates to an advertising system and method
using an Internet web browser, in which one of a menu bar, location bar, tool
bar, etc., in the screen of the web browser, that is not used for displaying
information from a server, is used for displaying advertisements during a
period of time for which function commands are not inputted, thereby
improving effectiveness of advertisement (Spec. 1, ll. 5-10).
Claim 12, reproduced below, is representative of the subject matter on
appeal:
12. An advertising method using a web browser in a client PC
connected to a network, the advertising method comprising:
monitoring a position of a cursor of said client PC within
a window of the web browser when said web browser is
activated, said window of the web browser comprising a web
content displaying region for displaying web content obtained
by the web browser from the network, and an area outside said
web content displaying region; and

1 Our decision will make reference to the Appellant’s Appeal Brief
(“App. Br.,” filed October 4, 2010) and Reply Brief (“Reply Br.,” filed
February 22, 2011) and the Examiner’s Answer (“Ans.,” mailed
December 22, 2010).
Appeal 2011-006079
Application 12/078,114

3
depending on the position of said cursor within the
window of the web browser, displaying only one of the
following at a time in said area:
(1) an advertisement, and
(2) at least one of a menu bar, a tool bar, a
location bar, and a logo of the browser;
wherein the advertisement is displayed in said area only
when the cursor is outside said area.

THE REJECTIONS
The following rejections are before us for review:
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burke (US 6,032,162, iss. Feb. 29, 2000) in view of
Harding (US 6,307,544 B1, iss. Oct. 23, 2001).
Claims 13-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burke in view of Harding and further in view of Hoyle
(US 6,628,314 B1, iss. Sep. 30, 2003).

ANALYSIS
Independent claim 12
We are persuaded of error on the part of the Examiner by Appellant’s
argument that neither Burke nor Harding discloses or suggests “depending
on the position of said cursor within the window of the web browser,
displaying only one of the following at a time in said area: (1) an
advertisement, and (2) at least one of a menu bar, a tool bar, a location bar,
and a logo of the browser[,]” as recited in claim 1 (Emphasis added) (App.
Br. 10-13 and 15 and Reply Br. 4-6).
The Examiner cites Burke as disclosing, with reference to Figure 5, a
user interface including a web page display area 530 and screen areas 540
Appeal 2011-006079
Application 12/078,114

4
and 550 located above and below the display area 530, which are used for
displaying advertisements and menu icons for user initiation of web browser
control functions (Ans. 4). See Burke, col. 8, ll. 26-34. The Examiner
acknowledges that Burke does not teach “dynamic display of
[advertisements and menus] based upon the user’s mousing properties,” and
relies on Harding as teaching this feature at column 3, lines 10-21 and 55-67
and column 4, lines 1-5 (Ans. 4).
We have reviewed the cited portion of Harding, on which the
Examiner relies. And we agree with Appellant that this portion of Harding
does not disclose or suggest “depending on the position of said cursor within
the window of the web browser, displaying only one of the following at a
time in said area: (1) an advertisement, and (2) at least one of a menu bar, a
tool bar, a location bar, and a logo of the browser[,]” as recited in claim 1
(Emphasis added).
Harding discloses a system for providing dynamic and proactive
assistance to a user of a computer system (Harding, Abstr.). Harding thus
describes, with reference to Figures 1 through 3, that when the system
detects that a user might need assistance, as indicated by the user’s mouse
entering a field and hovering for a moment, a pop-up assistance window is
displayed (see Fig. 1). If the user does not require assistance, Harding
describes that the user can “dismiss” the assistance window and continue
working. Otherwise, the user can place the mouse pointer over the
assistance window, which causes the assistance to progress to the next level,
providing a cascading menu of information types, as shown in Figure 2.
Additional levels of menus are displayed, as shown in Figure 3, when a user
Appeal 2011-006079
Application 12/078,114

5
selects one of the information types. See Harding, col. 3, l. 53 – col. 4, line
13.
The Examiner relies on Harding as teaching that the mouse cursor
position can influence the appearance of a menu and also influence the
disappearance of the menu, and the Examiner further maintains that:
[w]hen Harding is combined with the advertisement display of
Burke, the combination yields the result that when the mouse
cursor is moved into an area of the screen where an
advertisement of Burke is also displayed, that the mouse-over
menu of Harding will appear, thus covering the advertisement
of Burke. When the mouse cursor is moved from this area of
the screen, the advertisement returns to view as the menu
disappears.
(Ans. 7).

The flaw in the Examiner’s reasoning is that there is no disclosure or
suggestion in Harding that when the cursor is moved into an area of the
screen where the advertisement is displayed, the mouse-over menu would
“appear, thus covering the advertisement of Burke.” Instead, it clearly
appears from Harding that both the advertisement and the menu will be
displayed when the cursor is moved into the display area to cause the
assistance window to appear (see, e.g., Harding, Figs. 1-3). Stated
differently, in the Examiner’s proposed combination, the method would not
display “only one of the [advertisement and menu in the area] at a time,” as
recited in claim 12 (Emphasis added).
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 12 under 35 U.S.C. § 103(a).

Appeal 2011-006079
Application 12/078,114

6
Claims 13 and 14
Claims 13 and 14 depend from claim 12. The Examiner has not
established on this record that Hoyle cures the deficiencies of Burke and
Harding as set forth above. Therefore, we also will not sustain the
Examiner’s rejection of claims 13 and 14.

DECISION
The Examiner’s rejections of claims 12-14 under 35 U.S.C. § 103(a)
are reversed.

REVERSED

hh