Ex Parte Kempanna

Patent Trial and Appeal Board

Dec 12, 2014

11908498 (P.T.A.B. Dec. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAGHUNANDAN KEMPANNA
____________

Appeal 2012-004534
Application 11/908,498
Technology Center 2100
____________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
ULRIKE W. JENKS, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims directed to
a system and method for displaying advertisements. The Examiner rejects
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
STATEMENT OF THE CASE
The Specification describes a process for “displaying advertisements
or messages in an electronic display device . . . . The electronic display
device can be a television, LCD display controlled by a computer, a
projector, and the like displaying devices.” (Spec. 2, ll. 23–29.)

1 Appellant identifies Hewlett-Packard Development Company, LP as the
Real Party in Interest. (App. Br. 2.)
Appeal 2012-004534
Application 11/908,498

2
Claims 1–17, 20, 24, and 25 are on appeal, and can be found in the
Claims Appendix of the Appeal Brief (App. Br. 19–23). Claim 1, 13, and 25
are representative of the claims on appeal, and read as follows:
1. A system for creating a message and displaying the same
comprising:
a message composer operable on a computer system for
composing and generating a message file having a content
portion for containing a message content and a header portion
for containing a message attribute, said message attribute
including an instruction for a display device as to how to
display said message content; and
a display device, separate from said computer system,
having a memory therein for storing the message file and a
message management module for retrieving and rendering the
message content on a screen in accordance with said message
attribute, wherein the stored message file is assigned a
sequential number for establishing a queue.

13. A method of displaying a message comprising:
with a display device mounted in a public place for
displaying information, receiving a message file comprising
message content and a message attribute;
storing the message file in a memory in the display
device; and
displaying the message content on a portion of said
display device, while other content is being displayed on a
remainder of the display device.

25. A method of displaying an advertising messages
comprising:
with a display device mounted in a public place for
displaying information, transferring a message file comprising
advertising content into a memory incorporated into said
mounted display device; and
with the display device, displaying the advertising
content on a portion of said display device, while other content
is being displayed on a remainder of the display device.
Appeal 2012-004534
Application 11/908,498

3
The Examiner rejects the claims as follows:
I. claims 1–5 and 7 under 35 U.S.C. § 103(a) over Corts2 and
Itakura3;
II. claims 6 and 8–12 under 35 U.S.C. § 103(a) over Corts,
Itakura, and Graham4;
III. claims 13, 14, and 24 under 35 U.S.C. § 103(a) over Corts,
Itakura, and Arr5;
IV. claims 15–17 and 20 under 35 U.S.C. § 103(a) over
Corts, Itakura, Arr, and Kawai6; and
V. claim 25 under 35 U.S.C. § 103(a) as unpatentable over Itakura
and Arr.

I.-II. The Issue: Obviousness over Corts and Itakura
The Examiner finds that Corts disclosed a message composer, and
relies on Ikatura for providing the display device limitations (Ans. 6–7).
The Examiner concludes that “it would have been obvious to one of ordinary
skill in the art to include the message storage, management and display of
Itakura with the message creation of Corts. The motivation for doing so
would have been to allow users in various locations to save and view
messages of interest to said users.” (Id. at 7.)

2 David Corts et al., US 2002/0141491 Al, published Oct. 3, 2002.
3 Yuichiro Itakura et al., EP 0 877 314 A1, published Nov. 11, 1998.
4 Tyrol R. Graham et al., US 2003/0060240 Al, published Mar. 27, 2003.
5 Dane Arr, US 2003/0163369 Al, published Aug. 28, 2003.
6 Eiji Kawai, US 7,200,853 B2, issued Apr. 3, 2007.
App
App

conc
devi
Find

infor
Fig.
comm
perso
with

eal 2012-0
lication 11
Does the
lusion that
ce as claim

ings of Fa
1. Fi
mation dis
1 shows th
unicate t
nal comp
the modem
2. Ik
Th
which pr
database
Internet
display a
images.
04534
/908,498
preponde
the comb
ed?
ct
g. 1 of Ika
play syste
at “termin
hrough the
uter, for ex
2 and a d
atura discl
e informa
ovides the
and a use
9, that is, i
ccording t
On the oth
rance of e
ination pro
tura, repro
m:
al 1 and th
public ne
ample, wh
isplay 8.”
osed
tion provi
messages
r database
nformatio
o the user
er hand, t

4
vidence of
vides a m
duced bel
e informa
twork 3. T
ich comp
(Ikatura,
der also ha
to the term
13. The in
n designat
’s request,
he messag
record sup
essage com
ow, shows
tion provid
he termin
rises a mai
col. 7, ll.
s a messa
inal 1, an
formation
ed and sup
is referred
es, which
port the E
poser and
the struct
er 4 can
al 1 is [sic
n unit 7 co
16–20.)
ge manage
image
from the
plied to th
to as acti
are
xaminer’s
display
ure of the
] has a
nnected
r 11
e
ve

Appeal 2012-004534
Application 11/908,498

5
automatically supplied to the terminal even if not designated by
the user, are referred to as passive images.
(Ikatura, col. 7, ll. 35–43; Ans. 23.)
3. Ikatura’s messages contain message identifiers.
The message ID shows an identification of each message.
The message transmittal condition data is valid only for when
the message is to be selected using the condition. The type of
the individual limit indicates the setting of the display limit (the
time period for which the display limit applies) when the
number of display times for displaying the message to each
terminal 1 user (the display limit for transmitting and displaying
each message to one terminal 1) is provided. For example,
“days” or “months” is shown when the display limit is provided
for each day or each month. When the period for which the
display limit is not provided, is not designated, “total” is
indicated in the table. Then the display limit, with which the
message is displayed for each terminal 1 user means the total
number limit.
(Ikatura, col. 8, ll. 6–20; Ans. 7.)
4. Ikatura disclosed
[T]he structure of the message that the terminal 1 receives from
the information provider 4 together with the Internet images.
The message has a message identification, a message type
which shows the type of the message, such as an earthquake
warning requiring emergency display or a particular message
designated for a particular display date, and the image data of
the message. The terminal 1 receives, into a memory not shown
in the figure, a plurality of the messages in a queue format from
the address indicated by the top pointer of the queue up to the
address indicated by the last pointer of the queue. The display
controller 18 displays the images successively, starting from the
first in the queue onto the display 8 every predetermined time
period.
(Ikatura, col. 9, ll. 38–50 (emphasis added); Ans. 7.)

Appeal 2012-004534
Application 11/908,498

6
5. The Examiner finds that “[i]t is notoriously well known in the art that
such devices contain at least cache memory for temporary storage of data,
therefore, said message files transmitted to the display devices are stored on
the display devices at some instance.” (Ans. 24–25 & 26.)
6. Corts disclosed:
In-Band On-Channel (IBOC) is an emerging Digital
Audio Broadcasting (DAB) technology. . . has the ability to
create a “hybrid” signal that can simultaneously send analog
(“audio”) and digital data. The digital data can be digitally
compressed analog (“audio”) data, instructions for rendering
visual components (“visual data”) on an IBOC DAB receiver,
or information for other data-specific services. For example,
digital data could potentially render visual components such as
text and images describing artist/song title information, news
headlines, digital audio traffic reports or other information that
could be valuable to a radio listener.
(Corts 1: ¶ 4.) Specifically, Corts disclosed management “software
functionality [that] allows the provider to control timing, flow and
occurrence of supplemental digital data elements such as weather reports,
news headlines, traffic alerts, etc.” (Corts 5: ¶ 59; Ans. 6.)
7. Corts disclosed
[A]ll the receiver knows how to do is render a multimedia
object as soon as it gets it. This multimedia object may be
wrapped in a markup language that is provided by the receiver
manufacturer. The markup language could carry header
information about the multimedia object such as screen position
or other display characteristics such as “on-demand,” where
supplemental digital data is stored by a receiver and is able to
be recalled as desired by a listener. In a digital copy set,
multimedia objects are stored in the display nodes.
(Corts 8: ¶ 120; Ans. 6.)
Appeal 2012-004534
Application 11/908,498

7
8. Corts also disclosed that a “receiver can interpret the ordering
and timing information in the digital copy set. . . . [T]he transmission
manager would send all of the data to the transmission system at time T+t0.
The receiver would wait for the whole file to be received before rendering.”
(Corts 9: ¶ 121.)
Principle of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.
Id. at 417. It is proper to “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. at 418. See also
id. at 421 (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”).

Analysis
We consider the rejections of claims 1–12 (I. & II.) together because
the same issue is dispositive for all these claims. (See App. Br. 14.)
Claim 1
Appellant contends that “[n]either reference cited teaches or suggests
the idea of including, in a single message file, both a content portion and a
Appeal 2012-004534
Application 11/908,498

8
header portion ‘including an instruction for a display device as to how to
display said message content.’” (App. Br. 11.)
We are not persuaded. Corts disclosed the use of multimedia files
containing “markup language [that] could carry header information about the
multimedia object such as screen position or other display characteristics”
(FF 7.) In addition, Corts disclosed that the receiver, a type of display
device, can wait to receive the entire file containing all the data before
rendering the information on the display (FF 8). As explained by the
Examiner, “Ikatura teaches [the production of] a message with both a
content portion and a header portion which contains a message attribute”
(Ans. 22; FF 3, 4.) In Ikatura the message that is received by the display
terminal from the content provider includes: “a message identification, a
message type which shows the type of the message, such as an earthquake
warning requiring emergency display or a particular message designated for
a particular display date, and the image data of the message” (FF 4
(emphasis added)).
Appellant is reminded that references cannot be read in isolation, but
for what they teach in combination with the prior art as a whole. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, Corts disclosed
including header information into a multimedia object (file); this includes
information about positioning the data on the display (FF 6–8). Ikatura on
the other hand disclosed that a message (file) contains data in addition to a
message identifier (FF 4). We agree with the Examiner’s position, that the
combination of references provides for the limitations of creating a message,
such as an advertising message, as well as providing instructions for
Appeal 2012-004534
Application 11/908,498

9
displaying the message on a display device and that this information is
incorporated into a file.
Accordingly, for the reasons discussed, we are not persuaded that the
Examiner failed to make out a prima facie case of obviousness. We affirm
the obviousness rejection of claim 1. Appellant does not separately argue
dependent claims 2–4 and 7. (See App. Br. 9–12.) Therefore, these claims
fall with claim 1. 37 C.F.R. § 41.37(c)(1). Because Appellant has waived
additional arguments with respect to Graham (App. Br. 14), we also affirm
the rejection of claims 6 and 8–12 based on Corts, Itakura, and Graham.

Claim 5
Appellant contends that “[n]one of the cited portions of Corts have to
do with a message setting interface in a display device for performing as
claimed.” (App. Br. 14.)
We are not persuaded. The Examiner notes that it is the combination
of Corts and Ikatura that renders claim 5 obvious. The Examiner finds that
“Ikatura teaches a display device separate from the computer system as
shown in Ikatura Figure 1, element 8, showing a display terminal separate
from the information provider, or computer system, element 4. . . . [The
message manager] retrieves the messages from storage and renders them on
the display device” (Ans. 23; see also FF 1–4.) Specifically, Ikatura
provides the terminal (a.k.a. the display device) that stores messages into the
memory (FF 4). “The display controller 18 displays the images
successively, starting from the first in the queue onto the display 8 every
predetermined time period” (FF 4). All the information needed for
Appeal 2012-004534
Application 11/908,498

10
displaying is incorporated into the memory of the display device. Ikatura
further provides that
[T]he display controller 18 determines whether the message has
been additionally received (S108) after setting (starting) the
display timer 21 (S107). . . . If the received message is an
emergency message, the emergency message is displayed on
the display 8 (S111) after the message being displayed in the
display 8 is returned to the top of the queue.
(Ikatura, col. 12, ll. 13–24.) Thus, Ikatura discloses managing the queue at
the point of the display device based on the receipt of additional passive
messages and reordering the queue accordingly.
Corts disclosed that in order to present information from a file queue
the multimedia objects can be sent to the receiver sequentially for immediate
rendering by the display device (FF 7). In other words, the organization of
the files in the queue can occur before the messages are even sent to the
display device. Corts, however, also disclosed an alternative use whereby
all the multimedia data objects can be sent to the receiver before rendering
the objects by the display (FF 8). Specifically, Corts disclosed that the
“receiver can interpret the ordering and timing information in the digital
copy set” (FF 8).
We agree with the Examiner’s position that the combination of
references provides for retrieving “the messages from storage [at the display
device] and render[ing] them on the display device” (Ans. 23). Accordingly,
we are not persuaded by Appellant’s contention with regards to claim 5.

Appeal 2012-004534
Application 11/908,498

11
III. The Issue: Obviousness over Corts, Itakura, and Arr
Does then preponderance of evidence of record support the
Examiner’s conclusion that the combination of references renders the claims
obvious?

Findings of Fact
9. Arr disclosed a “PDP [plasma display screen] advertising
system preferably comprises the PIAV [public internet venue system] a
screen 100, and is preferably a stand-alone PDP with the computer and
associated hardware built into the display unit of the PIAV screen 100.”
(Arr 5: ¶ 51; Ans. 14.) “The PIAV screen 100 is configured as a computer
monitor display with all electronics such as a CPU [central processing unit],
communications card, wireless ports, etc. integrated into the display unit of
PIAV screen 100.” (Arr 5: ¶ 52.)

Analysis
We consider the rejection claims 13–17, 20, and 24 (III. & IV.)
together because the same issue is dispositive for all these claims. (See App.
Br. 17.)
Claim 13
Appellant contends that “Corts does not teach or suggest ‘with a
display device mounted in a public place for displaying information,
receiving a message file comprising message content and a message
attribute’ for display on the display device, as claimed,” and that neither
Itakura nor Arr make up for that deficiency (App. Br. 15.)
Appeal 2012-004534
Application 11/908,498

12
We are not persuaded. As noted by the Examiner, Arr is relied upon
for the teaching of a display mounted in a public space (Ans. 24; FF 9). The
Examiner finds that display devices routinely contain at least cache memory
for data storage so that the digital information can be displayed (Ans. 25; FF
5).
We agree with the Examiner’s finding that Corts “teaches that the
message file may be stored in the display device, in that the audience is able
to receive digital data, such as message files, through devices such as
handheld information devices, cellular phones, billboards (i.e. public display
devices), and computers” (Ans. 26; see also FF 8). “The broadcaster’s
audience (‘consumer’) need not receive digital data through IBOC radio
receivers exclusively, but will also be able to receive digital data from
datacasters through other IBOC enabled devices such as handheld
information devices, cellular phones, billboards and computers which have
IBOC chips sets.” (Corts 27: ¶ 337.) Thus, Corts provides other venues for
receiving digital data. Furthermore, Itakura disclosed that information can
be stored at the point of the display terminal and explains that the terminal
can be a personal computer that is attached to a public network (FF 1, 4).
Arr provides that the display screen of the PIAV (public internet venue
system) is configured as a computer monitor display with all electronics
such as a CPU (FF 9).
Appellant is reminded that references cannot be read in isolation, but
for what they teach in combination with the prior art as a whole. See In re
Merck, 800 F.2d at 1091. Here, both Corts and Ikatura disclose storing
message files in the memory of the display device (FF 1, 4, 8). Arr
disclosed that the public display screen contains all the electronics of a CPU
Appeal 2012-004534
Application 11/908,498

13
and is configured as a computer monitor. Because Arr’s display screen
functions like a computer monitor there is a reasonable expectation of
success for rendering Corts or Ikatura’s passive advertising files on the
public display (FF 2, 9).
Accordingly, we see no error in the Examiner’s prima facie case of
obviousness. We affirm the obviousness rejection of claim 13 and 14.
Appellant does not separately argue dependent claim 24. (See App. Br. 14–
16.) Therefore, this claim falls with claim 13. 37 C.F.R. § 41.37(c)(1).
Because Appellant has waived additional arguments with respect to Kawai
(App. Br. 17), we also affirm the rejection of claims 15–17 and 20 based on
Corts, Itakura, Arr, and Kawai.

Claim 14
We recognize, but are not persuaded by, Appellant’s contention that
that Examiner has failed to point out where “the cited references actually
teach or suggest the claimed single file including both message content and a
message attribute.” (App. Br. 16.) Appellant has failed to identify any
evidentiary basis on this record that rebuts the Examiner’s reasoning that the
combination of Corts, Itakura, and Arr renders claim 14 obvious.
As noted by the Examiner, Ikatura “teaches that the message attributes
may include a message display time as well as various other display-related
criteria” (Ans. 25; FF 1–4). Ikatura provides that the message that is
received by the display terminal from the content provider includes: “a
message identification, a message type which shows the type of the message,
such as an earthquake warning requiring emergency display or a particular
message designated for a particular display date, and the image data of the
Appeal 2012-004534
Application 11/908,498

14
message” (FF 4 (emphasis added)). In addition, Corts provides that a
display device such as a “receiver can interpret the ordering and timing
information in the digital copy set. . . . [T]he transmission manager would
send all of the data to the transmission system at time T+t0. The receiver
would wait for the whole file to be received before rendering.” (FF 8; see
also FF 7.) We find no error in the Examiner’s conclusion that the
combination of references provides a file that includes content, such as
pictures, as well as instructions for displaying the content.
We affirm the obviousness rejection of claim 14.

V. The Issue: Obviousness over Itakura and Arr
The Examiner finds that “Itakura teaches a method of displaying an
advertising message[]” (Ans. 20), but acknowledges that Itakura does not
teach using “a display device mounted in a public place for displaying
information” (id.). The Examiner looks to Arr for teaching a “public display
device for storing and displaying advertising content” (id.).
Does the preponderance of evidence of record support the Examiner’s
conclusion that the combination of references discloses displaying an
advertising message in a display device mounted in a public place?

Analysis
We recognize, but are not persuaded by, Appellant’s contention that
that Examiner has failed provide for the limitation of “transferring a message
file comprising advertising content into a memory incorporated into said
mounted display device” as required by the claim (App. Br. 17, citing claim
25). Appellant has not identified any evidentiary basis on this record that
Appeal 2012-004534
Application 11/908,498

15
rebuts the Examiner’s reasoning that the combination of Itakura, and Arr
renders claim 25 obvious.
As noted above, Ikatura provides that the message that is received by
the display terminal into memory at the terminal from the content provider
includes: “a message identification, a message type which shows the type of
the message, such as an earthquake warning requiring emergency display or
a particular message designated for a particular display date, and the image
data of the message” (FF 4 (emphasis added)). Arr disclosed that the public
display screen contains all the electronics of a CPU and functions as a
computer monitor. Because Arr’s display screen functions like a computer
monitor and contains a CPU there is a reasonable expectation of success for
rendering Ikatura’s passive advertising images on the public display (FF 2,
9).
Accordingly, we affirm the obviousness rejection of claim 25.
SUMMARY
We affirm the rejection of claims 1 and 5 under 35 U.S.C. § 103(a)
over Corts and Itakura. Claims 2–4 and 7 are not separately argued and fall
with claim 1.
We affirm the rejection of claim 6 under 35 U.S.C. § 103(a) over
Corts, Itakura, and Graham. Claims 8–12 are not separately argued and fall
with claim 6.
We affirm the rejection of claims 13 and 14 under 35 U.S.C.
§ 103(a) over Corts, Itakura, and Arr. Claim 24 is not separately argued and
falls with claim 13.
We affirm the rejection of claim 15 under 35 U.S.C.
§ 103(a) over Corts, Itakura, Arr, and Kawai. Claims 16, 17, and 20 are not
Appeal 2012-004534
Application 11/908,498

16
separately argued and fall with claim 15.
We affirm the rejection of claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Itakura and Arr.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc