Ex Parte Lee

Patent Trial and Appeal Board

May 25, 2016

12129886 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/129,886 05/30/2008
23373 7590 05/27/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Moon-sang Lee
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ql07493 2910
EXAMINER
CAMPBELL, KELLIE L
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/27/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOON-SANG LEE
Appeal2014-000938
Application 12/129 ,886 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Moon-Sang Lee (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-3, 6-12, and 15-17. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
1 The Appellant identifies Samsung Electronics Co., Ltd. as the real party in
interest. App. Br. 2.
Appeal2014-000938
Application 12/129,886
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of auctioning an advertisement provided from a
server to a client, the method comprising:
receiving, by the server, bidding information from a
plurality of advertiser terminals connected to the server, the
bidding information including time information which indicates
the time when the advertisement will be displayed by the client;
selecting, by the server, one of the advertiser terminals
based on the time information included in the bidding
information; and
transmitting, by the server, advertisement content sent to
the client in response to a request of the selected advertiser
terminal,
wherein the client comprises an image display device,
and
wherein the bidding infonnation comprises position
information which indicates a position where the advertisement
content will appear on the image display device, wherein the
position on the image display device is designated by a user.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Numaoka
Postrel
Tingo, Jr.
US 2002/0111898 Al
US 2005/0149880 Al
US 2007/0105536 Al
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Aug. 15, 2002
July 7, 2005
May 10, 2007
Appeal2014-000938
Application 12/129,886
The following rejections are before us for review:
1. Claims 1-3, 6, and 9-12, and 15 are rejected under 35 U.S.C. §103(a)
as being unpatentable over Numaoka and Tingo, Jr.
2. Claims 7, 8, 16, and 17 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Numaoka, Tingo, Jr., and Postrel.
ISSUES
Did the Examiner err in rejecting claims 1-3, 6, and 9-12, and 15
under 35 U.S.C. § 103(a) as being unpatentable over Numaoka and Tingo, Jr.
and claims 7, 8, 16, and 17 under 35 U.S.C. §103(a) as being unpatentable
over Numaoka, Tingo, Jr., and Postrel?
ANALYSIS
The rejection of claims 1-3, 6, and 9-12, and 15 under 35 U.S.C. §103(a) as
being unpatentable over _l""lumaoka and Tingo, Jr.
The dispute is over whether Numaoka discloses the claim limitation
wherein the bidding information comprises position information
which indicates a position where the advertisement content will
appear on the image display device, wherein the position on the
image display device is designated by a user.
Said limitation is included in all three independent claims (claims 1, 9, and
10) on appeal.
The Examiner found said limitation disclosed at paras. 47, 58, and 59
ofNumaoka. See Final Action 8-9.
Numaoka describes an advertisement space information auction
process (para. 44) involving an advertisement space information
management server containing advertisement space information (para. 46).
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Appeal2014-000938
Application 12/129,886
Para. 4 7 describes examples of what the advertisement space information
may compnse:
for example, of [(a)] an identification information of the terminal
apparatus 3 [see Fig. 5] of the bidder who is interested in the
advertisement space, [ (b)] an identification information of the
advertisement space information management server 2B, [ ( c)] an
identification information of the advertisement space, [ ( d)]
current bid status information of the advertisement space, and
[ ( e)] information indicating winning bid terms and conditions for
the advertisement space.
Para. 4 7 further discloses that
[ ( c)] the identification information of the advertisement space
may further include [ ( c 1)] information relating to the
advertisement space such as contents to be inserted in its
advertisement, [( c2)] a type of insertion of the advertisement,
[(c3)] a title of the advertisement space, [(c4)] a date and time for
posting the advertisement, [ ( c5)] recipient addressees of the
advertisement, and [ ( c6)] the like.
Emphasis added.
According to the Examiner, Numaoka's disclosure of "a type of
insertion of the advertisement" satisfies the "position information" limitation
as claimed, i.e., "wherein the bidding information comprises position
information which indicates a position where the advertisement content will
appear on the image display device, wherein the position on the image
display device is designated by a user." See, e.g., App. Br. 18 (Claims App).
The difficulty with finding that "a type of insertion of the
advertisement" (Numaoka) satisfies "position information" (as claimed) is
that there is insufficient evidence showing that one of ordinary skill in the art
reading Numaoka' s disclosure of "type of insertion" would understand it to
cover the ''position where the advertisement content will appear on the
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Appeal2014-000938
Application 12/129,886
image display device, wherein the position on the image display device is
designated by a user" as claimed.
The Examiner finds that "the bidding information [ofNumaoka]
includes where the advertisement is inserted or superimposed." Answer 4
(citing para. 58). But Numaoka simply discloses "type of insertion." There
is no mention anywhere in Numaoka about "where" an advertisement is to
be inserted or superimposed. In fact, Numaoka appears to equate "type of
insertion" with "how" the advertisement is inserted, rather than "where" it is
inserted. See para. 58 ("With reference to FIG. 7, an example how an
advertisement is inserted into the contents is illustrated") (emphasis added)).
Numaoka' s disclosure of the phrase "type of insertion" is insufficient as
evidence to support the finding that the claim limitation "wherein the
bidding information comprises position information which indicates a
position where the advertisement content will appear on the image display
device, wherein the position on the image display device is designated by a
user" is disclosed in Numaoka.
We observe that the Examiner (see, e.g., Answer 6-7) construed said
claim limitation to cover, generally, a "point of insertion." See Answer 7
("The point where the advertisement is inserted or superimposed constitutes
position information."). But even if the claim phrase is, for argument's sake,
reasonably broadly construed to cover a "point of insertion," Numaoka
nevertheless does not disclose "bidding information [which] comprises [a
point of insertion] where the advertisement content will appear on the image
display device, wherein the [point of insertion] on the image display device
is designated by a user."
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Appeal2014-000938
Application 12/129,886
states:
Para. 58, which the Examiner relied on for support (see Answer 7),
FIG. 7 shows an example of advertisement spaces wherein a
specific object designated by the bidder as the advertisement
object is inserted or superimposed, for example, into a scene of
a movie. As shown in this example, an object 41 is displayed as
superimposed in one scene 40 of the movie as the advertisement
space relating to the auctioning performed by the auction
system 10.
But there is no mention there of a user designating the point of insertion for
the advertisement content on an image display device. Numaoka's
disclosure of an example of a type of insertion whereby "the advertisement
object is inserted or superimposed, for example, into a scene of a movie"
(see para. 58) is insufficient as evidence to support the Examiner's finding
that the claim limitation "wherein the bidding information comprises
position information which indicates a position where the advertisement
content will appear on the image display device, wherein the position on the
image display device is designated by a user" is disclosed in Numaoka, even
if "position information" is reasonably broadly construed to cover a point of
insertion.
For the foregoing reasons, we find that a prima facie case of
obviousness has not been made out in the first instance by a preponderance
of the evidence.
The rejection is not sustained.
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Appeal2014-000938
Application 12/129,886
The rejection of claims 7, 8, 16, and 17 under 3 5 U.S. C. § 103 (a) as
being unpatentable over Numaoka, Tingo, Jr., and Postrel.
The claims rejected here depend from independent claims whose
rejection above we have not sustained. Accordingly, for the same reasons,
the rejection of these claims is similarly not sustained.
CONCLUSIONS
The rejection of claims 1-3, 6, and 9-12, and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Numaoka and Tingo, Jr. is reversed.
The rejection of claims 7, 8, 16, and 17 under 35 U.S.C. § 103(a) as
being unpatentable over Numaoka, Tingo, Jr., and Postrel is reversed.
DECISION
The decision of the Examiner to reject claims 1-3, 6-12, and 15-17 is
reversed.
REVERSED
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