Ex Parte Moscovitch

Patent Trial and Appeal Board

Mar 16, 2016

11609532 (P.T.A.B. Mar. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/609,532 12/12/2006
54984 7590 03/17/2016
MASS ENGINEERED DESIGN INC
474 WELLINGTON STREET WEST
TORONTO, ON M5V-1E3
CANADA
FIRST NAMED INVENTOR
Jerry Moscovitch
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.
13US1US 1258
EXAMINER
GATLING, STACIE D
ART UNIT PAPER NUMBER
3622
MAILDATE DELIVERY MODE
03/17/2016 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 JERRY MOSCOVITCH
Appeal2013-008080
Application 11/609 ,532 1
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER,
and TARA L. HUTCHINGS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1, 4--12, and 14--20. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is Jerry Moscovitch.
(Appeal Br. 3.)
Appeal2013-008080
Application 11/609,532
CLAIMED SUBJECT MATTER
Appellant's claimed invention "relates to multi-screen display
systems, and in particular to a method and system for generating advertising
revenue using multi-screen display systems." (Spec. 1.)
Claims 1, 7, and 11 are the independent claims on appeal. Claim 1 is
representative and reproduced below:
1. A method of generating advertising revenue using a multi-
screen display system, the method comprising:
providing a multi-screen display system having a plurality
of screens;
dedicating an advertisement screen, chosen from the
plurality of screens, for showing an advertisement;
showing an advertisement on at least part of the
advertisement screen for at least some of the time the
advertisement screen is on or in use;
providing to an unauthorized user of the multi-screen
display system access to any part of the plurality of screens,
except the at least part of the advertisement screen during the at
least some of the time;
preventing the unauthorized user from replacing the
advertisement with other information on the at least part of the
advertisement screen; and
collecting revenue from an advertiser for showing the
advertisement.
REJECTIONS
Claims 1, 4--12, and 14--20 are rejected under 35 U.S.C. § 112, first
paragraph. 2
2 The Final Action only rejects the independent claims (claims 1, 7, and 11)
for failure to comply with the written description requirement. (Final
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Application 11/609,532
Claims 1, 4--12, and 14--20 are rejected under 35 U.S.C. § 101 as
being directed to ineligible subject matter. 3
Claims 1, 5-7, 11, 18, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Mowry (US 2001/0032131 Al, pub. Oct. 18, 2001)
and Ergotron. 4
Claims 4, 8-10, 12, 14--17, and 19 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Mowry, Ergotron, and Totham (US
2002/0194070 Al, pub. Dec. 19, 2002.)5
ANALYSIS
The § 112, first paragraph, Rejection
The Examiner rejects claim 1 under§ 112, first paragraph, because
"the limitation 'preventing the unauthorized user from replacing the
ad[ vertisement] ... ' is not supported in the applicants [sic] specification.
Action 2.) We consider the Examiner's omission of the dependent claims
(claims 4--6, 8-10, 12, and 14--20) to be inadvertent. (See id.)
3 Claims 2 and 13 are no longer pending in the application. (See Final
Action 1.) Therefore, we consider the Examiner's inclusion of claims 2
and 13 in the rejection (rejecting claims 1, 2, and 4--20) to be inadvertent.
(See Final Action 2-3.)
4 The reference designated as "Ergotron" consists of multiple undated pages
described by the Examiner as "www.ergotron.com, pages from the internet
archive (wayback machine) and a current webpage." (See Notice of
References Cited, mailed Nov. 14, 2008.)
5 Claim 13 is no longer pending in the application. (See Final Action 1.)
Therefore, we consider the Examiner's inclusion of claim 13 in the rejection
(rejecting claims 4, 8-10, 12-17, and 19) to be inadvertent. (See Final
Action 9.)
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Application 11/609,532
Para. 0007 and 0014 only recite that the unauthorized person is prevented
from removing the ad, not replacing the ad." (Final Action 2.)
Appellant argues that the Specification supports the amended
language because the Specification recites: "Only the holder of the
password would be authorized to remove, or in any way interfere with the
advertisement. (Summary, second paragraph, with emphasis added)."
(Appeal Br. 11.)
As an initial matter, we determine that to "replace" means to "to put
something new in the place of ."
http://www.merriam-webster.com/dictionary/replace, def. 3, last visited
Mar. 1, 2016. This interpretation is included in the broadest reasonable
interpretation. Removing or interfering is different from replacing. For
example, removing a painting from a wall or covering it is different from
replacing the painting as neither requires the additional step of putting a new
painting in its place.
Additionally, "preventing the unauthorized user from replacing the
advertisement," as recited in claim 1, does not prevent the unauthorized user
from removing or interfering with the advertisement. Thus, even though the
Specification recites that "[ o ]nly the holder of the password would be
authorized to remove, or in any way interfere with the advertisement,"
nothing Appellant points to in the Specification supports the current claim
language of "replacing." (See Spec. 2.)
Therefore, we affirm the Examiner's rejection of claim 1 under§ 112,
first paragraph. Because independent claims 7 and 11 contain similar
language, we also affirm the rejection of claims 7 and 11 under§ 112, first
paragraph. Because dependent claims include all of the limitations of their
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Application 11/609,532
respective independent claims, for the same reasons we affirm the rejection
of dependent claims 4--6, 8-10, 12, and 14--20. Of course, this Decision
does not prevent Appellant from continuing prosecution and amending the
claims as may be appropriate.
The § 101 Rejection
The Examiner rejects claims 1, 4--12, and 14--20 under§ 101.
Although the Examiner states that the claims "are held to claim an abstract
idea" (Final Action 2), the Examiner concludes that "the claims fails [sic] to
meet the [ § 101] requirements because the steps are neither tied to a
particular machine (such as an apparatus) nor physically transform
underlying subject matter (such as an article or materials) to a different state
or thing." (Final Action 3.)
The Final Action was mailed on January 18, 2012. This was after the
Supreme Court decided Bilski v. Kappas, 561 U.S. 593 (2010). Appellant
argues that, in view of Bilski, the Examiner erred by relying solely on the
machine-or-transformation test. (Appeal Br. 12.)
Although the Final Action lists factors "directed toward non-statutory
subject matter," the § 101 rejection is primarily directed toward application
of the machine or transformation test. However, in Bilski, the Supreme
Court held: "This Court's precedents establish that the machine-or-
transformation test is a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes under § 101.
The machine-or-transformation test is not the sole test for deciding whether
an invention is a patent-eligible 'process."' Bilski, 561 U.S. at 604; see also
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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Application 11/609,532
In view of the above, we determine that the rejection analysis
presented by the Examiner does not include a sufficient rationale to present a
prima facie case of ineligible subject matter under a proper § 101 analysis.
Therefore, we reverse the rejection of claim 1 under § 101. Because the
Examiner applies the same analysis to the remaining claims (see Final
Action 2--4), we also reverse the rejection of claims 4--12 and 14--20 under
§ 101.
The§ 103 Rejections
The Examiner rejects claim 1 under§ 103(a). The Examiner finds
that Mowry "discloses a system and method for providing out of home
visual advertisements" such that, for example, "a coffee shop may display
their beverages" while the monitor also displays banner advertisements in
the margins of the screen. (Final Action 5.) The Examiner also finds that
[ s ]ince the margins are formatted to show selected promotions,
this also shows that it cannot be changed by the site owners.
Hence the unauthorized user is the site owner, which [sic] is
provided with access to any part of the screen, except the part of
the advertisement screen during some of the time and prevents
the unauthorized user from removing the advertisement for the
purpose of displaying information other than the advertisement.
(Final Action 5---6, citing Mowry i-f 11.)
Appellant argues:
Mowry ... teaches that a first company may house a monitor for
displaying its own advertisements and some second company's
advertisements. Even if, for the sake of argument, the second
company's promotions "cannot be changed by the site owners"
(page 5, Examiner's office action dated 01/18/2012), this does
not imply that the site owner is prevented from replacing the
advertisement with other information on the at least part of the
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Application 11/609,532
advertisement screen while he or she is accessing the monitor. In
other words, there is a difference between not being able to
tamper with the contents of a promotion (for example, changing
the price of a particular item being promoted), and not being able
to replace the promotion with information related to some
altogether different purpose, such as information related to
personal emails or Internet surfing.
(Appeal Br. 14.)
In view of the Examiner's finding that Mowry teaches that an
unauthorized user is prevented "from removing the advertisement for the
purpose of displaying information other than the advertisement" (Final
Action 6), which Appellant does not dispute, we cannot agree with
Appellant that this does not imply that the unauthorized user cannot
"replac[e] the advertisement" (Appeal Br. 14). Returning to the painting
analogy, if one is prevented from removing the painting, one cannot put a
new painting in its place because the place is still occupied with the old
painting.
Appellant next argues that Ergotron's monitors "are proximal to one
another" and that "Mowry's invention, as the title suggests, is devoted to a
network of displays where the displays, and the viewers thereof, are remote
from one another." (Id.)
Although Mowry discloses a network with monitors potentially in
different stores, Appellant has not sufficiently explained why the Examiner
erred in determining that "[ o ]ne of ordinary skill could easily implement the
showing of Mowry ( 131) advertisements on Ergotron' s multi display
monitor system." (Answer 4.)
Thus, Appellant has not persuaded us that the Examiner erred in
rejecting claim 1 under§ 103(a). Because Appellant argues claims 1, 5, 6,
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11, 18, and 20 together, claims 5, 6, 11, 18, and 20 fall with claim 1.
See 37 C.F.R. § 41.37(c)(iv) (2012).
Appellant separately argues that claim 7 is nonobvious. Claim 7
recites (emphasis added):
7. A method for influencing a salesperson in a call center of
a distributor of a product, comprising
placing a multi-screen display system having a plurality of
screens in the call center of the distributor;
on at least part of one advertisement screen chosen from
among the plurality, showing an advertisement for a particular
brand of the product to a salesperson of the call center selling
the product to thereby encourage the salesperson to sell the
particular brand;
providing to an unauthorized user of the multi-screen
display system access to any part of the plurality of screens,
except the at least part of one advertisement screen during the
time the advertisement is showing; and
preventing the unauthorized user from replacing the
advertisement with other information on the at least part of the
one advertisement screen.
Appellant argues that at least the highlighted "steps are taught in
neither Mowry nor Ergotron, individually or in combination. In particular,
Mowry just teaches showing advertisements to members of the general
public to get them to buy a brand of product, not to distributor salespersons
to get them to sell a brand of product." (Appeal Br. 15.)
But obviousness is more than what is specifically disclosed in the
cited references. "If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability." KSR Int 'l. Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007). In this case, the Examiner determines that
it would have been obvious to one of ordinary skill in the art, at
the time the invention was made to modify Ergotron invention to
include the call centers ... taught by Mowry ( 131 ), for the benefit
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Application 11/609,532
of displaying advertisements ... to sales persons in order to show
ads for the particular product.
(Final Action 9; see also Answer 4--5.) Appellant does not explain why the
Examiner's determination that it would have been obvious to modify
Ergotron to include call centers is erroneous. (See Appeal Br. 15.)
Therefore, we are not persuaded that the Examiner erred in rejecting claim 7
under§ 103(a).
Claims 4, 8-10, 12, 14--17, and 19 are not argued separately except
based on their dependence on their respective independent claims. (Appeal
Br. 15.) Therefore, for the same reasons, we are not persuaded that the
Examiner erred in rejecting claims 4, 8-10, 12, 14--17, and 19 under
§ 103(a).
DECISION
The Examiner's rejection of claims 1, 4--12, and 14--20 under
35 U.S.C. § 112, first paragraph, is affirmed.
The Examiner's rejection of claims 1, 4--12, and 14--20 under
35 U.S.C. § 101 is reversed.
The Examiner's rejections of claims 1, 4--12, and 14--20 under
35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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