Ex Parte Nielsen

Board of Patent Appeals and Interferences

Jun 29, 2009

09966026 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL NIELSEN
____________
Appeal 2008-004422
Application 09/966,026
Technology Center 1700
____________

Decided:1 June 29, 2009
____________

Before, MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil action, as
recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this
page of the decision. The time period does not run from the Mail Date (paper
delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b). (2002).

SUMMARY OF DECISION
We AFFIRM IN PART.
THE INVENTION
Appellant claims a system and method for analyzing a self-service network,
selecting advertisements for self-service terminals, to a data warehouse and to a
self-service terminal. (Spec. 1:4-5).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method of selecting advertisements for display on and/or adjacent to a
plurality of self- service terminals comprising the steps of:
(a) collecting environment data related to the environment of each terminal
including the nature of businesses nearby the terminal;
(b) collecting transaction data indicating the type and time of transactions carried
out at the terminal; and
(c) storing the collected data in a data warehouse.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
De Leo US 6,381,626 B1 Apr. 30, 2002
“For Banks, ATM advertising could be right on the money.” Mark Calvey,
San Francisco Business Times, July 19, 1996.

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The following rejections are before us for review.
The Examiner rejected claims 1, 2, 4, 7 - 9, 11, 14 - 17, 19 - 22, and 24 - 29
under 35 U.S.C. § 102, based on De Leo.
The Examiner rejected claims 3, 5, 6, 10, 12, 13, 18, and 23 under 35 U.S.C.
§ 103, based on De Leo and Calvey.
ISSUES
Has Appellant shown that the Examiner erred in rejecting claims 1, 2, 4, 7 -
9, 11, 14 - 17, 19 - 22, and 24 -29 on appeal as being unpatentable under 35 U.S.C.
§ 102(e) on the grounds that a person with ordinary skill in the art would
understand that the disclosure in De Leo of “an advertisement for a local fast food
establishment” generated by a nearby ATM would be the result of collecting
environment data related to the environment of that terminal including the nature
of businesses nearby the terminal?
Has Appellant shown that the Examiner erred in rejecting claims 1, 2, 4, 7 -
9, 11, 14 - 17, 19 - 22, and 24 -29 on appeal as being unpatentable under 35 U.S.C.
§ 102 (e) on the grounds that a person with ordinary skill in the art would
understand that the disclosure in De Leo of using the configuration files to generate
messages based on transaction data to generate targeted messages at an ATM using
net worth information of users’ account data means that it is inherent that the
system in De Leo must have first collected data related to the transaction history of
the transaction data to effect the time targeted message?
Has Appellant shown that the Examiner erred in rejecting claims 3, 5, 6, 10,
12, 13, 18, and 23 on appeal as being unpatentable under 35 U.S.C. § 103(a) over
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on the grounds that a person with ordinary skill in the art would understand that De
Leo could be modified to include the advertisement effectiveness measurement
feature of Calvey to better target advertisements to its users?

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).

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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found that the De Leo et al. reference is directed to location
based targeted advertising which requires knowledge of the location of the terminal
and the nearby business in that
“… De Leo et al. teach the feature of displaying a
promotion for a fast food restaurant at during lunch hours
and a motion pictures during the evening hours - see col
5, lines 26-36 (there would be no point in displaying a
promotion to a restaurant that is not nearby or a movie
that is not shown at a nearby movie theater during a
specific time window of a few hours). (Ans. 13).
2. De Leo discloses “… a message file promoting a fast-food restaurant may
be displayed during the period 11 AM to 2 PM to promote lunch trade, while a
message file promoting a motion picture may be selected in the period 4 PM to 8
PM. (De Leo, col. 5, ll. 26-30).
3. The Examiner further found that “[t]he localized feature is further taught
as De Leo et al. recites that "an advertisement for a local fast food establishment
can have an associated coupon for a daily meal discount" (col. 6, ll. 53-55).” (Ans.
13).
4. De Leo discloses that
…commercial message delivery can be specific and
delivered to a user who is paying attention to the monitor.
The display of messages to the user is recorded by the
ATM 18 in the form of a detailed "play log." The play
log can include detailed reporting regarding each non-
transaction message including the time, location,
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customer demographics, and other such information
related to the display of the message. The play log data
can be provided to the message processor 28 for purposes
of reporting and billing to a sponsor of the message.
Such a detailed reporting log is useful to the sponsor in
judging the performance of the non-transaction messages.
(De Leo, col. 8, ll. 32-42).
5. The Examiner found De Leo discloses two types of data, 1. the type
which drives advertisements, such as, "an advertisement for a local fast food
establishment can have an associated coupon for a daily meal discount" (FF 3), and
2. transactional data. (Answer 13,14)
6. De Leo defines
Transaction data, as used herein, refers to digital data
relating to the primary transaction requested by the user.
Typical transaction data would include data read from the
banking card, debit card or credit card of a terminal user;
data entered by a user, such as e PIN number, transaction
type, transaction amount, etc. and data sent by the host 12
relating to the transaction, such as requests for further
information regarding selection of an account, regarding
a usage fee, transaction approvals or transaction denial
messages and responses to such requests. (De Leo, col. 3,
ll. 66- col. 4, l. 7).
7. The Examiner found that “…De Leo et al. teach the feature of database
storage by the host system (col. 4, ll. 53-60) and collection of data such as
"message files, configuration files and transaction data" (col. 8, ll. 44-45) and
"play-log" to be used for accounting purposes (col. 8, ll. 39-43).” (Ans. 13).
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8. De Leo discloses collecting of transaction data in that this data is
both organized in router 24 and sent to terminals 18 preferably by satellite
transmitter/receiver 30 (De Leo, col. 8, ll. 63-67).
9. De Leo further discloses using the configuration files to generate
messages based on transaction data. (De Leo, col. 5, ll. 43-45).
10. The transaction based messaging in De Leo causes a selection to be
made “…on the basis of data known to the host or issuer such as account balance.
Accordingly, the host or issuer can identify the terminal user as high net worth
individual and provide a demographically targeted non-transaction message
promoting luxury automobiles….” (De Leo, col. 5, ll. 46-66)
11. The Examiner found that De Leo discloses collecting advertising data
which describes the type and content of one or more advertisements displayed:
…De Leo et al. teach a targeted advertising system which
includes various parameters such as "time, location,
customer demographics" that are collected via a "play-
log" which are then used in the "billing a sponsor of the
message" (see col 8, lines 29-43) thus a history of
advertisement displayed is created in order to bill the
proper sponsors. Furthermore, De Leo et al. teach the
features of cycling the advertisements to specific times
and locations (col 5, lines 53-55) and updated
configuration files (col 6, lines 7-23) which are based on
a history of advertising data being collected. (Ans. 14).
12. The Examiner found that De Leo discloses at least near real time
collecting and storing in that:
De Leo et al. teaches the use of advertising targeted to
specific transactions; thus, the collection of data is
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deemed to be in "real- time" since the data regarding the
occurring transaction has to be collected in order to select
the targeted advertising to be shown in course of the
customer's interaction with the ATM (col 5, lines 44 to
col 6, line 7). (Ans. 15).
13. The Examiner further found that the claim language is "in real time or
near real time" in line 2 (emphasis added by the Examiner) with "near real time"
being defined in the Specification as "possibly with a lag of a few hours" (p. 2, ll.
20-22). (Ans. 15.)
14. The Examiner found with regard to claim 29 that
Leo et al. teach a targeted advertising system which
includes various parameters such as "time, location,
customer demographics" that are collected via a "play-
log" (see col 8, lines 29-43). Thus the collected data are
queried during the advertising selection process to a data
warehouse. De Leo et al. teach the feature of database
storage by the host system (col 4, line 53-60) and
collection of data such as "message files, configuration
files and transaction data" (col 8, lines 44-45) and "play-
log" to be used for accounting purposes (col 8, lines 39-
43). The features of showing specific advertisements to
specific times and locations, updated configuration files
and selection of a transaction-based advertisement are
commensurate with the data warehouse functions defined
by Appellants. (Ans. 16-17).
15. Calvey discloses that

[i]t's become a common practice for smaller companies
to establish relationships with banks to advertise in some
form with ATMs," said Carolyn Bretschneider, a
spokeswoman for Visa International in Foster City.
Visa owns the Visa/Plus ATM network, but the 280,000
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machines in the network are owned by the banks.
BankAmerica is touting Lucky's daily specials at ATMs
located inside the supermarket. The Lucky promotions
are found on-screen and on receipts. (Cavley, p. 1 ¶¶3,4)
16. The Examiner found that De Leo teaches an implementation of the
targeted advertising system on various networks (col 5, lines 1-7). (Ans. 24).
17. The Examiner found that Calvey teaches that it is known to determine
the effectiveness of displaying advertising material (Ans. 10), in that
"ATM advertising is location specific. If a fast-
food restaurant is not within site distance or at most one
or two miles, it won't be effective," he said.
A Subway restaurant, which notes on its ATM
coupon that it's located two doors down from the
machine, gets a response rate of 10 percent to 15 percent,
Pidgeon said. On average, the bank's ATM coupons have
a 4 percent to 8 percent response rate. (Calvey, p. 2,
¶¶8,9)
18. The Examiner found with respect to claim 13 that
De Leo et al. teaches the variables of the frequency
of the display of an advertisement, the content of the
advertisement and the timing during the day (col 5, lines
19 - 43). In an analogous art, Calvey teaches that it is
known to determine the effectiveness of displaying
advertising material as set forth in page 1, § 8 and 9 to
better estimate the efficiency of the advertisement shown.
Therefore, it would have been obvious to one having
ordinary skill in the art at the time the invention was
made to modify the method as taught by De Leo et al.,
with measuring the effectiveness of displaying
advertisements as taught by Calvey. (Ans. 11).
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ANALYSIS
We sustain the rejections of claims 1-6, 9-13, 16-18, 21-23, 26-29 and do not
sustain the rejection of claims 7, 8, 14, 15, 19, 20, 24 and 25.
The Rejection of Claims 1, 2, 4, 7 - 9, 11, 14 - 17, 19 - 22, and 24 - 29 under
35 U.S.C. § 102
Claims 1, 9 and 22

Appellant argues claim 1 as representative which recites in pertinent part:
(a) collecting environment data related to the environment of each terminal
including the nature of businesses nearby the terminal.
The Examiner found that De Leo is directed to location based targeted
advertising which requires knowledge of the location of the terminal and the
nearby business because “there would be no point in displaying a promotion to a
restaurant that is not nearby or a movie that is not shown at a nearby movie theater
during a specific time window of a few hours.” (FF 1).
Appellant however maintains that although the collecting feature may be
implicit in De Leo, the Examiner “…Answer's assertion is highly dubious, because
advertising is done for many different reasons.” (Reply Br. 4). We disagree with
Appellant. Stating that different reasons may exist for why a local advertisement is
being shown does not prove that the prior art product does not necessarily or
inherently possess the characteristics of the claimed product. In re Best, 562 F.2d
1252, 1255 (CCPA 1977). The fact that another reason might exist for presenting
“an advertisement for a local fast food establishment” does not diminish the fact
that the ATM advertisement targeted a local establishment over the universe of
other establishments thus functioning like that of Appellant’s. We thus find that in
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order for the De Leo ATM to present an advertisement, such as, a local fast food
establishment to a user, it must have first collected environment data related to the
environment of the involved terminal including the nature of businesses nearby
i.e., the local fast food establishment. “[I]f the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates.” In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and
internal quotation marks omitted).
Appellant contends that “… the latter type of data (that describing nearby
businesses) [which the Examiner asserts] is present in De Leo in the
advertisements which the terminals display…. creates a problem in dependent
claims, which state that the "data" is used to select advertising.” (Reply Br. 4-5).
We disagree with Appellant because the Examiner found that there are two distinct
types of data which are disclosed by De Leo, namely, 1. a type which drives
advertisements, such as, an advertisement for a local fast food establishment can
have an associated coupon for a daily meal discount, and 2. transactional data. (FF
5, 6). Thus, we do not find error in the Examiner’s interpretation of De Leo and
the rejection of claims 1 and 22.
Claims 2 and 17
Claim 2 recites in pertinent part:
(d) collecting advertising data which describes the type and content of one
or more advertisement displayed on or adjacent to the terminal at particular times.
The Examiner found that De Leo discloses this limitation in his disclosure of
the play log. (FF 7). Appellant however argues that 1. the play log “… does not
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correspond to the "transactions" recited in the claim, which clearly refer to a
customer's ATM transactions and 2. “…claim 2, in effect, states that a history of
the type of advertising previously displayed is created.” (App. Br. 23, 24). We
disagree with Appellant because 1. nowhere in claim 2 is the collected information
tied to transaction data, and 2. the play log is disclosed as a log of advertising and
by virtue of the message itself being stored, not to mention the other descriptive
attributes of data which are also stored, such as, customer demographics (FF 4, 7),
it includes data containing type and content of one or more advertisement
displayed on or adjacent to the terminal at particular times.
Appellant asserts that “claim 17, in effect, recites creating a history of
advertising displayed at the terminal.”(App. Br. 34). However, the Appellant’s
arguments “fail from the outset because . . . they are not based on limitations
appearing in the claims . . .,” and are not commensurate with the broader scope of
claim 17 which merely recites holding advertising data. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).

Claims 4, 11, and 16
Claim 4 recites in pertinent part wherein the data is collected and stored in
real time or near real time.
The Examiner found that the term “real time” means "possibly with a lag of
a few hours." (FF 13). We find that De Leo discloses recording the display of
messages by the ATM 18 in the form of a detailed "play log" such that the play log
data can be provided to the message processor 28 for purposes of reporting and
billing to a sponsor of the message (FF 13). We find that such a recording process
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reasonably would need to be accomplished at least within a few hours of the
transaction because the buffering requirements for such un-stored data would be
too great to handle in an ATM device.
Appellant likewise argues that claim 16 distinguishes from De Leo because
De Leo states that the "configuration file" is updated, and a time delay occurs
before a new "configuration file" becomes active and thus "configuration files" are
sent out on a "periodic basis." (Ans. 34). We disagree with Appellant. Claim 16
alternatively recites “or real time” which the Specification describes as meaning
“possibly with a lag of a few hours." We find it reasonable to interpret De Leo as
periodically updating the configuration file at least every two hours given that the
device involves banking which is already is based on instantaneous reporting of
account transaction data.
Claims 7, 14, 19 and 24
Representative claim 7 recites in pertinent part (e) querying the data
warehouse to determine which terminals are located on sites at which a selected
business activity is carried out; and (f) selecting an advertisement for display
which includes content related to that business activity.
The Examiner maintains that since De Leo teaches the feature of database
storage by the host system, and collection of data such as "message files,
configuration files and transaction data" and "play-log" used for accounting
purposes, these features “are commensurate with the data warehouse functions
defined by Appellants.” (Ans. 16-17).
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However, De Leo fails to explicitly disclose querying the data warehouse to
determine which terminals are located on sites at which a selected business activity
is carried out, and the Examiner’s explanation falls short of such. That is, the
claim requires something different from the Examiner’s articulate reasoning of
“there would be no point in displaying a promotion to a restaurant that is not
nearby or a movie that is not shown at a nearby movie theater during a specific
time window of a few hours.” (FF 1). This is because the claim requires that the
business activity is used as the metric for the search, rather than using the location
of the ATM for the search as the Examiner’s logic suggests, we cannot sustain the
rejection of claims 7, 14, 19 and 24 under 35 U.S.C. § 35 U.S.C. § 102 (b).
Claims 8, 15, 20, 25
Claim 8 recites (e) querying the data warehouse to calculate a statistical
distribution of the frequency of different transactions occurring at a terminal; and
(f) selecting an advertisement for display at the terminal dependent on the
statistical distribution.
The Examiner maintains that because
De Leo teaches showing advertisement depending on the
current transaction and requirement of the sponsors, a
statistical distribution is implied since a frequency
parameter is needed. Furthermore, a reasonable
interpretation of a statistical distribution includes a range
value of 0 to 1 thus the selection of the ad based on the
type of transaction (thus having a value of 1) is construed
as meeting the claim limitation. (Ans. 17).
We do not agree with the Examiner because it is not apparent from De Leo
that the ATM uses a range of 0 to 1 and necessarily functions in accordance with,
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or includes, the claimed limitation of calculating a statistical distribution of the
frequency of different transactions occurring at a terminal; and (f) selecting an
advertisement for display at the terminal dependent on the statistical distribution.
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). We
therefore cannot affirm the rejection of claims 8, 15, 20 and 25.
Claims 21, 26, 27 and 28
Claim 21 recites in pertinent part, means for determining which transactions
occur at one or more terminal within a predetermined time period of a public event
or a sporting event.
Appellant seeks an explicit disclosure in De Leo of “-- the claimed
"transactions" which are determined (i.e., identified); -- the claimed
"predetermined time;" and -- the "event." (App. Br. 35).
As found supra, De Leo discloses “… a message file promoting a fast-food
restaurant may be displayed during the period 11 AM to 2 PM to promote lunch
trade, while a message file promoting a motion picture may be selected in the
period 4 PM to 8 PM. (FF 2). De Leo further discloses using the configuration
files to generate messages based on transaction data. Since, De Leo discloses
targeting predetermined time periods, 11AM-2PM/4PM-8PM, of public events,
restaurants/movies, and generating messages based on the transaction data, it is
inherent that the system in De Leo must have first collected data related to the
transaction history of the transaction data to effect the time targeted message. “[I]f
the prior art necessarily functions in accordance with, or includes, the claimed
limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349
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(Fed. Cir. 2002) (citations and internal quotation marks omitted).
Claim 27 recites in pertinent part, means for sending information to the
network which identifies which transactions are occurring at the terminal and at
what time they occur. For the reasons set forth above regarding claim 21 we
affirm the rejection of claim 27. Appellant further argues that because in De Leo
the host already knows what transactions are occurring at the ATM,
“[c]onsequently, there
is no reason for the ATM to transmit the claimed ‘information’ to the host.” (App.
Br. 37, 38). We disagree with Appellant. Appellant’s admission that the host has
knowledge of the on-goings of the ATM because it controls it, by definition means
that the data is somehow accounted for by the host, e.g., sent to it from the ATM,
because these are two separate devices (FF 8).
Claims 26 and 28 are argued against by Appellant for the same reasons as
forth for claims 21 and 27, respectively, and hence we sustain the rejection of these
claims for like reasons.
Claim 29
Appellant argues that a prima facie case has not been established because the
Examiner has not identified where De Leo discloses “--the claimed "database;"
-- the claimed data, stored in the database, about "transactions" and the
"advertising" displayed with those "transactions;" and --the claimed "querying."
(Ans. 39).
While the Examiner has not set forth an accounting of elements in an easy
to recognize format, we nevertheless find that a proper finding of the requested
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elements was made by the Examiner. Specifically, the Examiner found that De
Leo discloses a host system database or data warehouse2 which stores the
messages sent to the ATMs (FF 4, 14). The Examiner further found that the
system also uses a play log having parameters such as "time, location, customer
demographics" which collects/stores information on the messages played (FF 4,
14). As found supra in our analysis of claim 21, we found that the host system
inherently stores transactional data in order to use the configuration files to
generate messages based on transaction data (FF 9). We further find that
generating such transaction based data messaging must inherently be based on
some analysis of the host system database involving a query, e.g., money in a
given account is queried and a corresponding message on a car commensurate with
the account balance is sent (FF 10). We thus affirm the rejection of claim 29.
Claims 3, 5, 6, 10, 12, 13, 18, and 23 rejected under 35 U.S.C. § 103, based
on De Leo and Calvey.
Claims 3 and 10
Claim 3 recites in pertinent part wherein the plurality of terminals are
distributed across more than one deployer network. Appellant argues that claim 3
requires that the terminals in both networks perform those actions of claim 1. (App.
Br. 40). Assuming this interpretation to be correct, there is still no argument by
Appellant that the proposed combination prohibits this from happening. Rather,

2 The Examiner also found that the Specification only broadly uses the term "data
warehouse" to broadly refer to a storage means which is able to store data in such a
manner that it is easily and quickly accessible in real time. (Ans. 16).

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Appellant is attacking the Calvey reference individually when the rejection is
based on a combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Young, 403 F.2d 754, 757-58 (CCPA 1968). The Examiner has
properly articulated a basis for making the combination finding that De Leo
teaches an implementation of the targeted advertising system on various networks
(FF 16). This would reasonably support the Examiner’s analysis that more diverse
groups of users, such as those who use VISA®, or Bank of America®, could have
access to the De Leo system. Hence, we are not persuaded of error in the
Examiner’s prima facie case.
Appellant next argues that claim 1 recites a “single ‘data warehouse.’” (App.
Br. 41). However, the Appellant’s arguments “fail from the outset because . . .
they are not based on limitations appearing in the claims . . .,” and are not
commensurate with the broader scope of claim 1 which only uses the indefinite
article a data warehouse and not the word single. In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Appellant also argues that “[n]o valid teaching has been given in favor of
combining the references.” (App. Br. 41). However, the Examiner has properly
articulated a basis for making the combination finding that De Leo teaches an
implementation of the targeted advertising system on various networks (FF 16).
We consider the disclosure of a system useable with various networks to be
reasonable support for broadening markets, and hence we are not persuaded of
error in the Examiner’s prima facie case.
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Even still, to the extent Appellants seek an explicit suggestion or motivation
in the reference itself, this is no longer the law in view of the Supreme Court’s
recent holding in KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
Appellant re-asserts the arguments used for claim 3 in support of claim 10,
the rejection for which we do not sustain, and thus do not sustain the rejection of
claim 10.
Claim 5
Claim 5 recites in pertinent part, e) querying the data warehouse to
determine the relationship between the effectiveness of an advertisement and the
terminal on or adjacent which it is displayed.
Appellant argues that the Office Action “…has not shown the particular
method claimed in making the assessment (ie, storing data from terminals in a data
warehouse, and querying the warehouse.)” (App. Br. 46). We disagree with
Appellant.
As found supra, with respect to claims 4 and 21, De Leo discloses both
storing data from terminals in a data warehouse, and querying the warehouse.
With respect to the recited goal of determining the effectiveness of an
advertisement, we find that De Leo discloses causing a message selection to be
made “…on the basis of data known to the host or issuer such as account balance
to provide a demographically targeted non-transaction message such as promoting
luxury automobiles.” (FF 10). As such, we find that De Leo discloses an
effectiveness determination in that it only matches accounts which would be
effective in purchasing an item of comparable value.
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Appellant next argues that “…there is nothing present in the claimed ‘data
warehouse,’ supposedly found in the references, which tells how many people used
the coupons.” (App. Br. 47). We disagree with Appellant because Appellant’s
arguments are not based on limitations appearing in the claims . . .,” and are not
commensurate with the broader scope of claim 5 which merely recites querying the
data warehouse to determine the relationship between the effectiveness of an
advertisement and recites nothing about any coupon redemption. In re Self, 671
F.2d 1344, 1348 (CCPA 1982).
In light of the breadth of the claim, the Appellant’s argument is not
persuasive as to error in the rejection.
Claims 6, 18 and 23
Claim 6 recites in pertinent part wherein the effectiveness of an
advertisement is measured by determining how often the display of an
advertisement on or adjacent a terminal is substantially coincident with a
transaction which is related to the advertising content, being initiated by a user
at that terminal. The Examiner found that Calvey teaches that it is known to
determine the effectiveness of displaying advertising material because Calvey
discloses that ATM advertising is location specific and “[i]f a fast-food restaurant
is not within site distance or at most one or two miles, it won't be effective…." (FF
17). Furthermore, the we find that Calvey discloses measuring effectiveness in
that a SUBWAY® that is located two doors down from an ATM gets a response
rate of 10 percent to 15 percent form its ATM delivered coupons whereas, on
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21
average, the bank's ATM coupons have a 4 percent to 8 percent response rate. (FF
17).
Appellant argues however that the recited “coincident” refers to nearness of
time and not spatial nearness. (App. Br. 48). We disagree with Appellant because
Appellant’s arguments is not based on limitations appearing in the claims because
the broader scope of claim 6 which merely recites substantially coincident which
would include spatial coincidence. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
In light of the breadth of claim 6, the Appellant’s argument is not persuasive
as to error in the rejection.
Appellant re-asserts the arguments used for 6 in support of claims 13, 18,
and 23, which we found unpersuasive.
Claim 12
Claim 12 recites in pertinent part (d) querying the data warehouse to
determine the relationship between the effectiveness of an advertisement and the
terminal on or adjacent which it is displayed. Appellant argues that has not been
shown in the references. (App. Br. 50). We disagree with Appellant. As discussed
above with respect to claim 5, De Leo discloses querying the accounts database to
establish an effectiveness relationship between transaction data and a message (FF
10). Calvey discloses analyzing an ATM location with reference to a local
business e.g., a SUBWAY® store. A person with ordinary skill in the art would
thus know to query the host database in De Leo to determine a relationship
between a restaurant location and that of a terminal. We therefore conclude
Appellant has failed to show error in the Examiner’s prima facie case.
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Claim 13
Claim 13 recites in pertinent part the effectiveness of an advertisement is
measured by determining how often the display of an advertisement on or adjacent
a terminal is substantially coincident with a transaction which is related to the
advertising content, being initiated by a user at that terminal.
Appellant asserts that claim 13 requires coincidence between (i) display of
advertising and (2) a transaction relating to the advertising and this has not been
shown. We disagree with Appellant. The Examiner found with respect to claim 13
that the combined teachings of De Leo and Calvey result in the features of claim
13 (FF 18). It is not apparent, and Appellant has not cogently explained, why this
combination fails to show the enumerated features of claim 13 except for a general
assertion to the contrary. We thus conclude Appellant has failed to show error in
the Examiner’s prima facie case of the rejection of claim 13.

CONCLUSIONS OF LAW
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 1, 2, 4, 9, 11, 16, 17, 21, 22, 26, 27, 28 and 29 under 35 U.S.C.
§ 102, based on De Leo and has shown that the Examiner erred in rejecting claims
7, 8, 14, 15, 19, 20, 24 and 25 under the same rejection.
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 3, 5, 6, 10, 12, 13, 18, and 23 under 35 U.S.C. § 103, based on De
Leo and Calvey.
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23
DECISION
The decision of the Examiner to reject claims 1-6, 9-13, 16-18, 21-23, 26-29
is AFFIRMED.
The decision of the Examiner to reject claims 7, 8, 14, 15, 19, 20, 24 and 25
is REVERSED.
AFFIRMED-IN-PART

JRG

MICHAEL CHAN
NCR CORPORATION
1700 SOUTH PATTERSON BLVD
DAYTON, OH 45479-0001