Ex Parte Schrader

Board of Patent Appeals and Interferences

Aug 28, 2009

10251118 (B.P.A.I. Aug. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID K. SCHRADER
____________
Appeal 2009-009098
Application 10/251,118
Technology Center 3600
____________

Decided: August 31, 2009
____________

Before, HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU MOHANTY,
Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b). (2002)
SUMMARY of DECISION
We AFFIRM.

Appeal 2009-009098
Application 10/251,118

to
marke
laim 1, reproduce below, is representative of the subject matter on
appea
rovider through an interactive
uding at least one feedback response
ning
said advertisement to said ad provider through said interactive channel.

iner relies upon the following as evidence of
unpate
y
hang US 2003/0014754 A1 Jan. 16, 2003

THE INVENTION
Appellant claims a method for gathering consumer feedback
advertisements presented through interactive channels and altering
ting campaigns in response to consumer feedback. (Spec. 1:5-8).
C
l.
1. A method for obtaining feedback from consumers receiving an
advertisement from an ad provided by an ad p
channel, the method comprising the steps of:
creating a feedback panel incl
concerning said advertisement; and
providing said feedback panel to said consumers, said feedback panel
being activated by a consumer to provide said feedback response concer
THE REJECTIONS
The Exam
ntability:
Rogatinsk US 2002/0069119 A1 Jun. 6, 2002
Connelly US 2002/0143607 A1 Oct. 3, 2002
C

2
Appeal 2009-009098
Application 10/251,118

3
1-12 under 35 U.S.C. § 101 as failing to
claim

§ 103(
tentable over Connelly in view of Rogatinsky, and further in view
of Chang.

t

The following rejections are before us for review.
The Examiner rejected claims
patent-eligible subject matter.
The Examiner rejected claims 1-4, 7, and 9-12 under 35 U.S.C.
a) as being unpatentable over Connelly in view of Rogatinsky.
The Examiner rejected claims 5, 6 and 8 under 35 U.S.C. § 103(a) as
being unpa
ISSUES
Has Appellant shown that the Examiner erred in rejecting claims 1-12
on appeal as being unpatentable under 35 U.S.C. § 103(a) over Connelly in
view of Rogatinsky on the grounds that a person with ordinary skill in the ar
would understand that: 1. Rogatinsky discloses obtaining feedback on print
media by disclosing a. “preferably through a series of questions and answers
via a global communications network” and b. that the print media on which
feed back is based is advertisement; and 2. that Connelly discloses sending
product descriptive data to clients and the clients respond with feedback
data?
hat a
Has Appellant shown that the Examiner erred in rejecting claims 1-12
on appeal as being unpatentable under 35 U.S.C. § 101 on the grounds t
person with ordinary skill in the art would understand that the claimed
Appeal 2009-009098
Application 10/251,118

4
process of claim 1 recites patentable subject matter under § 101 in that it is
tied to a particular mac

e
h said
lled
ile th sequence of these
questi
chine
or apparatus, or (2) it transforms a particular article into a different state or
thing. In re Bilski, 545 F.3 2008) (en banc).
hine or apparatus.
PRINCIPLES OF LAW
“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 th
invention was made to a person having ordinary skill in the art to whic
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-ca
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S.Ct. at 1734 (“Wh e
ons might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
The test to determine whether a claimed process recites patentable
subject matter under § 101 is whether: (1) it is tied to a particular ma
d 943, 961-62 (Fed. Cir.

Appeal 2009-009098
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5

dback panel can be as
simple
the
recisely gaug[es] consumer interest in an
advert
g.
ppellant’s Specification does not specifically define the term
“adve
ide Web, Interactive Television, and self
servic
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Specification describes that [t]he fee
as “I’m not interested” or can provide a variety of pre-planned
responses or open-ended answers. (Spec. 8:6-8).
2. The Specification describes customer satisfaction as a goal of
Appellant’s method e.g., “…collecting "negative" feedback from ad
recipients … thereby more p
isement or product is desired by ad providers, distributors and
businesses.” (Spec. 3:7-9).
3. Appellant’s Specification does not specifically define the term
“activate”, nor does it utilize the term contrary to its customary meanin
4. A
rtisement”, nor does it utilize the term contrary to its customary
meaning.
5. Merriam Webster’s Collegiate Dictionary Tenth Edition defines
“advertise” inter alia as: to make something known.
6. The Specification describes interactive channel in the context of
“…the Internet and World W
e devices, such as Information Kiosks and Automated Teller Machines
(ATMs).” (Spec. 7: 8-11).
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6
7. Connelly discloses “the broadcast center server receives a request
to provide product feedback including product description data from a
c nteno t provider….” ¶[0028].
8. Co is sent to nnelly discloses that the product descriptive data
clients and the clients responds with feed back data. ¶[0018]
9. Co a nnelly discloses product description data such that if
product is a movie, feature, short, television,
program, and the like, product description data
may include fields and values like those illustrated
in FIG. 2A. The fields may include a kind 200,
title 202, episode, one or more categories 204, one
or more stars 206, one or more directors 220, one
or more writers 222, one or more producers 224,
language 226, subtitles 228, color 230, runtime
232, one or more plot descriptors 234, one or more
key scenes 236, music 250, and one or more
related products 260. ¶[0019]
10. Connelly discloses that:
clients are capable of responding to product
description data with feedback data. In one
embodiment, the feedback data may simply be a
simple request for the product described in the
description data. In this embodiment, the feedback
data may include a product identifier of some kind,
or product identifying data, paired with a request.
In another embodiment, or in response to a request
to provide more detailed feedback data, the
broadcast center server may receive feedback data
270. In this embodiment, for each field, sub-field,
etc. of the description data, the feedback data 270
includes a rating 272, and, in some embodiments,
relevance data 274 and believability data 276. In
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7
one embodiment, the relevance data 274 and
believability data 276 may be represented as
vectors, such that they range from -10 to +10. In
this way the broadcast center server may determine
not just whether a consumer at the client prefers a
product, but may also deduce the particular reasons
based on the feedback data associated with
particular product attributes as delineated by the
fields. In various embodiments, one, or both of the
relevance and believability values may be used
with the rating value. ¶[0024]
11. Rogatinsky discloses obtaining feedback on print media
“preferably through a series of questions and answers via a global
comm
12. T ased is
advertisemen
13. T
skill
nter server and
Rogatinsky's media interaction technique because
a marketer would want to ask more than one
question about an ad to obtain a statistical analysis
ANALYSIS
on of claims 1-12 made under 35 U.S.C.
§ 103(
unications network.” [¶0011]
he print media in Rogatinsky on which feed back is b
t. ¶[0003]
he Examiner found that:
It would have been obvious to one of ordinary
in the art at the time of the invention to combine
Connelly's broadcast ce
of a product. (Ans. 6).

We affirm the rejecti
a), and reverse the rejection of claims 1-12 made under 35 U.S.C.
§ 101.
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8
01
101
as
atent eligible system of apparatuses which include “…the
Intern tive Television, and self service
to the separate
9-12

eedback panel
g
t,
rovid
35 U.S.C. § 101 Rejection
We will not sustain the rejection of claims 1-12 under 35 U.S.C. § 1
because one of ordinary skill in the art would understand that the claimed
“interactive channels” constitutes patent eligible subject matter under §
because the Specification unequivocally describes interactive channels
part of an overall p
et and World Wide Web, Interac
devices, such as Information Kiosks and Automated Teller Machines
(ATMs).” (FF 6)
35 U.S.C. § 103(a) Rejections
Appellant does not provide a substantive argument as
patentability of claims 2-4, 7, 9-12 that depend from claim 1, which is the
sole independent claim among those claims. Therefore, claims 2-4, 7,
fall with claim 1. See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellant argues that Rogantinsky fails to disclose the limitation in
claim 1 of: creating a feedback panel including at least one feedback
response concerning said advertisement; and providing said f
to said consumers, said feedback panel being activated by a consumer to
provide said feedback response concerning said advertisement to said ad
provider through said interactive channel. (Appeal Br. 4, 5).
In particular, Appellant argues that “Rogatinsky includes no teachin
concerning the creation of a feedback panel concerning an advertisemen
p ing the feedback panel to a consumer, and the activation of the
Appeal 2009-009098
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9
of
ut such a prima facie case, the burden of coming forth
with e ch
r in a
via a global
omm
est
quested
feedba
feedback panel by the consumer to provide a feedback response to an ad
provider.” (Appeal Br. 5) We disagree with Appellant for two reasons.
First, the Examiner made findings of fact regarding the prior art and
applied them to each of the claims to present a prima facie case in support
the rejections. To reb
vidence shifts to the Appellant. The Appellant has presented no su
evidence of error in the Examiner’s findings, but instead allege erro
conclusory manner.
Second, Rogatinsky discloses obtaining feedback on print media
“preferably through a series of questions and answers
c unications network.” (FF 11). We find that the print media on which
feedback is based is advertisement. (FF 12). Therefore, Rogatinsky provides
a teaching of obtaining feedback on advertisements.
Appellant argues that “[i]t is not seen that a request from a client [in
Connelly] to receive product feedback is equivalent to a customer activating
a feedback panel to provide feedback to an ad provider.” (Appeal Br. 5).
We disagree with Appellant because Connelly does not teach that the requ
comes from a client as Appellant alleges, but rather from a content provider
(FF 7). The result of this request nevertheless constitutes a feedback panel
being activated, e.g. responded to by a consumer to provide the re
ck response concerning the advertisement as required by the claims.
Specifically, Connelly discloses that the product descriptive data is thus sent
to clients and the clients respond with feedback data (FF 8, 10).
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10
Moreover, we find that this product descriptive data also constitutes
advertisement because, according to Connelly, the product descriptive data
once sent to the customer makes known to him/her, e.g., the kind, title,
episode, one or more stars, one or more directors etc, of a movie, feature,
short, television, program (FF 9). Such making known of this information
would constitute an advertisement. (FF 4, 5). Thus, even without the
teachings of Rogantinsky, Connelly itself meets the requirements of claim 1.
The ej n r ectio of claims 5, 6 and 8 under 35 U.S.C. § 103(a) using the
additional reference to C sustain the rejection of hang is not argued. We thus
these c the laims because Appellant has not advanced any arguments to rebut
rejection.
CONCLUSIONS OF LAW
rejecting claims 1-12 under 35 U.S.C. 101 as failing to claim patent-eligible
subject matter.
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 1-4, 7, and 9-12 under 35 U.S.C. § 103(a) as being
unpatentable over Connelly in view of Rogatinsky.
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 5, 6 and 8 under 35 U.S.C. § 103(a) as being unpatentable
over Connelly in view of Rogatinsky, and further in view of Chang.
We conclude the Appellant has shown that the Examiner erred in
Appeal 2009-009098
Application 10/251,118

11
DECISION
The decision of the Examiner to reject claims 1-12 is AFFRIMED.
AFFIRMED

JRG

JAMES M. STOVER
TERADATA CORPORATION
2835 MIAMI VILLAGE DRIVE
MIAMISBURG, OH 45342