Ex Parte Shuster

Board of Patent Appeals and Interferences

Dec 22, 2009

09860839 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN MARK SHUSTER
___________

Appeal 2009-001790
Application 09/860,839
Technology Center 3600
____________

Decided: December 22, 2009
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Brian Mark Shuster (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1-15. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
The invention is “a method and apparatus for providing advertising
service in a computer network.” Specification 2:20-21.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for providing advertising service in a
computer network, comprising:
receiving a request from a user, via said
computer network, to view a Web page;
in response to receiving the request to view
a Web page, providing a condition to said user for
viewing said Web page, said condition requiring
said user to select for viewing a sponsor site that is
linked from said Web page;
delivering said Web page to said user;
determining if said user has met said
condition; and
terminating access of said user to said Web
page and permitting said user to continue

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Feb. 5, 2008) and Reply Brief (“Reply Br.,” filed Aug. 18, 2008),
and the Examiner’s Answer (“Answer,” mailed Jun. 18, 2008).

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uninterrupted with said user's access to other user-
selected content via said computer network, if said
condition is not met.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Rosano, Paul, For Inside Scoop, ESPN Worth a Try; [Statewide
Edition], Hartford Courant, Hartford, Conn., Oct. 17, 1999, p. E.9.
Official Notice was taken that
• it is old and well known to enable users to view content on
websites without binding them to come back to the website and
without building a relationship with user such as by asking for
personal information, since this enables the user to view
information freely without supplying personal information
(Answer 4-5; repeated at Answer 9) [Herein after Official Notice I];

• it is old and well known to enable users to view content on
websites without binding them to come back to the website and
without building a relationship with user such as by asking for
personal information, since this enables the user to view
information freely without supplying personal information
[and] it is old and well known to require a user to view a
sponsor site within a first time period and to view the sponsor
site for at least a second time period, since many website offers
expire after a certain time and most sponsors want to make sure
that the users actually read the information that was presented
on the websites so that they would be likely to take advantage
of the offer presented on the website;
(Answer 6) [Herein after Official Notice II];

• it is old and well known to require users to make a purchase
within a time period as done by online retailer shopping carts
such as Barnes and Noble and Amazon that time out a user's log
in if the user doesn't check out after a set amount of time to
prevent someone else from gaining access to the user's
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computer in the mean time and placing an order through the
user's account in case the user forgot to log out and to prevent
the user from tying up a connection to the network that
maintains a user account;
(Answer 7) [Herein after Official Notice III];

• it is old and well known to display timers on users computers to
keep track of time the user spends on a site. For example, when
a user accesses a secured website such as Kronos time and
attendance system for time sheet recording and payroll
functionality, a timer is displayed on the site which counts
down from a number, and when it reaches 0, it disconnects the
user from the service. This is also done in many paid by the
minute subscription databases such as Dialog by Thompson and
the EAST search database at the PTO. In Dialog and EAST, if
there is no user activity for some time, a pop up window with a
timer tells the user that the connection will be disabled in x
number of seconds unless the user selects a button to stay on
line. Another example of a timer is what is displayed when a
user connects to a virtual private network and a window
displays a timer showing how many minutes, seconds, and
hours the user has been connected to the network;
(Answer 7-8) [Herein after Official Notice IV];

• it is old and well known to determine whether a said time
period has elapsed. For example, when a user accesses discount
coupons for retailers online, such as a discount coupon for an
online bookstore, if the coupon has expired, the user will
receive a message saying that the coupon has expired based on
the determination of the expiration date of the coupon instead of
presenting the user with the coupon;
(Answer 8) [Herein after Official Notice V]; and

• it is old and well known to terminating access of said user to
said Web page if said condition was not met in a previous
session with said Web page as done by web based service
providers who provide paid services such as research databases.
For example, when a user incorrectly enters his user name and
password information for his research account several times in
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one session and then returns to try to login in a subsequent
session, his account may be locked requiring him to either reset
a password or contact an account administrator prior to granting
him access to that research site
(Answer 9-10) [Herein after Official Notice VI].

The following rejections are before us for review:
1. Claims 1, 82, and 15 are rejected under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the
invention.
2. Claims 1-15 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rosano and Official Notice; more specifically,
a. Claims 1 and 8 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rosano and Official Notice I.
b. Claims 2, 9, and 15 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Rosano and Official Notice I and II.
c. Claims 3 and 10 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rosano and Official Notice I and III.
d. Claims 4 and 11 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rosano and Official Notice I, II, and IV.

2 The Examiner included claim 18 in the rejection under 35 U.S.C. § 112,
second paragraph in the Answer instead of claim 8. Answer 3. However,
Claim 18 was canceled in the Amendment of Jun. 7, 2007. We find that the
inclusion of canceled claim 18 instead of pending independent claim 8 in the
rejection is an obvious typographical error. We note that the Examiner
states “[c]laims 1, 8, and 15 were found to be deficient under U.S.C. 112
second paragraph” when rejecting the claims under § 103 (Answer 3) and
that the Appellant addresses claim 8 in their arguments regarding this
rejection (App. Br. 6).
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e. Claims 5 and 12 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rosano and Official Notice I, II, and V.
f. Claims 6 and 13 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rosano and Official Notice I, II, and V.
g. Claims 7 and 14 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Rosano and Official Notice I and VI.

ARGUMENTS
The rejection of claims 1, 8, and 15 under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
The Examiner rejected claims 1, 8, and 15 under § 112, second
paragraph because the Examiner found the limitation “delivering said Web
page to said user” indefinite. Answer 3. The Examiner found it unclear
whether the recitation of the “Web page” in this limitation referred to the
previously recited “Web page” or “sponsor site,” which the Examiner found
to be a second web page. Answer 3 and 4.
The Appellant responds that claims clearly distinguish between the
“Web page” and the “sponsor site,” since these terms are “consistently
applied throughout the claims to refer to the distinct items.” App. Br. 7.
The Appellant states ‘[t]here is one item defined in the claims as a “Web
page,” and this Web page provides the only antecedent basis for “said Web
page.”’ App. Br. 6. See also Reply Br. 7-9.

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The rejection of claims 1-15 under §103(a) as being unpatentable over
Rosano and Official Notice.
The Examiner took Official Notice of six different facts in the Final
Rejection of September. 9, 2007, for the first time. See Answer 4-10. The
Appellant asserts that the Examiner’s takings of Official Notice in the
Appeal Brief was challenged in the After Final Response of November 5,
2007 and renewed their challenge to the Official Notice. App. Br. 7-8 and
12-17. While the Examiner did not previously find the Appellant’s
challenge adequate in the After Final Rejection, the Examiner found the
Appellant’s challenge in the Appeal Brief adequate and provided three
references to support the taking of Official Notice. Answer 11-13. The
Appellant argues that the addition of these references introduces new
grounds of rejection. Reply Br. 1-2 and 10-11.
The rejection of claims 1 and 8 under §103(a) as being unpatentable over
Rosano and Official Notice I.
The Appellant argues that the Examiner’s combination of Rosano and
Official Notice I, does not establish a prima facie showing of obviousness
because the proposed combination does not teach the claimed step of
providing a condition. App. Br. 10-11.
The Examiner found that the combination of Rosano and Official
Notice I taught these steps. The Examiner found that Rosano taught the step
of providing a condition to view a web page, because Rosano described a
condition of being or becoming a member of the ESPN’s subscription
service in order to view Insider content. Answer 4. The Examiner also
found that Rosano taught the step of terminating access if the condition is
not met, because Rosano describes that a user is barred from viewing the
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Insider story unless they are a member. Id. Then, Examiner took Official
Notice that “it is old and well known to enable users to view content on
websites without binding them to come back to the website and without
building a relationship with user such as by asking for personal information,
since this enables the user to view information freely without supplying
personal information” (Answer 4-5) to teach “viewing a sponsor site linked
from a Web page,” (Answer 9) which the Examiner admitted was not taught
by Rosano (Answer 4). The Examiner concludes in the rejection that “i[t]
would have been obvious to a person of ordinary skill in the art at the time
of the applicant’s invention to include in Rosano’s invention, the option of
presenting the content behind the Insider story link without requiring the
user to join or to be a subscriber so that the user does not have to build a
relationship with ESPN.com if he doesn’t want and he doesn’t have to give
ou[t] his personal information for viewing the Insider content.” Answer 5.
The Appellant responds that, whether the “content behind the Insider
story link” is considered to be the claimed Web page or the sponsor site, the
combination fails to include a condition, because a option to become a
member or not removes an conditions from viewing the Insider story link.
Reply Br. 11-12.
The rejection of claims 2, 9, and 15 under §103(a) as being
unpatentable over Rosano and Official Notice I and II.
For the same reasons as above, the Appellant argues that the
combination of Rosano and Official Notice I and II does not teach a step of
providing a condition as recited in claim 15. App. Br. 11 and Reply Br. 14.
We note that claim 2 depends from claim 1, which recites the same step of
providing content, and claim 9 depends from claim 8, which recites an
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advertising management application and server that performs the same step
of providing content.
The Appellant provides additional arguments directed to other
limitations in claims 2, 9, and 15 (See App. Br. 11-12 and Reply Br. 14-16).
However, we do not address these additional arguments because we find that
the Appellant has shown that the Examiner failed to establish a prima facie
showing of obviousness for reasons given below in the Analysis.
The remaining rejections of claims 3-7 and 10-14 under §103(a).
The Appellant provides separate arguments for the rejection of
dependent claims 3-7 and 10-14. All of these rejections include the
proposed combination of Rosano and Official Notice I, discusses above.
Again, we do not address these separate arguments because we find that the
Appellant has shown that the Examiner failed to establish a prima facie
showing of obviousness for reasons given below in the Analysis.

ISSUES
The first issue is whether the Appellant has shown that the Examiner
erred in rejecting claims 1, 8, and 15 under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
The second issue is whether the Appellant has shown that the Examiner
erred in rejecting claims 1-15 under 35 U.S.C. § 103(a) over Rosano and
Official Notice. The issue turns on whether one of ordinary skill in the art
would have been led by Rosano and Official Notice I to a method that
includes a step of providing a condition to a user for viewing a web page,
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where the condition requires a user to select for viewing a sponsor site that is
linked from the web page, and a step of terminating access of the user of the
web page, if the condition is not met.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim Construction
1. The Specification does not include an express definition of
“condition.”
2. A definition of “condition” is “something indispensable to the
appearance or occurrence of something else : PREREQUISITE.”
See Webster’s II New Riverside University Dictionary 295 (1984)
(Fifth entry for “condition.”
The scope and content of the prior art
3. Rosano describes the ESPN.com Web site. Rosano 1.
4. Rosano states “[i]f you are a frequent visitor, you may have
noticed those small orange icons with the capital letters IN next to
some of the story links. And if you click on them, you would
discover you are barred from accessing them unless you are a
member of ESPN’s subscriber service, dubbed insider.” Rosano 1.
Any differences between the claimed subject matter and the prior art
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5. The Examiner admits that Rosano does not describe the condition
“requiring said user to select for viewing a sponsor site that is
linked from said Web page.” Answer 4.
The level of skill in the art
6. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of Internet advertising services.
We will therefore consider the cited prior art as representative of
the level of ordinary skill in the art. See Okajima v. Bourdeau, 261
F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific
findings on the level of skill in the art does not give rise to
reversible error ‘where the prior art itself reflects an appropriate
level and a need for testimony is not shown’”) (Quoting Litton
Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163
(Fed. Cir. 1985)).
Secondary considerations
7. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
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[W]e look to the specification to see if it provides
a definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
Definiteness
The test for compliance is whether the claims set out and circumscribe
a particular area with a reasonable degree of precision and particularity when
read in light of the application disclosure as they would be interpreted by
one of ordinary skill in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA
1971).
Obviousness
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., 550 U.S. 398, 406 (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, and (3) the level of skill
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in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1, 8, and 15 under 35 U.S.C. §112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
We find that the Appellant has shown that the Examiner erred in
rejecting claims 1, 8, and 15 under 35 U.S.C. § 112, second paragraph. The
Examiner found claims 1, 8, and 15 ambiguous because it was unclear
whether the “Web page” in the step of “delivering said Web page” referred
to the previously recited “Web page” or the “sponsor site.” While the
Specification does describe both a “sponsor site” and an “advertiser Web
page,” as web pages (For example see Specification 8:11-15), the claims
consistently refer to the “sponsor site” element as a “sponsor site” and the
“advertiser Web page” element as the “Web page.” Given this consistency,
“said Web page” recited in the delivering step has antecedent basis in the
“Web page” recited in the receiving step. One of ordinary skill in the art
would know that the “Web page” of the delivering step is referring to same
the “Web page” of the receiving step and not the “sponsor site.”
Accordingly, we find that the Appellant has shown that the Examiner
erred in rejecting claims 1, 8, and 15 under 35 U.S.C. § 112, second
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paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which the applicant regards as the invention.

The rejection of claims 1-15 under §103(a) as being unpatentable over
Rosano and Official Notice.
The rejection of claims 1 and 8 under §103(a) as being unpatentable
over Rosano and Official Notice I.
Notwithstanding the questions in regards to the Official Notice, we
find that the Examiner has not established a prima facie showing that claims
1 and 8 are unpatentable over Rosano and Official Notice I. The Examiner’s
proposed modification of Rosano does not teach the claimed invention.
Claim 1 recites a method which includes the steps of “in response to
receiving the request to view a Web page, providing a condition to said
viewer for viewing said Web page, said condition requiring said user to
select for viewing a sponsor site that is linked from said Web page” and
“terminating access of said user to said Web page . . . if said condition is not
met.” Claim 8 recites an apparatus including an advertising management
application and a server which function to perform the steps above.
First, we note that the Examiner initially equates the claimed step of
providing a condition to “providing the condition that you are or become a
member of ESPN’s subscriber service.” Answer 4. The Examiner’s then
proposes modifying Rosano to include “. . .the option of presenting the
content behind the Insider story link without requiring the user to join or to
be a subscriber so that the user does not have to build a relationship with
ESPN.com . . .”of being or becoming a subscriber of ESPN.com in order to
view Insider content optional. Answer 4-5. The Examiner argues that this
statement “is essentially referring to viewing a sponsor site linked from a
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Web page.” Answer 10-11. Though not clear, the Examiner seems to
reason that if a user in Rosano can click on the story link and view the
Insider content without requiring the user to be or become an subscriber, this
teaches the claimed limitation of the “condition requiring the user to select
for viewing a sponsor site that is linked from said Web page.” See Answer
10-11.
We find that the Examiner’s combination does not teach the claimed
providing and terminating steps above since the proposed combination no
longer includes the claimed condition. First, we construe the term
“condition.” “[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The
Specification does not contain an express definition of “condition.” FF 1.
We find that the ordinary and customary meaning of “condition” is
“something indispensable to the appearance or occurrence of something
else.” FF 2.
The Examiner’s proposed combination effectively removes the
condition of being or becoming a subscriber found by the Examiner in
Rosano (Answer 4). In the combination, being a subscriber to ESPN.com is
no longer indispensable to viewing the Insider content but optional.
Therefore, it is no longer a condition. Further, the proposed combination
does not teach a step of “terminating access of the user to the Web page . . . ,
if the condition is not met.” A user who is not being or does not become an
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ESPN.com subscriber still has access to the Insider content. The step of
terminating access if the condition is not met is not performed in the
combination. Therefore, we find that the proposed combination of Rosano
and Official Notice I, does not teach all of the limitations of claims 1 and 8.
Accordingly, the Appellant has shown that the Examiner erred in rejecting
claims 1 and 8 under 35 U.S.C. § 103(a) as unpatentable over Rosano and
Official Notice I, since the Examiner failed to establish a prima facie
showing of obviousness.

The rejection of claims 2, 9, and 15 under §103(a) as being
unpatentable over Rosano and Official Notice I and II.
Like claim 1, claim 15 also recites a method which includes a step of
“providing a condition to the user for viewing the Web page, said condition
requiring the user to select for viewing a sponsor site within a first time
period and view the sponsor site for at lest a second time period” and a step
of “terminating access of said user to said Web page . . . , if said condition is
not met.” The Examiner proposed the same combination of Rosano and
Official Notice I as made in rejecting claims 1 and 8 (See Answer 6), and the
Appellant traverses the rejection of claim 15 for the same reason used to
traverse the rejection of claims 1 and 8 (See App. Br. 11-12 and Reply Br.
14). We note that the Examiner did not articulate any further reasoning,
with logical underpinnings, which would lead one of ordinary skill in the art
to the invention as claimed. For the same reason above, we will not sustain
the rejection of claim 15. Accordingly, we find that the Appellant has
shown that the Examiner erred in rejecting claims 15 under §103(a) as being
unpatentable over Rosano and Official Notice I and II.
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Claims 2 and 9 depend from claims 1 and 8, respectively. We have
reversed the rejection of claims 1 and 8 above. For the same reason, we will
not sustain the rejections of claims 2 and 9 over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious."). Accordingly, we find that the Appellant has shown that the
Examiner erred in rejecting claims 2 and 9 under §103(a) as being
unpatentable over Rosano and Official Notice I and II.

The rejection of claims 3 and 10 under §103(a) as being unpatentable
over Rosano and Official Notice I and III.
These rejections are directed to claims dependent on claims 1 and 8,
whose rejection we have reversed above. For the same reason, we will not
sustain the rejections of claims 3 and 10 over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious."). Further, we note that the Examiner did not articulate any
further reasoning, with logical underpinnings, which would lead one of
ordinary skill in the art to the invention as claimed. Accordingly, we find
that the Appellant has shown that the Examiner erred in rejecting claims 3
and 10 under §103(a) as being unpatentable over Rosano and Official Notice
I and III.

The rejection of claims 4 and 11 under §103(a) as being unpatentable
over Rosano and Official Notice I, II, and IV.
These rejections are directed to claims dependent on claims 1 and 8,
whose rejection we have reversed above. For the same reason, we will not
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sustain the rejections of claims 4 and 11 over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious."). Further, we note that the Examiner did not articulate any
further reasoning, with logical underpinnings, which would lead one of
ordinary skill in the art to the invention as claimed. Accordingly, we find
that the Appellant has shown that the Examiner erred in rejecting claims 4
and 11 under §103(a) as being unpatentable over Rosano and Official Notice
I, II, and IV.

The rejection of claims 5 and 12 under §103(a) as being unpatentable
over Rosano and Official Notice I, II, and V.
These rejections are directed to claims dependent on claims 1 and 8,
whose rejection we have reversed above. For the same reason, we will not
sustain the rejections of claims 5 and 12 over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious."). Further, we note that the Examiner did not articulate any
further reasoning, with logical underpinnings, which would lead one of
ordinary skill in the art to the invention as claimed. Accordingly, we find
that the Appellant has shown that the Examiner erred in rejecting claims 5
and 12 under §103(a) as being unpatentable over Rosano and Official Notice
I, II, and V.

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The rejection of claims 6 and 13 under §103(a) as being unpatentable
over Rosano and Official Notice I, II, and V.
These rejections are directed to claims dependent on claims 1 and 8,
whose rejection we have reversed above. For the same reason, we will not
sustain the rejections of claims 6 and 13 over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious."). Further, we note that the Examiner did not articulate any
further reasoning, with logical underpinnings, which would lead one of
ordinary skill in the art to the invention as claimed. Accordingly, we find
that the Appellant has shown that the Examiner erred in rejecting claims 6
and 13 under §103(a) as being unpatentable over Rosano and Official Notice
I, II, and V.

The rejection of claims 7 and 14 under §103(a) as being unpatentable
over Rosano and Official Notice I and VI.
These rejections are directed to claims dependent on claims 1 and 8,
whose rejection we have reversed above. For the same reason, we will not
sustain the rejections of claims 7 and 14 over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious."). Further, we note that the Examiner did not articulate any
further reasoning, with logical underpinnings, which would lead one of
ordinary skill in the art to the invention as claimed. Accordingly, we find
that the Appellant has shown that the Examiner erred in rejecting claims 7
and 14 under §103(a) as being unpatentable over Rosano and Official Notice
I and VI.
Appeal 2009-001790
Application 09/860,839

20
CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting:
claims 1 and 8 under 35 U.S.C. §103(a) as unpatentable over Rosano
and Official Notice I;
claims 2, 9, and 15 under 35 U.S.C. §103(a) as unpatentable over
Rosano and Official Notice I and II;
claims 3 and 10 under 35 U.S.C. §103(a) as unpatentable over Rosano
and Official Notice I and III;
claims 4 and 11 under 35 U.S.C. §103(a) as unpatentable over Rosano
and Official Notice I, II, and IV;
claims 5 and 12 under 35 U.S.C. §103(a) as unpatentable over Rosano
and Official Notice I, II, and V;
claims 6 and 13 under 35 U.S.C. §103(a) as unpatentable over Rosano
and Official Notice I, II, and V; and
claims 7 and 14 under 35 U.S.C. §103(a) as unpatentable over Rosano
and Official Notice I and VI.

DECISION
The decision of the Examiner to reject claims 1-15 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

Appeal 2009-001790
Application 09/860,839

21
REVERSED

mev

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