Ex Parte Springer et al

Board of Patent Appeals and Interferences

Feb 21, 2008

09313436 (B.P.A.I. Feb. 21, 2008)

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID S. SPRINGER and BRIAN T. ZUCKER
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Appeal 2007-4207
Application 09/313,436
Technology Center 3600
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Decided: February 21, 2008
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Before JENNIFER D. BAHR, ANTON W. FETTING, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
David S. Springer and Brian T. Zucker (Appellants) seek review under
35 U.S.C. § 134 of a Final rejection of claims 1, 4-6, 8, 9, and 26-31, the only
claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002).

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We AFFIRM.
The Appellants invented an advertising scheme that allows a computer user to
benefit from viewing banner advertising by providing incentives for information
transmitted to and from a computer server (Specification 2:12-15).
An understanding of the invention can be derived from a reading of exemplary
claims 1, 8 and 26, which are reproduced below [bracketed matter and some
paragraphing added].
1. A method of tracking information provided to a computer system
from an advertisement database and a server accessed by a computer
manufacturer, the method comprising:
[1] providing an identifier unique to the computer system, the
identifier being imbedded in one of the computer hardware and
firmware in the computer system;
[2] the database associating the identifier with information specific to
a computer user associated with the computer system;
[3] the computer user establishing a web connection with the server
and transmitting the identifier to the database;
[4] the user logging on to a combination advertisement broker server;
[5] the computer system transmitting the identifier and requesting that
a banner advertisement be displayed on the computer system;
[6] the database checking for the identifier;
[7] a counter accounting for the presence of the identifier; and
[8] based on the number of times the database locates the identifier,
the database:
determining which advertisements have been transmitted to the
user; and
based on the computer user associated with the identifier
receiving a predetermined number of advertisements in a
time period,
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the computer user associated with the identifier:
receiving discounts on advertised computer
components from the manufacturer.
8. The method of Claim 1 wherein the identifier is one of
a system code,
a system code stored in nonvolatile memory,
a unique ID from a microprocessor,
a unique ID from a peripheral device and
a unique identifier stored on a hard drive.
26. A method for tracking information to a computer system from a
server accessed by a computer manufacturer comprising:
[1] providing an identifier unique to the computer system;
[2] providing a database associating the identifier with information
specific to a computer user;
[3] the user logging on to a combination advertisement broker server;
[4] the computer system transmitting the identifier and requesting that
a banner advertisement be displayed on the computer system;
[5] the database checking for the identifier;
[6] a counter accounting for the presence of the identifier; and
[7] based on the number of times the database locates the identifier,
the database;
determining which advertisements have been transmitted to the
user; and
based on the computer user associated with the identifier
receiving a predetermined number of advertisements in a time
period,
the computer user associated with the identifier:
receiving discounts on advertised computer components
from the manufacturer.
This appeal arises from the Examiner’s Final Rejection, mailed July 20, 2005.
The Appellants filed an Appeal Brief in support of the appeal on April 27, 2006.
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An Examiner’s Answer to the Appeal Brief was mailed on July 17, 2006. A Reply
Brief was filed on September 13, 2006.
PRIOR ART
The Examiner relies upon the following prior art:
Marsh US 5,848,397 Dec. 8, 1998
Guyot US 6,119,098 Sep. 12, 2000
Jenkins US 6,285,983 B1 Sep. 4, 2001
REJECTIONS 5
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Claims 1, 4, 5, 8, 9, 26-28, 30, and 31 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Guyot and Jenkins.
Claims 6 and 29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Guyot, Jenkins, and Marsh.
ISSUES
The issues pertinent to this appeal are
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 1, 4, 5, 8, 9, 26-28, 30, and 31 under 35
U.S.C. § 103(a) as unpatentable over Guyot and Jenkins.
• Whether the Appellants have sustained their burden of showing that the
Examiner erred in rejecting claims 6 and 29 under 35 U.S.C. § 103(a) as
unpatentable over Guyot, Jenkins, and Marsh.
The pertinent issues turn on whether the art describes or suggests using an
identifier imbedded in one of the computer hardware and firmware in the computer
system.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be supported
by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of “imbed.”
02. The ordinary and customary meaning of “imbed” is to fix firmly,
enclose snugly, or cause to be an integral part.1
Facts Related to Appellants’ Disclosure
03. The Specification describes storing an identifier on a hard drive
(Specification 5:15-18).
Guyot
04. Guyot is directed to targeting and distributing advertisements over a
distributed information network, such as the internet. Guyot provides a
client application that runs on a subscriber's computer and a server that
manages an advertisement database and that provides advertisements to
the client application that are targeted to each individual subscriber,
based on a personal profile provided by that subscriber (Guyot 1:56-65).
05. Guyot exchanges information between the server and the subscriber
system, with the server and each of the subscriber systems having a
unique identifier (Guyot 3:17-22).
06. Guyot’s processor assigns credits to the subscriber based on the
number of advertisements the subscriber has been exposed to. This

1 American Heritage Dictionary of the English Language (4th ed. 2000).
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information may then be used to provide remuneration to the subscriber
based on the number of advertisements displayed on the subscriber
system. A total credit amount indicator presents the number of credits
the subscriber has earned over a predetermined period of time. The
processor sends the total credit amount information to the server when a
connection is established with the server (Guyot 6:6-16).
07. Guyot’s Subscriber Statistics are valid for a predetermined period of
time (Guyot 6:50-51).
Jenkins
08. Jenkins is directed to a marketing system for directing customized
offers to consumers that includes a classes database derived from an
abstraction of the individual records database and second
communications facilities that provide access by marketers to the
marketing server (Jenkins 2:55-65).
09. Jenkins describes in background that data-driven marketing in general
and direct marketing in particular have increasingly taken advantage of
expanded electronic marketing, including, for example, offerings
directed to individuals through e-mail accounts and the use of web
browser cookie files to target web page banner ads. As is known in the
art, cookie files2 may be installed by a web site server on the computer
hard disk drive of a browsing consumer.

2 As is well known, “[a] cookie is arbitrary data that a server provides to a browser
in order to uniquely identify that user upon subsequent access to the server.”
(Douglis, US 6,249,795 B1, Jun. 19, 2001, col. 2, ll. 8-10)
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Facts Related To Differences Between The Claimed Subject Matter And The
Prior Art
10. One of ordinary skill knew that computer manufacturers advertised
and promoted their products, including computer components.
11. One of ordinary skill knew that discounts were a widely used and
predictable form of product promotion.
Facts Related To The Level Of Skill In The Art
12. Neither the Examiner nor the Appellants has addressed the level of
ordinary skill in the pertinent arts of tracking items and data formatting.
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.,
807 F.2d 955, 963 (Fed. Cir. 1985)).
Facts Related To Secondary Considerations
13. 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, pending claims are given
their broadest reasonable construction consistent with the specification. In
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re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364, (Fed. Cir. 2004).
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) (claims must be interpreted “in view of the specification” without
importing limitations from the specification into the claims unnecessarily)
Although a patent applicant is entitled to be his or her own lexicographer of
patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
definitions in the Specification with sufficient clarity to provide a person of
ordinary skill in the art with clear and precise notice of the meaning that is to be
construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
an inventor is free to define the specific terms used to describe the invention, this
must be done with reasonable clarity, deliberateness, and precision; where an
inventor chooses to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to give
one of ordinary skill in the art notice of the change).
Obviousness
A claimed invention is unpatentable if the differences between it 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.”
35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727 (2007);
Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is bottomed on
several basic factual inquiries: “[(1)] the scope and content of the prior art are to be
determined; [(2)] differences between the prior art and the claims at issue are to be
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ascertained; and [(3)] the level of ordinary skill in the pertinent art resolved.” 383
U.S. at 17. See also KSR Int’l v. Teleflex Inc., 127 S.Ct. at 1734. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, at 1739.
“When a work is available in one field of endeavor, design incentives and
other market forces can prompt variations of it, either in the same field or in a
different one. If a person of ordinary skill in the art can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 1740.
“For the same reason, if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” Id.
“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed.” Id. at 1742.
ANALYSIS
Claims 1, 4, 5, 8, 9, 26-28, 30, and 31 rejected under 35 U.S.C. § 103(a) as
unpatentable over Guyot and Jenkins.
The Appellants argue these claims as a group.
Accordingly, we select claim 26 as representative of the group.
37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner found that Guyot described all of the limitations of claim 26,
except those of having the party accessing the server be a computer manufacturer,
and having the discounts be associated with computer components from the
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manufacturer. The Examiner implicitly found that such a computer manufacturer
would have been a predictable advertiser in Guyot’s system, and that discounts on
what the manufacturer sold would be predictable species of Guyot’s credits with
such an advertiser. The Examiner further found, as to the claims additionally
requiring an imbedded identifier as with claim 1, that Jenkins described an
example of an imbedded identifier as a cookie (Answer 3-6).
The Appellants contend that Jenkins’ cookie does not contain an identifier
imbedded in a system hardware or software component during manufacture (Br.
11:Fourth ¶), and that Guyot does not describe a computer manufacturer and
discounts by such a manufacturer (Br. 11:Fifth ¶). The Appellants further argue
that neither Guyot nor Jenkins describes the desirability of the combination
because, in particular, cookies are undesirable in such a combination (Br. 12).
We disagree. As to whether either reference describes computer manufacturers
as advertisers or discounts on computer components, or suggests the desirability of
the combination of the references,
[t]he obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents. The diversity of inventive pursuits and of
modern technology counsels against limiting the analysis in this way.
In many fields it may be that there is little discussion of obvious
techniques or combinations, and it often may be the case that market
demand, rather than scientific literature, will drive design trends.
KSR, 127 S. Ct. at 1741. Further,
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same
field or a different one. If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.
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id. at 1740. Guyot distributes advertisements using a client application that
runs on a subscriber's computer and a server that manages an advertisement
database and that provides advertisements to the client application that are targeted
to each individual subscriber, based on a personal profile provided by that
subscriber (FF 04). As pointed out by the Examiner (Answer 5), a computer
manufacturer is a predictable embodiment of Guyot’s advertiser, whose advertising
would be driven by market forces.
Guyot assigns credits to its subscriber based on the number of advertisements
the subscriber has been exposed to. This information may then be used to provide
remuneration to the subscriber based on the number of advertisements displayed on
the subscriber system. A total credit amount indicator presents the number of
credits the subscriber has earned over a predetermined period of time (FF 06). We
find that discounts are a predictable embodiment of Guyot’s remuneration since a
discount is a widely practiced form of promotion, again driven by market forces.
We further find that such discounts would likely pertain to items or services sold
by the discounter for the simple reason that discounts are with respect to sales,
which in the case of a computer manufacturer would include computer
components.
The remaining arguments by the Appellants regarding the limitation of
imbedding an identifier are moot with respect to claim 26, because claim 26 is a
method claim and contains no structural limitation regarding the imbedding of an
identifier. Thus, the Appellant has not sustained its burden of showing that the
Examiner erred in rejecting claims 26-28, 30, and 31.
Although the Appellants argued the claims as a group and we have found the
Appellants have not sustained their burden as to representative claim 26, we will
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address the Appellants’ arguments in support of claim 1. To do so, we must next
construe the limitation “identifier being imbedded in one of the computer hardware
and firmware in the computer system.” The word “imbed” is not lexicographically
defined by the disclosure. The common meaning of the verb “imbed” within the
context of an item of data such as an identifier is “to fix firmly” (FF 01 & 02).
Therefore we construe the limitation of “identifier being imbedded in one of the
computer hardware and firmware in the computer system” as “identifier being
fixed firmly in one of the computer hardware and firmware in the computer
system.”
Guyot describes relying on a unique identifier (FF 05). Jenkins describes one
technique for providing such an identifier, a cookie, as a data element stored on a
hard drive (FF 09). Thus the issue becomes whether storing an identifier as a
cookie on a hard drive provides an identifier fixed firmly in one of the computer
hardware and firmware in the computer system. We find that the Appellants’
disclosure describes storing an identifier on a hard drive (FF 03) and that claim 8,
which depends from claim 1, embraces an embodiment including an identifier
stored on a hard drive. Thus, the Appellants’ disclosure supports construing the
scope of claim 1 to include identifiers stored on a hard drive and claim 8 requires
that the scope of claim 1 be broad enough to encompass an identifier stored on a
hard drive.
We now turn to the Appellants’ argument that cookies present well known
problems, viz. cookies do not automatically identify the client computer's owner to
enable advertising revenue sharing; do not automatically allow any correlation
between the computer's owner and his individual preferences for targeted
advertising; and are lacking in desirable security features because they can be
easily altered, deleted, disabled or copied to multiple computers (Br. 12). We find
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that whether such problems exist is moot because claim 1 does not require
identifying the computer’s owner, or a correlation between the computer’s owner
and the owner’s preferences, or any security features.
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1, 4, 5, 8, 9, 26-28, 30, and 31 under 35 U.S.C. § 103(a) as
unpatentable over Guyot and Jenkins.
Claims 6 and 29 rejected under 35 U.S.C. § 103(a) as unpatentable over Guyot,
Jenkins, and Marsh.
The Appellants have relied upon the arguments for the patentability of claim 1,
supra, which we found to be insufficient to meet the Appellants’ burden.
Therefore, the Appellants have not sustained their burden of showing that the
Examiner erred in rejecting claims 6 and 29 under 35 U.S.C. § 103(a) as
unpatentable over Guyot, Jenkins, and Marsh.
CONCLUSIONS OF LAW
The Appellants have not sustained their burden of showing that the Examiner
erred in rejecting claims 1, 4-6, 8, 9, and 26-31 under 35 U.S.C. § 103(a) as
unpatentable over the prior art.
DECISION
To summarize, our decision is as follows:
• The rejection of claims 1, 4, 5, 8, 9, 26-28, 30, and 31 under 35 U.S.C.
§ 103(a) as unpatentable over Guyot and Jenkins is sustained.
• The rejection of claims 6 and 29 under 35 U.S.C. § 103(a) as unpatentable
over Guyot, Jenkins, and Marsh is sustained.
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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).

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JRG

DAVID L. MCCOMBS
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