Ex Parte Szmanda

Board of Patent Appeals and Interferences

Nov 16, 2007

09982640 (B.P.A.I. Nov. 16, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY P. SZMANDA
____________

Appeal 2007-0220
Application 09/982,640
Technology Center 2100
____________

Decided: November 16, 2007
____________

Before JAMES D. THOMAS, JOSEPH F. RUGGIERO,
and ALLEN R. MACDONALD, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

ON REQUEST FOR REHEARING
In a decision dated May 31, 2007, we affirmed the decision of the
Examiner rejecting various claims on appeal under 35 U.S.C. § 102 and
35 U.S.C. § 103. On August 2, 2007, the Board received a Request for
Rehearing in this appeal. The electronic record for this application contains
a transmittal cover sheet with an Express Mail number of EB560816506US.
Electronic access to United States Postal Service records indicates that the
postal item bearing the above-noted Express Mailed number was delivered
Appeal 2007-0220
Application 09/982,640

to the Office on August 1, 2007. The transmittal cover sheet and the
Request for Rehearing at page 10 both bear the date of July 31, 2007, near
the signature of Appellant’s representative. Further such electronic access
revealed that the request was accepted on July 31, 2007 at a U.S. Post Office
for Post Office-to-addressee delivery. Thus, within 37 CFR 1.10, we
consider the request to have been filed in a timely manner, that is, on July
31, 2007. The above-noted panel only recently received this request for
decision.
The bulk of Appellant’s remarks within the request relate to the
discussion at pages 3 and 4 of our prior decision where we found that the
subject matter of all claims on appeal recite non-functional descriptive
material which did not provide a patentable distinction to the data or to the
process of the claimed methods. More specifically, we found “that the
meaning relating to facts about an advertisement and/or details of a plurality
of advertisements cannot be used to distinguish the claimed invention from
prior art data/facts/details.” As argued in the Briefs and at oral hearing (note
the paragraph at the bottom of page 4 of our prior decision), patentability of
the subject matter of the claims on appeal was predicated on the nature of
the information content, that is, advertising information. We further observe
that there is a high degree of subjectivity of what the artisan/user considers
advertising information versus any other type or category of information.
Notwithstanding Appellant’s extensive remarks in the initial pages of
the request to the contrary, our conclusion with respect to non-functional
descriptive material is consistent with the case law noted in this portion of
our opinion as well as the subsequent case law. See also Ex parte Curry,
2
Appeal 2007-0220
Application 09/982,640

BPAI Appeal No. 2005-0590 (Appl. No. 90/449,237) (aff’d, Appeal No. 06-
1003 (Fed. Cir. Jun. 12, 2006)(Rule 36)(unpublished)); Ex Parte Mathias,
BPAI Appeal No. 2005-1851 (Appl. No. 09/612,788) 2005 WL 5121483, at
*3(aff’d, Appeal No. 06-1103, 2006 WL 2433879 (Fed. Cir. Aug. 17,
2006)(Rule 36)).
The discussion beginning at the bottom of page 8 of the request
through page 9 asserts that when the limitations of the claims are given
patentable weight, the correlations presented by the Board in our prior
decision failed to disclose or suggest all the limitations of the claims. With
this position we strongly disagree as the bulk of our prior decision fully
explains. In the first paragraph of our decision at the top of page 3 as well as
at the bottom of page 4, our reasoning merely buttressed that which the
Examiner set forth in the Answer. Both the Examiner’s position in the
Answer as well as the bulk of our discussion in our prior decision
alternatively assume for the sake of our respective analyses that patentable
weight was given to the form of the information content, that is,
advertisement information. The discussion at page 9 of the request appears
to invite us to read specific features into the claims from the disclosed
invention that are not recited in the claims to render patentable distinctions
over those of the applied prior art to Skillen and Loeb. We observe again
here that we mentioned earlier at page 5 of our prior decision that Skillen’s
advertising (selling) machine 10 in figure 1 clearly relates to advertising
information; we also noted at the middle of page 9 of our prior decision that
advertising information was specifically taught as well as column 9 of Loeb.
3
Appeal 2007-0220
Application 09/982,640

It is emphasized that the content of our prior decision set forth
essentially two lines of reasoning as bases on which we affirmed the
Examiner’s rejections. The first included our finding not to give patentable
weight to the information content of the subject matter recited in the claims
on appeal. The second, separate line of reasoning, which is consistent with
the Examiner’s approach within the rejections, was to give patentable weight
to all limitations.
In view of the forgoing, we have considered Appellant’s Request for
Rehearing, but it is denied as to making any change in our prior decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DENIED

pgc

CHARLES R. SZMANDA
4 CROSSMAN AVENUE
WESTBOROUGH MA 01581
4