Ex Parte Szmanda

Board of Patent Appeals and Interferences

May 31, 2007

09982640 (B.P.A.I. May. 31, 2007)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

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: May 31, 2007
__________

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

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal No. 2007-0220
Application No. 09/982,640

This appeal involves claims 1 through 42 and 44, which constitute all
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b) and § 134(a). An oral hearing regarding this appeal was conducted on
May 23, 2007.
As best representative of the broadest disclosed and claimed
invention, independent claim 1 is reproduced below:
1. A method of supplying advertisement information to a user
searching for said information within a data network, comprising the steps
of: receiving from the user, a series of search rules comprising facts about an
advertisement; accessing a database comprising details of a plurality of
advertisements; using a search engine to apply said search rules to said
database; and reporting, to the user, results comprising a subset of the
contents of said database.

The following references are relied on by the Examiner:

Loeb US 6,421,652 B2 Jul. 16, 2002
(filed Jul. 27, 1999)
Skillen US 6,098,065 Aug. 1, 2000

In a first stated rejection, the Examiner has rejected all claims on
appeal, claims 1 through 42 and 44 under 35 U.S.C. § 102(b) as being
anticipated by Skillen. Secondly, claims 1 through 10, 39 through 42, and
44 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Loeb.
Lastly, claims 11 through 38 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness, the Examiner relies upon Loeb alone.
Rather than repeat the positions of the Appellant and the Examiner,
reference is made to the Brief and Reply Brief for Appellant’s positions, and
to the Answer for the Examiner’s positions.

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Application No. 09/982,640

OPINION
For the reasons set forth by the Examiner in the Answer, as amplified
here, we sustain each of the three separately stated rejections of the claims
on appeal. The Examiner has correlated each of the respective independent
claims to specific teachings of Skillen and Loeb as well as grouped common
subject matter of grouped dependent claims in the same manner. In like
manner, the Examiner’s responsive arguments beginning at the bottom of
page 8 of the Answer address specifically numbered points of the
Appellant’s arguments in the principal Brief on appeal. The following
remarks buttress the Examiner’s positions by expanding upon the analysis as
well as the consideration of the teachings of the respective references,
further in view of the extensive arguments in the Brief and Reply Brief.
At the outset, it appears to us that the subject matter presented in all
claims on appeal relates to features that may differ from the prior art solely
on the basis of “non-functional descriptive material,” which is generally not
given patentable weight when determining patentability of an invention over
the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed.
Cir. 1983). The PTO may not disregard claim limitations comprised of
printed matter. See Gulack, 703 F.2d at 1384, 217 USPQ at 403; see also
Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However,
the Examiner need not give patentable weight to descriptive material absent
a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32
USPQ2d 1031, 1035 (Fed Cir. 1994); In re Ngai, 367 F.3d 1336, 1338, 70
USPQ 1862, 1864 (Fed. Cir. 2004). We conclude that when the prior art
describes all the claimed structural and functional relationships between the
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Appeal No. 2007-0220
Application No. 09/982,640

descriptive material and the substrate, but the prior art describes a different
descriptive material than the claim, and then the descriptive material is non-
functional and will not be given any patentable weight. That is, we conclude
that such a scenario presents no new and unobvious functional relationship
between the descriptive material and the substrate. In the instant case on
appeal, we find that the invention of all claims on appeal recites non-
functional descriptive material which does not provide a patentable
distinction to the data or to the process of the claimed methods. In other
words, we find 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. Therefore, we
conclude that the invention of claims 1 through 42 and 44 is not patentably
distinguishable from the teachings of the applied prior art.
In accordance with the hearing panel’s questioning of Appellant’s
representative at oral hearing, patentability of the claimed subject matter of
the claims on appeal was said to be dependent on the nature of the
information recited. Consistent with those arguments in the Brief and Reply
Brief, patentability was predicated to be based upon the characterization or
labels attributed to the information content per se not to any variations or
improvements or novelty associated with the actual processes set forth in the
method claims on appeal. We will add our correlations here to those the
Examiner already did in the Answer to correlate some teachings of the
references to the particular characterizations of the information of the claims
on appeal. The two references relied upon convey to the artisan the same
teaching concepts of the processes that are recited.
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Application No. 09/982,640

Skillen’s Abstract and the initial paragraphs of the Summary of the
Invention at column 1 indicate that the user is searching for “desired
information.” The scope of search of the user by means of search rules,
search arguments, search terms, search statements, or search criteria in
Skillen is not limited to the nature/topic of the information searched for or
the intent of the user (such as in claims 2, 7, 12, 19, 26, and 33). The
process itself of representative independent claim 1, for example, is not
different; the claim is only allegedly different in the nature of the
information or the characterization of it to which no patentable weight will
be given. Corresponding observations are appropriate as to Loeb as well.
Skillen’s advertising machine 10 in Figure 1 is also characterized as a
selling system at column 2, lines 11 through 32. Customers and advertisers
exercising buying and selling capabilities are taught generally at column 3,
lines 9 through 19; column 4, lines 64 through column 5, line 6, and column
6, lines 28 through 45.
According to the teachings of Skillen, the user is taught to be able to
enter information in various forms which may be considered a search
argument for use by various search engines in both figures of Skillen. There
are repeated teachings in Skillen of the user’s ability to do this in addition to
a feature taught associated with Figure 1 but explicitly shown in Figure 2 of
Skillen of the system of both figures assessing or otherwise keeping and
updating user profiles such as user profile database 48 in Figure 2. Because
the teachings of the operation of Figure 1 beginning at the middle of column
4 and the corresponding teachings of the operation of Figure 2 beginning at
the bottom of column 5 indicate the user preferences are sought, the user
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Application No. 09/982,640

may be considered to be queried by the system for modifying or otherwise
refining the searches that the user initially enters.
According to the operation of Figure 1 beginning at the middle of
column 4, the results of the initial pass of a search argument through the
database search engine 16 in Figure 1 to the contextual database 22 in that
figure yields results for the claimed first search results, which in turn are
passed along with the initial search arguments to the associative search
engine 18 in that figure for queries with respect to the product database 24
which in turn yields its own search results corresponding to the claimed
second search results. For purposes of the single search engine of claim 1,
both search engines or the result of the second one or either one of them may
yield a search result and correspondingly, the claimed first and second
search engines of claims 11 and 25 may correspond to these elements as
well. It is significant to note here that the claimed first and second search
engines are not recited to be different search engines such that search results
derived from either one of them and which is further modified or refined
according to the teachings of Skillen may yield a second result effectively
from a second search engine. Clearly, from Skillen’s teachings, the more
refined the search, the smaller the ending subset of results.
Based upon the remarks at oral hearing and the nature of the
arguments in the principal Brief and Reply Brief, consistent with the above
noted constraints, no patentable significance can be given to the
characterization of information content relating to connotations and
demographic usages such as in independent claims 39 and 42 on appeal.
The mere use of a contextual searchable database 22 in Figure 1 and 46 in
Figure 2 relates to connotative information. The intent of Skillen in the use
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of an associative search engine 18 in Figure 1 and 40 in Figure 2 relates to
the ability of Skillen to retrieve related information to that which may be
specifically recited in a search query of a user. Indeed, the Examiner has
pointed specifically to the teachings of fuzzy logic to the extent recited in
some of the dependent claims on appeal that is taught in Skillen. As to the
meanings attributed to the words “connotations” and “demographics,”
Skillen teaches related concepts at column 2, lines 44 through 58; column 3,
lines 1 through 19; column 4, lines 64 through column 5, line 6; and column
6, lines 28 through 45. As the nature of the search process proceeds from
the initial search through and to a refined search, the artisan would
appreciate that so-called “targeted” information is sought or searched for.
Skillen even teaches the ability to determine synonyms by use of the
logical “OR” at column 1, lines 19 through 25 and the alternate descriptions
discussion there in addition to the teachings at column 3, lines 20 through 28
and column 5, lines 7 through 17 as well as the user profiles discussed with
respect to the system of Figure 1 and the database associated with these
profiles as element 48 in Figure 2.
As grouped by the Examiner at the bottom of page 3 of the Answer,
no arguments are presented in the Brief as to dependent claims 3, 8, 13, 20,
27, and 34. As to Appellant’s arguments at page 25 of the principal Brief on
appeal relating to dependent claims 6, 18, and 32, we have already pointed
out that the nature of the teachings of Skillen includes customers. As to
Appellant’s remarks at pages 26 and 27 of the principal Brief on appeal
relating to dependent claims 23 and 37, we emphasize again that the two
search engines recited in other dependent claims are not recited to be
different in the sense of the same associative search engine in Figures 1 and
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2 of Skillen. To refine the initially returned search results, they utilize a
plurality of times the same set of fuzzy logic of claims 23 and 37. No
arguments are presented to us in the principal Brief on appeal as to
dependent claims 4, 9, 14 through 16, 21, 22, 28 through 30, 35, 36, 40, 41,
and 44.
Although most of these initial remarks in this opinion relate to the
rejection of various claims over Skillen, they do apply to each of the three
separately stated rejections of the claims on appeal. Likewise, to the extent
the Examiner has not addressed Appellant’s arguments in the principal Brief
on appeal to certain dependent claims relating to Skillen or Loeb, this
appears to be either an oversight or the Examiner is relying upon the stated
rejection effectively to respond to any additional remarks in the Briefs. We
have identified certain dependent claims not argued by Appellant with
respect to the rejection of Skillen and have addressed those that have been
argued.
As to Loeb, Figures 1 through 3 of this reference show a consumer or
customer of representative dependent claim 6 on appeal operating with a
central controller 110, the details of which are set forth in Figures 2 and 3 in
a query response dialog arrangement. Figures 2 and 3 show consumer
databases and a plurality of duplicate, even redundant servers such as the
search server and hot swap server as well as a database in a server farm and
presentation to a user server farm. Figure 4 relates to a consumer database
to which the artisan may attribute various demographics information.
Figures 6 and 7 relate to publisher and fulfillment house data structures and
their respective databases with respective contact points and address
information correlated to respective trade magazines or items to be sold to
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qualified users, customers, or consumers. Because Loeb teaches a dialog
that may be interactive between the user or consumer to effectively refine by
successive usages the nature of the information sought from either party, at
least two levels of search results are depicted in Figure 8, shown in Figure 9,
and shown in more detail in Figure 10 with examples given in various parts
in Figure 11. The ability of the systems to update or refine the searches and
qualifications of consumers is depicted in Figures 12 and 13.
The concept of a consumer/customer is discussed in the paragraph at
column 1, lines 42 through 57 to the point of even discussing advertisers and
sales or fees associated with the process. Of importance here is the ability to
target an audience for specific trade publications (also summarized at
column 15, lines 21 through 24) such as to elicit various demographics
information. Advertising may proceed to various consumers and
refinements thereof according to the discussion at column 9 outlined by the
Examiner in the Answer. At least according to the teachings at columns 11
and 12, a certain market analysis and demographic approaches to matching a
consumer database with magazine databases associated with trade
publications are taught. The nature of the algorithmic approaches appears in
Loeb to be more deductive than any other approach.
Our earliest remarks in this opinion relate to the features of dependent
claims 2 and 7 argued by Appellant with respect to the rejection relying
upon Loeb. Likewise, we have addressed the algorithmic recitations of
dependent claims 4, 9, 41, and 44. Other than independent claims 11 and 25,
no arguments are presented in the Brief and Reply Brief as to any dependent
claim depending from these independent claims according to the rejection
under Loeb.
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Appeal No. 2007-0220
Application No. 09/982,640

In view of the foregoing, the decision of the Examiner rejecting
various claims on appeal under 35 U.S.C. § 102 and 35 U.S.C. § 103 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

tdl

CHARLES R. SZMANDA
4 CROSSMAN AVENUE
WESTBOROUGH, MA 01581

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