Ex Parte Yanase et al

Board of Patent Appeals and Interferences

Aug 29, 2007

09792151 (B.P.A.I. Aug. 29, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KAZUHIRO YANASE, HIDEKI AMEMIYA,
MAMORU FURUYA, and MAKOTO MAEKAWA
__________

Appeal No. 2007-0025
Application No. 09/792,151
Technology Center 3600
__________

Decided: August 29, 2007
__________

Before TERRY J. OWENS, HUBERT C. LORIN, and ANTON W. FETTING,
Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal from a decision of the Examiner rejecting claims 2-9 and
11-16. 35 U.S.C. § 134 (2002). We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
The invention is directed to a method (independent claims 2, 5, 9, and 13)
and system (independent claim 7, 8, 15, and 16) for providing advertising
information. In particular, the invention seeks to provide advertising information
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that is filtered “according to conditions that include information related to at least
one of the broadcast time, the broadcast area, and the preferences of the audience.”
(Specification 2:13-16). The goal of the invention is to present “only appropriate
advertising information desired by the viewer.” (Specification 2:17-18). The
invention reaches the goal by “includ[ing] information about at least one of a time,
a place, and preferences along with the program information” (claim 2) which is
then filtered according to conditions such as time, place or a preference. The
filtering can be accomplished through the use of a terminal device (claim 7) such
as a TPOCast terminal (Specification 12:18-23). One aspect of the invention is to
provide a means for storing the viewed advertising information on an external
device which can be taken to a store to be read. (Specification 3:15-19). This
aspect allows advertisers to clarify the effectiveness of the advertising.
(Specification 3:20-22).
The claims are rejected as follows:
• Claims 2-5, 7-9, 11-13, 15, 16 under 35 U.S.C. § 103(a) as being
unpatentable over Dedrick (5,724,521) in view of Angles (5,933,811) in view of
Freeman (6,450,407 B1); and,
• Claims 6 and 14 under 35 U.S.C. § 103(a) as being unpatentable over
Dedrick in view of Angles in view of Freeman in further view of Gerace
(5,848,396).
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We AFFIRM.
The Brief1 separately argues the following groups of claims:
• Claims 2, 7-9, 15, and 162 (Br. 14-18);
• Claims 5 and 13 (Br. 18-19);
• Claims 3 and 11 (Br. 19-20);
• Claims 4 and 123 (Br. 22-23); and,
• Claims 6 and 14 (Br. 20-22).

Claims 2-5, 7-9, 11-13, 15, 16 under 35 U.S.C. §103(a) as being unpatentable over
Dedrick in view of Angles in view of Freeman.
Claims 2, 7-9, 15, and 16
Because Appellants argue claims 2, 7-9, 15, and 16 as a group, pursuant to
the rules, the Board selects representative claim 2 to decide the appeal with respect
to this rejection, and claims 7-9, 15, and 16 will stand or fall with claim 2. 37
C.F.R. § 41.37(c)(1)(vii) (2006). It reads as follows:

1 Our decision will make reference to Appellants’ Appeal Brief (“Br.,” filed 18
May 2006), the Examiner's Answer (“Answer,” mailed 3 July 2006), and
Appellants’ Reply Brief (“Reply Br.,” filed 6 September 2006).

2 Although the Brief (pp. 14-18) includes claims 5 and 13 in the section discussing
these claims, claims 5 and 13 are also argued separately later in the Brief (pp. 18-
19). In light of their separate argument, we will decide the appeal as to claims 5
and 13 separate from these claims taking into consideration the arguments made as
to these claims.

3 The Brief (pp. 22-23) puts claim “11” in this group but since claim 11 was
addressed earlier in the Brief (pp. 19-20), we assume Appellants meant to refer to
claim 12, not claim 11.
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2. A method of providing advertising information via a broadcast server and
a terminal device connected to the broadcast server, the method comprising
the steps of:
broadcasting via said broadcast server advertising information that
includes information about at least one of a time, a place, and preferences
along with the program information;
filtering advertising broadcast by the broadcast server according to
conditions that include information about at least one of said time, place, and
preference, and presenting via said terminal device only suitable advertising
for a consumer;
storing, on an external recording medium in said terminal device, said
advertising information about advertising that is viewed on the terminal
device; and
settling, based on the stored advertising information, a consumer
account for a transaction involving a product or service associated with the
advertising viewed, performed by the consumer bringing said external
medium from a location of the terminal device to a store, and a terminal
device at the store reading said external medium to retrieve the stored
advertising information required for the transaction.

A. Issue
The Examiner contends that Dedrick, Angles, and Freeman disclose all the
features of the claimed method.
Appellants contend that Dedrick, Angles, and Freeman do not disclose all
the claimed features. Specifically, Appellants contend that
(1) “all three references teach that only the program information is broadcast
to the terminal device and fail to teach broadcasting advertisement information as
recited in the independent claims” (Br. 15);
(2) “all three references fail to teach storing the advertising information
regarding advertisements viewed on the terminal device on an extemal recording
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medium in the terminal device as recited in the independent claims” (Br. 16); and,
(3) “the combined references do not teach the settling limitation required by
Claims 2, 5, 7-9, 13, 15 and 16” (Br. 18).
The issue is whether Appellants have shown error in the rejection of claims
on the ground that Dedrick, Angles, and Freeman do not to disclose all the claimed
limitations.

B. Findings of Fact
The record supports the following findings of fact (FF) by a preponderance
of the evidence.
Broadcasting advertisement information
1. The step in the claim 2 process that is at issue is:
broadcasting via said broadcast server advertising information that
includes information about at least one of a time, a place, and preferences
along with the program information.

2. The Examiner found that
In one implementation [disclosed in Dedrick], the publisher/advertiser
18 is provided with a GUI which allows the publisher/advertiser 18 to select
certain consumer variables from a set of consumer variables and associate
the selected variables with specific objects or fields within the electronic
information. For example, the electronic information may include several
option fields from which end users may select. The publisher/advertiser 18
may associate a color preference variable with these option fields, thereby
indicating to the client systems 12 to track the color of the option field
selected by the end user" (col 4, lines 25-35).
Notice in these citations above that electronic content is broadcast to
the client device 12. Also, notice that the header block is broadcast to the
client device 12 that includes the identifiers for fields which may or may not
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be customized. Also, note that the header block can indicate a default color
or that the default color may be changed or not changed. Identifying default
colors for the program information/electronic content and which values of
the program information that can be changed or not changed qualifies as
advertising information that designates preferences related to the
program/content information. Hence, Dedrick discloses broadcasting both
content/program and advertising/preference information.
(Answer 17).
2. Appellants conceded that the references show broadcasting advertising
information. However, Appellants disagreed that Dedrick shows, in addition to
advertising information, broadcasting preference information, place or time.
… Dedrick does not teach broadcasting advertising information that
includes information about at least one of a time, place and preferences
along with the program information to the terminal device, as recited in
independent Claims 2, 5, 15 and 16 and similarly recited in Claims 7, 8, 9,
and 13. Dedrick teaches that the filtered program information is broadcast to
the customer or terminal device. The advertisement information is used to
filter the proper advertisement using a metering server and various other
servers. The user terminal only receives the program information. In
Dedrick, the end terminal client server does not filter the advertisement or
receive any advertisement information. See Figure 7a, and Col. 18-19.
Similarly, Angles fails to teach broadcasting both advertising
information and program information to the terminal device. The Angles
reference solely teaches that customized advertisements are selected based
on consumer profiles. See Abstract. Specifically, an advertising request is
sent to the advertisement provider's computer by the consumer's computer.
In response to this request, a custom advertisement is broadcast and
combined with the offering from the content providers computer and
displayed to the consumer. See Abstract. However, the preference
information, place or time is not broadcast with the advertisement.
The Freeman reference also suffers from the same deficiency.
(Br. 14-15).
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3. Dedrick discloses software tools for creating electronic information that
includes both content and advertising information that can be transmitted over a
system (Dedrick, col. 4, ll. 3-9).
4. Dedrick discloses an embodiment whereby the software tools embed
variables within the electronic information (Dedrick, col. 4, ll. 16-18). The
variables may be consumer variables associated with objects or fields within the
electronic information (Dedrick, col. 4, ll. 28-29). “For example, the electronic
information may include several option fields from which the end users may
select” (Dedrick col. 4, ll. 30-31).
5. Dedrick discloses color as an example of an option field.
For example, the header block of a given piece of electronic information
may include an indicator that a color preference variable is associated with
certain option fields. In addition, default colors for particular fields or
objects, or a default consumption format, such as audio or video, for the
electronic information may also be included in the header block.
(Dedrick, col. 4, ll. 52-58).
Storing the advertising information regarding advertisements viewed on the
terminal device on an external recording medium in the terminal device

1. The step in the claim 2 process that is at issue is:
storing, on an external recording medium in said terminal device, said
advertising information about advertising that is viewed on the terminal
device;

2. The Examiner found that:
… Freeman discloses that the advertising can be viewed at a terminal
device, that the chip card can store information on advertisements viewed.
Freeman discloses that the advertising can be viewed at a terminal device:
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"(63) Thumbnails of the advertisement information may be
downloaded so the user can view the advertisement information on
either a personal computer or on the chip card (col 10, lines 51-56);
The chip card may or may not incorporate an electronic ~ for
showing the advertisement information directly on the card (Abstract);
(40) The chip card may or may not incorporate an electronic
display for showing the advertisement directly on the card. If there is
no ~ on the card, an ad can be stored as a text, sound, graphics, or
video file such as JPEG or MPEG or as a pointer, e.g. a URL to an
Internet site that has the advertisement (col 9, lines 30-35);
(75) displaying the advertisement information either on a display built
into the card or on a display on a device with which the card
communicates (col 11, lines 50-53);
[Claim] 25. The method of claim 1 further comprising
downloading thumbnails of the advertisement information, so the user
can view the advertisement information on either a personal computer
or other presentation device, or on the chip card display" (col 23,
lines 37-42).
Also, note that Freeman's Fig. 3 (Fig. 3) discloses that the chip card
can connect with a Personal Computer.
Also, Freeman discloses that the chip card can store information on
advertisements viewed:
"(79) Information identifying the downloaded advertisement
information may be downloaded onto the chip card. At least some of
the information characterizing the user may be stored in the memory
of the chip card, or at least some of the information characterizing the
user may be stored on a computer network to which the chip card can
be connected. Stored on the chip card may be information
representative of the number of times that the advertisement
information has been displayed. Stored on the chip card may be
information representative of whether the chip card has been used to
purchase a product or service related to the advertisement information
downloaded onto the chip card. Stored on the chip card may be
information representative of whether the chip card has been used to
purchase a product or service related to the advertisement information
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downloaded onto the chip card, and information representative of the
number of times that the advertisement information has been
displayed prior to the time of the purchase. The information can be
stored on a computer network to which the chip card can be
connected, or in a memory on the chip card as part of an affinity
record (col 12, lines 15-36);
(80) The method may include downloading to the chip card
information identifying the downloaded advertisement information;
relating in a database the information identifying the downloaded
advertisement information, the information representative of the
number of times that the advertisement information has been
displayed, and the information representative of whether the chip card
has been used to purchase a product or service related to the
advertisement information downloaded onto the chip card. This
information may be related to information representative of the
number of times that the advertisement information has been
displayed prior to the time of the purchase (col 12, lines 36-50);
(97) The information stored on the chip card may contain
information identifying the specific product manufacturer or vendor, a
product identification, and an indicator of how many displays of the
advertisement information were performed prior to the customer's first
purchase of the item or items advertised" (col 14, lines 17-23).
Hence, Freeman discloses storing advertising information for
advertising viewed on a terminal device.

(Answer 21-23.)(Emphasis Examiner’s.)
2. Appellants disagreed arguing that:
Freeman does not disclose or suggest storing advertising information
for advertising viewed on a terminal device. While Freeman uses the phrase
"advertisement information", the phrase has a different meaning in the
claim. Specifically, Freeman defines "advertisement information" as (1)
advertising and (2) sales promotion. The "advertisement information" in
Freeman is the same as the program information in the claimed invention.
Accordingly, Freeman only teaches that the program information is
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stored and not the advertisement information.

(Br. 15-16.)
3. Freeman discloses “[d]ownloading to the chip card of advertising
information … ” (Freeman, col. 10, ll. 33-34).
Settling
1. The step in the claim 2 process that is at issue is:
settling, based on the stored advertising information, a consumer
account for a transaction involving a product or service associated with the
advertising viewed, performed by the consumer bringing said external
medium from a location of the terminal device to a store, and a terminal
device at the store reading said external medium to retrieve the stored
advertising information required for the transaction.

2. The Examiner found that

Freeman discloses that the chip card can be brought to a store for
settling a transaction related to the viewed advertising.
Freeman discloses that the chip card can be brought to a store for
settling a transaction related to the viewed advertising (sic, repetition of the
phrase is in the original) (Fig. 2 and below). And, Freeman discloses that the
rebate can apply to a present transaction at a Point-of-Sale terminal:

"FIG. 2 is a diagram of a typical retail application with a point-
of-sale
(POS) terminal (col 15, lines 21-25);
Rebates are conveyed to the consumer by communication from
the advertisement information provider to a customer's chip card via a
multiplicity of possible channels including: a personal computer, a
portable chip card reader, a point-of-sale (POS) terminal, a handheld
device, a home or business telephone, a vending machine, a cellular
phone, a pager, a mass transportation payment station, a television
and/or television set-top box, or an automated teller machine (ATM).
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Rather than giving a discount at the point of sale, a rebate in the form
of electronic money is stored in chip card memory (Abstract);
(34) The communication network is preferably comprised of
one or more point-of-sale (POS) terminals which communicate with
the chip cards at the time of sale (col 7, lines 64-67);
(35) then the consumer subsequently uses the chip card to make
a purchase which used the rebate stored on the chip card at a "bricks-
and-mortar" retail location (col 8, lines 28-31);
(5) At the time of a transaction, e.g., a purchase, the Merchant
113 calculates the amount of purchase and asks the consumer 105 for
payment. The Merchant 113 inserts the chip card 114 into the POS
terminal 116 and communication is established between the chip card
114 and the terminal 116 via serial data channel 115. Referring to
FIGS. 4-6, the serial communication channel is accomplished by
electrical contacts 133 and communication signals 141 of the chip
card 114. The amount of the sale is either hand-entered or transmitted
by the cash register 148 (col 16, lines 6-16);
(9) During the time that these preceding transactions are taking
place to obtain authorization, the POS terminal 116 downloads the
chosen ASP to the chip card. A new Affinity record is created in the
Affinity data block on the chip card containing the VENDOR ID 143,
PRODUCT ID 144, PRODUCT TYPE 145, ASP VERSION 151,
PRODUCT COST 146, and LOADS UNTIL PURCHASE 147 fields
associated with that particular ASP. There may be more than one
version of the ASP for a particular product for reasons of targeting the
message to particular customer groups, therefore a data field is
provided, ASP VERSION 151, which indicates which ASP has been
downloaded. Additionally, the chip card's Affinity Records are
uploaded to the POS terminal 116 and compared to items currently
being purchased (col 17, lines 5-18);
(11) The POS terminal 116 will read the Incentive Record 163
of the Affinity Record of all ASPs stored on the chip card 114 to
determine which have rebates associated with products that are
currently being purchased. There may also be a list of pointers within
the Affinity Data Block 164 to all ASPs which have rebates in order
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to speed processing by the POS terminal 116 (col 17, lines 41-49);
(14) Alternatively, information on rebates may not be stored on
the chip card, but rather may be stored either at the point-of-sale or on
the communication and processing network. At the time of purchase,
the ASPs stored on the chip card would be compared with rebate
information available either at the POS or on the communication and
processing network, and the appropriate rebate amounts determined
and loaded onto the chip card electronic purse (col 18, lines 20-27);
(15) Other embodiments may have the BASE_REBATE 158
field of the INCENTIVE RECORD 163 stored on the POS terminal
116 or on the communication and processing network while still
maintaining the other portions of the INCENTIVE_RECORD 163 on
the chip card. In this way, merchants and others can dynamically
adjust and control the incentive program while still allowing for
Loyalty Rebating using the remaining data available in the ASPs
INCENTIVE_RECORD 163" (col 18, lines 27-36).

(Answer 23-25.)(Examiner’s emphasis.)

3. Appellants disagree.

Appellants further submit that the references fail to teach the
limitation of settling, based on the stored advertising information, a
transaction or consumer account at a store based on the stored advertising
information by the consumer bringing said external medium from a location
of the terminal device to a store, as required by independent claims of
Appellants' claimed invention.
….
Freeman similarly teaches paying a customer via a rebate program.
….
Freeman differs from the claimed invention in that the rebate is not
applied to a present transaction, but rather stored as electronic money on the
chip card for later use. "Rather than giving a discount at the point of sale, a
rebate in the form of electronic money is stored in chip card memory." See
Abstract.
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(Br. 16-18).

4. Freeman discloses a chip card that stores an advertisement and associated
electronic money rebate which a consumer may take to a store to make a purchase.
(Freeman, col. 15, ll. 40-53). Freeman also discloses that a consumer may make a
concomitant purchase of a product associated with the advertising information
stored on the chip. (Freeman, col. 19, ll. 48-50).

C. Principles of Law
1. What a reference teaches is a question of fact. Panduit Corp. v. Dennison
Mfg. Co., 810 F.2d 1561, 1579 n.42, 1 USPQ2d 1593, 1606 n.42 (Fed.Cir. 1987).
2. “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., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (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 in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966). See also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“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
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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.” 383 U.S. at 18, 148 USPQ at 467.
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739, 82
USPQ2d at 1395, and discussed circumstances in which a patent might be
determined to be obvious.
In particular, the Supreme Court emphasized that “the principles laid down
in Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.” KSR,
127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham, 383 U.S. at 12, 148 USPQ
at 464 (emphasis added)), and reaffirmed principles based on its precedent that
“[t]he combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. The Court
explained:
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. 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. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use of
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prior art elements according to their established functions.” Id.
The Supreme Court made clear that that “[f]ollowing these principles may
be more difficult in other cases than it is here because the claimed subject matter
may involve more than the simple substitution of one known element for another
or the mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained, “[o]ften, it will be necessary for a court to
look to interrelated teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known elements in
the fashion claimed by the patent at issue.” Id. at 1740-41, 82 USPQ2d at 1396.
The Court noted that “[t]o facilitate review, this analysis should be made explicit.”
Id., citing In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”). However, “the
analysis need not seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.

D. Analysis
Appellants argue that three claimed steps are not disclosed in the cited
references: (1) “broadcasting via said broadcast server advertising information that
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includes information about at least one of a time, a place, and preferences along
with the program information” [advertising]; (2) “storing, on an external recording
medium in said terminal device, said advertising information about advertising that
is viewed on the terminal device” [storing]; and, (3) “settling, based on the stored
advertising information, a consumer account for a transaction involving a product
or service associated with the advertising viewed, performed by the consumer
bringing said external medium from a location of the terminal device to a store,
and a terminal device at the store reading said external medium to retrieve the
stored advertising information required for the transaction [settling].”
Advertising
The step at issue calls for broadcasting advertising information “that
includes … preferences along with the program information.” There is no dispute
that Dedrick shows broadcasting advertising information (FF 2). The question is
whether Dedrick (or another cited reference) shows broadcasting other information
with the advertising information. In that regard we agree with Examiner that
Dedrick shows this. Because the claim is broadly directed to broadcasting
advertising information with any “preference” information, it encompasses any
information that the end consumer may want to select; for example, color. Since
Dedrick shows broadcasting advertising information with electronic information
with options, such as color, that an end user may want to select (FF 3-5), we find
that Dedrick discloses the step at issue.
Storing
The step at issue calls for storing advertising information viewed on the
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terminal device onto an external medium. We agree with the Examiner that
Freeman discloses storing advertising information onto an external device (FF 3).
Accordingly we find Freeman discloses this limitation.
Appellants argue that “Freeman does not disclose or suggest storing
advertising information for advertising viewed on a terminal device. While
Freeman uses the phrase "advertisement information," the phrase has a different
meaning in the claim” (FF 2). However, Appellants do not explain what that
difference is. We understand Appellants to be attaching a value to the advertising
information Freeman downloads onto the external device that is, in Appellants’
view, as important as the claimed broadcasting information but not as important as
the claimed advertising information. But the attaching of levels of importance,
without more, amount to the giving of an opinion and as such is not patentably
significant.
Settling
The step at issue calls for (a) a consumer to bring to a store the external
device with the stored advertising information where it is read and (b) settling a
consumer’s account for a transaction associated with the advertising viewed –
which would encompass the advertising information stored on the external device.
In our view, we find that Freeman discloses all the features of this step (FF 4).
Appellants argue that “Freeman differs from the claimed invention in that
the rebate is not applied to a present transaction, but rather stored as electronic
money on the chip card for later use” (FF 3). The difficulty with this argument is
that it is not commensurate in scope with what is claimed. Nothing in the claim
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requires settling the consumer’s account at the time the transaction is made.
All the arguments having been addressed and found unpersuasive as to error
in the rejection, we affirm.

E. Conclusion of Law
On the record before us, Appellants have failed to show that the Examiner
erred in rejecting claims 2, 7-9, 15, and 16 over the prior art.

Claims 5 and 13
Because Appellants argue claim 5 and 13 as a group, pursuant to the rules,
the Board selects representative claim 5 to decide the appeal with respect to this
rejection, and claim 13 will stand or fall with claim 5. 37 C.F.R. § 41.37(c)(1)(vii)
(2006). It reads as follows:
5. A method of evaluating the effectiveness of advertising in a system for
providing advertising via a broadcast server and a terminal device connected
to the broadcast server, the method comprising:
broadcasting via said broadcast server advertising information that
includes information about at least one of a time, a place, and preferences
along with program information;
filtering advertising broadcast by the broadcaster server according to
conditions that include information about at least one of said time, place, and
preference, and presenting via the terminal device only suitable advertising
for a consumer;
storing on an external recording medium in said terminal device said
advertising information for advertising that is viewed on the terminal device;
and
settling, based on the stored advertising information, a consumer
account for a transaction involving a product or service associated with the
advertising viewed, performed by the consumer bringing said external
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medium from a location of the terminal device to a store for the advertised
product or service, a second terminal device located in the store reading the
advertising information from said external medium, sending via a
communication line the advertising information that is read to said broadcast
server, carrying out an advertising survey, and thereby providing
information about the effectiveness of the advertising.

A. Issue
The issue is whether Appellants have shown error in the rejection of claim 5
on the ground that Dedrick, Angles, and Freeman do not to disclose all the claimed
limitations.

B. Findings of Fact
We incorporate herein the facts set forth in the Facts section for the rejection
of claims 2, 7-9, 15, and 16 above and add the following facts, all of which the
record supports by a preponderance of the evidence.
1. Appellants argue that “the Examiner is misinterpreting the phrase,
‘advertising survey’” (Appeal Br. 18).
The Examiner interprets the "advertising survey" as being a
questionnaire to the customer where the customer provides answers using an
interactive interface. In stark contrast, the claimed invention does not require
any affirmative action by the customer to answer the questionnaire.
Specifically, in a disclosed embodiment of the invention, the specification
states:
Due to this structure, the advertising play data is stored on an external
medium such as a memory card, and the consumer can go to the store
when there has been a product or service the consumer wishes to
purchase in the advertisement. In addition, when the accounts for the
advertised product or service are settled, this external recording
medium is read by the terminal in the store, the settlement of accounts
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Application 09/792,151

is carried out if products or services were purchased at the store, and
in addition, by sending this advertising play data to the broadcast
business, information related to the effectiveness of the advertising
can be obtained at any time without carrying out a survey such as a
questionnaire.

Page 6.
Claim 5, recites, inter alia, a second terminal device located in the
store reading the advertising information from said external medium,
sending, via a communication line, the advertising information that is read to
said broadcast server, carrying out an advertising survey, and thereby
providing information about the effectiveness of the advertising. A
similar limitation appears in Claim 13.
Appellants submit that the limitation of carrying out an advertising
survey is not the same as what is taught by the prior art. Therefore,
Appellants respectfully submit that the reference fails to read on this
limitation.

(Appeal Br. 19-20.)(Emphasis added and emphasis in original.)
2. Claim 5 is not limited so as to exclude an affirmative action by the customer
to answer the questionnaire.

C. Principles of Law
We incorporate herein the Principles of Law set forth in the Principles of
Law section for the rejection of claims 2, 7-9, 15, and 16 above and add the
following:
1. “Many of appellant's arguments fail from the outset because, as the solicitor
has pointed out, they are not based on limitations appearing in the claims.” In re
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Application 09/792,151

Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982).

D. Analysis
We incorporate herein the analysis set forth in the Analysis section for the
rejection of claims 2, 7-9, 15, and 16 above and add the following comment.
We are not persuaded that Appellants have shown error in the rejection.
Appellants take issue with the Examiner’s construction of the claim but the
construction of the claim that Appellants are advocating is not reflected in the
language of the claim. Appellant is arguing a construction of the claim, which
requires for our agreement, that we impermissibly import a limitation into the
claim. Since we may not import limitations into a claim that are inconsistent with
the broadest reasonable construction to be given a claim in light of the
Specification as interpreted by one of ordinary skill in the art, and Appellants have
not pointed to any language in claim 5 that shows the subject matter to be limited
as argued, we find Appellants’ argument unpersuasive as to error in the rejection.

E. Conclusion of Law
On the record before us, Appellants have failed to show that the Examiner
erred in rejecting claims 5 and 13 over the prior art.

Claims 3 and 11
Because Appellant argues claims 3 and 11 as a group, pursuant to the rules,
the Board selects representative claim 3 to decide the appeal with respect to this
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rejection, and claim 11 will stand or fall with claim 3. 37 C.F.R. § 41.37(c)(1)(vii)
(2006). Claim 3 reads as follows:
3. The method of providing advertising information according to Claim 2
comprising:
confirming that the advertising information recorded on said external
medium is for advertising for a product or service that is handled at this
store; and
reflecting a bonus in the settlement of the account for said product or
service.

A. Issue
The issue is whether Appellants have shown error in the rejection of claim 3
on the ground that Dedrick, Angles, and Freeman do not disclose all the claimed
limitations.

B. Findings of Fact
We incorporate herein the facts set forth in the Finding of Facts section for
the rejection of claims 2, 7-9, 15, and 16 above and add the following facts, all of
which the record supports by a preponderance of the evidence.
1. The Examiner found “Dedrick further discloses sales (col 1, lines 28-42; col
1, lines 53-59) the user making purchases (col 10, lines 1-5) and tracking all user
activity (col 17, lines 15-30), and tracking advertising activity (col 9, lines 27-47).”
(Answer 11).
2. The Examiner found that “Dedrick does not explicitly disclose:
confirming the advertising information recorded on said external medium is
advertising for a product that is handled at this store, and reflecting this in the
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settlement of accounts for said product or service” (Answer 11).
3. The Examiner relied on Angles to show as known
varying rates for advertisements according to advertisement success (col
20, lines 30-34), settling accounts according to the success of advertisements
intended to incite purchase (col 20, lines 17-37; col 20, lines 55-64), and that
the advertisements are intended to incite purchase from a user (col 2, lines
29-42). Angles further discloses confirming the advertising information
recorded on said external medium is advertising for a product that is handled
at this online store, and reflecting this in the settlement of accounts for said
product or service (col 2, lines 30-35; col 20, lines 20-37).

(Answer 11).
4. Appellants argued that
… the hypothetically combined references also fail to teach
"confirming that the advertising information recorded on said external
medium is for advertising a product or service that is handled at this store;
and reflecting a bonus in the settlement of the account for said product or
service", as recited in Claim 3 and similarly recited in Claim 11.
Appellants respectfully submit that the Examiner's rejection is without
merit and fails to address the claim limitation as recited. Specifically, the
Examiner avers that Angles discloses varying rates for advertisements
according to advertising success, See page 10, yet the limitation recited is
regarding confirming that the advertising information recorded is for the
product or service that is handled at the store. The identified sections in
Angles discuss success of the advertisement based upon viewing of the
advertisement and requests for additional advertising information. Angles
does not mention products or services purchased or products or services for
a particular store. Accordingly, Appellants submit that the references fail to
teach, suggest, or render obvious this limitation as recited in Claims 3 and
11. [Emphasis added.]

(Appeal Br. 20).
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5. Angles discloses embedding advertisements into electronic documents
which advertisements are custom advertisements which can contain hyper-links to,
for example, a purchase order request form (Angles, col. 4, ll. 6-16).

C. Principles of Law
We incorporate herein the Principles of Law set forth in the Principles of
Law section for the rejection of claims 2, 7-9, 15, and 16 above.

D. Analysis
Appellants argue that Angles does not mention products or services
purchased or products or services for a particular store (FF 4). However, Angles
clearly discloses that its invention covers custom advertisements that may be
hyper-linked to a purchase order request form, for example. One of ordinary skill
in the art reading this disclosure would understand that stores with products and
services they handle are among the types of businesses which would provide
custom advertisements connected to purchase order request forms. Accordingly, to
one of ordinary skill in the art, Angles would suggest to one of ordinary skill in the
art products or services purchased or products or services for a particular store.
Accordingly, Appellants’ argument is unpersuasive as to error in the rejection.

D. Conclusion of Law
On the record before us, Appellants have failed to show that the Examiner
erred in rejecting claims 3 and 11 over the prior art.
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Claims 4 and 12
Because Appellants argue claims 4 and 12 as a group, pursuant to the rules,
the Board selects representative claim 4 to decide the appeal with respect to this
rejection, and claim 12 will stand or fall with claim 4. 37 C.F.R. § 41.37(c)(1)(vii)
(2006). It reads as follows:
4. A method of providing advertising according to Claim 2 wherein said
external medium includes electronic cash information.

A. Issue
The issue is whether Appellants have shown error in the rejection of claim 4
on the ground that Dedrick, Angles, and Freeman do not to disclose all the claimed
limitations.

B. Findings of Fact
We incorporate herein the facts set forth in the Finding of Facts section for
the rejection of claims 2, 7-9, 15, and 16 above and add the following fact, all of
which the record supports by a preponderance of the evidence.
1. Appellants argue that “Claims 4 and 11 are patentable over the cited prior art
based upon at least the above-identified analysis. Specifically, the hypothetically
combined references fail to teach, suggest, or render obvious each and every
limitation of independent Claims 2 and 9, which Claims 4 and 11 depend from.”
(Appeal Br. 23).

Appeal 2007-0025 Page 26
Application 09/792,151

C. Principles of Law
We incorporate herein the Principles of Law set forth in the Principles of
Law section for the rejection of claims 2, 7-9, 15, and 16 above.

D. Analysis
Because Appellants make the same argument for patentability of
claim 4 as was made for claim 2 (FF 1), we incorporate herein the reasons we used
in finding the arguments per claim 2 unpersuasive as to error in the rejection, and
find that for the same reasons Appellants have not shown error in the rejection of
claim 4.

E. Conclusion of Law
On the record before us, Appellants have failed to show that the Examiner
erred in rejecting claims 4 and 12 over the prior art.

Claims 6 and 14 under 35 U.S.C. § 103(a) as being unpatentable over Dedrick in
view of Angles in view of Freeman in further view of Gerace.
Because Appellants argue claims 6 and 14 as a group, pursuant to the rules,
the Board selects representative claim 6 to decide the appeal with respect to this
rejection, and claim 14 will stand or fall with claim 6. 37 C.F.R. § 41.37(c)(1)(vii)
(2006). It reads as follows:
6. A method of evaluating the effectiveness of advertising according to
Claim 5 comprising the steps of:
determining by said broadcast server the advertising rates according to
sales and earning for the product or service according to the advertising
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survey; and
carrying out the settlement of the account.

A. Issue
The issue is whether Appellants have shown error in the rejection of claim 6
on the ground that Dedrick, Angles, Freeman and Gerace do not to disclose all the
claimed limitations.

B. Findings of Fact
We incorporate herein the facts set forth in the Finding of Facts section for
the rejection of claims 2, 7-9, 15, and 16 above and add the following facts, all of
which the record supports by a preponderance of the evidence.
1 The Examiner found that “Dedrick and Angles and Freeman disclose a
method of evaluating the effectiveness of advertising according to Claim 5.
Dedrick further discloses sales (col 1, lines 28-42; col 1, lines 53-59) the user
making purchases (col 10, lines 1-5) and tracking all user activity (col 17, lines 15-
30), and tracking advertising activity (col 9, lines 27-47) and that there are variable
advertisement rates (col 14, lines 7-25)” (Answer 12).
2. The Examiner found that “Dedrick does not explicitly disclose that
advertisement rates vary according to advertisement success” (Answer 12).
3. In that regard, the Examiner relies on Angles to show as known “ varying
rates for advertisements according to advertisement success (col 20, lines 30-34),
settling accounts according the success of advertisements intended to incite
purchase (col 20, lines 17-37; col 20, lines 55-64), and that the advertisements are
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intended to incite purchase from a user (col 2, lines 29-42). Furthermore, accessing
an advertisement for further information related to a purchase is purchase related
information” (Answer 12).
4. The Examiner found that “Angles does not explicitly disclose utilizing
actual purchase information” (Answer 12).
5. In that regard, the Examiner relies on Gerace to show as known ”varying
advertisement rates according to purchase information (col 2, lines 39-43)”
(Answer 12).
6. The Examiner concluded that “it would have been obvious to one having
ordinary skill in the art at the time the invention was made to add Gerace's actual
purchase information to Angles purchase related information such that the
information can be utilized by Dedrick to vary the rates for advertisements. One
would have been motivated to do this in order to charge better rates for
advertisements that are deemed for effective” (Answer 12-13).
7. Appellants argued that
the combined references do not suggest determining the advertising rates
according to sales and earnings for the product, according to the advertising
survey. Gerace solely teaches tracking sales from the display of the
advertisement to the user. There is no suggestion to vary the advertisement
rate based upon these sales. In fact, Gerace does not even address the cost of
advertisements. While it is true that Dedrick teaches varying the
advertisement rates, and Angles teaches varying advertisements rates based
upon requests by a customer, the combined references do not support the
Examiner's contention.

(Appeal Br. 20).
8. Appellants also argued that “there is no motivation to combine Gerace and
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the other three references; they address different problems. … The Examiner
makes no showing of the state of the art at the time of the invention evidencing that
those skilled in the art appreciated the problems solved by the present invention”
(Appeal Br. 20-22).
9. Appellants also argued that
the [Examiner’s] motivation is not suggested by any of the cited references.
The Examiner solely alleges that the motivation would have been that such a
combination that one of ordinary skill in the art would have been motivated
to combine the reference in order to charge better rates for advertisements
that are deemed more effective. First, the phrase "better rates" is subjective,
as an advertiser would not want to pay a higher rate as punishment for their
ability to create or write an effective advertisement. Additionally, an
advertiser might not want to share the sales information with another
company. Such a conclusory statement is insufficient to show a motivation
or suggestion to modify the references.

(Appeal Br. 22).

C. Principles of Law
We incorporate herein the Principles of Law set forth in the Principles of
Law section for the rejection of claims 2, 7-9, 15, and 16 above.

D. Analysis
Appellants argue that there is no suggestion to vary the advertisement rate
based upon these sales. However, Appellants concede that “Dedrick teaches
varying the advertisement rates, and Angles teaches varying advertisements rates
based upon requests by a customer” (FF 7). Furthermore, it is well known that
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requests by consumers may include purchases. Accordingly all the elements of the
argued-for feature – i.e., vary the advertisement rate based upon these sales – are
known in the art. “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739, 82 USPQ2d 1385,
1395 (2007). In that regard, Appellants have provided no objective evidence of
unexpected results.
Appellants also argue that “there is no motivation to combine Gerace and the
other three references; they address different problems” (FF 8). However, just
because references address different problems does not, per se, affect their
applicability as prior art against the claims.
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. 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. at 1740, 82 USPQ2d at 1396).
Finally, Appellants argue that the “Examiner solely alleges that the
motivation would have been that such a combination that one of ordinary skill in
the art would have been motivated to combine the reference in order to charge
better rates for advertisements that are deemed more effective” (FF 9). Appellants
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argue that the rationale the Examiner has used to combine the prior art teachings to
reach the claimed invention is conclusory. We do not agree. The rationale the
Examiner provides is rationally unpinned. In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”) It is well-accepted that advertisements encourage
purchases of an advertised product. Those that do a more effective job at getting
purchases for the product advertised might be expected to be charged better rates
for their advertisements. Appellants argue that "better rates" is subjective and
might include an advertiser paying a higher rate as punishment for their ability to
create or write an effective advertisement. However, the claim makes no
distinction as to the level of advertising rates that should be applied. Accordingly,
the claim encompasses determining advertising rates that would require the more
effective advertisers to pay a “better” higher rate. Appellants also argue that an
advertiser might not want to share the sales information with another company and
thus defeat any determination of advertising rates according to sales and earning
for the product or service according to the advertising survey. While that
possibility might exist, the more likely probability is that sales information can be
obtained through other sources. The claim leaves open the source of the sales
information. The claim requires only that the sales information exist so that
advertising rates can be determined. Where that information can be obtained is left
open and need not be obtained from the company doing the advertising.
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All of Appellants’ arguments having been addressed and found unpersuasive
as to error in the rejection, we affirm the rejection.

E. Conclusion of Law
On the record before us, Appellants have failed to show that the Examiner
erred in rejecting claims 6 and 14 over the prior art.

DECISION
The Examiner’s rejection of claims 2-9, 11-16 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
AFFIRMED

hh

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