Ex Parte Avissar

Board of Patent Appeals and Interferences

Apr 25, 2012

11372407 (B.P.A.I. Apr. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/372,407 03/08/2006 Millo Avissar P-INC-7250-US 5251
66905 7590 04/25/2012
Naomi Assia Law Offices
C/O Landon IP Inc.
1725 Jamieson Ave.
Alexandria, VA 22314
EXAMINER
WEISS, JOHN
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
04/25/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MILLO AVISSAR1
____________________

Appeal 2011-002560
Application 11/372,407
Technology Center 3600
____________________
Before ANTON W. FETTING, KEVIN F. TURNER, and
MICHAEL W. KIM, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE2
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION

1 The real party in interest is INC2 WEBCOM LTD.
2 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed February 1, 2010) and the Examiner’s Answer (“Ans.,” mailed July 30,
2010).
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Appellant’s disclosure relates to a method of advertising which
enables advertisers to actively look for potential consumers and possibly
present advertisements tailored to a found potential consumer. ([¶ [0002].)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method, of advertising to a potential customer who is using
a computer connected to a network in which one or more
registered advertisers each having an advertisers terminal
connected to said network can tailor an ad to said potential
customer before said ad is presented to said potential customer;
the method including:
providing a system server;
storing information relating to each of said one or more
registered advertisers on a computer readable medium
associated with said system server;
capturing information relating to said potential customer’s use of
said computer on said network;
employing at least some of said captured information and some
or all of said information relating to said one or more registered
advertisers to identify one or more of said registered advertisers
as relevant advertisers for said potential customer; and
informing one or more of said relevant advertisers, in real time,
of said potential customer's activity whereby said one or more
of said relevant advertisers can tailor an ad to said potential
customer before said ad is presented to said potential customer.
(Br., Claims Appendix 9).

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Application No. 11/372,407

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PRIOR ART REJECTION
The prior art reference relied upon by the Examiner in rejecting the
claims is:
Patel et al. 2004/0103024 A1 May 27, 2004

The Examiner rejected claims 1-16 under 35 U.S.C. § 102(e) as
anticipated by Patel.

ISSUE
We detail the arguments raised by Appellant and the responses of the
Examiner below, and do not repeat the respective positions of Appellant and
the Examiner here. We have considered in this decision only those
arguments that Appellant actually raised in the Brief. Arguments which
Appellant could have made but chose not to make in the Brief are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
The dispositive issue arising from the respective positions of
Appellant and the Examiner is:
Whether the Examiner erred in relying on the “publisher” disclosed in
Patel to anticipate a “potential customer,” as presently claimed.

PRINCIPLES OF LAW
During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is examined using that meaning,
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in order to achieve a complete exploration of the applicant's invention and its
relation to the prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987).

FINDINGS OF FACT
Claim Construction
C1. Appellant’s Specification describes that product providers are
advertisers. (¶ [0019].)
C2. Appellant’s Specification describes that a user is a potential
consumer. (¶ [0019].)

Patel
P1. Patel is directed to an electronic advertising exchange system
which uses real-time tracking to support an inverted cost per action (CPA)
advertising model. (Abs; ¶ [0027].)
P2. Patel describes a centralized exchange (i.e., website) where
advertisers and publishers register to use the service. (¶ [0051].)
P3. Patel describes that the inverted CPA model inverts the traditional
roles of buyer and seller. (¶ [0038].)
P4. Patel further describes:
[i]n the inverted CPA model, it begins with advertisers.
Advertisers create offers comprised of the creative and
the price they are willing to pay for any action that may
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result. These offers are listed on the exchange system.
Publishers review these offers and select the ones that are
most appropriate. Thus, the commodity that is bought
and sold on the exchange system is really a promise by
the advertiser to pay for the actions resulting from a
publisher placing the ad on their site.
(¶ [0038].)
P5. Patel describes that its system operates like a commissions
exchange and “brings potentially undiscovered advertisers (or advertisers
willing to pay only via the exchange system) to publishers for no added
cost.” (¶ [0051]; See also ¶ [0046].)

ANALYSIS
Claims 1-16 rejected under 35 U.S.C. § 102(e) as anticipated by Patel.
Independent claim 1
Appellant’s arguments are limited to independent claim 1 and do not
address the merits of claims 2-16. (Br. 7.) As such, we take claim 1 as
representative of all of the rejected claims. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant’s sole argument is that the Examiner erred in relying on a
“publisher” to anticipate a “potential customer,” as presently claimed.
(Br. 3.) To support this argument, Appellant contends that a “customer” is
“someone who pays for goods or services” and a “publisher” is “one who
makes information, text, or music available through one or more of a variety
of means,” which are not synonymous. (Br. 5.) In light of these differences,
Appellant asserts that the Examiner has failed to “explain why publishers
would pay advertisers and thus become their customers.” (Br. 7.) We
cannot agree.
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While we agree with Appellant that the terms “publisher” and
“customer” have different meanings, we cannot agree with Appellant that
they would not overlap, and that a “publisher” cannot be a “customer” in the
context of the present claim, and is in fact, a “customer,” using Patel’s
electronic advertising exchange system. (FF P5.) Specifically, Patel
describes a centralized exchange which registers advertisers and publishers
to use its system. (FF P2.) Based upon Patel’s disclosure, we find that it is
reasonable to interpret both the advertisers and publishers described in Patel
as users or customers of its system. This interpretation is commensurate
with the scope of Appellant’s Specification which describes a “potential
customer” as a user. (FF C2.) Thus, under the broadest reasonable
interpretation, we find that the “potential customer” of claim 1 reads on the
“publisher” or user described in Patel. If the specification does not provide
an express definition of a claim term, the claim term is given the broadest
reasonable construction consistent with the specification. In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Additionally, we cannot agree with Appellant that the Examiner has
failed to “explain why publishers would pay advertisers and thus become
their customers.” (Br. 7.) In making this determination, we find that
Appellant’s assertion misinterprets the Examiner’s position and the Patel
reference itself. In the Final Office Action, the Examiner stated that “[t]o
the advertising entity, a publisher is a potential customer” (emphasis
original). (See Final Office Action 8; see also Ans. 10-11.) We take the
Examiner’s statement to refer to Patel’s electronic advertising exchange
system, and not necessarily the individual advertisers. This interpretation is
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commensurate with Patel’s commissions based advertising exchange model
which generates revenue by registering users. (See FF P1-P5.) Moreover,
we find that the Appellant has failed to explain why a publisher using Patel’s
advertising exchange would not be a potential customer of the exchange.
Accordingly, Appellant has failed to persuade us that the Examiner erred in
relying on a “publisher” to anticipate the “potential customer” of
independent claim 1.
Therefore, we sustain the Examiner’s rejection of independent claim
1, and its dependent claims 2-16, under 35 U.S.C. § 102(e) as anticipated by
Patel.

CONCLUSION
We conclude that the Examiner did not err in relying on the
“publisher” disclosed in Patel to anticipate a “potential customer,” as
presently claimed.
DECISION
We affirm the Examiner’s rejection of claims 1-16 under 35 U.S.C.
§ 102(e) as anticipated by Patel.
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).

AFFIRMED

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