Ex Parte Aviv et al

Patent Trial and Appeal Board

Oct 5, 2016

12961126 (P.T.A.B. Oct. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/961, 126 12/06/2010
23460 7590 10/07/2016
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
RonitAviv
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
271173 8595
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
10/07/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONIT A VIV and PETER HINMAN DIETRICH
Appeal 2014-004361 1
Application 12/961, 1262
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-18. An oral hearing was held on August 25, 2016.
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
November 18, 2013) and Reply Brief ("Reply Br.," filed February 18, 2014),
and the Examiner's Answer ("Ans.," mailed December 18, 2013) and Final
Office Action ("Final Act.," mailed April 18, 2013). The record includes a
transcript of the oral hearing.
2 Appellants identify Dynamic Logic, Inc. as the real party in interest. App.
Br. 1.
Appeal2014-004361
Application 12/961, 126
CLAIMED fNVENTION
Appellants' claimed invention "relates generally to on-line survey
recruitment methods and systems and, more particularly, to integrated
systems for selectively presenting on-line surveys to on-line users according
to current needs for participants identified as exposed/unexposed to an on-
line advertisement campaign (or particular aspect thereof) wherein
advertisements are delivered to user computers for display via browser client
applications" (Spec. 1, 11. 5-10).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method for administering on-line survey
recruitment on a network including a source of survey
recruitment definitions and a user computer, the method
compnsmg:
receiving, by the user computer, an on-line advertisement
block including both:
instructions for displaying an on-line advertisement
on a display of the user computer, such displaying of the
on-line advertisement, if not obstructed, resulting in
identification of the user computer as belonging to an
exposed group with regard to an on-line survey relating to
the on-line advertisement, and
a survey recruitment tag;
executing, by the user computer, the survey recruitment
tag and, as a result, issuing a request for a survey invitation,
wherein the request for the survey invitation includes:
information for determining previous exposure to
on-line advertisements, and
an advertisement identification corresponding to the
on-line advertisement;
and
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Appeal2014-004361
Application 12/961, 126
receiving, by the user computer, a response to the request
for a survey invitation, the response including an indication that
the user computer is to be maintained as a control group
participant in the on-line survey relating to the on-line
advertisement received in the on-line advertisement block; and
obstructing presentation of the on-line advertisement on
the display of the user computer in response to the receiving the
response including the indication.
REJECTION
Claims 1-18 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Jepson (US 8,234, 152 B2, iss. July 31, 2012; filed June 12,
2007).
ANALYSIS
Independent Claim 1 and Dependent Claims 2-6
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim l under 35 U.S.C. § 102(e) because Jepson does
not disclose an on-line advertisement block including both "instructions for
displaying an on-line advertisement on a display of the user computer" and
"a survey recruitment tag," as recited in claim 1 (App. Br. 7-8; see also
Reply Br. 4---6.
The Examiner equates the claimed "on-line advertisement block" to
Jepson's survey invitation banner, i.e., "banner Bl" (Final Act. 2-3). Yet
Jepson explicitly discloses that banner Bl contains "a survey recruitment
tag," i.e., survey invitation tag SITl, but does not contain any information
relating to the disclosed advertising campaign (Jepson, col. 2, 11. 22-24
("WeResearch then embeds the survey invitation tag SITl in a banner Bl
that does not contain any information relating to ad campaign ACl")).
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Appeal2014-004361
Application 12/961, 126
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 1under35 U.S.C. § 102(e). For the same reasons, we
also do not sustain the rejection of dependent claims 2-6.
Independent Claims 7 and 13 and Dependent Claims 8-12 and 14-18
Independent claims 7 and 13 include language substantially similar to
the language of claim 1. Therefore, we do not sustain the Examiner's
rejection under 35 U.S.C. § 102(e) of independent claims 7 and 13, and
claims 8-12 and 14--18, which depend therefrom.
DECISION
The Examiner's rejection of claims 1-18 under 35 U.S.C. § 102(e) is
reversed.
REVERSED
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