Ex Parte Boss et al

Patent Trial and Appeal Board

Apr 29, 2015

10726186 (P.T.A.B. Apr. 29, 2015)

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.
10/726,186 12/01/2003 Gregory J. Boss YOR920030466US1 3429
59144 7590 04/30/2015
CAHN & SAMUELS, LLP
1100 17th STREET, NW
SUITE 401
WASHINGTON, DC 20036
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
04/30/2015 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY J. BOSS and KEVIN C. McCONNELL
____________

Appeal 2012-006334
Application 10/726,186
Technology Center 3600
____________

Before JENNIFER D. BAHR, EDWARD A. BROWN, and
THOMAS F. SMEGAL, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 5–21, 25–31, and 35–48. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to instant advertisements
encountered when accessing pages on the World Wide Web.” Spec. 1, ¶ 1.
Claims 1, 21, and 31 are independent. Claim 1 is illustrative of the claimed
subject matter and reads:

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1. A method of managing a display of an unsolicited instant
advertisement, comprising:
detecting an attempt to display the unsolicited instant
advertisement in a primary browser window;
relocating the unsolicited instant advertisement to a
database that is not part of the primary browser window, the
unsolicited instant advertisement relocated with a relocation
module without deleting the unsolicited instant advertisement;
characterizing unsolicited instant advertisements in the
database from metadata attached to content of the unsolicited
instant advertisements;
sorting the unsolicited instant advertisements in the
database;
scanning the content of the unsolicited instant
advertisement for hyperlinks;
automatically activating at least one of the hyperlinks
based on said filtering to reward a web site issuing the
unsolicited instant advertisement;
determining information about a company presenting the
unsolicited instant advertisement from databases, reports,
privacy policies, and cookie use;
displaying the unsolicited instant advertisement in the
database; and
appending the display of the unsolicited instant
advertisement in the database with the information about the
company presenting the unsolicited instant advertisement.

REJECTION

Claims 1, 5–21, 25–31, and 35–38 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Cowden (US 2003/0098 A1, published May
29, 2003), Loughmiller (US 2005/0076084 A1, published Apr. 7, 2005),
Jeannin (US 2002/0083469 A1, published June 27, 2002), and Messer (US
2004/0230491 A1, published Nov. 18, 2004).

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ANALYSIS
Claims 1, 5–18, 20, and 41–43
Claim 1 recites, in part, “determining information about a company
presenting the unsolicited instant advertisement from databases, reports,
privacy policies, and cookie use” (“determining step”), and “appending the
display of the unsolicited instant advertisement in the database with the
information about the company presenting the unsolicited instant
advertisement” (“appending step”). Emphasis added. The Examiner
interprets the appending step as adding, to the advertisement, information
about the company that provided the advertisement. Ans. 17. The Examiner
determines that the claim does not specify what information about a
company is determined.” Id.
The Examiner determines that Jeannin discloses the claimed
appending step (Ans. 21), finding that Jeannin discloses providing an
advertisement, along with information about an object, such as
“vendor/manufacturer information,” appended to the advertisement (id. at
19–20 (citing Jeannin, ¶ 38; Fig. 5; see also id. at 21).
Jeannin discloses that a user viewing an audiovisual program that
shows an object, and contains an embedded advertisement for the object,
may request that the advertisement be displayed by clicking on the object, or
the user may be informed that an embedded advertisement is linked to the
object without clicking on the object. Jeannin, ¶ 37. Jeannin describes that
Figure 5 shows exemplary advertisement/product information that may be
displayed in information window 210. Id. at ¶ 38. The information
displayed in window 210 includes a link 220 to a web site where more
information about the displayed object is available. Id. Other information
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about the object can be provided in window 210, including
vendor/manufacturer information. Id.
The Examiner notes that Figure 7 of Jeannin shows that
advertisements can be provided in a list, and ad-related information can be
appended to links to the advertisements. Ans. 21. Figure 7 shows summary
240 of advertisements created by a user. See Jeannin, ¶ 40.
Appellants contend that Jeannin does not disclose the claimed
“appending” step. Br. 8. Particularly, Appellants contend that the Examiner
“erred in finding that the creation of the ‘summary of advertisements 240’”
in Jeannin teaches the claimed appending step. Id. Appellants assert that the
Examiner’s position is that Jeannin’s summary 240 of advertisements
teaches “information about the company presenting the unsolicited
advertisement” (id.), but Jeannin does not disclose appending the display of
an unsolicited instant advertisement with the summary 240 of
advertisements (id. at 9).
Appellants’ contentions do not persuasively address the Examiner’s
findings. Namely, as discussed above, Figure 5 of Jeannin depicts an
advertisement for an object displayed in information window 210. Jeannin
describes that vendor/manufacturer information for the object that the
advertisement pertains to can additionally be displayed in information
window 210. See Jeannin, ¶ 38. Appellants do not provide any persuasive
argument why this vendor/manufacturer information is not “information
about the company presenting the unsolicited instant advertisement,” or why
this information is not “appended” to the displayed advertisement.
Appellants also contend that Jeannin does not disclose that the
summary 240 of advertisements (“information about the company presenting
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the unsolicited instant advertisement”) are determined “from databases,
reports, privacy policies, and cookie use,” as claimed. Br. 9.
In response, the Examiner points out that paragraph 38 of Jeannin
describes, “a link 220 to a pertinent Internet Web site where more
information about the object is available. Other information could also be
provided in window 210 including metadata such as vendor/manufacturer
information, an audiovisual demonstration such as a commercial, and any
other relevant multimedia data.” Ans. 23.
Appellants do not provide any persuasive argument why Jeannin’s
disclosure in paragraph 38 of providing additional information about the
object by accessing a web site or sources of other information fails to
disclose determining information about the vendor/manufacturer from
“databases,” as claimed. Jeannin thus appears to also disclose the claimed
“determining” step.
Appellants also contend that each of Cowden (Br. 9–10), Loughmiller
(id. at 10), and Messer (id. at 10–11) fails to disclose the claimed
“determining” and “appending steps.” However, because Appellants do not
apprise us of any error in the Examiner’s determination that Jeannin
discloses these steps, we do not find it necessary to further determine
whether Appellants’ additional contentions regarding Cowden, Loughmiller,
and Messer have merit.
For the foregoing reasons, we sustain the rejection of claim 1. We
also sustain the rejection of claims 5–18, 20, and 41–43, which depend from
claim 1 and are not separately argued.

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Claim 19
Claim 19 depends from claim 1 and recites, “further comprising
saving the unsolicited instant advertisement in a digest form without
graphics.” The Examiner finds that Cowden discloses the features of claim
19. Ans. 25. Particularly, the Examiner finds that Cowden discloses a list of
blocked ads/windows that a user can click on to see the actual ad/window
“functions as an ad saved in digest form without graphics.” Id. (citing
Cowden, ¶ 81).
Appellants contest the Examiner’s findings for Cowden. Br. 17–18.
Appellants also contend that the Examiner does not assert that Loughmiller
teaches saving an advertisement in a digest form. Br. 18. However, the
Examiner also finds that Loughmiller discloses the features of claim 19.
Ans. 25–27. As Appellants do not apprise us of any error in the Examiner’s
additional findings or reasoning regarding Loughmiller, we sustain the
rejection of claim 19.
Claims 21, 25–30, and 44–46
Independent claim 21 recites, in part, “a seventh set of instruction
codes for determining information about a company presenting the
unsolicited instant advertisement from databases, reports, privacy policies,
and cookie use,” and “a ninth set of instruction codes for appending the
display of the unsolicited instant advertisement in the database with the
information about the company presenting the unsolicited instant
advertisement.” Emphasis added.
The Examiner’s findings (Ans. 4–12, 24) and Appellants’ contentions
(Appeal Br. 11–14) for claim 21 are substantially the same as those for claim
1. Thus, we sustain the rejection of claim 21 for the reasons discussed above
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for claim 1. We also sustain the rejection of claims 25–30 and 44–46, which
depend from claim 21 and are not separately argued.
Claims 31, 35–40, 47, and 48
Independent claim 31 recites, in part, “said detection engine . . .
determines information about a company presenting the unsolicited instant
advertisement from databases, reports, privacy policies, and cookie use, and
appends the display of the unsolicited instant advertisement in the database
with the information about the company presenting the unsolicited instant
advertisement.” Emphasis added.
The Examiner’s findings (Ans. 4–12, 24) and Appellants’ contentions
(Appeal Br. 14–17) for claim 31 are substantially the same as those for claim
1. Thus, we sustain the rejection of claim 31 for the reasons discussed above
for claim 1. We also sustain the rejection of claims, 35–40, 47, and 48,
which depend from claim 31 and are not separately argued.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 5–21, 25–
31, and 35–48.
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).

AFFIRMED
JRG