Ex Parte Calabria et al

Patent Trial and Appeal Board

Mar 25, 2014

10741336 (P.T.A.B. Mar. 25, 2014)

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.
10/741,336 12/19/2003 Hermann Calabria A3360USNP/XERZ200650US02 8950
27885 7590 03/26/2014
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
03/26/2014 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 HERMANN CALABRIA, FRANCINE R. CHEN,
AYMAN O. FARAHAT, and DANIEL H. GREENE
____________

Appeal 2011-001050
Application 10/741,336
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001050
Application 10/741,336

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 3, 4, 6-19, 22-26, 29-46, 48-51, and 53-58.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants’ invention is directed to a method for generating a bid for
placement of an advertisement in association with a search results list, where
the search results list is generated in response to a search query (Abs.).
Claim 1 is illustrative:
1. A method of generating a bid in conjunction with a
competitive bidding process for a first advertiser for placement
of an advertisement, the method including:
a) selecting at least one keyword;
b) selecting an advertisement associated with the first
advertiser for placement in search results lists generated in
response to search queries associated with the at least one
keyword, wherein selecting the advertisement is based at least
in part on matching content of the advertisement to one or more
of the at least one keyword;
c) receiving information associated with other advertisers
in competition with the first advertiser from a bidding
coordination service, wherein the first advertiser and the other
advertisers are members of a cooperative group, wherein the
other advertiser information includes information associated
with utility of the at least one keyword to the other advertisers;
and
d) calculating a bid for the first advertiser for each at
least one keyword based at least in part on processing the other
advertiser information using group optimization logic to
determine a bidding strategy for the first advertiser in
conjunction with the at least one keyword that benefits the

Appeal 2011-001050
Application 10/741,336

3
members of the cooperative group in conjunction with
placement of advertisements in search results lists generated in
response to search queries associated with the at least one
keyword.

Appellants appeal the following rejections:
Claims 1, 3, 4, 6-19, 50, and 53 rejected under 35 U.S.C. § 103(a) as
being unpatentable over Meisel (US 7,035,812 B2; iss. Apr. 25, 2006) and
Daniel A. Graham and Robert C. Marshall, Collusive Bidder Behavior at
Single-Object Second-Price and English Auctions, The Journal of Political
Economy, 1217-39 (Dec. 1987) (hereinafter “Graham”).
Claims 22-24, 51, and 54-56 rejected under 35 U.S.C. § 103(a) as
unpatentable over Meisel, Graham, and Skinner (US 2003/0105677 A1; pub.
Jun. 5, 2003).
Claims 25, 26, 29, 30, 32-45, 48, 49, 57, and 58 rejected under 35
U.S.C. § 103(a) as unpatentable over Meisel and Skinner.
Claims 31 and 46 rejected under 35 U.S.C. § 103(a) as unpatentable
over Meisel, Skinner, and Paine (US 7,225,182 B2; iss. May 29, 2007).

FACTUAL FINDINGS
We find the following facts by a preponderance of the evidence.
Additional facts may appear below in the Analysis.
1. Appellants’ Specification describes that “group optimization logic
evaluates the bids from advertisers in the group and formulates cooperative
strategies for sharing time and adjusting bids” (para. [0085]).
2. Appellants’ Specification describes that “coordinating bids for a
group of advertisers includes exchanging information between the
Appeal 2011-001050
Application 10/741,336

4
advertisers in the advertiser group. The exchanged information may be
used, for example, for negotiation or relationship building” (para. [0091]).
3. Appellants’ Specification further describes that “in the cooperative
bidding environment of FIGURE 5, members of the group continue to
submit individual bids for keyword advertising positions . . .” (para. [0096]).

ANALYSIS
Claims 1, 3, 4, 6-19, 50, and 53 rejected under 35 U.S.C. § 103(a) as being
unpatentable over Meisel and Graham.
Independent claims 1 and 50
We are not persuaded of error by the Appellants’ argument that the
combination of Meisel and Graham fails to teach or suggest “selecting an
advertisement associated with the first advertiser for placement in search
results lists generated in response to search queries associated with the at
least one keyword, wherein selecting the advertisement is based at least in
part on matching content of the advertisement to one or more of the at least
one keyword,” as generally recited by independent claims 1 and 50. App.
Br. 16-17; Reply Br. 2-3.
We agree with the Examiner that each advertiser’s entry (see Fig. 7,
elements 710a – 710h) displayed in Meisel’s search results page in response
to a search query keyword can reasonably be construed as “an advertisement
associated with the first advertiser for placement in search results lists
generated in response to search queries associated with the at least one
keyword,” as presently claimed. In particular, Meisel discloses that each
advertiser’s entry consists of a title, short description of their website, and
hyperlink that directs a searcher to the advertiser’s website via URL (col. 24,
Appeal 2011-001050
Application 10/741,336

5
ll. 38-46). The Examiner’s reliance on the entries returned by Meisel’s
search page to address an “advertisement” is further supported by the fact
that Meisel discloses that an “impression” referral occurs each time a search
result item is displayed to the searcher (col. 24, ll. 48-52).
While Appellants assert that “selecting the ‘advertisement’ by
matching content of the ‘advertisement’ to a selected keyword as recited in
element b) of claim 1 is fundamentally different from selecting the search
terms that are relevant to the ‘advertiser’s web site’ as taught by Meisel”
(App. Br. 17; Reply Br. 2-3), we find Appellants’ assertion fails to recognize
that the Examiner is relying on each returned entry 710a–710h depicted in
the search page of Meisel’s Figure 7 to address an “advertisement,” rather
than the advertiser’s website itself (see Fig. 7). Therefore, since Meisel
discloses an automated process which evaluates search terms (i.e.,
keywords) and corresponding websites according to a set of predefined rules
(col. 10, ll. 20-32), we find one of ordinary skill in the art would appreciate
that Meisel’s system is matching the content of the “advertisement” to a
selected keyword, as presently claimed.
We are also not persuaded of error by the Appellants’ argument that
the combination of Meisel and Graham fails to teach or suggest “calculating
a bid . . . for each at least one keyword based at least in part on processing
the other advertiser information using group optimization logic to determine
a bidding strategy for the first advertiser in conjunction with the at least one
keyword that benefits the members of the cooperative group,” as generally
recited by independent claims 1 and 50. App. Br. 17; Reply Br. 4-5.
Appellants assert that adding the collusive bidding behavior of Graham to
Meisel’s ability to calculate a bid for an advertisement still fails to teach or
Appeal 2011-001050
Application 10/741,336

6
fairly suggest “calculating a bid for the first advertiser based on group
optimization logic” (Reply Br. 5).
However, Appellants’ briefs fail to direct us to any specific definition
in their Specification for the term “group optimization logic” which would
serve to distinguish “group optimization logic” from the cooperative bidding
strategies disclosed in Graham and relied on by the Examiner. See Ans. 5.
See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(“[d]uring examination [of a patent application, a pending claim is] given
[the] broadest reasonable [construction] consistent with the specification,
and . . . claim language should be read in light of the specification as it
would be interpreted by one of ordinary skill in the art”) (internal citation
and quotations omitted). To the extent Appellants’ Specification describes
that “group optimization logic” evaluates bids from advertisers in the group
and formulates cooperative strategies such as exchanging information
between the advertisers in the advertiser group for negotiation or
relationship building (FF 1, 2), we find that the Examiner has shown
Graham to disclose such cooperative strategies (see, e.g., pg. 1220, para. 3;
pg. 1218, fn. 3; pg. 1223, para. 4). See also Ans. 33-34.
Therefore, given that the Examiner relies on Meisel to disclose the
step of calculating a bid for an advertiser for a keyword (Ans. 4-5), to which
Appellants do not contest, and Graham teaches cooperative bidding
strategies commensurate with the scope of Appellants’ claims and
embodiments described within their Specification, we find the combination
of Meisel and Graham renders obvious the step of “calculating a bid . . . for
each at least one keyword based at least in part on processing the other
advertiser information using group optimization logic to determine a bidding
Appeal 2011-001050
Application 10/741,336

7
strategy for the first advertiser in conjunction with the at least one keyword
that benefits the members of the cooperative group,” as generally recited by
independent claims 1 and 50.
Equally unpersuasive is Appellants’ argument that Graham teaches
away from generating a bid for a bidder that “benefits the members of the
cooperative group.” App. Br. 17. Just because Graham describes a
secondary auction between members of the cooperative group, where one
member ultimately obtains the desired item initially bid upon by the group,
the fact does not change that Graham teaches cooperative bidding strategies,
and as such, does not disparage Appellants’ alleged purpose. See In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“[a] reference may be said to
teach away when a person of ordinary skill, upon [examining] the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant”).
In view of the foregoing, we will sustain the Examiner’s rejection of
independent claims 1 and 50. We will also sustain the rejection as it is
directed to dependent claims 4, 7, 8, 10-19, and 53 because the Appellants
have not argued the separate patentability of these claims.

Dependent claim 3
We are not persuaded of error by the Appellants’ argument that the
combination of Meisel and Graham fails to teach or suggest “the bid
generating method is client-based in relation to the first advertiser and the
keyword search engine,” as generally recited by dependent claim 3. App.
Br. 18; Reply Br. 5. Appellants assert that “Meisel does not disclose or
Appeal 2011-001050
Application 10/741,336

8
fairly suggest that the software running on PC clients includes software that
provides a ‘bid generating method.’” Reply Br. 5-6.
However, we agree with the Examiner that the system disclosed in
Meisel is a distributed system comprising a plurality of client computers in
communication with a server (col. 8, ll. 10-62; See Fig. 1). See also Ans. 36.
Additionally, we do not find the term “client-based” of claim 3 requires “the
bid generating method” to necessarily be performed by software running on
the client PC, but rather requires there to be some client/server relationship.
See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir.
2005) (while the specification can be examined for proper context of a claim
term, limitations from the specification will not be imported into the claims).
Therefore, because we find that the combination of Meisel and
Graham teaches or suggests the method of generating a bid, as discussed
supra with respect to independent claim 1, we will sustain the Examiner’s
rejection of claim 3.

Dependent claim 6
We are not persuaded of error by the Appellants’ argument that the
combination of Meisel and Graham fails to teach or suggest “wherein the at
least one keyword is selected at least in part by analyzing content of the
selected advertisement,” as recited by dependent claim 6. App. Br. 19;
Reply Br. 6-7. However, as discussed supra with respect to claim 1, we find
Appellants’ argument fails to recognize that the Examiner is relying on each
returned entry 710a –710h depicted in the search page of Meisel’s Figure 7
to address an “advertisement,” rather than the advertiser’s website itself (see
Fig. 7). Therefore, because Meisel discloses an automated process which
Appeal 2011-001050
Application 10/741,336

9
evaluates search terms (i.e., keywords) and corresponding websites
according to a set of predefined rules (col. 10, ll. 20-32), we find one of
ordinary skill in the art would appreciate that Meisel’s system is also “at
least in part by analyzing content of the selected advertisement,” as presently
claimed.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 6.

Dependent claim 9
We are not persuaded of error by the Appellants’ argument that the
combination of Meisel and Graham fails to teach or suggest “wherein the
advertisement management information includes at least one of a maximum
bid, a minimum bid, a plurality of bids ranging between a maximum bid and
a minimum bid, and a range for bids,” as recited by dependent claim 9. App.
Br. 20; Reply Br. 8. Meisel discloses that its bidding process occurs when
an advertiser enters a new set of bid element amounts for new or existing
search listings (col. 6, ll. 40-43.) Meisel further discloses that the value of
this set of bid element amounts is then compared with the values of all other
bids in order to generate new rank values for all search listings having that
search term (col. 6, ll. 44-48). While we acknowledge that Meisel does not
explicitly refer to these bid element amounts as “a maximum bid, a
minimum bid, a plurality of bids ranging between a maximum bid and a
minimum bid, and a range for bids,” we find that one of ordinary skill in the
art would understand the set of bid element amounts for new or existing
search listings disclosed in Meisel to correspond to at least a range for bids,
and as such, addresses the language of dependent claim 9.
Appeal 2011-001050
Application 10/741,336

10
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 9.

Claims 22-24, 51, and 54-56 rejected under 35 U.S.C. § 103(a) as
unpatentable over Meisel, Graham, and Skinner.
Dependent claim 23
Appellants argue that the combination of Meisel, Graham, and
Skinner fails to teach or suggest “also determines [return on advertising
investment] ROAI information for each of a plurality of combinations of one
or more keywords from the at least one keyword in conjunction with the
selected advertisement and the ROAI information is considered in a) to
select the advertisement,” as recited by dependent claim 23. App. Br. 24;
Reply Br. 9-10. Specifically, Appellants assert that Skinner fails to disclose
the step of selecting at least one keyword. Reply Br. 10.
We are not persuaded by Appellants’ argument as it attacks the
references separately, even though the rejection is based on their combined
teachings. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Contrary to Appellants’ assertion, the Examiner relies on
Meisel to disclose the step of selecting at least one keyword. Ans. 4. The
Examiner relies on Skinner to address the step of determining a return on
advertising investment (ROAI) based on that selected at least one keyword
(paras. [0012]; [0043]). See Ans. 13.
Accordingly, we are not persuaded of error by the Appellants’
argument, and as such, sustain the Examiner’s rejection of claim 23.
Appeal 2011-001050
Application 10/741,336

11
Dependent claim 54
Appellants argue that the combination of Meisel, Graham, and
Skinner fails to teach or suggest “wherein the bid in d) is calculated based at
least in part on dividing the number of web site visits that result in sales by
the total number of web site visits and multiplying this proportion by profit
generated by the web site sales,” as recited by dependent claim 54. App. Br.
25-26; Reply Br. 10. However, we agree with the Examiner that the argued
limitation is disclosed by Skinner. Ans. 14 and 39-40. Skinner discloses a
system that calculates a maximum acceptable bid by determining a search
term’s effectiveness by collecting and analyzing data relating to the
conversion rates, number of impressions, the number of clicks, and the
number of resulting sales generated by a search term at a given time period
(paras. [0012] and [0042] – [0060]).
Accordingly, we are not persuaded of error by the Appellants’
argument, and as such, sustain the Examiner’s rejection of claim 54.

Claims 22, 24, 51, 55, and 56
The rejection of claims 22, 24, 51, 55, and 56 is directed to claims
dependent on independent claims 1 and 50, whose rejection we have
sustained above. We will also sustain the rejection as it is directed to
dependent claims 22, 24, 51, 55, and 56 for these reasons and the reasons
discussed supra with respect to independent claim 1 because the Appellants
have not argued the separate patentability of these claims.

Appeal 2011-001050
Application 10/741,336

12
Claims 25, 26, 29, 30, 32-45, 48, 49, 57, and 58 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Meisel and Skinner.
Independent claims 25 and 37
Independent claims 25 and 37 each recite a requirement for “selecting
an advertisement associated with the advertiser based at least in part on
matching content of the advertisement to the plurality of keywords.” We
construe these limitations in a manner similar to the substantially similar
limitation in independent claims 1 and 50, as set forth above.
Appellants’ arguments for independent claims 1 and 50 are
substantially the same as those for claims 1 and 50, and rely solely on the
disclosure of Meisel. App. Br. 26-27, 31-32; Reply Br. 10-11, 12-13. As
such, we are similarly not persuaded by Appellants’ arguments for the same
reasons as to claims 1 and 50, supra. Therefore, we affirm the rejection of
independent claims 25 and 37 as unpatentable over Meisel and Skinner
under 35 U.S.C. § 103(a), and their respective dependent claims. App. Br.
26, 31.

Dependent claims 33-35
We are not persuaded of error by the Appellants’ arguments that the
combination of Meisel and Skinner fails to teach or suggest matching the
content of the selected advertisement to keywords or selecting key words at
least in part by analyzing the content of the selected advertisement, as
generally recited by dependent claims 33-35. App. Br. 28-30; Reply Br. 11-
12. However, as discussed supra with respect to claims 1 and 6, we find
Appellants’ argument fails to recognize that the Examiner is relying on each
returned entry 710a –710h depicted in the search page of Meisel’s Figure 7
Appeal 2011-001050
Application 10/741,336

13
to address an “advertisement,” rather than the advertiser’s website itself (see
Fig. 7). Therefore, since Meisel discloses an automated process which
evaluates search terms (i.e., keywords) and corresponding websites
according to a set of predefined rules (col. 10, ll. 20-32), we find one of
ordinary skill in the art would appreciate that Meisel’s system is also
matching the content of the selected advertisement to keywords or selecting
key words at least in part by analyzing the content of the selected
advertisement.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 33-35.

Dependent claim 48
Appellants argue that the combination of Meisel and Skinner fails to
teach or suggest “wherein the ROAI determination system also determines
ROAI information for each of a plurality of combinations of one or more
keywords from the plurality of keywords in conjunction with the selected
advertisement,” as recited by dependent claim 48. App. Br. 33-34; Reply
Br. 13. Specifically, Appellants assert that Skinner fails to disclose the step
of selecting at least one keyword. Reply Br. 10.
We are not persuaded by Appellants’ argument as it attacks the
references separately, even though the rejection is based on their combined
teachings. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d at 1097.
Contrary to Appellants’ assertion, the Examiner relies on Meisel to disclose
the step of selecting at least one keyword. Ans. 20. The Examiner relies on
Appeal 2011-001050
Application 10/741,336

14
Skinner to address the step of determining a return on advertising investment
(ROAI) based on that selected at least one keyword (paras. [0012]; [0043]).
See Ans. 24.
Accordingly, we are not persuaded of error by the Appellants’
argument, and as such, sustain the Examiner’s rejection of claim 23.

Claims 31 and 46 rejected under 35 U.S.C. § 103(a) as unpatentable over
Meisel, Skinner, and Paine.
Appellants argue that the combination of Meisel, Skinner, and Paine
fails to teach or suggest “receiving information from at least one competitor
web site associated with at least one competitor of the advertiser,” as
generally recited by claims 31 and 46. App. Br. 35-37; Reply Br. 14.
Specifically, Appellants assert that Paine at column 3, lines 56-65 fails to
disclose the “competitor web site” limitation of claims 31 and 46 because it
only describes certain techniques for recommending search terms, including
looking directly at an advertiser’s web site (i.e., spidering) and comparing an
advertiser to other, similar advertisers, and recommending search terms the
other advertisers have chosen (i.e., collaborative filtering). App. Br. 35.
However, we agree with the Examiner that this portion of Paine discloses
receiving information from a “competitor web site.” Ans. 46-47. While
Paine does not refer to the other, similar online advertisers as competitors,
one of ordinary skill would immediately understand competitors, as
presently claimed to read on the other, similar online advertisers disclosed
Paine. Additionally, we note that the claims do not limit the type of
information received, as long it is associated with at least one competitor of
the advertiser.
Appeal 2011-001050
Application 10/741,336

15
In view of the foregoing, we will sustain the Examiner’s rejection of
claims 31 and 46.

DECISION
We affirm the Examiner’s rejections under 35 U.S.C. § 103(a).
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) (2011).

AFFIRMED

hh