11304026 (B.P.A.I. Nov. 21, 2011)

Ex Parte Casion

Board of Patent Appeals and InterferencesNov 21, 2011

11304026 (B.P.A.I. Nov. 21, 2011)

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. 11/304,026 12/15/2005 David Casion 034812.00045 3333 26712 7590 02/13/2012 HODGSON RUSS LLP THE GUARANTY BUILDING 140 PEARL STREET SUITE 100 BUFFALO, NY 14202-4040 EXAMINER RAHMAN, MOHAMMAD N ART UNIT PAPER NUMBER 2161 MAIL DATE DELIVERY MODE 02/13/2012 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 DAVID CASION ____________________ Appeal 2010-000169 Application 11/304,026 Technology Center 2100 ____________________ Before JEAN R. HOMERE, THU A. DANG, and DEBRA K. STEPHENS, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-000169 Application 11/304,026 2 I. STATEMENT OF THE CASE Appellant has filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (hereinafter “Request”) on January 23, 2012, for reconsideration of our Decision mailed November 21, 2011 (hereinafter “Decision”) with respect to claims 1 and 3-11 (Request 3)1. The Decision affirmed the Examiner’s rejections of claims 1 and 3-11 under 35 U.S.C. § 102(b) as being anticipated by Langheinrich and reversed the rejection of claim 2 under 35 U.S.C. § 102(b) as being anticipated over Langheinrich (Decision 9). We have reconsidered our Decision of November 21, 2011, regarding claims 1and 3-11, in light of Appellant’s comments in the Request, and we find Appellant has not identified any points misapprehended or overlooked by the Board in our Decision therein. We decline to change our Decision for the reasons discussed infra. II. ISSUES We address the following contention raised by Appellant in the Request. Appellant contends that “the Board misapprehended and/or overlooked that the usage pattern described in the cited passage does not refer to the usage pattern of the user;” “[r]ather, the only detail regarding 1 Although the Appellant states that they request a rehearing with reference to claims 1-11, Appellant asserts that their request is for “[r]ehearing, reconsideration, and reversal of ‘Issue 1’” which correspond to claims 1 and 3-11; not claims 1-11 (Request 3). Appeal 2010-000169 Application 11/304,026 3 ‘usage pattern’ in Langheinrich describes that the learning system learns according to the frequency with which an attribute value is encountered by the system during a polling period” (Request 2, emphasis omitted). In particular, Appellant contends that “the usage pattern to which a system according to Langheinrich adapts is not the user activity of the user making the request … , but the usage patterns of the totality of users during a polling period” (id.). According to Appellant, “in selecting advertisements to display to the user, Langheinrich does not use the automated learning system in the selection process to provide an advertisement related according to the behavior segment” (Request 2-3). Thus, the issue we address on this Request is whether Appellant has identified that the Board has misapplied the relevant law and misapprehended the Appellant’s argument by finding that Langheinrich teaches “providing a plurality of advertisements, the plurality of advertisements including a pool of advertisements wherein at least one of the advertisements in the pool is related to the context topic and at least one other of the advertisements in the pool is related to the behavior segment” (claim 1, emphasis added). III. ANALYSIS Though Appellant contends that “the only detail regarding ‘usage pattern’ in Langheinrich describes that the learning system learns according to the frequency with which an attribute value is encountered by the system during a polling period” (Request 2), we note that the burden is on Appellant Appeal 2010-000169 Application 11/304,026 4 to overcome the prima facie case with objective evidence commensurate in scope with the claims. In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“It is well established that the objective evidence … must be commensurate in scope with the claims”). Appellant has defined “behavior segment” as having the following meaning: “a subject area associated with one or more websites previously visited by a client computer system” (Spec. 4, ¶ [0014]). And, as recited in claim 1, “behavior segment [is] dependent upon at least one cookie stored by the client computer system.” Contrary to Appellant’s contention, we are not reading “usage pattern” from Langheinrich as “behavior segment.” Instead, as set forth in the Decision, we find that Claim 1’s“behavior segment” to read on Langheinrich’s use of the cookie (Decision 6-7). We also note that Appellant’s observation with respect to the disclosure of the cookie’s use in Langheinrich is incorrect. In particular, Langheinrich discloses that the “[l]atest versions of advertisement selection systems … identify each user using a ‘cookie’ … and limit the amount of times the same advertisement is shown to prevent ‘banner wearout’”; wherein, a cookie is defined as a “short piece of information, typically a user ID, that is sent by the server together with the requested page or image” and is stored on the user’s computer by the “user’s browser” (col. 1, l. 64-col. 2, l. 14). We agree with the Examiner’s finding, referring to this same recitation, as set forth in our Decision, that Langheinrich discloses that “‘a pool of available advertisements has been filtered’ [which] ‘identify each user using a ‘cookie’ … clearly describes that the pool of advertisement Appeal 2010-000169 Application 11/304,026 5 includes the … behavior segment” (Decision 5). That is, cookies used in the advertisement selection system are used to specify “at least one other of the advertisements in the pool is related to the behavior segment” (claim 1). Furthermore, Langheinrich discloses that there are systems that use “individual user identification to create fully personalized advertisement placement, observing every single web page a user requests and thus accumulating an online interest dossier on each user” (col. 2, ll. 20-23). Therefore, we find that the cookie is not just for identification purposes but for observation of the behavior of the user. Moreover, Langheinrich discloses a script for its inventive system that handles requests for an advertisement; wherein, there are three ways in which an advertisement is selected: (1) using an advertisement ID, (2) using custom parameters, or (3) using the highest required impression rate (Fig. 3; col. 5, l. 20-col. 6, l. 6). The use of cookies is one of the ways to determine the session ID to be logged (col. 5, l. 59-col. 6, l. 5) and used as impression data corresponding to a particular advertisement; wherein, advertisements are selected with the highest required impression rate (col. 5, ll. 37-50). This would explain the reason why Langheinrich recites that, for its inventive system, cookies “are not necessary for operation” (col. 3, ll. 24-27). The goal of the system in Langheinrich is “to maximize the click-through for each single advertisement by relying on past experience” (col. 3, ll. 32-34) (emphasis added). We note that “‘[t]he use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which Appeal 2010-000169 Application 11/304,026 6 they are concerned[; t]hey are part of the literature of the art, relevant for all they contain.’” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)) (emphasis added). Thus, we do not agree that we misapplied the relevant law and misapprehended the Appellant’s argument by finding that Langheinrich teaches a system which uses cookies to automatically adapt the selection of an advertisement comprising “at least one other of the advertisements in the pool [that] is related to the behavior segment” (claim 1) (Decision 7). Accordingly, Appellant’s Request does not persuade us to modify our Decision. Therefore, we find Appellant’s argument unavailing. IV. CONCLUSION We have carefully considered the arguments raised by Appellant in the Request for Rehearing, but the argument is not persuasive that our original Decision was in error. We are still of the view that the invention set forth in claims 3-11 is anticipated over the applied prior art based on the record before us in the original appeal. This Decision on Appellant’s Request for Rehearing is deemed to incorporate our earlier Decision (mailed November 21, 2011) by reference. See 37 C.F.R. § 41.52(a)(1). Appeal 2010-000169 Application 11/304,026 7 V. DECISION We have granted Appellant’s request to the extent that we have reconsidered our Decision of November 21, 2011, but we deny the request with respect to making any changes therein. REHEARING DENIED peb