Ex Parte Chang et al

Patent Trial and Appeal Board

Oct 29, 2014

11728069 (P.T.A.B. Oct. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WALTER CHANG and NADIA GHAMRAWI
____________

Appeal 2012-0059071
Application 11/728,0692
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
JAMES A. WORTH, Administrative Patent Judges.

WORTH, 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 1–4, 6–16, and 18–26. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b).
We REVERSE.

1 Our decision refers to the Appellants’ Appeal Brief (“App. Br.,” Aug. 17,
2011) and Reply Brief (“Reply Br.,” filed Feb. 7, 2012), and the Examiner’s
Answer (“Ans.,” mailed Dec. 8, 2011).
2 According to Appellants, the real party in interest is Adobe Systems
Incorporated (App. Br. 3).
Appeal 2012-005907
Application 11/728,069

2
Introduction
Appellants’ disclosure relates to a method, computer-readable
medium, and computer system for providing advertisements based on
keywords in a document (Spec. at 5, l. 23 – 6, l. 2).
Claims 1, 9, 13, 21, and 25 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal:
1. A method comprising:
identifying, at a computer system, a document for having
advertisements associated therewith;
receiving results of statistical ranking of terms derived
from said document by the computer system;
selecting, at the computer system, at least one term from
said results to use as a keyword for associating at least one
advertisement with said document;
storing the at least one term in a metadata portion of said
document at the computer system.

App. Br. 14, Claims App.

Prior Art Relied Upon
Reller US 2005/0091106 A1 Apr. 28, 2005
Pigin US 2005/0229258 A1 Oct. 13, 2005

Rejections on Appeal
1) Claims 1–4, 8–16, and 20–26 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Reller; and
2) Claims 6, 7, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Reller and Pigin.

Appeal 2012-005907
Application 11/728,069

3
OPINION
Independent claim 1 and dependent claims 2–4 and 8
Appellants argue that Reller fails to disclose “storing the at least one
term in a metadata portion of said document at the computer system,” as
recited by claim 1 (App. Br. 8–10). Appellants assert, inter alia, that
Reller’s terms are not stored in “metadata” distinct from pre-existing content
of the document (id.). Appellants assert that storing terms from a document
is distinct from the terms merely being included within pre-existing content
of the document (id. at 9). The Examiner finds that keywords are stored in
metadata, citing paragraphs 2 and 38–44 of Reller (Ans. 10).
Claim 1 provides that the “term” to be stored is a “keyword.”
Although the “term” is “derived from said document,” the claim further
provides that the “keyword” is “for associating at least one advertisement
with said document” and that terms are subject to “statistical ranking.” In
this connection, the claim as a whole indicates that the “term” is from human
language rather than positional data that refer to human language.
Reller keeps track of document phrases with data that represent the
position of keywords in the document (¶¶ 27–40). Keywords are
represented in KeyTreeNodes (“KTNs”) (id. at ¶ 27). The KTNs are
collected in “dictionary trees” (id. at ¶¶ 27–28; Fig. 1). Reller (¶ 27)
discloses that “[t]he keyword that a KTN [KeyTreeNode] represents is not
stored in the KTN itself; it is implied by the location of the KTN in the
dictionary tree.” The KTNs are associated with an array of phrases,
“PhraseMatchNode arrays” or “PMNs,” which are also represented by
positional data (id. at ¶¶ 28, 35). Reller explains that the “Phrases contain
the implied keyword” (id. at ¶ 28). The Examiner relies on the placement of
Appeal 2012-005907
Application 11/728,069

4
PMNs in “candidate lists” for the storage of metadata in the document
(Ans. 11).
We have carefully reviewed the portions of the prior art relied on by
the Examiner. We do not agree that there is sufficient evidence therein of
“storing the at least one term in a metadata portion of said document at the
computer system,” as recited by claim 1. Rather, Reller explains that, in its
method, the keyword that a KTN represents is not stored in the KTN itself
(id. at ¶ 27). To the extent that the keyword is “implied” by the location of
the KTN in the dictionary tree (id. at ¶¶ 27, 28; Fig. 1), the Examiner has not
made factual findings as to whether this constitutes storage of a term in a
metadata portion of the document, explicitly or inherently. As above, the
positional information relied on by the Examiner does not constitute “storing
the at least one term in a metadata portion of said document at the computer
system,” as recited by claim 1.
Therefore, we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 102(b) as anticipated by Reller. We do not sustain the
rejection of claims 2–4 and 8, which depend from claim 1, under 35 U.S.C.
§ 102(b) for the same reasons.

Independent claims 9, 13, 21, and 25 and dependent claims 10–12,
14–16, 20, 22–24, and 26
Independent claims 9, 13, 21, and 25 contain substantially similar
language to independent claim 1. We do not sustain the rejection under
35 U.S.C. § 102(b) of independent claims 9, 13, 21, and 25, and claims 10–
12, 14–16, 20, 22–24, and 26, which depend therefrom, for similar reasons.

Appeal 2012-005907
Application 11/728,069

5
Dependent claims 6, 7, 18, and 19
Claims 6, 7, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Reller and Pigin. The Examiner relies on Pigin for
additional limitations, but Pigin does not cure the deficiency of Reller.
Accordingly, we do not sustain the rejection of claims 6, 7, 18 and 19 under
35 U.S.C. § 103(a) as unpatentable over Reller and Pigin.

DECISION
The decision of the Examiner to reject claims 1–4, 6–16, and 18–26 is
reversed.

REVERSED

Ssc