Ex Parte Chou et alDownload PDFPatent Trial and Appeal BoardJun 2, 201612641181 (P.T.A.B. Jun. 2, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/641,181 12/17/2009 Jack Weichieh Chou 45839 7590 06/06/2016 SCHWEGMAN LUNDBERG & WOESSNER/ LINKEDIN POBOX2938 MINNEAPOLIS, MN 55402 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. 3080.00lUS 1 1110 EXAMINER WU,RUTAO ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 06/06/2016 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): USPTO@slwip.com slw@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACK WEICHIEH CHOU, GANESH SHEKHARIPURAM HARIHARAN, SANJA Y SURESHCHANDRA DUBEY, and DAVID HAHN Appeal2013-009588 Application 12/641,181 1 Technology Center 3600 Before ANTON W. PETTING, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellants' claimed invention "relates to methods and systems for presenting social network and/ or business network notifications in conjunction with display advertisements." (Spec i-f 1.) 1 According to Appellants, the real party in interest is Linkedin Corporation. (Appeal Br. 2.) Appeal2013-009588 Application 12/641, 181 Claims 1, 9, and 1 7 are the independent claims on appeal. Claim 1 is representative and is reproduced below: 1. A method comprising: automatically selecting an advertisement for display to a first member of a person-to-person networking service; automatically selecting, by a processor-implemented notification module, a network notification to be presented in conjunction with the selected advertisement, the network notification being selected based on: information associated with a second member of the person-to-person networking service who is related to the first member via the person-to-person networking service, and content of the advertisement; and causing the advertisement and the network notification to be presented to the first member by the person-to-person networking service. REJECTIONS Claims 17-19 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1-19 are rejected under 35 U.S.C. § 103(a) as unpatentable over D' Angelo (US 2009/0070219 Al, pub. Mar. 12, 2009), Kovinsky (US 2008/0235085 Al, pub. Sept. 25, 2008), and Klinger (US 2009/0132342 Al, pub. May 21, 2009). The § 101 Rejection Claim 17 recites: ANALYSIS 17. A networking service compnsmg a processor- implemented notification module to automatically select a 2 Appeal2013-009588 Application 12/641, 181 network notification to be presented in conjunction with a selected advertisement displayed in a web page, the network notification being selected based on information that is i) associated with a member of the person-to-person networking service who is connected to the viewer of the selected advertisement via a person-to-person connection established with the networking service, and ii) content of the advertisement. The "Examiner interprets 'service' as an apparatus or a system and the 'notification module' as software. The claim, therefore, is directed to software per se, which does not fall within any of the four classes of statutory subject matter. The claim is, therefore, rejected under 35 USC 101 as non-statutory." (Final Action 2.) Appellants argue that claim 1 7 is not directed to software per se and that "[t]he Examiner's interpretation of claim 17 ignores the plain meaning of the term 'processor-implemented' preceding the term 'notification module."' (Appeal Br. 7.) Claims directed to "software per se" are not inherently unpatentable. See Enfish, LLC v. Microsoft Corp., No. 2015-1244, 2016 WL 2756255, at *4 (Fed. Cir. May 12, 2016). The rejection analysis presented by the Examiner does not include a sufficient rationale to present a prima facie case of ineligible subject matter under a proper § 101 analysis. Therefore, we reverse the rejection of claim 17, and dependent claims 18 and 19, under § 101. The§ 103 Rejection D 'Angelo relates generally to a website that presents targeted ads to website members "based on actions by the member and one or more characteristics of the member." (D 'Angelo, Abstract.) The Examiner finds 3 Appeal2013-009588 Application 12/641, 181 that "D' Angelo does not explicitly disclose: notification based on content of advertisement and sending notification in conjunction with the advertisement." (Answer 22.) However, the Examiner finds that Kovinsky discloses a system that can automatically determine "targeted ad content for the web page- to be displayed in conjunction with the web page." (Final Action 5-6, citing Kovinsky i-f 41.) The Examiner also finds that "Klinger teaches (b) sending messages in conjunction with advertisements (Fig. 3, block 304: merchant specifies surveys to be conducted in conjunction with product offers)." (Id. at 6.) The Examiner concludes that, in view of D' Angelo, Kovinsky, and Klinger, "it would have been obvious to one of ordinary skill in the art at the time of the invention for D' Angelo to explicitly provide for automatically selecting a network notification to be presented, to the first member, in conjunction with automatically selected advertisement." (Id.) Appellants argue, with regard to Kovinsky, that "the Examiner ... ignores Applicants' claim elements describing the particular technique in which the network notification is to be selected - that is, based on content of the advertisement." (Appeal Br. 9-10.) But the Examiner does not rely on Kovinsky alone, the Examiner relies on the combination of D 'Angelo, Kovinsky, and Klinger. Moreover, the Examiner relies on Kovinsky here simply for the teaching that targeted ad content can be displayed in conjunction with a web page. (See Final Action 5-6.) Appellants further argue that the Examiner's finding that "Klinger teaches (b) sending messages in conjunction with advertisements (Fig. 3, block 304; merchant specifies surveys to be conducted in conjunction with product offers)" is in error. (Appeal Br. 10.) Specifically, Appellants argue 4 Appeal2013-009588 Application 12/641, 181 that the Examiner erred because "a product offer and an advertisement are not equivalent." (See id.) We agree that a product offer and an advertisement are not equivalent, but Appellants do not explain why this lack of equivalence is relevant in this context. An advertisement is "a public notice; especially: one published in the press or broadcast over the air." Advertisement, MERRIAM- WEBSTER.COM, http://www.merriam-webster.com/dictionary/advertisement, def. 2 (last visited May 27, 2016). We determine that under a broadest reasonable interpretation, a "product offer" includes a public notice that a product is being offered for sale, i.e., a product offer is a type of advertisement; one that advertises that the product is being offered for sale. Appellants have not persuaded us that the lack of equivalence between a product offer and an advertisement is relevant in this context. See Final Action 6. Appellants next argue that the Examiner erred because "a survey is not a network notification." (Appeal Br. 10.) With regard to the claim term "network notification," the Specification states: "when a display advertisement (ad) is presented to a user in a web page of a business networking service (or an affiliated publisher), additional content is displayed next to, or, near the ad. This additional content is referred to herein as a network notification." (Spec. i-f 6.) In view of this definition of a network notification, Appellants do not persuasively argue why a survey cannot be a network notification. Appellants further argue that "Klinger suggests performing a survey subsequent to processing a transaction for a product being offered for sale." (Appeal Br. 10.) But Appellants provide no citation to Klinger for this 5 Appeal2013-009588 Application 12/641, 181 proposition. Moreover, Klinger's disclosure that "[t]he merchant may conduct any desired surveys in connection with the product offers," suggests performing surveys without regard to performing a transaction for the product. (See Klinger i-f 34.) Therefore, Appellants have not persuaded us that the Examiner erred in rejecting claim 1 under§ 103(a). Claims 2-19 are not separately argued. Therefore, for the same reasons, we are not persuaded that the Examiner erred in rejecting claims 2-19 under§ 103(a). Appellants' other arguments have been considered but are not deemed persuasive of error. DECISION The Examiner's rejection of claims 17-19 under 35 U.S.C. § 101 is reversed. The Examiner's rejection of claims 1-19 under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation