Ex Parte Coon

Board of Patent Appeals and Interferences

Dec 22, 2010

12030305 (B.P.A.I. Dec. 22, 2010)

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.
12/030,305 02/13/2008 Jonathan C. Coon 75826.0007 1477
57600 7590 12/23/2010
HOLLAND & HART
222 South Main Street, Suite 2200
P.O. Box 11583
Salt Lake City, UT 84110
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
12/23/2010 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte JONATHAN C. COON 8
___________ 9
10
Appeal 2010-000242 11
Application 12/030,305 12
Technology Center 3600 13
___________ 14
15
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH 16
A. FISCHETTI, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL1 19
20

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 12/030,305

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STATEMENT OF THE CASE2 1

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed March 10, 2009) and Reply Brief (“Reply Br.,” filed August 17,
2009), and the Examiner’s Answer (“Ans.,” mailed June 16, 2009), and
Final Rejection (“Final Rej.,” mailed December 17, 2008).
Jonathan C. Coon (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 1-2, 4-5, 7-8, 11-14, 16-17, and 19-20, 3
the only claims pending in the application on appeal. We have jurisdiction 4
over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellant invented systems and methods for paid search 6
advertising. Specification ¶ 0020. 7
An understanding of the invention can be derived from a reading of 8
exemplary claim 1, which is reproduced below [bracketed matter and some 9
paragraphing added]. 10
1. A system comprising: 11
[1] a publisher subsystem configured to communicate with 12
an access device and an advertiser device over a data 13
communication network, said publisher subsystem including: 14
[a] a publish module configured to publish content for 15
access over the data communication network, the content 16
including an advertisement; 17
[b] a session module configured to 18
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[i] detect a selection of the advertisement, 1
[ii] initiate a session between the access device 2
and the advertiser device in response to the selection, the 3
advertiser device being associated with the 4
advertisement, and 5
[iii] receive feedback from the advertiser device, 6
wherein said feedback is indicative of an amount of value 7
provided to an advertiser associated with the 8
advertisement during said session; 9
[c] a bid module for accepting a bid representing a 10
fixed amount said advertiser will pay for placement of the 11
advertisement in the content for a predefined time interval, 12
wherein an amount paid by the advertiser is independent of said 13
advertiser feedback; and 14
[d] an allocation module configured to allocate said 15
fixed amount of revenue based on said feedback. 16
17
The Examiner relies upon the following prior art: 18
Eckardt et al. US 6,370,682 B1 Apr. 9, 2002
Horowitz et al. US 2005/0097204 A1 May 5, 2005
19
Claims 1-2, 4-5, 7-8, and 11-12 stand rejected under 35 U.S.C. § 112, 2nd 20
paragraph, as being indefinite for failing to particularly point out and 21
distinctly claim the subject matter which the Appellant regards as the 22
invention. 23
Claims 1-2, 4-5, 7-8, 11-14, 16-17, and 19-20 stand rejected under 35 24
U.S.C. § 103(a) as unpatentable over Horowitz and Eckardt. 25
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1
ISSUES 2
The issue of whether the Examiner erred in rejecting claims 1-2, 4-5, 7-3
8, and 11-12 under 35 U.S.C. § 112, 2nd paragraph, as being indefinite for 4
failing to particularly point out and distinctly claim the subject matter which 5
the Appellant regards as the invention turns on whether a person with 6
ordinary skill in the art would have understood what is being claimed with 7
respect to the fixed amount claimed in limitations [c] and the allocation of a 8
fixed amount in limitation [d] of claim 1. 9
The issue of whether the Examiner erred in rejecting claims 1-2, 4-5, 7-10
8, 11-14, 16-17, and 19-20 under 35 U.S.C. § 103(a) as unpatentable over 11
Horowitz and Eckardt turns on whether Horowitz and Eckardt describe 12
limitations [c] and [d] of claim 1 and as recited in independent claims 13 and 13
20. 14
15
FACTS PERTINENT TO THE ISSUES 16
The following enumerated Findings of Fact (FF) are believed to be 17
supported by a preponderance of the evidence. 18
Facts Related to the Prior Art 19
Horowitz 20
01. Horowitz is directed to a system and method for performance-21
based online advertising. Horowitz ¶ 0003. 22
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02. Horowitz describes a true cost-per-acquisition (CPA)-based 1
advertising model where an advertiser pays only for acquisitions 2
(and does not directly pay for the media buy). Horowitz ¶ 0009. 3
An advertiser enters new campaign information into the 4
advertisement server, including descriptive elements, desired 5
keywords, and an initial CPA amount. Horowitz ¶’s 0037-0038. 6
The advertisers also determine the CPA(s) the advertisers are 7
willing to pay for the advertisements and the action(s) that 8
determine the acquisition(s). Horowitz ¶ 0038. Advertisers then 9
undergo an initial test period for a predetermined amount of time 10
or after a predetermined number of clicks to record accurate 11
information to establish conversion rates. Horowitz ¶ 0039. 12
Conversion rates are the total click-throughs divided by the total 13
acquisitions. Horowitz ¶ 0039. After the results of the test period 14
are presented, a ranked-order where a CPA that represents the 15
amount each advertiser can pay for each acquisition is generated. 16
Horowitz ¶ 0041. The rank takes into account the CPA, the 17
conversation rate, the advertiser budget, and the like. Horowitz ¶ 18
0041. Once an end user completes the predetermined action 19
defined by the acquisition, a debit is recorded in the accounts of 20
the advertiser as an acquisition received. Horowitz ¶ 0043. The 21
system tracks an end user by assigning a unique identifier to the 22
end user or by the use of cookies and then identifying the actions 23
taken by the end users. Horowitz ¶’s 0045 and 0046. The system 24
can balance higher converting search partners with lower 25
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converting search partners to maximize budgets within the 1
confines of a targeted conversion rate. Horowitz ¶ 0066. 2
Eckardt 3
03. Eckardt is directed to the development of software that is 4
flexible and platform independent so that it can be reused without 5
manually reworking. Eckardt 1:15-18. 6
04. Eckardt describes a software system comprising one or more 7
software components that are controlled by an operating system. 8
Eckardt 2:43-46. Each of the software components is independent 9
and has limited functional scope. Eckardt 2:47-54. 10
11
ANALYSIS 12
Claims 1-2, 4-5, 7-8, and 11-12 rejected under 35 U.S.C. § 112, 2nd 13
paragraph, as being indefinite for failing to particularly point out and 14
distinctly claim the subject matter which the Appellant regards as the 15
invention 16
The Examiner found that limitations [c] and [d] of claim 1 are 17
contradictory because limitation [c] requires that a fixed amount is paid 18
independent of feedback to an advertiser whereas limitation [d] requires the 19
fixed amount is allocated based on the advertiser feedback. Ans. 4. The 20
Appellant contends that the amount paid by the advertiser may be set and 21
established independent of feedback from the advertiser, whereas how the 22
fee is then allocated or distributed among those displaying the advertising 23
can be based on that advertisers’ feedback. App. Br. 12. 24
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We agree with the Appellant. The test for definiteness under 35 U.S.C. 1
§ 112, second paragraph, is whether “those skilled in the art would 2
understand what is claimed when the claim is read in light of the 3
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 4
1565, 1576 (Fed. Cir. 1986). Limitation [c] and limitation [d] both recite the 5
term “a fixed amount,” however, this fixed amount is not the same fixed 6
amount used in each of the limitations. The “fixed amount” in limitation [c] 7
is a bid amount that an advertiser will pay for the placement of an 8
advertisement and this amount is independent of feedback. The “fixed 9
amount” in limitation [d] is an amount of revenue to be allocated based on 10
that advertiser’s feedback. A person with ordinary skill in the art would 11
have understood how these terms are being used within the context 12
presented in the claims. As such, a person with ordinary skill in the art 13
would have understood what is being claimed. 14
The Examiner further argues that the claims do not require a specific 15
order or sequence and therefore the session module, bid module, and 16
allocation module can perform their functions at the same time. Ans. 11. As 17
such, the Examiner argues that the allocation module could not allocate the 18
amount paid by the advertiser based on the feedback when the advertiser is 19
paying an amount that is independent of the feedback. Ans. 11. However, 20
as discussed supra, the feedback that an advertiser gives is independent of a 21
bid amount for the placement of an advertisement. A person with ordinary 22
skill in the art would have understood that a bid amount for placing an 23
advertisement is a different amount that an amount allocated based on the 24
feedback of that advertiser. Furthermore, there is an implicit order to 25
limitations [b] and [d], where feedback that revenue is allocated based in 26
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limitation [d] is received in limitation [b]. Therefore, the implicit relative 1
order to claimed steps requires the receiving of feedback from limitation [b] 2
to occur before the allocation based on feedback of limitation [d]. Although 3
it is possible for all of the modules to perform their functions at the same 4
time, a person with ordinary skill in the art would have understood that the 5
relative dependence between the limitations requires that information needs 6
to be passed between modules for common threads. As such, a person with 7
ordinary skill in the art would have understood what is being claimed in light 8
of the Specification. 9
10
Claims 1-2, 4-5, 7-8, 11-14, 16-17, and 19-20 rejected under 35 U.S.C. 11
§ 103(a) as unpatentable over Horowitz and Eckardt 12
The Appellant first contends that Horowitz and Eckardt fail to describe 13
limitations [c] and [d] of claim 1. App. Br. 13-16 and Reply Br. 5-9. We 14
disagree with the Appellant. Limitation [c] of claim 1 requires accepting a 15
bid for a fixed amount that an advertiser will pay for a period of time, where 16
the amount paid is independent of feedback from the advertiser. Limitation 17
[d] further requires allocating a fixed amount of revenue based on feedback 18
from an advertiser’s device. Limitation [b][iii] limits feedback to an amount 19
of value provided to an advertiser. As such, limitation [c] requires that the 20
fixed amount that an advertiser will pay is not dependent on the amount of 21
value the advertiser has received and limitation [d] requires allocating or 22
distributing an amount based on the amount of value received by the 23
advertiser. 24
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Horowitz describes an advertising model that uses a cost per acquisition 1
pricing model (CPA). FF 01-02. An acquisition is a predetermined action 2
associated with the advertisement. FF 02. Horowitz further describes that 3
advertisers submit an advertising budget. FF 02. The advertising budget is 4
used in determining advertiser positioning information. FF 02. The 5
advertising budget is further used to match advertisers to search partners 6
such that the budget is maximized. FF 02. The submission of such a budget 7
by an advertiser describes a fixed amount that an advertiser will pay for the 8
placement of advertisements. That is, a system that accepts budget data or 9
budget constraint data will interpret and treat this data the same as any 10
entered fixed amount. Additionally, the budget is used in determining 11
search partners and positioning information prior to the actual placement of 12
any advertisements. As such, the budget is a fixed amount from an 13
advertiser for the placement of an advertisement that is independent of any 14
feedback. The Appellant also argues that an advertiser budget is not a 15
contract price paid (App. Br. 14-15) but fail to provide any rationale that 16
distinguishes how a system would different this data differently. 17
Additionally, the claim 1 does not require a contract price paid by the 18
advertiser. As such, this argument is not found to be persuasive. 19
The Appellant additionally contends that Horowitz and Eckardt fail to 20
describe the limitations of claim 7 because Horowitz fails to describe a fixed 21
fee as argued in support of claim 1. App. Br. 19-20 and Reply Br. 14-15. 22
We disagree with the Appellant. The Appellant’s argument that Horowitz 23
fails to describe a fixed fee was not found to be persuasive supra and is not 24
found to be persuasive here for the same reasons. The Appellant does not 25
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provide any further rationale in support of claim 7 and as such we find that 1
Horowitz and Eckardt describe claim 7. 2
The Appellant also contends that Horowitz and Eckardt fail to describe a 3
session module configured to provide a session identifier to the advertiser 4
device and associate the feedback to the session identifier, as required by 5
claim 8. App. Br. 20 and Reply Br. 15. We disagree with the Appellant. 6
Horowitz describes tracking end users and actions taken by end users to 7
determine whether an end user completes an acquisition. FF 02. The system 8
assigns a unique identifier to the end users or tracks the user through the use 9
of cookies. FF 02. The assigning of a unique identifier to an end user and 10
associating actions take by the user to the identifier is functionally the same 11
as the claimed session identifier. The Appellant argues that this 12
functionality is inapposite of claim 8, but fails to provide any further 13
rationale to distinguish this description from Horowitz from the claimed 14
invention. As such, the Appellant’s argument is not found to be persuasive. 15
The Appellant further contends that Horowitz fails to describe receiving 16
a fixed amount bid from an advertiser for the placement of an advertisement 17
and allocating from the fixed amount based on feedback from the advertiser, 18
as per independent method claim 13. App. Br. 16-17 and Reply Br. 9-12. 19
We agree with the Appellant. Claim 13 is distinguished from claim 1 20
because claim 13 is a method claim whereas claim 1 recites a system. As 21
discussed supra, the budget data entered into a system will be evaluated and 22
treated the same as any fixed amount data entered in to the system. 23
However, a method will not evaluate this information the same. A step of 24
receiving fixed amount bid information is different from receiving budget 25
information because budget information sets a maximum amount available 26
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and a method will not treat this data the same as a fixed amount. As such, 1
the method will interpret the received bid information in a different manner 2
than a system. Therefore, Horowitz and Eckardt fail to describe independent 3
method claim 13 and dependant method claims 14, 16-17, and 19. 4
The Appellant also contends that Horowitz and Eckardt fail to describe 5
this same feature in independent system claim 20 for the same reasons 6
asserted in support of claim 1. App. Br. 17-19 and Reply Br. 12-14. We 7
disagree with the Appellant. As discussed supra, the data entered into a 8
system is distinguished from the method. We found that Horowitz and 9
Eckardt describe receiving a fixed amount for the placement of an 10
advertisement and allocating said fixed amount based on feedback in system 11
claim 1 supra and we find Horowitz and Eckardt describe these features here 12
for the same reasons. 13
14
CONCLUSIONS OF LAW 15
The Examiner erred in rejecting claim 1-2, 4-5, 7-8, and 11-12 under 35 16
U.S.C. § 112, 2nd paragraph, as being indefinite for failing to particularly 17
point out and distinctly claim the subject matter which the Appellant regards 18
as the invention. 19
The Examiner did not err in rejecting claim 1-2, 4-5, 7-8, 11-12, and 20 20
under 35 U.S.C. § 103(a) as unpatentable over Horowitz and Eckardt. 21
The Examiner erred in rejecting claim 13-14, 16-17, and 19 under 35 22
U.S.C. § 103(a) as unpatentable over Horowitz and Eckardt. 23
24
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DECISION 1
To summarize, our decision is as follows. 2
• The rejection of claim 1-2, 4-5, 7-8, and 11-12 under 35 U.S.C. § 112, 3
2nd paragraph, as being indefinite for failing to particularly point out 4
and distinctly claim the subject matter which the Appellant regards as 5
the invention is not sustained. 6
• The rejection of claim 1-2, 4-5, 7-8, 11-14, 16-17, and 19-20 under 35 7
U.S.C. § 103(a) as unpatentable over Horowitz and Eckardt is 8
sustained. 9
• The rejection of claim 13-14, 16-17, and 19 under 35 U.S.C. § 103(a) 10
as unpatentable over Horowitz and Eckardt is not sustained. 11
12
No time period for taking any subsequent action in connection with this 13
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 14
§ 1.136(a)(1)(iv) (2007). 15
16
AFFIRMED-IN-PART 17
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mev 21
22
Address 23
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HOLLAND & HART 1
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