Ex Parte Criou et al

Patent Trial and Appeal Board

Sep 28, 2016

13897713 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/897,713 05/20/2013 Nathalie D. Criou
26192 7590 09/30/2016
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
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.
16113-0166002 3699
EXAMINER
CHEN,TEY
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHALIE D. CRIOU, CHANDRAMOULI
MAHADEVAN, and SRIDHAR VENKATAKRISHNAN
Appeal2015-000911
Application 13/897,713
Technology Center 2100
Before ST. JOHN COURTENAY III, JOHN A. EVANS, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 15-35, which constitute of all the claims pending
in this application.2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Google Inc. App. Br.
1.
2 Claims 1-14 have been canceled. App. Br. 8.
Appeal2015-000911
Application 13/897,713
INVENTION
Appellants' invention relates to keyword-based content suggestions.
Abstract. Claim 15 is illustrative and reads as follows:
15. A computer-implemented method comprising:
identifying, by one or more computing devices, a content
source that was referenced by search results for each of two or
more different queries that have been previously received from
users;
determining, by one or more computing devices and for
each query from the two or more queries, a number of user
interactions with the search results that referenced the content
source and were provided to the users in response to the query;
ranking, by one or more computing devices, the queries
based on the number of user interactions with the content source
when presented to the users as a search result for each query;
determining, by one or more computing devices, that a
term provided by an advertiser matches a query from the two or
more quenes;
determmmg, by one or more computing devices, that the
number of user interactions with the content source
corresponding to the matched query meets a threshold number of
user interactions; and
providing data to the advertiser identifying the content
source as a presentation location for the advertiser's content.
REJECTIONS
Claims 15-35 stand rejected on the ground of nonstatutory obvious-
type double patenting as unpatentable over claims 1-9 of U.S. Patent No.
8,463,830. Final Act. 4--5.
Claims 15-35 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Davis et al. (US 6,983,272 B2; issued Jan. 3, 2006). Final Act. 5-10.
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Appeal2015-000911
Application 13/897,713
ANALYSIS
Anticipation Rejection of Claims 15-35
In rejecting representative claim 15, the Examiner found that Davis
discloses all of the recited limitations. Final Act. 5-7.
Appellants contend the cited portions of Davis do not disclose
"ranking ... the queries based on the number of user interactions with the
content source when presented to the users as a search result for each
query," as recited in claim 15. App. Br. 6. Appellants argue that the cited
portions of Davis disclose an online competitive bidding process that does
not rank queries based on the number of user interactions, as claim 15
requires. Id.
The Examiner found that, in Davis, "[t]he rank value of an
advertiser's search listing determines the placement location of the
advertiser's entry in the search result list generated when a search is
executed on the corresponding search term." Final Act. 6 (citing Davis
Abstract, 11. 21-34; col. 5, 1. 63---col. 6, 1. 25; col. 13, 11. 10-31, and Fig. 7
"with associated texts"). In the Answer, the Examiner further explained
that:
each click performed by a user/searcher on the paid URLs (e.g.,
740 - 750f, Fig. 7) listed by the on-line bidding result list as
rendered by Fig. 7 is tied to the specific web-site/hyperlink
promoter's account which will results in a higher bids amount
(or higher charge amount) being deducted from the specific
web promoter's account when the user/searcher clicked on it,
that could also result in a higher ranking position for the
specific promoter's hyperlink web site being displayed toward a
more advantageous placement on the search result list page
(e.g., Fig. 7) being generated by the search engine (e.g., 24, Fig.
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Appeal2015-000911
Application 13/897,713
1) and thereby the search engine (e.g., 24, Fig. 1) could further
redirect a searcher's browser to reference to the specific
promoter's web-site/hyperlink which in tum, facilitating the
searcher seeking (e.g., col. 9, lines 52 - col. 10, lines 15) and
allows the accurate account debit record being maintained for
the promoter/promoters.
Ans. 8-9.
Based on the record before us, 3 we agree with Appellants that the
Examiner erred. In particular, although the Examiner finds that Davis
discloses the contested limitation (Final Act. 6; Ans. 8-9), we do not find
any express or inherent description of the contested claim limitation in the
cited portions of Davis relied by the Examiner for claim 15. While we agree
with the Examiner that the cited portions disclose ranking advertisers' search
listings to determine placement in a search result list, they do not disclose
ranking queries based on the number of user interactions with the content
source when presented to the users as a search result for each query, as claim
15 requires.
3 Because a rejection under 35 U.S.C. §103 is not before us on appeal, we do
not reach and we do not express an opinion as to whether adding "ranking,
by one or more computing devices, the queries based on the number of user
interactions with the content source when presented to the users as a search
result for each query" to the teachings of Davis would have merely been a
"predictable use of prior art elements according to their established
functions." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); see
also In re Harza, 274 F.2d 669, 671(CCPA1960) ("It is well settled that the
mere duplication of parts has no patentable significance unless a new and
unexpected result is produced."). In the event of further prosecution, we
leave this issue to the consideration of the Examiner. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02 (9th Ed., Rev. 07.2015, Nov.
2015).
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Appeal2015-000911
Application 13/897,713
Accordingly, we reverse the 35 U.S.C. § 103(a) rejection of
independent claim 15, as well as the 35 U.S.C. § 103(a) rejection of
independent claims 22 and 29, which recite the aforementioned contested
limitation in commensurate form. We also reverse the Examiner's rejection
of dependent claims 16-21, 23-28, and 30-35, which fall with the
independent claims from which they depend.
Rejection of Claims 15-35for Nonstatutory OTDP
The Examiner rejected claims 15-35 on the ground ofnonstatutory
obviousness-type double patenting. Final Act. 4--5. Because Appellants do
not contest the merits of the Examiner's rejection, we proforma sustain the
Examiner's rejection on the ground of nonstatutory obviousness-type double
patenting.
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Appeal2015-000911
Application 13/897,713
DECISION
We reverse the decision of the Examiner rejecting claims 15-35 as
anticipated under 35 U.S.C. § 102(b).
We affirm the decision of the Examiner rejecting claims 15-35 on the
ground of nonstatutory obviousness-type double patenting.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 3 7
C.F.R. § 41.50(a)(l).
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
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