Ex Parte Deeming et al

Patent Trial and Appeal Board

Aug 17, 2015

12144538 (P.T.A.B. Aug. 17, 2015)

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.
12/144,538 06/23/2008 Robert F. Deeming 10587.0740-00000 1764
100692 7590 08/18/2015
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
BERONA, KIMBERLY SUE
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
08/18/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT F. DEEMING and STEVEN B. JOHNSON
____________________

Appeal 2013-0015241
Application 12/144,5382
Technology Center 3600
____________________

Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
June 25, 2012) and Reply Brief (“Reply Br.,” filed October 31, 2012), and
the Examiner’s Answer (“Ans.,” mailed August 27, 2012) and Non-Final
Office Action (“Final Act.,” mailed October 14, 2011).
2 Appellants identify AOL Inc. as the real party in interest. App. Br. 3.
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CLAIMED INVENTION
Appellants’ claimed invention “generally relates to the field of
advertisements, and more particularly to location-specific web
advertisements” (Spec. ¶ 1).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A computer-implemented method of generating a
geocoded targeted web advertisement for a user viewing web
pages, the method comprising:
determining, using a processor, a geographic location
from content of a web page;
searching for geographic information associated with the
geographic location;
determining coordinates associated with a centroid of the
geographic location from the geographic information;
identifying geographic specific advertisements associated
with determined coordinates of the centroid; and
generating, using a processor, a geocoded targeted web
advertisement for display to the user based at least in part on
the geographic specific advertisements.

REJECTIONS
I. Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
II. Claims 1–5, 9–15, 19–25, 29, and 30 are rejected under
35 U.S.C. § 103(a) as unpatentable over Silverbrook
(US 2008/10091527 A1, pub. Apr. 17, 2008) and Olligschlaeger
(US 2008/0201143 A1, pub. Aug. 21, 2008).
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III. Claims 1, 11, and 21 are alternatively rejected under 35 U.S.C.
§ 103(a) as unpatentable over Barnes (US 2008/0227467 A1, pub. Sept. 18,
2008) and Nordmark (US 2007/0271146 A1, pub. Nov. 22, 2007).3
IV. Claims 2–5, 9, 10, 12–15, 19, 20, 22–25, 29, and 30 are
alternatively rejected under 35 U.S.C. § 103(a) as unpatentable over Barnes,
Nordmark, and Silverbrook.
V. Claim 6, 16, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Silverbrook, Olligschlaeger, and Choi
(US 2007/0208616 A1, pub. Sept. 6, 2007), or alternatively rejected under
35 U.S.C. § 103(a) as unpatentable over Barnes, Nordmark, and Choi.
VI. Claims 7, 17 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Silverbrook, Olligschlaeger, and Monberg
(US 6,523,021 B1, iss. Feb. 18, 2003), or alternatively rejected under
35 U.S.C. § 103(a) as unpatentable over Barnes, Nordmark, and Monberg.
VII. Claims 8, 18, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Silverbrook, Olligschlaeger, and Inokuchi
(US 2004/0080510 A1, pub. Apr. 29, 2004), or alternatively rejected under
35 U.S.C. § 103(a) as being unpatentable over Barnes, Nordmark, and
Inokuchi.

3 From our review of the Final Office Action, it appears to us that the
Examiner mistakenly references dependent claim 22, rather than
independent claim 21, as the subject of this rejection, and that claim 22, not
claim 21, should have been identified among the claims rejected under
35 U.S.C. § 103(a) as unpatentable over Barnes, Nordmark, and Silverbrook.
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ANALYSIS
Rejection I
Claims 1–10
The Examiner finds that claims 1–10 are directed to an abstract idea,
and states that the rationale for this finding is that “[c]laim 1 does not recite
a particular machine or a transformation in an active step involving the
machine or transformation” (Final Act. 11). The Examiner indicates that a
“similar analysis is applicable to dependent claims 2–10” (id.).
Before the mailing date of the Examiner's Answer, the Supreme Court
held in Bilski v. Kappos, 561 U.S. 593 (2010) that a patent claim’s failure to
satisfy the machine-or-transformation test is not dispositive of the § 101
inquiry. Id. at 604. Because the Examiner relies only on the machine-or-
transformation test, the Examiner has failed to establish a prima facie case of
patent-ineligibility.
Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 101 of claims 1–10.
Claims 11–20
Independent claim 11 recites “[a] computer readable storage medium
storing a computer program product configured to store instructions for
generating a geocoded targeted web advertisement for a user viewing web
pages.” Claims 12–20 depend, directly or indirectly, from independent
claim 11.
The Examiner rejected claims 11–20 under 35 U.S.C. § 101 on the
ground that the claims broadly cover transient propagating signals, which are
not patentable subject matter (Final Act. 12–14). Appellants maintain that
the rejection is improper and should be reversed because claim 11 satisfies
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the machine or transformation test (App. Br. 9–10). We agree with the
Examiner.
In our view, when given its broadest reasonable interpretation in light
of the Specification, the phrase “computer readable storage medium”
includes transitory signals, which are non-statutory subject matter. See
In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter); see also Ex parte
Mewherter, 107 USPQ2d 1857, 1862 (PTAB 2013) (precedential) (finding a
machine readable storage medium non-statutory under § 101). Therefore,
we sustain the Examiner’s rejection of claims 11–20 under 35 U.S.C. § 101.
Rejection II
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claims 1, 11, and 21 under 35 U.S.C. § 103(a) because
neither Silverbrook nor Olligschlaeger discloses or suggests “determining,
using a processor, a geographic location from content of a web page,” as
recited in claim 1, and similarly recited in claims 11 and 21 (App. Br. 10–12;
see also Reply Br. 5–7).
The Examiner relies on Silverbrook as disclosing the argued
limitation and, in the Final Office Action, identifies paragraphs 6, 7, 11, 12,
23–30, 36–39, 107, 167–169, 185–191, 199–202, 207, 210–214, 247, and
978 of Silverbrook as support (see Final Act. 3–6). The Examiner
additionally cites paragraphs 313–343, 364–370, 384, 385, 401, 423, 424,
434, 439, 453–455, 781–788, 790, 856–905, 925, 929, 930, 946, 951–953,
975–981,986, 989, and Figures 36 and 37 of Silverbrook in the Response to
Argument section of the Answer (Ans. 28–36). We have carefully reviewed
the cited portions of Silverbrook, and we agree with Appellants that none of
these paragraphs discloses or suggests “determining, using a processor, a
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geographic location from content of a web page,” as recited in claim 1, and
similarly recited in claims 11 and 21.
Silverbrook is directed to a method for enabling a user to access
information from a computer system via a printed substrate, e.g., paper
(Silverbrook ¶ 6). Coded data are printed onto the substrate, and are read by
an optical sensing device when the user interacts with the substrate using the
sensing device (id.). “For example, a user may select a printed hyperlink
using the sensing device and retrieve a corresponding webpage via a display
device or printer” (id.). In the preferred embodiment, the Silverbrook
invention is configured to work with a netpage networked computer system
(id. ¶ 569). Silverbrook, thus, discloses a netpage consisting of a printed
page invisibly tagged with references to an online description of the page,
and describes that the netpage allows markings made with a netpage pen on
its surface to be simultaneously captured and processed by the netpage
system (id. ¶¶ 591, 595). Silverbrook describes that selected text may be
inserted into a web keyword search engine (e.g., Google) to provide
feedback to a user and that searching based on selected text can be enhanced
with contextual information (id. ¶ 802). Thus, in addition to the selected
text, the search query may be “augmented with information from the
environmental context [e.g., geographical location, time of day, day of week,
date, weather, etc.] and user context” (id. ¶ 978).
The Examiner takes the position that Silverbrook, thus, discloses
determining a “geographic location” (Final Act. 3, 4, 6). But the geographic
location in Silverbrook is information from an “environmental context;” the
geographic location is not determined from “content of a web page,” as
called for in independent claims 1, 11, and 21.
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The Examiner’s reliance on paragraphs 781–788 and Figures 36 and
37 in the Response to Argument section of the Answer also is misplaced.
The Examiner asserts that “Silverbrook shows an actual example using a
geographic location (Fig. 36) wherein the sensor device homes [sic] in on ‘in
Spain’ on a printed page . . . and the words ‘in Spain’ are picked up, and can
be copied into an active GUI application on the computer” (Ans. 28–29).
However, as Appellants point out, Silverbrook discloses that text, e.g., “in
Spain,” is selected from a printed page using Silverbrook’s sensor device for
one of two reasons, i.e., (1) to make the selected text available to another
application via a selection hyperlink (see, e.g., Silverbrook ¶¶ 671, 673, 785)
or (2) to copy the selected text to a clipboard so that the user can paste the
text into other active applications (see id. ¶ 786) (Reply Br. 6–7). We find
nothing in paragraphs 781–788 and Figures 36 and 37, or in any of the other
portions of Silverbrook, identified by the Examiner, that discloses or
suggests “determining, using a processor, a geographic location from content
of a web page,” as recited in claim 1, and similarly recited in claims 11 and
21.
Therefore, we do not sustain the Examiner’s rejection of independent
claims 1, 11, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Silverbrook and Olligschlaeger. For the same reasons, we also do not
sustain the Examiner’s rejection of claims 2–5, 9, 10, 12–15, 19, 20, 22–25,
29, and 30, each of which depends from one of independent claims 1, 11,
and 21. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent
claims are nonobvious if the independent claims from which they depend are
nonobvious”).
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Rejection III
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claims 1, 11, and 21 under 35 U.S.C. § 103(a) because
neither Barnes nor Nordmark discloses or suggests “determining, using a
processor, a geographic location from content of a web page,” as recited in
claim 1, and similarly recited in claims 11 and 21 (App. Br. 14–16; see also
Reply Br. 9–10).
The Examiner cites Barnes as disclosing the argued feature (Final
Act. 17–18 (citing Barnes ¶¶ 21, 23, 35, 38, 39, 52, 57, 58, and 60)).
However, having reviewed the cited portions of Barnes, we agree with
Appellants that none of the cited paragraphs discloses or suggests
“determining, using a processor, a geographic location from content of a
web page,” as recited in claim 1, and similarly recited in claims 11 and 21.
Barnes is directed to systems and methods for mobile device
advertising (Barnes Abstract), and discloses a system including a mobile
device, a content provider, and an advertisement provider (id. ¶ 8). The
mobile device includes an application, e.g., a web browser, for requesting
content from the content provider, which enables advertisement providers to
supplement the requested content with advertisements (id. ¶ 4). Barnes
discloses that, as part of a request for content, the mobile device sends at
least one location fix to the content provider, which forwards the location fix
to the advertisement provider (id. ¶ 21). Based on the location fix, the
advertisement provider selects an advertisement designed for a specific
location and transmits the advertisement to the mobile device (id.). Thus,
rather than determining a geographic from content of a web page, as called
for in claims 1, 11, and 21, the mobile device sends its own location
information with its request for content.
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In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1, 11, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Barnes and Nordmark.
Rejections IV–VII
The remaining rejections based on Choi, Monberg, and Inokuchi, in
combination with one or more of Silverbrook, Olligschlaeger, Barnes, and
Nordmark, do not cure the deficiency in the Examiner’s rejections of
independent claims 1, 11, and 21. Therefore, we do not sustain the
rejections under 35 U.S.C. § 103(a) of claims 2–10, 12–20, and 22–30, each
of which depends, directly or indirectly, from independent claims 1, 11, and
21, respectively.

DECISION
The Examiner’s rejection of claims 1–10 under 35 U.S.C. § 101 is
reversed.
The Examiner’s rejection of claims 11–20 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejections of claims 1–30 under 35 U.S.C. § 103(a)
are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
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