Ex Parte Ditkovski et al

Patent Trial and Appeal Board

Jun 24, 2016

12493733 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/493,733 0612912009
122066 7590
M&B IP Analysts, LLC
45 S. Park Place #262
Morristown, NJ 07960
06/28/2016
FIRST NAMED INVENTOR
Gil Ditkovski
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.
SZMKP0104 9915
EXAMINER
OSMAN BILAL AHME, AF AF
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
pair@mb-ip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIL DITKOVSKI and DEAN DONALDSON
Appeal2014-003215
Application 12/493,733
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-7 and 9-20 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.
Appeal2014-003215
Application 12/493,733
THE INVENTION
The Appellants' claimed invention is directed to a method for
measuring online advertisement dwell time (Spec., i-f 8). Claim 1,
reproduced below with bracketed numerals added, is illustrative of the
subject matter on appeal.
1. A method for measuring online advertisement dwell time,
wherein the method is performed by a client device adapted to
download a webpage that includes the online advertisement,
compnsmg:
[ 1] monitoring a plurality of events being generated in a
response to a user interaction with a plurality of rich media objects
embedded in the online advertisement embedded in the webpage,
wherein each of the plurality of events are associated with different
states of the plurality of rich media objects;
[2] determining at least a state of each of the plurality of events
being monitored;
[3] based on the determined state of at least one of the plurality
of events, instructing a counter configured to count the dwell time to
perform at least any one of terminating the counting, starting the
counting and stopping the counting; and
[ 4] upon termination of the counting, filtering a value of the
counter to record values that are considered as a real user interaction
with the advertisement,
[5] wherein filtering the value of the counter includes checking
if the value of the counter is above a predefined time threshold; and
[ 6] recording the filtered value of the counter as a measured
dwell time.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Jawahar
Middleton
Jacoby
US 6,298,356B1
US 2002/0111865 Al
US 2002/0147634 Al
2
Oct. 2, 2001
Aug. 15, 2002
Oct. 10, 2002
Appeal2014-003215
Application 12/493,733
Davis
Bennett
Ahanger
US 6,643,696 B2
US 2006/0041550 Al
US 2008/0307454 Al
The following rejections are before us for review:
Nov. 4, 2003
Feb.23,2006
Dec. 11, 2008
1. Claims 7 and 18 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
2. Claims 1-3, 7, 11-12, 14, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Middleton, Jawahar, and Jacoby.
3. Claims 4---6 and 15-17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Middleton, Jawahar, Jacoby, and Ahanger.
4. Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Middleton, Jawahar, Jacoby, and Davis.
5. Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Middleton, Jawahar, Jacoby, and Bennett.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
Written Description
The Examiner has rejected claims 7 and 18 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal2014-003215
Application 12/493,733
because the Specification does not disclose that "a pointing device does not
point to the online advertisement, a web browser was closed, a user
navigates to a different web page, and the counter exceeds a predefined time
threshold and a time out mechanism was activated" (Final Act. 4--5; Ans. 2-
3).
The Appellants contend that the rejection is improper because
paragraph 15 of the Specification provides support for this limitation
(Appeal Br. 6).
We note that the claim limitation at issue was present in claims 7 and
18 as originally filed. We agree with the Appellants that paragraph 15 does
provide support for the cited claim limitation. Further, an original claim can
be in itself be an adequate "written description" See In re Gardner, 480 F.2d
879, 879 (CCPA 1973). Although original claims may lack written
description in some circumstances (see, e.g., Ariad Pharm., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010)), that is not the case here. We
find that, in this case, in addition to paragraph 15, that the inclusion of the
rejected limitation in claims 7 and 18 as originally filed constitutes its own
written description support.
Accordingly, the rejection of claims 7 and 18 for lack of written
description support is not sustained.
Obviousness
The Appellants argue that the rejection of claim 1 is improper
because, inter alia, Middleton does not disclose limitation [ 4] because "the
logged information of Middleton may include information that cannot be
considered as a real user interaction with the advertisement" (Appeal Br. 12)
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Appeal2014-003215
Application 12/493,733
and Jawahar does not disclose limitation [5] because "[t]he update timer of
Jawahar does not and cannot measure the dwell time, as recited in
independent Claim 1, as it merely counts the time until the collected data
should be sent" (Appeal Br. 10).
The Examiner has however determined that the cited claim limitations
are disclosed by Middleton at paragraphs 37--48 (Final Act. 5; Ans. 6-7) and
Jawahar at column 15, lines 15-35 and Figure 7A (Final Act. 6; Ans. 5-6),
respectively.
We agree with the Appellants. Here the cited claim limitations
require a filtering step based on a threshold. Claim limitation [5] requires
"wherein filtering the value of the counter includes checking if the value of
the counter is above a predefined time threshold". The above citations to
Middleton and Jawahar fail to disclose any type of filtering.
At paragraphs 37--48, Middleton discloses, e.g., tracking an elapsed
time that a user interacts with an element in a web page and storing the
interaction data in activity log 60. At paragraph 47, Middleton discloses that
the activity log data may be sent to a server at various times, such as in
response to a certain event. We see no disclosure related to any type of
filtering of the log data at the above citations. On the contrary, paragraph 48
discloses that "[ w ]hat is important is that the logged interaction data is
eventually flushed to the server 12b." In other words, Middleton teaches
that all of the logged data are "eventually" uploaded to the server.
Therefore, the cited passages do not disclose any filtering of the logged data
as claimed.
At column 15, lines 15-35 and Figures 7A and 7B, Jawahar discloses
an update timer that is incremented until it reaches a threshold, at which
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Appeal2014-003215
Application 12/493,733
point "the collected data is transmitted to the server" at step 226. In other
words, the update timer in Jawahar is used to determine when data is
transmitted to the server, and not whether data is transmitted. So although
Jawahar discloses a "threshold," we see no disclosure of any type of filtering
as claimed. For these reasons the rejection of claim 1 and its dependent
claims 2-7, 9, and 10 is not sustained.
Independent claims 11 and 12 contain similar limitations, and the
rejection of claims 11 and 12 suffers from the same deficiency as the
rejection of claim 1. Therefore, the rejection of claims 11 and 12 and their
respective dependent claims 14--20 and 13 are not sustained for the same
reasons.
CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting the claims as listed in the Rejection section above.
DECISION
The Examiner's rejections of claims 1-7 and 9-20 are reversed.
REVERSED
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