10676195 (B.P.A.I. Mar. 30, 2009)

Ex Parte Fikes et al

Board of Patent Appeals and InterferencesMar 30, 2009

10676195 (B.P.A.I. Mar. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ____________________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ____________________ 6 7 Ex parte ANDREW FIKES, 8 ROSS KONINGSTEIN, 9 and 10 JOHN BAUER 11 ____________________ 12 13 Appeal 2009-0198 14 Application 10/676,195 15 Technology Center 1700 16 ____________________ 17 18 Decided:1 March 31, 2009 19 ____________________ 20 21 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH 22 A. FISCHETTI, Administrative Patent Judges. 23 24 MURRIEL E. CRAWFORD, Administrative Patent Judge. 25 26 27 DECISION ON APPEAL28 1The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-0198 Application 10/676,195 2 STATEMENT OF THE CASE 1 Appellants appeal under 35 U.S.C. Â§ 134 (2002) from a final rejection 2 of claims 2 to 6, 8 to 15, 17 to 28 and 30. We have jurisdiction under 35 3 U.S.C. Â§ 6(b) (2002). 4 Appellants invented a system and method for automatically targeting 5 web-based advertisements (Specification 1). 6 Claim 2 under appeal reads as follows: 7 2. A system for automatically targeting 8 Web-based advertisements, comprising: 9 an indexer to identify advertisements 10 relative to a query, wherein identified 11 advertisements describe characteristics relative to 12 at least one of a product and a service; 13 a scorer to score the advertisements 14 according to match between the query and the 15 characteristics of the identified advertisements; 16 and 17 a targeting component to provide at least 18 some of the advertisements as Web-based content, 19 wherein a numerical score is assigned to the 20 identified advertisements based on a degree of the 21 match. 22 23 The Examiner rejected claims 2 to 5, 8 to 15, 17 to 19, 21 to 28 and 30 24 under 35 U.S.C. Â§ 102(e) as being anticipated by Radwin. 25 The Examiner rejected claims 6 and 20 under 35 U.S.C. Â§ 103(a) as 26 being unpatentable over Radwin. 27 The prior art relied upon by the Examiner in rejecting the claims on 28 appeal is: 29 Radwin US 2003/0050863 Mar. 13, 2003 30 31 Appeal 2009-0198 Application 10/676,195 3 ISSUES 1 Have Appellants shown that the Examiner erred in finding that 2 Radwin discloses a scorer to score advertisements according to the match 3 between the query and the characteristics of the identified advertisements 4 wherein a numerical score is assigned to the identified advertisement based 5 on a degree of the match? 6 Have the Appellants shown that the Examiner erred in finding that 7 Radwin discloses a selector to select at least some of an ordered identified 8 advertisements relative to a ranking cutoff? 9 Have the Appellants shown that the Examiner erred in finding that 10 Radwin suggests a filter to filter advertisement based on demographic 11 information? 12 13 FINDINGS OF FACT 14 Appellantsâ€™ Specification discloses a system and method for 15 automatically targeting Web-based advertisements which includes a scorer 16 to score the advertisements according to a match between the query and the 17 characteristics of the advertisement (Specification 9). The score is based on 18 a degree of match between the query and the characteristics of the 19 advertisement (Specification 9). The match measures the closeness of fit 20 between the query terms 40 and one or more category names 51 of products 21 and services to arrive at advertising results 43 (Specification 10). A filter 22 prunes the results 43 by applying classification factors such as country, 23 locale, language, daily budget, and other factors in the query 39 to the 24 information and characteristics associated with each advertisement result 43. 25 After that, a ranker 38 applies selection criteria to the advertising results 43 26 Appeal 2009-0198 Application 10/676,195 4 remaining against a predefined scoring threshold and applies a ranking 1 cutoff to determine the advertising results that are acceptable in terms of 2 costs (Specification 10). 3 Radwin discloses a system and method for automatically targeting 4 Web-based advertisements that matches a keyword in a query to 5 advertisements in an advertisement repository 20 [0026]. The advertisement 6 repository 20 has an hierarchical structure [0040]. As disclosed in Figure 5, 7 the advertisement repository is organized so that each advertisement 44 is 8 given a number 40 and an ad type 41. An editorial staff may add a keyword 9 flag 45 for immediate presentation or an advertisement weighting value 47 10 [0040]. The weighting value 47 is a value set to indicate how valuable 11 and/or relevant a particular advertisement is relative to other advertisements 12 [0040]. The weighting value 47 is set in accordance with an advertisement 13 agreement as well as the experience and suggestions from the respective 14 advertisers [0040]. As shown in Figure 5, advertisement A1 has an ad type 15 of apparel, no keyword flag and a weighting value of 2 whereas 16 advertisement An has no keyword flag and a weighting value of 9 and thus 17 may have a higher probability of being shown than A1 [0041]. An advertiser 18 may also have an arrangement that guarantees an amount of impressions per 19 period of time [0041]. 20 Radwin does not disclose giving a numerical score to an 21 advertisement based on a degree of match between a query and the 22 characteristics of the advertisement. While Figure 5 of Radwin discloses a 23 score of sorts based on the weighting value and keyword flags, this score is 24 not based on a degree of match between the query and the advertisement 25 characteristics but instead based on an agreement made by the advertiser. 26 Appeal 2009-0198 Application 10/676,195 5 Radwin does not disclose a selector to select some of ordered 1 advertisements relative to a ranking cutoff. While Figure 5 may disclose a 2 ranking of the advertisements based on the weighting value and the keyword 3 flag, and an ordering of the advertisement, there is no disclosure of a cutoff 4 related to the ranking of the advertisement. 5 Radwin discloses that using demographic characteristics such as age, 6 income, sex, and occupation to target the presentation of advertisements to 7 users is known but has drawbacks because users provide inaccurate 8 information [0007-0008]. 9 10 PRINCIPLES OF LAW 11 To support a rejection of a claim under 35 U.S.C. Â§ 102, it must be 12 shown that each element of the claim is found, either expressly described or 13 under principles of inherency, in a single prior art reference. See Kalman v. 14 Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983), cert. denied, 465 15 U.S. 1026 (1984). 16 A reference may be said to teach away from the invention if the 17 reference criticizes, discredits, or otherwise discourages modifying a 18 reference to arrive at the claimed invention. See In re Fulton, 391 F.3d 19 1195, 1201 (Fed. Cir. 2004). 20 21 ANALYSIS 22 Anticipation 23 We will not sustain the Examinerâ€™s rejection of claim 2. We agree 24 with the Appellants that Radwin does not disclose a numerical score 25 assigned to an identified advertisement based on a degree of match. Rather, 26 Appeal 2009-0198 Application 10/676,195 6 any score given to the advertisements relates to a keyword flag or weighting 1 values which relate to prior agreements between the advertiser and the 2 system. As such, we will not sustain the Examinerâ€™s rejection of claim 2 and 3 claims 3 to 5 and 12 to 14 dependent thereon. 4 We will also not sustain this rejection as it is directed to claim 8 5 because Radwin does not disclose a cutoff for the presentation of the 6 advertisements based on the ranking of the advertisement. Although, the 7 Examiner is correct that a cutoff is employed in the Radwin reference in that 8 not all of the advertisements are shown, there is no disclosure in Radwin that 9 this cutoff is a ranking cutoff. As such, we will not sustain the Examinerâ€™s 10 rejection of claim 8 and claims 9 to 11 dependent thereon. 11 We will also not sustain this rejection as it is directed to claims 15 and 12 30 and claims 17 to 19 and 21 to 28 dependent thereon because claims 13 15 and 30 both recite subject matter related to the scoring of advertisements 14 according to a degree of match between the query and characteristics of the 15 advertisements that we found missing in Radwin. 16 Obviousness 17 We will sustain the Examinerâ€™s rejection of claim 6 because Radwin 18 discloses that it was known to filter advertisement based on demographic 19 information. The disclosure that users may input inaccurate information 20 thereby making the demographic filtering based on underlying assumptions 21 that are not accurate merely makes the reader aware of the limitations and 22 that frequently those limitations may be sufficient to weigh against the 23 advantages. In our view, this is not a teaching away. A known or obvious 24 Appeal 2009-0198 Application 10/676,195 7 element does not become patentable simply because it has been described as 1 somewhat inferior to some other product for the same use. See In re Gurley, 2 27 F.3d 551, 554 (Fed. Cir. 1994). 3 We will not sustain this rejection as it is directed to claim 20 because 4 claim 20 is dependent on claim 15 which includes the scoring of 5 advertisements according to the degree of match that we found lacking in 6 Radwin. 7 8 CONCLUSION OF LAW/DECISION 9 On the record before us, Appellants have shown that the Examiner 10 erred in rejecting claims 2 to 5, 8 to 15, 17 to 19, 21 to 28 and 30 under 35 11 U.S.C. Â§ 102(e) as being anticipated by Radwin, and claim 20 under 35 12 U.S.C. Â§ 103 as being unpatentable over Radwin. Appellants have not 13 shown that the Examiner erred in rejecting claim 6 under 35 U.S.C. Â§ 103 as 14 being unpatentable over Radwin. 15 The Examinerâ€™s rejection of claims 2 to 5, 8 to 15, 17 to 28 and 30 is 16 not sustained. The Examinerâ€™s rejection of claim 6 is sustained. 17 18 AFFIRMED-IN-PART 19 20 21 22 hh 23 24 Straub & Pokotylo 25 788 Shrewsbury Avenue 26 Tinton Falls, NJ 07724 27