Ex Parte Flake et al

Patent Trial and Appeal Board

Sep 14, 2015

12290310 (P.T.A.B. Sep. 14, 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.
12/290,310 10/28/2008 Gary W. Flake SE1-0058-US 2306
80118 7590 09/14/2015
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
LASTRA, DANIEL
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
09/14/2015 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 GARY W. FLAKE,
WILLIAM H. GATES III,
ALEXANDER G. GOUNARES,
W. DANIEL HILLIS,
ROYCE A. LEVIEN,
MARK A. MALAMUD,
CRAIG J. MUNDIE,
CHRISTOPHER D. PAYNE,
RICHARD F. RASHID,
CLARENCE T. TEGREENE,
CHARLES WHITMER, and
LOWELL L. WOOD JR.
__________

Appeal 2012-012504
Application 12/290,3101
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
TARA L. HUTCHINGS, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The Appellants identify Searete, LLC as the real party in interest. App. Br.
5.
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Application 12/290,310

2
STATEMENT OF THE CASE
Gary W. Flake, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 2, 7–11, 13, 15, 17, 21, 23, 24, 26,
27, 29, 31, 33, 36, 42, 53, 55–59, 64–71, 74–78, 83, 88, 89, 91, 92, 95, 101,
105, 108, 110, 111, 117, 119, 127–129, 131 and 261–266. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.2

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An influence evaluation method at least partially implemented
using hardware, comprising:
receiving an access information indicative of an accessing of an
electronic accessed content by an accessor;
receiving an involvement information using a machine-
implemented Web 2.0 construct, the involvement information being
indicative of an involvement between the accessor and a third party;
and
assessing an influence of the electronic accessed content on the
involvement between the accessor and the third party based at least
partially on the access information and the involvement information.

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Mar. 15, 2012) and the Examiner’s Answer (“Ans.,” mailed May 24,
2012).
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Chen
Agarwal

US 2006/0116926 A1
US 2007/0067215 A1
June 1, 2006
Mar. 22, 2007
The following rejections are before us for review:
1. Claims 1, 2, 7–11, 17, 21, 23, 24, 31, 33, 36, 42, 53, 55–59, 64–66,
68–71, 74–78, 83, 88, 89, 91, 92, 95, 101, 105, 108, 110, 111, 117,
127–129, 131, 261, and 262 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Agarwal.
2. Claims 13, 15, 26, 27, 29, 54, 67, and 119 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Agarwal.
3. Claims 263–266 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Agarwal and Chen.

ISSUES
Did the Examiner err in rejecting claims 1, 2, 7–11, 17, 21, 23, 24, 31,
33, 36, 42, 53, 55–59, 64–66, 68–71, 74–78, 83, 88, 89, 91, 92, 95, 101, 105,
108, 110, 111, 117, 127-129, 131, 261, and 262 under 35 U.S.C. § 102(e) as
being anticipated by Agarwal; claims 13, 15, 26, 27, 29, 54, 67, and 119
under 35 U.S.C. § 103(a) as being unpatentable over Agarwal; and, claims
263–266 under 35 U.S.C. § 103(a) as being unpatentable over Agarwal and
Chen?

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FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1, 2, 7–11, 17, 21, 23, 24, 31, 33, 36, 42, 53, 55–59,
64–66, 68-71, 74–78, 83, 88, 89, 91, 92, 95, 101, 105, 108, 110, 111, 117,
127–129, 131, 261, and 262 under 35 U.S.C. § 102(e) as being anticipated
by Agarwal.
The independent claims are claims 1 (method), 131 (apparatus), 261
(system), and 262 (computer program product), all of which include a
limitation to “assessing an influence.”
The Examiner found that para. 43 of Agarwal expressly describes said
limitation. See Ans. 5.
The Appellants dispute this. See e.g., App. Br. 23.
Anticipation is a question of fact. Finisar Corp. v. DirecTV Group,
Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). Accordingly, we review para.
43 of Agarwal (which is reproduced in the Appeal Brief at page 24) to
determine whether “assessing an influence,” as claimed, is expressly
described there.
Based on that review, we find that said claim limitation is not
expressly described there. To wit, para. 43 describes a “conversion.” For
example, when after “a user being shown an ad ... mak[es] a purchase on the
advertiser's Web page within a predetermined time” a “conversion” is said to
occur.

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In yet another alternative, a conversion may be defined by an
advertiser to be any measurable/observable user action such as, for
example, downloading a white paper, navigating to at least a given
depth of a Website, viewing at least a certain number of Web pages,
spending at least a predetermined amount of time on a Website or
Web page, registering on a Website, etc.
Para. 43.
For that reason, a prima facie case of anticipation has not been made
out in the first instance and the rejection is reversed.
We have considered the Examiner’s new rationale provided in
response to the Appellants’ arguments. The Examiner newly argues that
Agarwal teaches calculating the probabilities of a user taking actions
corresponding to an event (assessing an influence) (see paragraph 82)
such for example a deferred conversion may be defined as a user
being shown an ad, and making a purchase on the advertiser's website
within a predetermined time (see paragraph 43), where said deferred
event can occur due to impression only (no click), that is the user
received the ad impression, did not select the ad, but nonetheless had
the desired behavior (such as making a purchase on the advertiser's
website) (see paragraph 81) (i.e. "wherein the involvement between
the person and the third-party (advertiser) is not a consequence of the
person activating a link to the third-party (advertiser) included in
either the first-electronic-content portion or in the second-electronic-
content portion"). Agarwal teaches that ad consumer and/or users
may interface with the advertising network via results interface
operations and the results of said operations may be used to accept
information about user actions (such as whether or not a conversion
occurred), where such information may include to identify the ad and
time the ad was served, as well as the associate results (see paragraph
75). Agarwal teaches allowing advertisers to make different offers
(bids) to represent their desire for placement with certain publications
(e.g. Websites) (e.g. because the deferred conversions are higher for
such publications), therefore, allowing advertisers to make per-
publication differential offers has the additional benefit of attracting
the best publishers to participate in the ad network (see paragraph 94).
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Agarwal teaches using the probabilities (of impression being
perceived, of conversion) to score ads and/or location of client device
to determine which ad to display to a user in a website (see paragraphs
96-98). Therefore, contrary to Appellant's argument, Agarwal teaches
Appellant's claimed invention because Agarwal receives data
indicative of a user accessing at least one of a first network- available
electronic content (publication A or Website A) having a first-
electronic-content portion or a second network-available electronic
content (publication B or Website B) having a second-electronic-
content portion; receives data indicative of an involvement between
the user and a third-party (advertiser): wherein the involvement
between the user and the third-party (advertiser) is a consequence or is
not a consequence of the user activating a link to the third-party
(advertiser) included in either the first-electronic-content portion
(publication A or Website A) or in the second-electronic-content
portion (publication B or website B) (i.e. deferred conversion not a
result of a click, where deferred conversion is higher for publication
A)
Ans. 28–30.
As a matter of fact, the cited Agarwal disclosures do not expressly
describe “assessing an influence.” Para. 82 describes “the probabilities of
a user taking actions corresponding to [an] event ... commonly referred to as
the click-through-rate.” A click-through-rate is a measure of success or
effectiveness.
At best, the Examiner is attempting, belatedly, to make an inherency
argument; that is, that a click-through-rate as a measure of success or
effectiveness is necessarily an act of “assessing an influence” as claimed.
The difficulty with this is two-fold. First, no claim construction
analysis has been presented to make the case that “assessing an influence”
reasonably broadly covers the type of activity Agarwal is describing. See In
re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). While we do not see an
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express definition for “assessing” in the Specification, the ordinary and
customary meaning of assessing is to set an estimated value. See Webster’s
New World Dictionary 82 (3rd Ed. 1988, entry 1. for “assess”). The question
is whether “assessing an influence” as reasonably broadly construed, that is,
setting an estimated value for an influence, reads on, for example, a
conversion or click-through-rate. That question leads to the second
difficulty with the inherency argument. While it possible to set an estimated
value for an influence given a conversion or click-through-rate as Agarwal
explains, “[i]Inherent anticipation requires that the missing descriptive
material is ‘necessarily present,’ not merely probably or possibly present, in
the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295
(Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999)).
We follow what the Examiner is now trying to explain. But the
question of patentability is one of anticipation, not obviousness. Whether
one of ordinary skill in the art would reach the claimed “assessing an
influence” given what Agarwal describes is not the question before us. The
only question before us is whether “assessing an influence” reads on a
conversion or click-through-rate as Agarwal describes. In our view, that is
not a conclusion supported by a preponderance of the evidence.
“[R]ejections under 35 U.S.C. § 102 are proper only when the claimed
subject matter is identically disclosed or described in the prior art.” In re
Arkley, 455 F.2d 586, 587 (CCPA 1972). As a matter of fact Leyde does not
identically disclose the claimed subject matter. Cf. Net MoneyIN Inc. v.
VeriSign Inc., (Fed. Cir. 2008) (Granted, there may be only slight
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differences between the protocols disclosed in the iKP reference and the
system of claim 23. But differences between the prior art reference and a
claimed invention, however slight, invoke the question of obviousness, not
anticipation.).

The rejection of claims 13, 15, 26, 27, 29, 54, 67, and 119 under 35 U.S.C. §
103(a) as being unpatentable over Agarwal.
The rejection of claims 263–266 under 35 U.S.C. § 103(a) as being
unpatentable over Agarwal and Chen.
The claims involved in these rejections depend from claim 1 and
therefore include the same claim limitation at issue (i.e., “assessing an
influence”) that is discussed above. With regard to said claim limitation, the
Examiner relied on the position that Agarwal expressly describes it. Ans.
20–28. Thus, for the same reasons for not sustaining the rejection of claim
1, the rejections of claims 13, 15, 26, 27, 29, 54, 67, 119 and 263–266 are
also not sustained.

CONCLUSIONS
The rejection of claims 1, 2, 7–11, 17, 21, 23, 24, 31, 33, 36, 42, 53,
55-59, 64–66, 68–71, 74–78, 83, 88, 89, 91, 92, 95, 101, 105, 108, 110, 111,
117, 127–129, 131, 261, and 262 under 35 U.S.C. § 102(e) as being
anticipated by Agarwal is not sustained.
The rejection of claims 13, 15, 26, 27, 29, 54, 67, and 119 under 35
U.S.C. § 103(a) as being unpatentable over Agarwal is not sustained.
The rejection of claims 263–266 under 35 U.S.C. § 103(a) as being
unpatentable over Agarwal and Chen is not sustained.
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DECISION
The decision of the Examiner to reject claims 1, 2, 7–11, 13, 15, 17,
21, 23, 24, 26, 27, 29, 31, 33, 36, 42, 53, 55–59, 64–71, 74–78, 83, 88, 89,
91, 92, 95, 101, 105, 108, 110, 111, 117, 119, 127–129, 131 and 261–266 is
reversed.

REVERSED

JRG