Ex Parte Gross

Patent Trial and Appeal Board

Feb 27, 2017

13858627 (P.T.A.B. Feb. 27, 2017)

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.
13/858,627 04/08/2013 JOHN NICHOLAS GROSS JNG 2006-6C1 5109
23694 7590 03/01/2017
Law Office of J. Nicholas Gross, Prof. Corp.
PO BOX 9489
BERKELEY, CA 94709
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
eofficeaction @ appcoll.com
jngross@pacbell.net
anthonygreek @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN NICHOLAS GROSS
Appeal 2014-008902
Application 13/858,6271
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BRUCE T. WIEDER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Nicholas Gross (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1 and 3-20. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 The Appellants identifies J. Nicholas & Kristin Gross Trust U/A/D
4/10/2010 as the real party in interest. Appeal Br. 2.
Appeal 2014-008902
Application 13/858,627
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of presenting advertising material with a computing
system comprising:
processing a query from a user related to a first topic within a
search engine page to present a set of search results;
presenting at least one first advertisement with the computing
system related to said first topic within said search engine page with
said set of search results;
wherein said search engine page presents advertisements that
are matched by the computing system to said first topic and/or to
keywords in said query;
measuring an interaction by said user with said first
advertisement while presenting said set of search results with the
computing system, including by identifying if said user selects said
first advertisement, to rate said first advertisement and determine a
first advertisement performance score for content related to said first
topic;
associating said first advertisement with said first topic for use
in a content based advertising network based on said first
advertisement performance score;
presenting said first advertisement to users as a content based
advertisement on one or more individual webpages in said content
based advertising network separate from said search engine page with
the computing system based on a value of said first advertisement
performance score.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Axe US 2005/0055271 A1 Mar. 10,2005
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Application 13/858,627
Radwin US 7,007,074 B2 Feb. 28,2006
Koningstein US 8,392,249 B2 Mar. 5, 2013
The following rejections2 are before us for review:
1. Claim 19 is rejected under 35U.S.C. §112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
2. Claims 1, 3-6, 9 and 12-14 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Axe.
3. Claims 7, 8, 15 and 16 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Axe and Radwin.
4. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Axe and Koningstein.
5. Claims 17-20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Axe.
ISSUES
Did the Examiner err in rejecting claim 19 under 35 U.S.C. §112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention?
Did the Examiner err in rejecting claims 1, 3-6, 9 and 12-14 under 35
U.S.C. § 102(e) as being anticipated by Axe?
2 The Final Rejection contains statements by the Examiner to the effect that
“Applicant is advised” about a potential objection under 37 CFR 1.75. See
Final Act. 3. We do not view this as a rejection on appeal and accordingly
we will not review it.
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Application 13/858,627
Did the Examiner err in rejecting claims 7, 8, 15 and 16 under 35
U.S.C. §103(a) as being unpatentable over Axe and Radwin?
Did the Examiner err in rejecting claims 10 and 11 under 35 U.S.C.
§103 (a) as being unpatentable over Axe and Koningstein?
Did the Examiner err in rejecting claims 17-20 under 35 U.S.C.
§ 103(a) as being unpatentable over Axe?
ANALYSIS
The rejection of claim 19 under 35 U.S.C. §112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention
The Appellant states only that “[cjlaim 19 is rejected for
indefmiteness based on minor typographical errors which can be corrected at
a later time.” Appeal Br. 5 (footnote 2). The rejection’s merits are not
otherwise challenged. Accordingly, it is affirmed.
The rejection of claims 1, 3-6, 9 and 12-14 under 35 U.S.C. § 102(e) as being
anticipated by Axe.
Claims 1, 3-6, 9, 12 and 13
Independent claim 1, and thus dependent claims 3-6, 9, 12 and 13,
include the limitation “measuring an interaction by [a] user with [a] first
advertisement while presenting [a] set of search results with [a] computing
system.” Emphasis added.
The Examiner finds said claim limitation expressly described at paras.
10, 11, 16 and 42-45 of Axe. See Final Act. 6. These passages are
reproduced below. The sentence highlighted in bold in para. 10 below is the
disclosure the Examiner specifically relies upon.
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Application 13/858,627
[0010] Search engines, such as Google for example, have enabled
advertisers to target their ads so that they will be rendered in
conjunction with a search results page responsive to a query that is
relevant, presumably, to the ad. The Google system tracks click­
through statistics (which is a performance parameter) for ads and
keywords. Given a search keyword, there are a limited number of
keyword targeted ads that could be shown, leading to a relatively
manageable problem space. Although search result pages afford
advertisers a great opportunity to target their ads to a more receptive
audience, search result pages are merely a fraction of page views of
the World Wide Web.
[0011] Some online advertising systems may use ad relevance
information and document content relevance information (e.g.,
concepts or topics, feature vectors, etc.) to "match" ads to (and/or to
score ads with respect to) a document including content, such as a
Web page for example. Examples of such online advertising systems
are described in: [... ]
[0016] Generally, such online advertising systems may use relevance
information of both candidate advertisements and a document to
determine a score of each ad relative to the document. The score may
be used to determine whether or not to serve an ad in association with
the document (also referred to as eligibility determinations), and/or to
determine a relative attribute (e.g., screen position, size, etc.) of one or
more ads to be served in association with the document. The
determination of the score may also use, for example, one or more of
(1) one or more performance parameters (e.g., click-through rate,
conversion rate, user ratings, etc.) of the ad, (2) quality information
about an advertiser associated with the ad, and (3) price information
(e.g., a maximum price per result (e.g., per click, per conversion, per
impression, etc.)) associated with the ad.
[0042] Another example of an ad consumer 130 is the search engine
220. A search engine 220 may receive queries for search results. In
response, the search engine may retrieve relevant search results (e.g.,
from an index of Web pages). An exemplary search engine is
described in the article S. Brin and L. Page, "The Anatomy of a
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Application 13/858,627
Large-Scale Hypertextual Search Engine," Seventh International
World Wide Web Conference, Brisbane, Australia and in U.S. Pat. No.
6,285,999 (both incorporated herein by reference). Such search results
may include, for example, lists of Web page titles, snippets of text
extracted from those Web pages, and hypertext links to those Web
pages, and may be grouped into a predetermined number of (e.g., ten)
search results.
[0043] The search engine 220 may submit a request for ads to the ad
server 120/210. The request may include a number of ads desired.
This number may depend on the search results, the amount of screen
or page space occupied by the search results, the size and shape of the
ads, etc. In one embodiment, the number of desired ads will be from
one to ten, and preferably from three to five. The request for ads may
also include the query (as entered or parsed), information based on the
query (such as geolocation information, whether the query came from
an affiliate and an identifier of such an affiliate), and/or information
associated with, or based on, the search results. Such information
may include, for example, identifiers related to the search results (e.g.,
document identifiers or "docIDs"), scores related to the search results
(e.g., information retrieval ("IR") scores such as dot products of
feature vectors corresponding to a query and a document, Page Rank
scores, and/or combinations of IR scores and Page Rank scores),
snippets of text extracted from identified documents (e.g., Web
pages), full text of identified documents, topics of identified
documents, feature vectors of identified documents, etc.
[0044] The search engine 220 may combine the search results with
one or more of the advertisements provided by the ad server 120/210.
This combined information including the search results and
advertisement(s) is then forwarded towards the user that submitted the
search, for presentation to the user. Preferably, the search results are
maintained as distinct from the ads, so as not to confuse the user
between paid advertisements and presumably neutral search results.
[0045] Finally, the search engine 220 may transmit information about
the ad and when, where, and/or how the ad was to be rendered (e.g.,
position, click-through or not, impression time, impression date, size,
conversion or not, etc.) back to the ad server 120/210. Alternatively,
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or in addition, such information may be provided back to the ad server
120/210 by some other means.
The cited disclosures do describe tracking click-throughs via search
results and/or advertisements. Axe arguably expressly describes measuring
an interaction by a user with an advertisement and/or search results with a
computing system. Axe also discloses that search results and advertisements
can be combined for presentation to the user. See para. 44. But we see no
express description of “measuring an interaction by [a] user with [a] first
advertisement while presenting [a] set of search results with [a] computing
system” as claimed.
Anticipation may also be found through inherency. In that regard,
given that Axe arguably expressly describes measuring an interaction by a
user with an advertisement and/or search results and that Axe expressly
describes combining search results and advertisements for presentation to
the user, it is possible that one of ordinary skill in the art might be led to
consider measuring the interaction by a user with an advertisement while
being presented with a set of search results. But “[ijnherency, however, may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939), quoted in
Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
1991).
The rejection as to claims 1, 3-6, 9, 12 and 13 is not sustained.
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Claim 14
There is a similar difficulty with the Examiner’s position with respect
to claim 14.
Claims 14 calls for “measuring an interaction by said user with a first
website identified in said search results, including by identifying if said user
selects said first website, to rate said first website and determine a first
advertisement performance score for content related to said first topic.” The
same disclosures relied on in rejecting similar subject matter in claim 1 are
relied on here in rejecting claim 14. Final Act. 10.
In that regard, given that Axe arguably expressly describes measuring
an interaction by a user with an advertisement and/or search results, it is
possible that one of ordinary skill in the art might be led to consider
measuring the interaction by a user with a first website containing
advertisements identified in the seach results to rate said first website -
including by identifying if said user selects said first website. But
“[ijnherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Ibid.
The rejection as to claim 14 is not sustained.
The rejection of claims 7, 8, 15 and 16 under 35 U.S.C. §103(a) as being
unpatentable over Axe and Radwin.
Claims 7 and 8
Claims 7 and 8 depend from claim 1 and thus include the subject
matter of claim 1. Because Axe does not describe the subject matter of
claim 1, and no other prior art or reasoning has been relied upon, a prima
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facie case of obviousness for the subject matter covered by claims 7 and 8
have not been made out in the first instance by a preponderance of the
evidence. Accordingly, their rejection is not sustained.
Claims 15 and 16
Albeit in the context of a question of obviousness rather than
anticipation, the difficulty with the rejection of independent claim 15 and
claim 16 that depends from it is the same.
Claim 15 (and thus claim 16 as well) includes the limitation
“determining a potential performance rating for said topic related
advertisement for said target webpage on said content based advertising
network by examining user interaction within said search engine page with
said topic related advertisement.” The same disclosures relied on in
rejecting similar subject matter in claims 1 and 14 is relied on here in
rejecting claim 15. Final Act. 13.
In that regard, Axe arguably discloses measuring an interaction by a
user with an advertisement and/or search results (via tracking click-through
statictics). But that alone would not lead one of ordinary skill in the art to
determine a performance rating for an advertisement by examining user
interaction within a search engine page, let alone a potential performance
rating for a topic related advertisement for a target webpage on a content
based advertising network by examining user interaction within said search
engine page with said topic related advertisement as claimed. The cited Axe
disclosures only show advertisements and search results being independently
tracked, not tracking one by tracking the other.
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Application 13/858,627
Given nothing more by the way of disclosure or reasoning, we find
that a prima facie case of obviousness has not been made out in the first
instance by a prepondemace of the evidence.
Accordingly, the rejection of claim 15, and dependent claim 16, is not
sustained.
The rejection of claims 10 and 11 under 35 U.S.C. §103 (a) as being
unpatentable over Axe and Koninqstein.
Claims 10 and 11 depend from claim 1 and thus include the subject
matter of claim 1. Because Axe does not describe the subject matter of
claim 1, and no other prior art or reasoning has been relied upon, a prima
facie case of obviousness for the subject matter covered by claims 10 and 11
have not been made out in the first instance by a preponderance of the
evidence. Accordingly, their rejection is not sustained.
The rejection of claims 17-20 under 35 U.S.C. §103 (a) as being
unpatentable over Axe.
Claims 17-18 and 19-20 depend from claims 1 and 14 respectively
and thus respectively include the subject matter of claims 1 and 14. Because
Axe does not describe the subject matter of claims 1 and 14, and no other
prior art or reasoning has been relied upon, a prima facie case of
obviousness for the subject matter covered by claims 17-18 and 19-20 has
not been made out in the first instance by a preponderance of the evidence.
Accordingly, their rejection is not sustained.
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CONCLUSIONS
The rejection of claim 19 under 35 U.S.C. §112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention is affirmed.
The rejection of claims 1, 3-6, 9 and 12-14 under 35 U.S.C. § 102(e) as
being anticipated by Axe is reversed.
The rejection of claims 7, 8, 15 and 16 under 35 U.S.C. §103(a) as
being unpatentable over Axe and Radwin is reversed.
The rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as being
unpatentable over Axe and Koningstein is reversed.
The rejection of claims 17-20 under 35 U.S.C. § 103(a) as being
unpatentable over Axe is reversed.
DECISION
The decision of the Examiner to reject claims 1 and 3-20 is affirmed-
in-part.
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-IN-PART
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