Ex Parte Haitsuka et al

Board of Patent Appeals and Interferences

Dec 23, 2004

09348411 (B.P.A.I. Dec. 23, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STACY HAITSUKA, RONALD BURR,
HAROLD MACKENZIE, MARWAN ZEBIAN,
TERRY WARREN and SHANE BLASER
____________
Appeal No. 2004-0228
Application No. 09/348,411
____________
ON BRIEF
____________
Before KRASS, GROSS, and SAADAT, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1-29.
The invention pertains to ad displays on the internet. In
particular, a client application enables access to an online
service and causes the display of advertisements while the user
uses the client application to access the online service. The
client application establishes a communication channel from a
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Application No. 09/348,411
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local device to the online service and the client application
receives play lists from the online service provider. The play
lists include information about advertisements to be played and
the order of play.
Representative independent claim 1 is reproduced as follows:
1. A method of displaying advertisements to a user
of an online service using a client application on a
local device, the local device including an input
device and an output device, the local device accessing
the online service and providing interaction with the
online service, the method comprising the steps of:
the client application becoming active;
the client application establishing a
communication channel from the local device to the
online service;
the client application receiving a first play
list;
the client application displaying a client window
on the output device of the local device, wherein the
client window displays continuously so long as the
communication channel from the local device to the
online service is maintained;
the client application causing advertisements to
be displayed in an ad pane of the client window,
wherein the display of advertisements operates in
accordance with the first play list, the first play
list comprising plural ad objects, each ad object
comprising a resource locator for a given advertisement
and a resource locator for a click-through associated
with the given advertisement, the first play list
further specifying an order in which the advertisements
identified in the first play list are to be displayed.
The examiner relies on the following reference:
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Hoyle 6,141,010 Oct. 31, 2000
(filed Jul. 17, 1998)
Claims 1-29 stand rejected under 35 U.S.C. §103 as
unpatentable over Hoyle.
Reference is made to the briefs and answer for the
respective positions of appellants and the examiner.
OPINION
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993). To reach a conclusion of
obviousness under § 103, the examiner must produce a factual
basis supported by a teaching in a prior art reference or shown
to be common knowledge of unquestionable demonstration. Our
reviewing court requires this evidence in order to establish a
prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984). The examiner must not only
identify the elements in the prior art or that knowledge
generally available to one of ordinary skill in the art would
lead the individual to combine the relevant teachings of the
references. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988).
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In the examiner’s explanation of the rejection, at pages 3-4
of the answer, the examiner contends, with regard to independent
claims 1, 8 and 26, that Hoyle teaches the claimed subject matter
but for a client window that is displayed continuously as long as
the communication channel is maintained. But, the examiner finds
that it would have been obvious to implement the continuous
displaying of the client window as long as the communication
channel is maintained. “Motivation of the implementation is for
continuously maintaining the communication interface window for
communicating with the client” (answer-page 3).
Appellants assert that Hoyle fails to teach the claimed
“client application establishing a communication channel from the
local device to the online service” recited in claim 1 and,
analogously, in claims 8 and 26.
In particular, appellants point to column 8, lines 53-63, of
the reference to show that Hoyle teaches that a client
application may be used to download and install software but that
this “in no way teaches or suggests establishing a connection
with a server.” It is appellants’ position that this portion of
Hoyle implies the prior existence of a connection, so that it
cannot suggest that a client application establishes a
communication channel from the local device to the online
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service, as claimed. Similarly, with regard to column 8, lines
30-35, column 13, lines 56-58, and column 16, lines 24, through
56-58, reciting access to a server, appellants argue that this
implies a prior connection so that it cannot suggest the client
application establishing the communication channel.
We agree with appellants.
There are many references in Hoyle to accessing the Internet
via an existing TCP/IP connection to obtain advertising (see, for
example, column 7, lines 38-41), but we find nothing in Hoyle,
and the examiner has not convincingly pointed to anything
therein, indicating, or suggesting, that a client application
performs the establishment of a communication channel from a
local device to an online server (as required by independent
claims 1, 8 and 26), and that the client application displays a
client window continuously so long as the communication channel
from the local device to the online service is maintained (as
required by independent claims 1 and 26).
Accordingly, we will not sustain the rejection of claims 1,
8 and 26, or of claims 2-7, 9-14 and 27-29, dependent thereon,
under 35 U.S.C. § 103.
With regard to independent claim 15, appellants assert that
the limitation, “each ad object comprising a resource locator for
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a given advertisement, a resource locator for a click-through
associated with the given advertisement, and display attributes
for the given advertisement” distinguishes over Hoyle because
Hoyle does not suggest or teach ad objects including these three
components or that display attributes are included in an ad
object.
The examiner’s response is that Hoyle discloses each ad
object comprising a resource locator for a given advertisement
(citing the URL of the destination link when a user clicks on a
banner, at column 14, line 67 through column 15, line 6, and
column 19, lines 13-18); that Hoyle discloses a resource locator
for the click-through associated with a given advertisement
embedded in a web page and associated links for additional
information (citing column 1, lines 55-65, and column 15, lines
1-2); and that Hoyle suggests attributes such as the priority
level or the maximum number of permitted displays (citing column
15, lines 54 through column 16, line 8).
The examiner also dismisses appellants’ argument re Hoyle
not teaching the display attributes of the kind which contains
instruction, as being directed to limitations forming no part of
the claimed subject matter.
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We will sustain the rejection of claim 15, and of claims 17-
20, dependent thereon, under 35 U.S.C. § 103, in accordance with
appellants’ grouping at page 3 of the principal brief.
While appellants argue the lack of a showing of the three
components of the ad objects in Hoyle, the examiner has
reasonably pointed out where each component is to be found or
suggested in Hoyle’s disclosure and appellants’ only response to
the examiner’s rationale is that the third component, i.e., the
“display attributes” is not taught or suggested. However, the
examiner has clearly and reasonably pointed to “attributes” such
as priority level and the maximum number of permitted displays in
Hoyle. Appellants do not deny that Hoyle shows certain display
attributes in Figure 5, but, rather, they argue that the
attributes in Hoyle are not “attributes,” as claimed, but, rather
“perceived characteristics” because the claimed “display
attributes” include “controlling instructions such as, for
example, ‘fade, wash, sweep, fly, blinds, box, checkerboard,
crawl, dissolve, peak, spiral, split, stretch, strips, swivel,
wipe, zoom’.”
We agree with the examiner that Hoyle clearly shows “display
attributes” and that the specific display attributes now cited by
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appellants form no part of the claimed subject matter. As such,
appellants’ argument in this regard is not persuasive.
Since appellants have not convinced us of any error in the
examiner’s rationale with regard to claims 15 and 17-20, we will
sustain the rejection of these claims under 35 U.S.C. § 103.
We also will sustain the rejection of claim 16, dependent on
claim 15, under 35 U.S.C. § 103. Appellants separately argue the
limitations of claim 16, specifically arguing that Hoyle does not
teach the limitation of an “ad object includes a length of time
to display the given advertisement.” The examiner’s response was
to point to column 2, line 13, of Hoyle, wherein Hoyle
specifically mentions “the duration of display” as one of the
parameters relating to the presentation of the advertising. We
agree with the examiner that this disclosure by Hoyle, albeit in
the background section of the patent disclosure, is clearly
suggestive of displaying a given advertisement for a “length of
time.”
Appellants argue, in the reply brief, that the examiner
never before pointed to this section of Hoyle for a teaching of
displaying an advertisement for a “length of time.” The argument
is not persuasive as this disclosure has always been a part of
Hoyle and was readily ascertainable by appellants from a thorough
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reading of the applied reference. Moreover, appellants were not
prejudiced in any manner by the examiner pointing out this
portion of Hoyle in the answer since appellants had the
opportunity and, in fact, took that opportunity, to file a reply
brief. Appellants had a chance in the reply brief to refute the
examiner’s assertion that Hoyle suggested displaying
advertisements for a length of time.
With regard to independent claim 21, appellants assert that
Hoyle fails to disclose or suggest the claimed “match list” and,
specifically, “the client application receiving a match list from
an ad server after establishment of the first communication
channel, the match list comprising plural match objects
comprising an activity identifier and an ad object, the ad object
comprising a resource locator for a given advertisement and a
resource locator for a click-through associated with the given
advertisement.”
The examiner points to the two-tiered approach to target
advertisement in Hoyle’s client software application 10. The
examiner contends that the first tier is the initial selection of
ad objects based on a user’s demographic information and that the
second tier is the reactive targeting of the advertisement based
on user interaction with a particular application or on a link to
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information resource, citing column 16, lines 9-16, and column 4,
lines 5-7, of Hoyle. The examiner explains that the reactive
targeting permits the displaying of advertising that is relevant
to what the user is doing at any particular time, citing column
16, lines 24-37, for a “match list,” i.e., a list of target
advertisements that match with the user’s activities. The
examiner further explains that each of the target advertisements,
i.e., the match object, “implicitly includes an identifier
(identified by the web site being accessed, the keywords used,
the program being executed, etc . . .) Such that the relevant ads
can be identified and displayed to the user” (answer-page 7).
Appellants’ response is that Hoyle teaches real-time,
reactive targeting of ads to users based on a user’s actions, but
that no mention is made of a match object comprising an activity
identifier and an ad object.
We will not sustain the rejection of claims 21-25 under
35 U.S.C. § 103 because, while appellants have not convinced us
of any error in the examiner’s position regarding the claimed
“match list” and “the client application receiving a match list
from an ad server after establishment of the first communication
channel, the match list comprising plural match objects
comprising an activity identifier and an ad object, the ad object
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comprising a resource locator for a given advertisement and a
resource locator for a click-through associated with the given
advertisement,” claim 21 includes the limitation of “the client
application establishing a first communication channel to the
network” and, for reasons supra, we do not find such limitation
taught or suggested by Hoyle.
We have sustained the rejection of claims 15-20 under
35 U.S.C. §103 but we have not sustained the rejection of claims
1-14 and 21-29 under 35 U.S.C. § 103.
Accordingly, the examiner’s decision is affirmed-in-part.
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No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID SAADAT )
Administrative Patent Judge )
EAK/sld
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