10674056 (B.P.A.I. Sep. 11, 2012)

Ex Parte Harik

Board of Patent Appeals and InterferencesSep 11, 2012

10674056 (B.P.A.I. Sep. 11, 2012)

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. 10/674,056 09/29/2003 Georges R. Harik Google-38 (GP-100-00-US) 1182 82402 7590 09/11/2012 Straub & Pokotylo 788 Shrewsbury Avenue Tinton Falls, NJ 07724 EXAMINER PADMANABHAN, KAVITA ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 09/11/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte GEORGES R. HARIK ____________ Appeal 2009-015305 Application 10/674,056 Technology Center 2100 ____________ Before THOMAS S. HAHN, DENISE M. POTHIER, and BRUCE R. WINSOR, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-015305 Application 10/674,056 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-5, 29-33, and 57-78. Claims 6-28 and 34-56 have been canceled. See Supp.Br. 2. 1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. Invention Appellant’s invention relates to a process for generating information that targets advertisements to users. See generally Spec. 1:18-19, 6:2-11. Claim 1 is reproduced below with the key disputed limitation emphasized: 1. A method for generating information for an online advertisement, the method comprising: a) generating a first plurality of search results using a search query and an index of advertiser Web page information; b) determining, for each of the first plurality of search results, at least one of (A) landing page information and (B) ad creative information using a corresponding one of the first plurality of search result; c) generating, for each of the first plurality of search results, an ad using the determined at least one of a landing page information and ad creative information; and d) generating a search result page including i) at least a second plurality of search results corresponding to the search query, and ii) the generated ads, wherein the generated ads are maintained as distinct from the second plurality of search results on the search result page, and wherein the second plurality of search results is a predetermined number. 1 Throughout this opinion, we refer to (1) the Appeal Brief filed January 21, 2009 and supplemented on March 2, 2009 and (2) the Examiner’s Answer mailed June 8, 2009. Appeal 2009-015305 Application 10/674,056 3 The Examiner relies on the following as evidence of unpatentability: Davis US 6,269,361 B1 July 31, 2001 Rorex US 6,876,997 B1 Apr. 5, 2005 (filed May 22, 2000) The Rejections 1. The Examiner rejected claims 67-70 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. Ans. 3-4. 2. The Examiner rejected claims 1-5, 29-33, and 57-78 under 35 U.S.C. § 103(a) as unpatentable over Rorex and Davis. Ans. 4-10. 2 THE WRITTEN DESCRIPTION REJECTION The Examiner finds that the original disclosure does not support the limitation, “the predetermined number of the second plurality of search results is independent of a number of ads included on the generated search result page” as recited in claim 67 and 69 (Ans. 3-4; Final Rej. 2), as well as “the predetermined number of the second plurality of search results is more than a number of the ads included on the generated search result page” as recited in claims 68 and 70 (Final Rej. 2). To support the rejection, the Examiner cites to the Manual of Patent Examining Procedure (MPEP) § 2173.05(i), which states a negative or exclusionary limitation must have a basis in the original disclosure. Ans. 10-11. 2 The Examiner has withdrawn a § 112, first paragraph rejection of claims 72-74 and 76-78. Ans. 2-3. An Advisory Action also indicates that a § 101 rejection discussed in the May 19, 2008 Final Action has been withdrawn. See Box 5 of the January 14, 2009 Advisory Action. Appeal 2009-015305 Application 10/674,056 4 Appellant argues that page 10, line 19 through page 11, line 2 supports these limitations. Particularly, Appellant stresses this portion of the disclosure states that the search results may be grouped into a predetermined number of search results. Br. 6-7. Appellant also concludes that this portion of the disclosure supports the recitations in claims 68 and 70 related to the search results being more than the number of ads on the search result page. Br. 7. ISSUES Under § 112, first paragraph, has the Examiner erred by finding that the following recitations lack written description support in the disclosure: (1) “the predetermined number of the second plurality of search results is independent of a number of ads included on the generated search result page” as recited in claims 67 and 69? (2) “the predetermined number of the second plurality of search results is more than a number of the ads included on the generated search result page” as recited in claims 68 and 70? PRINCIPLES OF LAW To satisfy the written description requirement, the disclosure must convey with reasonable clarity to ordinarily skilled artisans that the inventor had possession of the claimed invention as of the filing date. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (internal citations omitted). Appeal 2009-015305 Application 10/674,056 5 ANALYSIS Claims 67 and 69 Based on the record before us, we find error in the Examiner’s rejection of claims 67 and 69, which recites the predetermined number of second search results is independent of a number of ads included on the generated search result page. The Specification states that the “search results . . . may be grouped into a predetermined number of (e.g., ten) search results.” Spec. 10: 25-28. Thus, the disclosure supports a predetermined number of search results. Id. Moreover, by stating the number may be predetermined, such as ten search results (id.), the predetermined number is not linked or tied to other components, elements or variables. Additionally, Appellant further states that the number of ads “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.” Spec. 10:30-11:2. This disclosure supports that the number of ads may be a given value or within a given number range (e.g., one to ten, three to five). Id. This also supports that the number of ads may depend on screen space occupied or the size and shape of the ads rather than the search results. This further illustrates embodiments where the ad number may not be linked to the search results, and thus the additional search results are independent of an ad number in some embodiments. We find that these passages in the disclosure convey with reasonable clarity to ordinary skilled artisan that Appellant had possession of the claimed predetermined number of second search results can be and, thus in some instances, is independent of the number of ads included on a search Appeal 2009-015305 Application 10/674,056 6 results page as of the filing date. We therefore will not sustain the rejection of claims 67 and 69. Claims 68 and 70 Similarly, we will not sustain the § 112 rejection of claims 68 and 70, which recites the predetermined number of second search results is more than a number of the ads included on the generated search results page. Appellant relies on the same passage for written description support. See Br. 7 (stating “the above cited portion of the specification clearly supports that the number of search results can be more than a number of the generated ads included on the generated search result page.”) As discussed above, the disclosure states the search results may be predetermined, such as ten (Spec. 10:25-28), and that the number of ads may depend on the search results (Spec. 10:29-31). Appellant also describes embodiments where the number of ads will be from one to ten and preferably three to five. Spec. 11:1-2. Thus, Appellant discloses a preferable embodiment where the predetermined number of search results (e.g., ten) is more than the number of ads (e.g., preferably three to five) included on the search result page. For the foregoing reasons, Appellant has persuaded us of error in the rejection of claims 68 and 70. 3 3 Notably, claims 57 and 62 recite “the predetermined number of the second plurality of search results is no less than a number of ads included on the generated search results page” (emphasis added). The Examiner has not presented a written description rejection for this recitation and we express no opinion whether Appellant has possession of this claimed subject as of the filing date. Appeal 2009-015305 Application 10/674,056 7 THE OBVIOUSNESS REJECTION Regarding representative claim 1, Appellant argues that neither Davis nor Rorex teaches the second search results are a predetermined number. Br. 11. Specifically, Appellant asserts that Davis does not disclose the listings or search results are predetermined. Id. Appellant admits that the total slots in Davis for the search results are predetermined (e.g., forty slots), but that the number of unpaid listings, which the Examiner mapped to the second search results, is not known or determined until the search query for relevant ads has been completed and the relevant paid listings have been used. Id. The Examiner finds that Rorex does not explicitly teach the second search results are a predetermined number. Ans. 6. The Examiner relies upon Davis’ discussion in column 18 to teach this deficiency in Rorex (Ans. 6-7) and finds the term, “predetermined” in claim 1, can be broadly construed to include determining prior to displaying, such that Davis teaches the recited limitation (Ans. 11-12). ISSUE Under § 103, has the Examiner erred in rejecting claim 1 by finding that Rorex and Davis collectively would have taught or suggested the second search results are a predetermined number? ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of representative claim 1 which calls for, in pertinent part, “the second plurality of search results is a predetermined number.” As the Appeal 2009-015305 Application 10/674,056 8 Examiner states (Ans. 11-12), this limitation is given its broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations omitted). As discussed above, the disclosure states the number of search results is predetermined and provides an example of ten search results, but does not describe the point at which this determination is made. See Spec. 10:25-28. Additionally, the ordinary meaning of the term, “predetermine,” includes “to determine beforehand.” 4 Thus, the phrase, “a predetermined number” in claim 1, broadly and reasonably includes a second search result number that is determined beforehand, such as determined before displaying the results. Given this understanding, we turn to the Examiner’s explanation of the cited references. The Examiner maps Rorex’s discussion of the paid search result listings to the recited first search results and the non-paid listings to the second search results. See Ans. 5-6. The Examiner finds that Rorex does not disclose the non-paid listing or second search results are a predetermined number (Ans. 6) and cites to Davis to cure this deficiency (Ans. 6-7). In particular, Davis teaches forty (40) slots for advertisements, and, when there are insufficient numbers of relevant paid listings, unpaid listings will be displayed in the unfilled slots. Col. 18, ll. 26-36. The Examiner explains that this portion of Davis teaches, if there are insufficient paid listings to fill the forty (40) slots, then the number of unpaid listings (e.g., second search 4 Merriam-Webster’s Online Dictionary, 11th ed., available at http://www.merriam-webster.com/dictionary/prdetermine (last visited August 28, 2012). Appeal 2009-015305 Application 10/674,056 9 results) is determined to fill the remaining slots search results. Ans. 6-7, 11- 12 (citing to col. 18). Once the unpaid listings are determined, the number of second search results (e.g., whether it be none or five) is determined before displaying the search results. See Ans. 11-12. Thus, the second search result number is a predetermined number, as broadly as recited. Appellant also asserts that neither Davis nor Rorex teach the generated ads are maintained distinct from the second search results. Br. 11. Notably, merely pointing out what claim 1 recites and then asserting that Davis and Rorex fail to teach the recited generated ads are maintained distinct from the second search results (see id.) is not considered a separate argument for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Even so, we note that the Examiner finds support for such limitation in Rorex. See Ans. 6, 11. Appellant has not adequately rebutted this finding. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of independent claim 1 and claims 2-5, 29-33, 58, 59, 61, 63, 64, 66-71, 73-75, 77, and 78 not separately argued with particularity. Claims 57 and 62 We reach the opposite conclusion for the § 103 rejection of claims 57 and 62, which recites that the predetermined number of second search results is no less than a number of ads included on the generated search results page. Citing again to column 18, lines 26 through 36 in Davis, the Examiner finds that “the number of unpaid listings could obviously be equal to or greater than the number of relevant paid listings for any given search in an attempt to ensure that the searcher receives the most complete and relevant Appeal 2009-015305 Application 10/674,056 10 search results[.]” Ans. 8 (emphasis omitted). As discussed above, Davis discusses filling slots of search result with unpaid listings when there is insufficient number of listings for the forty slots. Col. 18, ll. 26-36. The Examiner has not adequately explained how the number of unpaid listings in Davis teaches or suggests to an ordinarily skilled artisan a relationship with the number of ads on a search results page as recited. The Examiner also concludes that the combination teaches “it is obvious that the number of unpaid listings could be greater than a number of ads included on a search results page . . . .” Ans. 12. However, other than stating the recitation “is obvious,” the Examiner provides no additional reasoning for this conclusion. While KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) indicates that a precise teaching directed to the claim language is not necessary in an obviousness rejection, the Supreme Court also held that an Examiner must articulate some reasoning with some rational underpinning to support a legal conclusion of obviousness. Absent impermissible hindsight, we find the Examiner has not demonstrated that Rorex and Davis collectively teach or suggest the predetermined number of second search results is no less than a number of ads included on the generated search results page. For the foregoing reasons, Appellant has persuaded us of error in the rejection of claims 57 and 62. Claims 60 and 65 Representative claim 60 recites the search score is a function of an information retrieval score. The Examiner finds that Rorex teaches this limitation in column 7, lines 12 through 34. Ans. 8. Specifically, the Appeal 2009-015305 Application 10/674,056 11 Examiner explains Rorex’s teachings of the rank value being based on an association between a bid amount, the rank, and the search terms and also the ranking of search results being based on relevancy and bidding teaches this limitation in claim 60. Ans. 12-13. Appellant argues an information retrieval score is defined as a dot product of a feature vector corresponding to a query and a document, whereas Rorex’s score is based on a bid amount. Br. 13-14. ISSUE Under § 103, has the Examiner erred in rejecting claim 60 by finding that Rorex and Davis collectively would have taught or suggested the search score to be a function of an information retrieval score? ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of claim 60, which calls for, the search score to be a function of an information retrieval score. Appellant has construed the recited phrase, “information retrieval score,” too narrowly. Br. 13-14. The Specification provides examples of scores related to search results (Spec. 11:6-10), including an information retrieval (IR) score, “such as dot products of feature vectors corresponding to a query and a document” (Spec. 11:9-10). However, this example of an IR score does not define an IR score to be a dot product of vectors. Other types of scores can reasonably be considered an information retrieval score that are not generated using a dot product of vectors. Appeal 2009-015305 Application 10/674,056 12 Rorex teaches a rank value (e.g., a search score) that is a function of bid amount, the rank, and the search term. Col. 7, ll. 17-20. Rorex also discusses sorting the listing in order from highest to lowest bid amount. Col. 7, ll. 20-31; Fig. 3. Given the breadth of the claim limitation, “information retrieval score,” we find that a bid amount can be reasonably mapped to the “information retrieval score.” And because Rorex’s rank value (e.g., search score) is a function of a bid amount (col. 7, ll. 17-20), Rorex teaches a search score that is a function of an information retrieval score. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of claims 60 and 65. Claims 72 and 76 Representative claim 72 recites the ad creative information is determined using information automatically extracted from an advertiser web page. Appellant argues that cited portions in Rorex do not teach or suggest extracted information from an advertiser’s web page. Br. 14-15. Appellant also argues Davis does not teach the limitation in claim 72. Br. 14. The Examiner finds that Rorex teaches the ad information includes a Uniform Resource Locator (URL), title, and bid amount and thus teaches this information is extracted from an associated web page. Ans. 9-10, 13 (citing to col. 4, ll. 59-61; col. 5, ll. 35-51, Figs. 3A-B). Appeal 2009-015305 Application 10/674,056 13 ISSUE Under § 103, has the Examiner erred in rejecting claim 72 by finding that Rorex and Davis collectively would have taught or suggested the ad creative information is determined using information automatically extracted from an advertiser web page? ANALYSIS Based on the record before us, we find no error in the Examiner’s rejection of claim 72. Figures 3A and 3B in Rorex disclose the search results that contain title information, descriptive text about products, bid amount, and a URL of an associated web page. Col. 4, ll. 59-61; Figs. 3A-B. The information found below each listing (e.g., 1. Buy CD-RW Drives and at Upgrade Source!, 2. Local Sales on CD Burners in Fig. 3A) can be considered the recited ad creative information and have been extracted from some source. See id. The Examiner states that the listed URL is extracted from an associated web page. Ans. 14. Rorex teaches and shows the search results include URLs of associated web pages (e.g., www.upgradesource.com, www.shoppinglist.com). See Fig. 3A. As stated above, this URL information has been extracted from some source. Rorex also teaches a user can click on a search result hyperlink (e.g., click on www.upgradesource.com) to retrieve information associated with the advertiser’s hyperlink. Col. 5, ll. 35-38. This suggests that some retrieved information is at a minimum associated with the advertiser’s web page and thus suggests retrieving such information from the web page itself. Appeal 2009-015305 Application 10/674,056 14 Additionally, Rorex discloses a database 104 that includes search listings used to generate search results. Col. 4, ll. 53-59. This suggests some ad creative information in Rorex is determined using information extracted from a database. However, Rorex is silent about how the database obtained such information. See id. One skilled in the art would have recognized that such information in the database can be obtained from different sources, including the advertiser’s web page itself. That is, there are a finite number of identified, predictable solutions for obtaining hyperlink information as well as title and descriptive text about products information, including extracting information from the web page. Given the limited possible ways of obtaining such information, we conclude that a person of ordinary skilled would have had good reason to pursue the known options within their technical grasp, including automatically extracting hyperlink, title, and product information from the advertiser’s web page. See KSR, 550 U.S. at 421. Moreover, obtaining ad information from the advertiser’s web page would predictably yield obtaining or extracting all the pertinent information in an efficient and economical manner. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of claims 72 and 76. CONCLUSION Under § 112, first paragraph, the Examiner erred in rejecting claims 67-70. Under § 103, the Examiner did not err in rejecting claims 1-5, 29-33, 58-61, and 63-78 under § 103 but erred in rejecting claims 57 and 62. Appeal 2009-015305 Application 10/674,056 15 DECISION The Examiner’s decision rejecting claims 1-5, 29-33, and 57-78 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)(1)(iv). AFFIRMED-IN-PART kis