Ex Parte Higgins et al

Patent Trial and Appeal Board

Dec 28, 2016

12357345 (P.T.A.B. Dec. 28, 2016)

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.
12/357,345 01/21/2009 Christopher William Higgins 070.P270 (Y05226US00) 1514
74792 7590 12/29/2016
BERKELEY LAW & TECHNOLOGY GROUP LLP
17933 NW EVERGREEN PARKWAY
SUITE 250
BEAVERTON, OR 97006
EXAMINER
MAHMOOD, REZWANUL
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
12/29/2016 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 CHRISTOPHER WILLIAM HIGGINS, MARC ELIOT DAVIS,
CHRISTOPHER TODD PARETTI, CARRIE BURGENER,
RAHUL NAIR, and SIMON P. KING1
____________________

Appeal 2016-002318
Application 12/357,345
Technology Center 2100
____________________

Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 4–20, and 22–25. Claims 2, 3, and 21 have been
canceled. App. Br. 31, 34. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Yahoo! Inc. as the real party in interest. App. Br. 4.

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STATEMENT OF THE CASE
Introduction
Appellants’ claimed invention is directed to targeting an
advertisement to an entity using tags related to the advertisement. Abstract.
Claims 1 and 13 are representative of the subject matter on appeal and
are reproduced below with disputed limitations emphasized in italics:
1. A method, comprising:
determining, by a computing device, at least one tag of a
plurality of tags relating to an advertisement, the advertisement
comprising content, wherein the at least one tag is generated
implicitly, by the computing device, based on subject matter of the
content of the advertisement, the at least one tag being generated
implicitly prior to the advertisement being presented to one or more
users;
selecting, by the computing device, at least one entity that is
representative of the at least one tag; and
targeting, by the computing device, the advertisement to the at
least one entity, the targeting comprising presenting the advertisement
to the one or more users.
13. A method, comprising:
determining, by a computing device, at least one tag of a
plurality of tags relating to an advertisement, the advertisement
comprising content, wherein the at least one tag is generated
implicitly, by the computing device, based on subject matter of the
content of the advertisement, the at least one tag being generated
implicitly prior to the advertisement being presented to one or more
users;
selecting, by the computing device, at least one geographical
location that is representative of the at least one tag; and
targeting, by the computing device, the advertisement to the at
least one geographical location, the targeting comprising presenting
the advertisement to the one or more users.

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The Examiner’s References and Rejections
Claims 1, 5–13, 20, and 23–25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dominowska et al. (US 2009/0144141
A1; June 4, 2009 (filed Nov. 30, 2007)) (“Dominowska”) and Petersen
(US 2009/0089288 A1; Apr. 2, 2009 (filed Sept. 27, 2007)). Final Act. 10–
23.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dominowska, Petersen, and Kapur et al.
(US 2007/0136256 A1; June 14, 2007) (“Kapur”). Final Act. 23–24.
Claims 14–16, 18, 19, and 22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dominowska, Petersen, and Johnson
(US 2009/0204484 A1; Aug. 13, 2009 (filed Feb. 7, 2008)). Final Act. 24–
29.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dominowska, Petersen, Johnson, and Kapur.
Final Act. 29–30.
ANALYSIS2
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. App. Br. 8–29; Reply Br. 3–26. We are
not persuaded by Appellants’ contentions regarding the pending claims and,
in connection therewith, adopt as our own the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 2–
31), and as set forth by the Examiner in the Answer in response to arguments

2 In this Opinion, we refer to Appellants’ Appeal Brief (“App. Br.,” filed
August 6, 2014); Appellants’ Reply Brief (“Reply Br.,” filed March 2,
2015); the Final Office Action (“Final Act.,” mailed March 6, 2014); and the
Examiner’s Answer (“Ans.,” mailed on December 29, 2014).
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made in Appellants’ Appeal Brief (Ans. 2–13). We highlight and address
specific findings and arguments below.
Claims 1, 4–12, 20, and 22–24
Appellants contend the Examiner erred in finding the combination of
Dominowska and Petersen teaches or suggests “at least one tag being
generated implicitly prior to the advertisement being presented to one or
more users,” as recited in claim 1. App. Br. 12–19; Reply Br. 4–22. In
particular, Appellants assert Petersen teaches an implicit tagging of content,
but argue the implicit tagging occurs only after a user has been presented the
content. App. Br. 18 (citing Petersen ¶ 56).
Appellants’ contentions are not persuasive at least because Appellants
consider the teachings of Petersen in isolation and fail to specifically rebut
the Examiner’s ultimate legal conclusion of obviousness based on the
combination of Dominowska and Petersen. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). The Examiner relies on Dominowska, not
Petersen, to teach generating at least one tag prior to an advertisement being
presented to one or more users. Final Act. 3–4, 11–12 (citing Dominowska
Abstract; ¶¶ 20, 34, 36, 37, 47; Figures 1–4). The Examiner relies on
Petersen to teach at least one tag generated implicitly. Final Act. 4–5, 12
(citing Petersen ¶¶ 12, 56, 57; Figure 7). Thus, the Examiner finds, and we
agree, the combination of Dominowska and Petersen teaches at least one tag
prior generated implicitly prior to an advertisement being presented to one or
more users.
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Regarding Appellants’ argument that Petersen’s teaching of
generating at least one tag prior to an advertisement being presented to one
or more users in the combination functions differently from how Petersen’s
generation of a tag functions individually (Reply Br. 18–21), we remain
unpersuaded the Examiner erred. At the outset, we note paragraph 56 of
Petersen, as relied upon by the Examiner, discloses “[i]f the user 18 desires
to later recall specific content, but the user 18 can only remember the
context in which the content was previously accessed, the user 18 can review
and select contextual tags assigned by the mobile device 12 to recall
content.” Thus, Petersen teaches that, after contextually tagging content, the
user may at a later time select the contextual tags “to recall and access
content by context.” Petersen ¶ 56. Thus, with respect to such a later
selection, the tag was generated prior to presenting to the user. Accordingly,
Petersen teaches generating at least one implicit tag prior to the content
being presented to the user, and we disagree with Appellants’ argument that
“[t]o the extent that [Petersen] shows implicit tagging, the implicit tagging is
necessarily performed only after the content has already been presented to
the user.” Reply Br. 7; see also App. Br. 18.
The Examiner expressly finds, as discussed supra, a person of
ordinary skill in the art would have modified Dominowska in view of
Petersen to arrive at the claimed invention, with a reasonable expectation of
successfully providing the function of each element taught or suggested by
Dominowska and Petersen. Further, Appellants have not presented any
evidence or reasoning in support of their contention these findings are
erroneous. In particular, Appellants have not identified any evidence
indicating the function of Dominowska’s or Petersen’s systems would be
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changed or altered unpredictably upon their combination. Contrary to
Appellants’ apparent premise, we agree with the Examiner that the skilled
artisan would “be able to fit the teachings of multiple patents together like
pieces of a puzzle” because the skilled artisan is “a person of ordinary
creativity, not an automaton.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
420-21 (2007). Therefore, we find unpersuasive of error Appellants’
contention that the combination of Dominowska and Petersen is improper.
Next, Appellants argue the above combination renders Dominowska
and Petersen unsatisfactory for their respective intended purposes because
Dominowska is directed to associating feature-value pairs with
advertisements and Petersen is directed to implicitly tagging content
unrelated to an advertising system. App. Br. 25–26; Reply Br. 13.
Appellants further argue the combination would fundamentally alter
Dominowska’s operation of associated feature-value pairs with
advertisements and Petersen’s operation of implicitly tagging content.
App. Br. 26.
We are not persuaded the Examiner erred. Appellants have failed to
provide sufficient evidence or argument that modifying Dominowska’s tag
to include an implicit tag as taught by Petersen would render the methods of
Dominowska and Petersen unsatisfactory for their intended purposes or
change their principles of operation. Not only are Appellants’ arguments
speculative and unsubstantiated, it is well settled that the test for
obviousness is not bodily integration of the teachings but, instead, what the
combined teachings of the references would have suggested to those of
ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner finds, inter alia, it would have been obvious to a person of
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ordinary skill in the art, at the time the invention was made, to combine
Dominowska and Petersen “to assist users in retrieving desired content
based on implicit tags by automatically and silently tagging content when a
user accesses content in a normal fashion.” Final Act. 13 (citing Petersen
¶ 12); see also Ans. 11, 13. We find the Examiner has articulated reasoning
with rational underpinnings sufficient to justify the legal conclusion of
obviousness, which is not persuasively rebutted by Appellants’
unsubstantiated contentions.
Next, Appellants argue the Examiner “employs hindsight bias and
ignores express specification definitions and clear usage of terminology
within the specification.” App. Br. 14; see also Reply Br. 13–17. In
particular, Appellants argue the source of the Examiner’s motivation is
Appellants’ Specification because neither Dominowska nor Petersen teaches
implicitly generating at least one tag for an advertisement prior to the
advertisement being shown to a user. Reply Br. 13–14.
We remain unpersuaded the Examiner erred.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and
does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). As discussed supra,
we find the Examiner has articulated a reason based on rational
underpinnings, for the proposed combination. Appellants have not
persuaded us the Examiner improperly relied on information gleaned only
from Appellants’ Specification in making the proposed combination. See
KSR, 550 U.S. at 418; see also In re McLaughlin, 443 F.2d at 1313–14.
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Accordingly, as we are unpersuaded of Examiner error, we sustain the
Examiner’s rejection of independent claim 1 and, for similar reasons, the
rejection of independent claim 20, which recites similar limitations and was
not argued separately. Additionally, we sustain the Examiner’s rejections of
dependent claims 4–12 and 22–24, which were not argued separately. See
App. Br. 27.
Claims 13–19 and 25
Appellants contend the Examiner erred in finding the combination of
Dominowska and Petersen teaches or suggests “selecting, by the computing
device, at least one geographical location that is representative of the at least
one tag,” as recited in claim 13. App. Br. 20–23; Reply Br. 23–25. In
particular, according to Appellants, Dominowska teaches delivering
advertisements only to users in a particular geographic location. App. Br. 22
(citing Dominowska ¶ 33). Appellants argue Dominowska teaches the
selection of the particular geographic location is performed by a human
advertiser, not a computing device. App. Br. 22. Appellants further argue,
in the absence of a computing device taught by Dominowska, “there would
be no reason for a computing device to select or otherwise determine a
geographic location that is representative of at least one tag.” App. Br. 22.
In response to Appellants’ argument, the Examiner finds paragraph 36
of Dominowska teaches “selecting tags . . . automatically by an advertising
system, which is selecting by a computing device.” Ans. 7. Appellants fail
to address this finding or otherwise provide sufficient persuasive evidence or
reasoning supporting an interpretation of the disputed limitation that would
distinguish over Dominowska’s disclosure of automatic tag selection.
Therefore, in the absence of sufficient substantive rebuttal, we agree with the
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Examiner that an artisan having ordinary skill in the art would understand
the selection of the particular geographic location is performed by a
computing device.
Accordingly, we sustain the Examiner’s rejection of independent
claim 13. Additionally, we sustain the Examiner’s rejections of dependent
claims 14–19 and 25, which were not argued separately. See App. Br. 20,
23, 27.

DECISION
We affirm the Examiner’s decision to reject claims 1, 4–20, and 22–
25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED