Ex Parte Howard et al

Patent Trials and Appeals Board

Jan 30, 2013

10941303 - (D) (P.T.A.B. Jan. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DALE S. HOWARD, L. JOY GRIEBENOW, and KIM LENGER
____________

Appeal 2010-008243
Application 10/941,303
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Dale S. Howard, et al. (Appellants) seek our review under 35 U.S.C. §
134 of the final rejection of claims 1-7 and 9-25. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM-IN-PART.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for customizing advertising in an electronic publication,
comprising:
storing a consumer profile in a database, the consumer profile
associated with a consumer and comprising a plurality of profile data
items;
creating a database of content items and advertising items, at
least some advertising items comprising targeted advertising items,
each targeted advertising item associated with an inclusion criterion,
wherein a decision as to whether the inclusion criterion for a
particular advertisement has been met depends upon the value of one
or more profile data items;
creating an electronic publication for a particular consumer, the
electronic publication comprising at least some of the content items
and at least one targeted advertising item where the inclusion criterion
for that targeted advertising item has been met;
linking a specific one of the targeted advertising items included
in the electronic publication to a specific one of the content items also
included in the electronic publication; and
while displaying the electronic publication to the consumer and
in response to the access of the specific one of the content items by

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Dec. 7, 2009) and Reply Brief (“Reply Br.,” filed May 4, 2010),
and the Examiner’s Answer (“Answer,” mailed Mar. 4, 2010).
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the particular consumer, displaying the linked specific one of the
targeted advertising items to the particular consumer.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Dedrick
Reilly et al.
Trader et al.
Stefik et al.

US 5,724,521
US 5,740,549
US 5,832,432
US 6,236,971 B1
Mar. 3, 1998
Apr. 14, 1998
Nov. 3, 1998
May 22, 2001
The following rejections before us for review:
1. Claims 1-7, 9-17, and 20-23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dedrick and Reilly.
2. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dedrick, Reilly, and Trader.
3. Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dedrick, Reilly, and Stefik.
4. Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dedrick and Stefik.

ISSUES
Has the Examiner made out a prima facie case of obviousness for the
claimed subject matter over the combined disclosures of the cited prior art?

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ANALYSIS
The rejection of claims 1-7, 9-17, and 20-23 under 35 U.S.C. § 103(a) as
being unpatentable over Dedrick and Reilly.
Claims 1-7 and 9-11
We will focus on independent claim 1. The Examiner’s position is that
Dedrick discloses all the claim limitations but for
linking a specific one of the targeted advertising items
included in the electronic publication to a specific one of the
content items also included in the electronic publication; and
while displaying the electronic publication to the
consumer and in response to the access of the specific one of
the content items by the particular consumer, displaying the
linked specific one of the targeted advertising items to the
particular consumer.
(Claim 1. Answer 4.) Reilly is relied upon as evidence that this subject
matter was known in the art at the time of the invention. (Id.) According to
the Examiner, “it would have been obvious to a person of ordinary skill in
the art at the time the application was made, to know that Dedrick would
display target ads to users when said users access specific items in an
electronic publication, as it is old and well known to do so, as taught by
Reilly.” (Id.)
Appellants disagree that Reilly discloses the limitations at issue,
arguing that “[s]imply put, Reilly teaches the advertisements displayed to the
user correspond to the information category of the content viewed by the
user and not to the particular content item.” (App. Br. 10.)
Contrary to the assertion in the final Office Action that Reilly
“teaches that it is old and well known in the promotion art to
link advertisements to specific content items (e.g., news
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items),” Reilly only teaches that forming a first link between an
advertising item and a type of content and a second link
between a news item and a content item. Thus, Reilly does not
teach or make obvious the claimed featured of “linking a
specific one of the targeted advertising items included in the
electronic publication to a specific one of the content items also
included in the electronic publication”.
(App. Br. 10-11.)
We agree with the Appellants’ view of the scope and content of
Reilly. The Examiner draws our attention to Fig. 8 and the passages at col.
13, l. 60 to col. 14, l. 10 and argues that this discloses “linking a specific
advertising item (i.e. A001) to a particular content item (i.e. N001) and
displaying said specific advertising item (i.e. A001) when accessing said
particular content item (i.e. N001).” (Answer 16-17.) We see it differently.
Figure 8 shows ads and stories in each category (“News,” Weather,” etc.)
linked to particular files (identified as A001, A002, etc. and N001, N002,
etc., respectively). Col. 13, l. 60 to col. 14, l. 10 explains that the
advertisement image shown is selected on the basis of the
information category associated with the news item being
viewed ... if subscriber user clicks on the displayed
advertisement, the subscriber's computer is automatically
connected to the an associated World Wide Web page on the
Internet that provides additional information from the
advertiser.

By contrast, the method of claim 1 appears to employ a type of linking
commonly known as “bookmarking”; to wit, “linking a specific one of the
targeted advertising items included in the electronic publication to a specific
one of the content items also included in the electronic publication”
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(emphasis added) so that the linked specific one of the targeted advertising
items is displayed to the particular consumer in response to the access of the
specific one of the content items by the particular consumer while displaying
the electronic publication to the consumer. Clicking on a displayed
advertisement and being automatically connected to the an associated World
Wide Web page on the Internet that provides additional information from the
advertiser as Reilly discloses does not describe the technique as claimed.
Since Reilly does not disclose the claim limitations at issue as the
Examiner alleges and a case has not been made that Reilly nonetheless
would lead one of ordinary skill in the art to the technique as claimed, a
prima facie case of obviousness has not been made out in the first instance
for the subject matter of claims 1-7 and 9-11.

Claims 12-15
For the same reason, we will not sustain the rejection of independent
claim 12 and claims 13-15 that depend from it. Here, too, the claims call for
employing a type of linking commonly known as “bookmarking”; to wit,
linking the at least one targeted advertising item in the
electronic publication to a specific one of the plurality of content
items in the electronic publication;
delivering the electronic publication to a consumer by
electronically sending the electronic publication to the consumer's
electronic mail address; and
in response to an access by the consumer of the specific one of
the plurality of content items included in the electronic publication,
displaying the linked targeted advertising item to the consumer.
Claim 12.
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Since Reilly does not disclose the claim limitations at issue as the
Examiner alleges and a case has not been made that Reilly nonetheless
would lead one of ordinary skill in the art to the technique as claimed, a
prima facie case of obviousness has not been made out in the first instance
for the subject matter of claims 12-15.

Claims 16, 17, and 20-23
We will sustain the rejection of independent claim 16 and claims 17
and 20-23 dependent thereon.
These claims are drawn to a system in terms of an apparatus. The
apparatus as claimed comprises three elements: “a computer network;” “a
publisher computer connected to the computer network;” and, “a consumer
computer coupled to the computer network.” The publisher and consumer
computers are further defined functionally (“operable to ...”). There can be
no dispute that these elements per se are known. See e.g., Figure 1 of
Dedrick. Appellants do not specifically challenge the rejection of these
claims but rather rely on the arguments directed to the process claims. Since
“apparatus claims cover what a device is, not what a device does,” Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
(emphasis in original), the arguments directed to the process claims are not
persuasive as to error in the rejection of apparatus claims 16, 17, and 20-23.

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The rejection of claim 18 under 35 U.S.C. § 103(a) as being unpatentable
over Dedrick, Reilly, and Trader.
The rejection of claim 18 (which depends from claim 16) will be
sustained for the same reasons we gave above in sustaining the rejection of
claim 16. The arguments presented in challenging the rejection of claim 18
(App. Br. 15) go to process steps such as are set forth in claims 1 and 12, not
to any structural distinction over the apparatus of the cited prior art
combination, notwithstanding the functional limitations claim 18 recites.

The rejection of claim 19 under 35 U.S.C. § 103(a) as being unpatentable
over Dedrick, Reilly, and Stefik.
The rejection of claim 19 (which depends from claim 16) will not be
sustained.
In contrast to the arguments relied upon to challenge the rejection of
claim 16, the arguments presented in challenging the rejection of claim 19
(App. Br. 16) go to an element of the apparatus; that is, “an application
running on the consumer computer, the application operable to prohibit the
export of items of the electronic publication.” (Claim 19 (emphasis added.)
The Examiner takes the position that Stefik “teaches allowing
consumers to run applications in their computers in order to control the
export of items as identified by the publisher on an item-by-item basis (see
col 34, lines 15-67).” (Answer 14.) Col 34, lines 15-67, describes a server
for performing various types of transactions that are permissible given
specific usage rights. In particular, there is described there a server operable
to transmit contents and data to a requester given certain usage rights. Such a
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server would be operable to prohibit the export of items but it is not “an
application running on the consumer computer, the application operable to
prohibit the export of items of the electronic publication” (claim 19
(emphasis added)).
Since Stefik does not disclose the claim limitation at issue as the
Examiner alleges and a case has not been made that Stefik nonetheless
would lead one of ordinary skill in the art to an “application running on the
consumer computer, the application operable to prohibit the export of items
of the electronic publication,” as claimed, a prima facie case of obviousness
has not been made out in the first instance for the subject matter of claim 19.

The rejection of claims 24 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Dedrick and Stefik.
This rejection suffers for similar reasons to those expressed above in
our reversal of the rejection of claim 19.
The Examiner relies on col 34, lines 15-67 of Stefik as “teach[ing]
allowing consumers to run applications in their computers in order to control
the export of items as identified by the publisher on an item-by-item basis.”
(Answer 14.) But the difficulty with that fact is that col 34, lines 15-67 of
Stefik describes transactional functions of a server, not an application on a
consumer’s computer. The preponderance of the evidence does not support
the conclusion that the prior art renders the claimed method obvious because
Stefik discloses or would lead one to
allow[ ] a publisher to identify on an item-by-item basis
whether to allow a consumer to export a portion of the electronic
publication for the consumer's personal use; and
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deliver[ ] the electronic publication to the consumer;
wherein the electronic publication is suitable for viewing by a
reading application installed on a consumer's computer, the reading
application operable to control the export of items as identified by the
publisher on the item-by-item basis.
(Claim 24 (emphasis added).)
Since Stefik does not disclose the claim limitation at issue as the
Examiner alleges and a case has not been made that Stefik nonetheless
would lead one of ordinary skill in the art to an “wherein the electronic
publication is suitable for viewing by a reading application installed on a
consumer's computer, the reading application operable to control the export
of items as identified by the publisher on the item-by-item basis,” as claimed,
a prima facie case of obviousness has not been made out in the first instance
for the subject matter of independent claim 24 and claim 25 dependent
thereon is not sustained.

CONCLUSIONS
The rejection of claims 1-7 and 9-15 under 35 U.S.C. § 103(a) as
being unpatentable over Dedrick and Reilly is reversed.
The rejection of claims 16, 17, and 20-23 under 35 U.S.C. § 103(a) as
being unpatentable over Dedrick and Reilly is affirmed.
The rejection of claim 18 under 35 U.S.C. § 103(a) as being
unpatentable over Dedrick, Reilly, and Trader is affirmed.
The rejection of claim 19 under 35 U.S.C. § 103(a) as being
unpatentable over Dedrick, Reilly, and Stefik is reversed.
The rejection of claims 24 and 25 under 35 U.S.C. § 103(a) as being
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unpatentable over Dedrick and Stefik is reversed.

DECISION
The decision of the Examiner to reject claims 1-7 and 9-25 is
affirmed-in-part; that is, the rejection of claims 1-7, 9-15, 19, 24, and 25 is
reversed and the rejection of claims 16-18 and 20-23 is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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