Ex Parte Kane et al

Patent Trial and Appeal Board

Mar 15, 2016

11966782 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111966,782 12/28/2007
20995 7590 03/17/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Francis J. Kane
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MIPS.186A2 5717
EXAMINER
BAIRD, EDWARD J
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
03/17/2016 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS J. KANE and CORY HICKS
Appeal2013-008200
Application 11/966,782
Technology Center 3600
Before THU A. DANG, JAMES R. HUGHES, and JEFFREYS. SMITH,
Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-008200
Application 11/966,782
I. STATEivIENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1---6, 8-21, 24, 25, and 27. Claims 7, 22, 23, and 26 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
A. INVENTION
According to Appellants, the claimed invention relates to a "content
provider system" that "interacts with a network of web sites to provide
behavior-based content to users" (Abst.).
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A computer-implemented method, comprising:
by a computer-implemented content provider system:
detecting a behavioral association between a first web site and
a second web site, said behavioral association detected based, at least in part,
on a measure of how frequently the first and second web sites co-occur in
recorded access event histories of a plurality of users;
receiving, by a server of the content provider system, from a
user computing device that has loaded a web page of the first web site, a
request for content to display on said web page, said request generated by
the user computing device by execution of widget code included in the
loaded page, said web page hosted by a computer system that is separate
from the content provider system;
in response to the request for content, transmitting, from the
server of said content provider system to the user computing device, a
display object that includes a user selectable link to the second web site, said
display object supplementing the loaded page of the first web site with the
link to the second web site, wherein the content provider system
incorporates the link to the second web site into the display object based on
the detected behavioral association between the first and second web sites;
and
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in response to user selection of said user-selectable link as
displayed on said web page, automatically deducting, by a computer of the
content provider system, a monetary amount from an account associated
with the second web site, and crediting at least a portion of the monetary
amount to an account associated with the first web site.
C. REJECTIONS
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Barber
Bezos
Kocol
Cardno
Linden
Humphries
Martino
Chambers
Gorodyansky
us 5,930, 777
us 6,029,141
US 2002/0116494 Al
US 2003/0107575 Al
US 6,912,505 B2
US 2007 /0050245 A 1
US 2007 /0208729 Al
US 2008/0126515 Al
US 7,647,305 B2
July 27, 1999
Feb.22,2000
Aug.22,2002
June 12, 2003
June 28, 2005
Mar. 1, 2007
Sept. 6, 2007
May 29, 2008
Jan. 12,2010
Claim 5 stands rejected under 35 U.S.C. § 112, 2nd paragraph as being
indefinite.
Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martino, Cardno, Kocol, and Humphries.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martino, Cardno, Kocol, Humphries, and Chambers.
Claims 8, 9, and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martino, Cardno, Kocol, and Gorodyansky.
Claims 10 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martino, Cardno, Kocol, Gorodyansky, and Barber.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martino, Cardno, Kocol, Gorodyansky, and Bezos.
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Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martino, Cardno, Kocol, Gorodyansky, and Chambers.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martino, Cardno, Kocol, Gorodyansky, and Linden.
Claims 17, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Martino, Cardno, Chambers and Humphries.
Claims 18 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martino, Cardno, Chambers, Humphries, and Kocol.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martino, Cardno, Chambers, Humphries, and Linden.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martino, Cardno, and Humphries.
Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martino, Cardno, Humphries, and Chambers.
II. ISSUES
The principal issue before us is whether the Examiner erred in finding
the combination of Martino with the other references teaches or would have
suggested "receiving . .. from a user computing device that has loaded a web
page, a request for content to display on said web page," the request being
"generated by the user computer device by execution of widget code
included in the loaded page;" and "in response to the request for content,
transmitting ... a display object that includes a user selectable link to the
second web site" wherein the display object "supplementing the loaded page
of the first web site with the link to the second web site" (claim 1, (emphasis
added)).
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III. FTI'-JDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Martino
1. Martino discloses a relationship server that tracks end-user
interactions across multiple web sites, and generates recommendations
(Abst.). In particular, the relationship server provides recommendations to
end-users by including the recommendations on web pages served to the
end-user clients, wherein the recommendations include items an end-user
might want to purchase, news stories the end-user might want to read, and
discussion groups in which the end-user might want to participate, etc.
(ii 26). A remote aggregation module requests, receives, and presents the
recommendations to the end-user by including them on a web page
displayed (ii 38). The end-user uses the local browser module to select links
or other items displayed on the page created and provided by the remote
aggregation module, wherein the links on the page are coded to notify the
remote aggregation module of the end-user's action before the page is
displayed and uses these notifications to track the end-user's activities and
create relationships between the end-user and the items accessed (ii 41 ).
Kocol
2. Kocol discloses a content provider that embeds link-tracking code in
each Web page (Abst.). Web pages include code, such as an HTTP image
tag, that causes an Internet browser to automatically request a file from an
identified Internet server (ii 38). The user, via a browser, requests a page
from the content provider server by clicking on a Web page already
displayed on the browser's window (ii 46). When a content provider server
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receives the request, it sends the appropriate tracking-enabled page, as a
response, back to the user's browser, and a link-tracking code embedded
therein is read and run by the Web browser which then runs an initial
function that creates an array containing, pointing, or referencing links
contained in the received Web page (i-f 4 7). Thus, when the user clicks on a
link within a tracking-embedded page, the link-tracking code is triggered
and the source image file request is then sent from the user's browser to the
link-tracking server (i-f 48).
IV. ANALYSIS
35 U.S.C. § 112, 2nd
The Examiner rejects claim 5 under 35 U.S.C. § 112, second
paragraph, as "being indefinite" (Ans. 3). In particular, the Examiner finds
that "it is not clear how [claim 5] further limits the independent claim [from
which it depends]" (id.). In particular, the Examiner finds the limitations of
claim 5 are "equivalent" to the limitations of independent claim 1 (id.).
However, Appellants contend "claim 5 requires the behavioral
association to be detected based on event data 'reported by user computing
devices ... via execution of widget code included in web page coding of the
first and second web sites"' whereas "claim 1 simply does not require the
event data to be reported or collected in this manner" (App. Br. 7). Thus,
according to Appellants, "claim 5 further defines the method of claim 1"
(id).
We agree with Appellants. We disagree with the Examiner's
conclusion the claim is indefinite because the limitations of claim 5 are
"equivalent" to the limitations of independent claim 1 (Ans. 3). The test for
definiteness under 35 U.S.C. § 112, second paragraph, is whether "those
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skilled in the art would understand what is claimed." Orthokinetics, Inc., v.
Safety Travel Chairs, 806 F.2d 1565, 1576 (Fed. Cir. 1986)(citations
omitted).
Here, we agree with Appellants that, contrary to claim 1, "claim 5
requires the behavioral association to be detected based on event data
'reported by user computing devices ... via execution of widget code
included in web page coding of the first and second web sites'" (App. Br. 7).
Therefore, we are persuaded the Examiner erred in rejecting claim 5 under
35 U.S.C. § 112, second paragraph.
35 U.S.C. § 103(a)
As to claim 1, although, Appellants concede "Marino's[ sic]
aggregation module may generate a web page that includes
recommendations," Appellants contend the cited section of Martino "merely
indicates that recommendations are included on web pages served to the user
devices; it says nothing to suggest, for example, that a user computer device
that has loaded a page makes a request for recommendations, or other
content, to display thereon" (App. Br. 10). According to Appellants,
"Martino never suggests using [the detected] relationship [between sites] to
provide a link from the first site to the second site" (App. Br. 13).
Further, although, Appellants also concede Martino discloses "tags" to
"detect relationships between related stories or other items," Appellants
contend Martino does not suggest that "these tags can cause 'a user
computing device that has loaded a web page of the first web site [to
generate] a request for content to display on said web page"' (Reply Br. 3).
According to Appellants, Martino's tags "are manually added by a content
editor" which differs from claim 1 which "describes a link [from the first site
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to the second site] that is incorporated into a display object by a 'content
provider system'" (Reply Br. 5).
Appellants then contend "nothing in Kocol suggests that the link-
tracking code requests, or causes a user computer device to request, content
to display on the page" (App. Br. 11). According to Appellants, Kocol's
"image tag is apparently merely a non-executable markup language tag"
wherein "the limitation 'by execution of widget code' is not met" (Reply Br.
4).
We note Appellants' contentions appear to tum on what Martino (or
Kocol) individually fails to disclose or suggest (App. Br. 10-13; Reply Br.
3-5). However, since the Examiner rejects the claim as obvious over the
combined teachings of Martino, Cardno, Kocol, and Humphries under 35
U.S.C. § 103(a), the test for obviousness is what the combination of
references would have suggested to one of ordinary skill in the art. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
We have considered all of Appellants' arguments and evidence
presented. However, we disagree with Appellants' contentions regarding the
Examiner's rejections of the claims. We agree with the Examiner's findings,
and find no error with the Examiner's conclusion that the claims would have
been obvious over the combined teachings.
Martino discloses a relationship server that provides recommendations
to end-users by including the recommendations on web pages served to the
end-user clients, wherein the end-user uses the local browser module to
select links or other items displayed on the page created (FF 1 ). As
Appellants concede, "Marino's[ sic] aggregation module may generate a web
page that includes recommendations" wherein the web pages are "served to
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the user devices" (App. Br. 10), and wherein "ivfartino may disclose the
detection of a relationship between a first site and a second site (or items
represented thereon)" (App. Br. 13). Contrary to Appellants' contention
"Martino never suggests using [the detected] relationship [between sites] to
provide a link from the first site to the second site" (id.), we agree with the
Examiner that Martino's links displayed on the first site that are being
recommended for the user are links to a second site that are recommended
based on the detected behavioral association (Ans. 4; FF 1 ).
As the Examiner points out, Martino discloses "the content editor can
manually add tags to content at the site 112 in order to enhance the
recommendation process," and thus finds, "add!ingl tags to content at the
site as disclosed by Martino ... is further indicative of 'a request for
content to display on said web page"' since "'tags', such as to a news article
are indicative of links to web sites" (Ans. 20, emphasis omitted).
Although, Appellants contend Martino does not suggest that "these
tags can cause 'a user computing device that has loaded a web page of the
first web site [to generate] a request for content to display on said web
page"' (Reply Br. 3), and that the tags "are manually added by a content
editor" which differs from claim 1 which "describes a link that is
incorporated into a display object by a 'content provider system"' (Reply Br.
5), we note that the claim does not preclude manually added tags. That is,
claim 1 merely requires that the "content provider system" incorporates the
link, but does not require such incorporation directly, and does not preclude
such incorporation in response to a content editor's manually addition.
Nevertheless, we find it would have been well within the level of skill
of one skilled in the art to incorporate the link by a content provider system
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instead of or instead of by manual incorporation. The Supreme Court has
determined the conclusion of obviousness can be based on the interrelated
teachings of multiple patents, the effects of demands known to the design
community or present in the marketplace, and the background knowledge
possessed by a person having ordinary skill in the art. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). The skilled artisan is "a person of
ordinary creativity, not an automaton." Id. at 421.
Appellants have presented no evidence that incorporating a link into a
web page by the content provider system instead of or in addition to manual
incorporation would have been "uniquely challenging or difficult for one of
ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Accordingly, we find no error with the Examiner's reliance on
Martino for teaching, or at least suggesting "receiving ... from a user
computing device that has loaded a web pages ... , a request for content to
display on said web page," and "in response to the request for content,
transmitting ... a display object that includes a user selectable link to the
second web site" wherein the display object "supplementing the loaded page
of the first web site with the link to the second web site," as recited in claim
1.
Furthermore, Kocol discloses web pages which include code (HTTP
image tag) that causes an Internet browser to request a file from a server,
wherein the user, via the browser, requests a page from the server by
clicking on a Web page already displayed on the browser's window, and
when a server receives the request, it sends the appropriate tracking-enabled
page back to the user's browser (FF 2). We disagree with Appellants'
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contention that Kocol's "image tag is apparently merely a non-executable
markup language tag" (Reply Br. 4), and instead agree with the Examiner's
finding, "that Web pages which include code ... is further indicative of
'said request generated by the user computing device by execution of widget
code included in the loaded page ... "' (Ans. 21 (emphasis omitted)). Thus,
we find no error with the Examiner's reliance on Kocol for the teaching, or
at least suggestion, of a "request for content" that is "generated by the user
computing device by execution of widget code included in the loaded page,"
as recited in claim 1.
On this record, we find no error in the Examiner's rejection of
independent claim 1 and claims 2--4 depending therefrom (App. Br. 13) over
Martino, Cardno, Kocol, and Humphries. Appellants do not provide
arguments for claim 6 separate from claim 1 (id.). Accordingly, we also
affirm the Examiner's rejection of claim 6 over Martino, Cardno, Kocol, and
Humphries, in further view of Chambers.
Although, Appellants provide separate arguments for dependent claim
5 (id.), in the arguments, Appellants merely repeat the claim language and
contend that "neither Martino nor the other references suggest" such
limitations (id.). However, a statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim. 37 C.F.R. § 41.37(c)(vii).
Similarly as for independent claim 8, Appellants merely repeat the
claim language, contend that the cited references do not disclose or suggest
such limitation, and then repeat that Kocol does not disclose the claimed
"widget code" (App. Br. 14--17). However, as discussed above, we find no
error with the Examiner's finding that Kocol in combination with Martino at
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least suggests the claimed "widget code" (FF 2). Further, also as discussed
above, a statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. 3 7 C.F .R.
§ 41.37( c )(vii).
Moreover, a conclusory statement asserting that the cited references
do not disclose or suggest the contested limitation but that is unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, 2009 WL
2477843, slip op. at 7-8 (BP AI Aug. 10, 2009) (informative), available at
http://www.uspto.gov/web/offices/dcom/bpai/its/fd09004693.pdf.
Nevertheless, we find no error in the Examiner's finding that the
combination of Martino, Cardno, Kocol, and Gorodyansky would at least
have suggested the claimed invention. Accordingly, we also find no error in
the Examiner's rejection of independent claim 8 and claims 9 and 14
depending therefrom (App. Br. 17).
Appellants do not provide arguments for claims 10-13, 15, and 16
separate from claim 8 (App. Br. 17-18). Accordingly, we also affirm the
rejections of: claims 10, and 12 over Martino, Cardno, Kocol, and
Gorodyansky, in further view of Barber; claim 11 over Martino, Cardno,
Kocol, and Gorodyansky, in further view of Bezos; claim 13 over Martino,
Cardno, Kocol, and Gorodyansky, in further view of Chambers; and claims
15 and 16 over Martino, Cardno, Kocol, and Gorodyansky, in further view
of Linden.
As for independent claims 17 (and similarly recited claim 25),
Appellants repeat arguments that Martino does not teach or suggest "a
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process in which the detected behavioral relationship between the first and
second sites ... is used to provide a link from the firs site to the second site"
(App. Br. 19, 22). However, as discussed above, we agree with the
Examiner that the combination of Martino and the applied references teaches
or at least would have suggested the contested limitations (FF 1 ).
Accordingly, we also find no error in the Examiner's rejection of:
independent claim 17, and dependent claims 20 and 21 falling therewith
(App. Br. 20), over Martino, Cardno, Chambers and Humphries; and
independent claim 25 over Martino, Cardno, and Humphries. Appellants do
not provide arguments for claim 19 separate from claim 17 (App. Br. 21 ),
and do not provide arguments for claim 27 separate from claim 25 (App. Br.
24). Accordingly, we also affirm the rejection of claim 19 over Martino,
Cardno, Chambers, and Humphries, in further view of Linden; and the
rejection of claim 27 over Martino, Cardno, and Humphries, in further view
of Chambers.
As for dependent claims 18 and 24, Appellants repeat arguments that
Kocol does not disclose or suggest the contested limitation (id.). However,
as discussed above, we agree with the Examiner that the combination of
Martino and Kocol teaches or at least would have suggested the contested
limitations (FF 1-2). Accordingly, we also find no error in the Examiner's
rejection of claims 18 and 24 over Martino, Cardno, Chambers, Humphries,
and Kocol.
V. CONCLUSION AND DECISION
We affirm the Examiner's rejection of claims 1-6, 8-21, 24, 25, and
27 under 35 U.S.C. § 103(a).
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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
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