Ex Parte Koningstein

Patent Trial and Appeal Board

Jul 19, 2017

10748682 (P.T.A.B. Jul. 19, 2017)

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.
10/748,682 12/31/2003 Ross Koningstein 098981-3599 1976
10575 7590
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
PLUCINSKI, JAMISUE A
ART UNIT PAPER NUMBER
3600
NOTIFICATION DATE DELIVERY MODE
07/21/2017 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):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROSS KONINGSTEIN
Appeal 2015-003956
Application 10/748,6821
Technology Center 3600
Before MICHAEL C. ASTORINO, SHEILA F. McSHANE, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1, 3, 5—18, 20-24, 26—29, 32—34, 36—58, 60, 61,
64, 65, 67—76, and 78—83. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellant identifies Google Inc. as the real party in interest. Appeal
Br. 1.
Appeal 2015-003956
Application 10/748,682
ILLUSTRATIVE CLAIM
1. A computer-implemented method comprising:
creating, at a server, an expandable advertisement
comprising:
a compact display format comprising a control
element and a presentation of a link to a landing page,
and
an expanded display format comprising a
presentation of the link to the landing page, one or more
content items, and one or more menu options, wherein
each menu option is associated with a link to a network
location for retrieving content, and wherein the control
element, when selected, causes the expandable
advertisement to transition from the compact display
format to the expanded display format;
determining a first price associated with display of the
expandable advertisement in the compact display format;
receiving a request for one or more advertisements;
identifying a plurality of advertisements in response to
the request for one or more advertisements, the plurality of
advertisements including the expandable advertisement;
determining one or more of the plurality of
advertisements that will be wholly or partially covered by the
expandable advertisement when displayed in the expanded
display format;
determining a second price for the expandable
advertisement that is different than the first price, the second
price being based on the first price and one or more respective
auction prices associated with display of the one or more of the
plurality advertisements that will be wholly or partially covered
by the expandable advertisement when displayed in the
expanded display format;
delivering, from the server to a client device, the
identified plurality of advertisements including the expandable
advertisement;
2
Appeal 2015-003956
Application 10/748,682
determining that the expandable advertisement was
transitioned into the expanded display format; and
in response to determining that the expandable
advertisement was transitioned into the expanded display
format, charging an advertiser associated with the expandable
advertisement the second price instead of the first price.
CITED REFERENCES
The Examiner relies upon the following references:
Cheung et al.
(hereinafter “Cheung”)
US 2002/0169760 Al Nov. 14, 2002
Talegon US 2003/0135460 Al July 17, 2003
Petropoulos et al. US 2003/0146939 Al
(hereinafter “Petropoulos”)
Aug. 7, 2003
Housman et al.
(hereinafter “Housman”)
US 2003/0224340 Al Dec. 4, 2003
Patel et al.
(hereinafter “Patel”)
US 2004/0103024 Al May 27, 2004
Angelica US 2004/0239703 Al Dec. 2, 2004
Meisel et al.
(hereinafter “Meisel”)
US 7,035,812 B2 Apr. 25, 2006
REJECTIONS
I. Claims 1, 3, 5-12, 26, 28, 29, 32, 34, 36-A3, 56, 58, 60, 61, 65,
67—70, 71, 73, 74, 76, 78—80, 82, and 83 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Petropoulos, Official Notice (with Meisel or
Patel as support thereof), Meisel, Talegon, and Cheung.2
2 We regard as inadvertent the omission of Cheung in the description of
Rejection I (Non-Final Act. 3) and in the descriptions of Rejections II—IV
{id. at 15—17), which rely upon the analysis of Rejection I. The Non-Final
Office Action addresses Cheung’s role in Rejection I, at pages 11—12.
3
Appeal 2015-003956
Application 10/748,682
II. Claims 33, 64, and 75 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Petropoulos, Official Notice (with Meisel or Patel as
support thereof), Meisel, Talegon, and Cheung.
III. Claims 27, 57, 72, and 81 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Petropoulos, Official Notice (with Meisel or Patel as
support thereof), Meisel, Talegon, Cheung, Housman, and Angelica.
IV. Claims 13—18, 20-24, and 44—55 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Petropoulos, Official Notice (with Meisel or
Patel as support thereof), Meisel, Talegon, and Cheung.3
FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Non-
Final Office Action at pages 3—23 and the Answer at pages 2—27.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
Contending that the Examiner erred in the rejection of claim 1, the
Appellant presents various arguments, which are addressed individually
below. The Appellant relies upon these same arguments with regard to the
other claims in the Appeal. Appeal Br. 13—14. Because the Appellant’s
arguments are unpersuasive, for the reasons provided herein, we sustain the
rejection of claims 1, 3, 5—18, 20-24, 26—29, 32—34, 36—58, 60, 61, 64, 65,
67-76, and 78-83 under 35 U.S.C. § 103(a).
3 We regard, as inadvertent, the inclusion of canceled claim 19 in Rejection
IV (Non-Final Act. 17).
4
Appeal 2015-003956
Application 10/748,682
Whether the Cited References
Teach or Suggest Claim 1 ’s “secondprice ”
Claim 1 recites the determination of a “first price” and a “second
price,” as follows:
determining a first price associated with display of the
expandable advertisement in the compact display format; [and]
determining a second price for the expandable
advertisement that is different than the first price, the second
price being based on the first price and one or more respective
auction prices associated with display of the one or more of the
plurality advertisements that will be wholly or partially covered
by the expandable advertisement when displayed in the
expanded display format.
Appeal Br. 15 (Claims App.).
The Appellant contends that claim 1 was rejected erroneously,
because the cited references fail to teach or suggest the two different prices
— lacking, specifically, the claimed “second price.” Id. at 8—13.
The rejection states that the “second price” is a combination of
Petropoulos’ teaching of a size-expandable advertisement, Talegon’s
teaching that the price of an advertisement is directly proportional to the area
it covers, and Meisel’s teaching of an auction to arrive at pricing for
advertisements. Non-Final Act. 9—11; Answer 22—23. In addition, the
rejection presents an alternative combination of Petropoulos’ teaching that
an expanded advertisement obscures other advertisements, with Cheung’s
teaching that advertising revenue may be based upon an advertisement being
viewed and clicked (such that an obscured advertisement cannot be clicked
and, thus, creates no revenue), and Cheung’s (or Meisel’s) teaching of
advertisement pricing determined by auction. Non-Final Act. 11—12;
Answer 23—25.
5
Appeal 2015-003956
Application 10/748,682
The Appellant discusses each of the Talegon, Petropoulos, and Meisel
references individually, alleging that none of these references, by itself,
teaches the claimed “second price.” See Appeal Br. 9—12; see also Reply
Br. 2 (discussing Talegon only). Although the Appellant purports to
consider the combination of Petropoulos and Meisel (together with Official
Notice) (Appeal Br. 11), as well as the combination of Petropoulos, Meisel,
and Talegon (together with Official Notice) (id. at 12), the Appellant does
not actually discuss the combined teachings of these references. Therefore,
the Appellant’s argument is unpersuasive. See In re Keller, 642 F.2d 413,
426 (CCPA 1981) (“one cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.”) In addition, the Appellant never addresses
alternative combination of Petropoulos with Cheung (or Meisel).
In view of the foregoing, the Appellant’s argument that the combined
cited references fail to teach claim l’s “second price” is unpersuasive of
error in the rejection.
Whether the Rejection Improperly Relies
Upon “Common Sense ” to Determine that the
Cited References Teach or Suggest Claim 1 ’s “secondprice ”
The Appellant also contends that the rejection of claim 1 is erroneous,
alleging that Examiner’s analysis of the “second price” improperly relies
upon “common sense.” Appeal Br. 9. In support of this assertion, the
Appellant points to the statement in the Non-Final Office Action that
“[i]t. . . would have made obvious sense” to charge the “second price” when
an expandable advertisement is displayed in the expanded format (id.
(quoting Non-Final Act. 12)), as well as the Appellant’s assertion that the
6
Appeal 2015-003956
Application 10/748,682
teachings relied upon fail to disclose or suggest the “second price” (id. at 9—
12).
As discussed in the previous section, the Appellant does not establish
a deficiency in the Examiner’s position that the cited references teach the
“second price.”
In addition, the characterization that combining the references, as set
forth in the rejection, “would have made obvious sense” (Non-Final Act. 12
(emphasis added)) does not, as a textual matter, invoke “common sense.” In
any event, as the Answer points out, it is not improper to employ “common
sense” in an obviousness analysis; rather, “[cjommon sense has long been
recognized to inform the analysis of obviousness if explained with sufficient
reasoning.” Answer 25—26 (quoting Perfect Web Tech., Inc. v. InfoUSA,
Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009)). Indeed, “[rjigid
preventative rules that deny fact-finders recourse to common sense . . . are
neither necessary under our case law nor consistent with it.” KSR Int’l. Co.
v. Teleflex Inc., 550 U.S. 398, 421 (2007). Nevertheless, references to
“common sense” “cannot be used as a wholesale substitute for reasoned
analysis and evidentiary support.” Arendi SARL v. Apple Inc., 832 F.3d
1355, 1362 (Fed. Cir. 2016).
To that end, rather than offering what the Appellant calls “a litany of
conclusory statements that certain actions would have been obvious” (Reply
Br. 1), the rejection articulates the logic of combining/modifying the
references’ teachings. Specifically, the rejection provides two distinct
reasons for combining/modifying references. First, in order to fairly value
the expandable advertisement in terms of the additional area it would cover
(in the expanded format), a person of ordinary skill in the art would be
7
Appeal 2015-003956
Application 10/748,682
motivated to combine Talegon’s teaching (advertisement price being
proportional to the area it covers) with Petropoulos’ teaching of an
expandable advertisement and with the auction-based advertisement pricing
taught by Meisel (or Cheung). See Answer 22—25. Second, because
advertisers will not pay if their advertisements are obscured and publishers
need to recover those revenues, in order to value the expandable
advertisement in terms of the lost revenue from other advertisements (i.e.,
advertisements that would be obscured by the expandable advertisement in
expanded format), the rejection combines Cheung’s teaching of revenue
generated when an advertisement is clicked (such that an advertisement,
when concealed by an expandable advertisement, cannot be clicked and,
therefore, generates no revenue) with Petropoulos’ expandable
advertisement and with the auction-based pricing approach of Meisel or
Cheung. See id. at 23—25.
Thus, the Appellant’s argument that the rejection lacked sufficient
reasoning — under the guise of improperly invoking “common sense” — is
not persuasive of error.
Whether the Rejection of Claim 1
Improperly Relies Upon Official Notice
The Appellant also argues that the rejection of claim 1 is erroneous,
asserting that the use of Official Notice is improper. Appeal Br. 11; Reply
Br. 2-3.
The Appellant’s argument concerns the Official Notice mentioned in
the following passage from the Non-Final Office Action:
PETROPOULOS does not specifically disclose
identifying advertisements to deliver in response to the request
8
Appeal 2015-003956
Application 10/748,682
based at least in part on a price an advertiser is willing to pay to
display the advertisements. However Meisel does such (see
e.g. abstract: “bid amount” is a price an advertiser is willing to
pay to display the advertisements).
Thus it would have been obvious to one having
ordinary skill in the art at the time of the invention to add
Meisel’s bidding system to the system of PETROPOULOS in
view of Official Notice (with e.g. Meisel or Patel as support
thereof) to allow also ranking and delivering PETROPOULOS's
search results based on monetary considerations.
Non-Final Act. 9. The subject of this Official Notice is set forth on the
previous page of the Non-Final Office Action:
Official Notice is taken that advertiser interfaces enabling
advertisers to input and/or modify/edit various advertisement
data used for publication on publishers!”] webpages are old and
well-known at the time of the invention. For example, see
Meisel... (see abstract; Figs 2, 9 and associated text);
Patel... (see abstract, Figures 21, 22 and associated text;
also see Figures 3,17,18).
Id. at 9 (emphasis in original).
Yet, the Appeal Brief mistakenly says that “[t]he Examiner takes
Official Notice that it would be obvious to rank the search results of
Petropoulos ‘based on monetary considerations’” — something that,
according to the Appellant, is not a well-known and unquestionable fact,
such that it is outside the realm of proper Official Notice. Appeal Br. 11
(quoting Non-Final Act. 9).
The Examiner’s Answer explains that the Appeal Brief misidentifies
the referent of the Official Notice at issue, pointing out that the identified
passage on page 9 of the Non-Final Office Action
means that “ranking and delivering search results based on
monetary considerations” is NOT the subject of an Official
9
Appeal 2015-003956
Application 10/748,682
Notice. Rather, it is the motivation why one would have
wanted to make the combination of Meisel to the system “of
PETROPOULOS in view of Official Notice (with e.g. Meisel or
Patel as support thereof) ”.
Answer 26.
In response, the Appellant’s Reply Brief again traverses the use of
Official Notice — this time arguing that the rejection improperly invokes
Official Notice to supply a reason or motivation to combine references,
which the Appellant calls a “legal conclusion[ ],” in violation of the
principle that Official Notice may be used to supply facts only and not
conclusions of law. Reply Br. 3.
The Appellant’s position, in the Reply Brief, is not persuasive of
error. As an initial matter, a reason or motivation to combine references is a
factual issue, rather than a legal conclusion, as the Appellant supposes. See
South Ala. Med. Sci. Found, v. Gnosis S.P.A., 808 F.3d 823, 826 (Fed. Cir.
2015) (“Obviousness is a question of law based on underlying findings of
fact, which include the motivation to combine multiple prior art
references.”) In any event, the Appellant misapprehends the Examiner’s
comment in the Answer, regarding the referent of the Official Notice. The
Answer does not say that the rejection relies upon Official Notice to supply a
motivation to combine. Rather, the Answer explains only that “ranking and
delivering search results based on monetary considerations” (which, as the
Answer points out, provides a motivation to combine certain references) “is
NOT the subject of an Official Notice.” Answer 26. As noted above, the
subject of the Official Notice mentioned on page 9 of the Non-Final Office
Action is identified on the previous page thereof. The Appellant makes no
10
Appeal 2015-003956
Application 10/748,682
argument regarding the correctness of the actual subject of this Official
Notice and, thus, points to no error therein.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 3, 5—18,
20-24, 26-29, 32-34, 36-58, 60, 61, 64, 65, 67-76, and 78-83 under
35 U.S.C. § 103(a).
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
11