Ex Parte Mehta et al

Patent Trial and Appeal Board

Sep 17, 2012

10648599 (P.T.A.B. Sep. 17, 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.
10/648,599 08/25/2003 Bhavesh Mehta 50269-0558 4272
73066 7590 09/17/2012
HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/Yahoo!
1 Almaden Boulevard
Floor 12
San Jose, CA 95113
EXAMINER
STAMBER, ERIC W
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
09/17/2012 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte BHAVESH MEHTA and MICHAEL D. BIGBY 7
___________ 8
9
Appeal 2011-000718 10
Application 10/648,599 11
Technology Center 3600 12
___________ 13
14
15
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 16
MEREDITH C. PETRAVICK, Administrative Patent Judges. 17
18
FETTING, Administrative Patent Judge. 19
20
21
DECISION ON APPEAL 22
23
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STATEMENT OF THE CASE1 1
Bhavesh Mehta and Michael D. Bigby (Appellants) seek review under 2
35 U.S.C. § 134 (2002) of a final rejection of claims 21-28 and 30-37, the 3
only claims pending in the application on appeal. We have jurisdiction over 4
the appeal pursuant to 35 U.S.C. § 6(b). 5
The Appellants invented a way of delivering advertisements with 6
electronic content provided over a network by selecting among 7
advertisements that are competing for a slot associated with electronic 8
content that is to be delivered over a network. (Specification para. [0001]). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 21, which is reproduced below (bracketed matter and some 11
paragraphing added). 12
21. A method 13
for determining which advertisements to include 14
with electronic content 15
delivered to users over a network, 16
the method comprising the steps of: 17
[1] after accepting a first contract 18
with a first advertiser, 19
accepting a second contract 20
with a second advertiser; 21
[2] wherein the delivery obligations associated with the second 22
contract are such that 23
fulfillment of the second contract 24
would likely prevent the delivery obligations 25
associated with the first contract 26
from being fulfilled; 27
28
29

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 13, 2010) and Reply Brief (“Reply Br.,” filed September 21,
2010), and the Examiner’s Answer (“Ans.,” mailed July 27, 2010).
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[3] storing data 1
that indicates 2
delivery criteria 3
and 4
delivery obligations 5
for each of a plurality of contracts, 6
wherein each contract is associated 7
with an advertiser of a plurality of 8
advertisers, 9
wherein the plurality of contracts 10
includes the first contract and the 11
second contract; 12
[4] wherein the plurality of advertisers includes 13
the first advertiser 14
and 15
the second advertiser; 16
[5] wherein each contract 17
of the plurality of contracts 18
is associated with 19
a separate advertisement 20
of a plurality of advertisements; 21
[6] after the plurality of contracts have been formed, 22
receiving, 23
from a user, 24
a request 25
to provide over said network 26
a piece of electronic content 27
that includes a slot for an 28
advertisement; 29
[7] wherein the piece of electronic content has a subject; 30
[8] wherein the subject of the piece of electronic content 31
is an attribute 32
of the slot 33
that is included in the piece of electronic 34
content; 35
[9] in response to receiving the request: 36
[10] reading said data 37
to determine delivery criteria 38
associated with the plurality of contracts; 39
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[11] comparing slot attributes 1
of said slot 2
in the requested electronic content 3
with delivery criteria 4
of said plurality of contracts 5
to determine a subset 6
of said plurality of advertisements 7
which qualify for inclusion in said 8
slot, 9
wherein the subject of the piece of electronic 10
content 11
is one of the slot attributes compared with 12
the delivery criteria, 13
[12] wherein both 14
a first advertisement associated with the first 15
contract 16
and 17
a second advertisement associated with the second 18
contract 19
qualify for inclusion in said slot, 20
[13] wherein the second contract is associated with 21
a behindness value 22
that is currently greater than 23
a behindness value 24
associated with the first contract, 25
[14] wherein the behindness value of each contract 26
reflects how far behind a content provider is 27
on satisfying the delivery obligations associated 28
with each contract; 29
and 30
[15] from said subset of advertisements, 31
selecting said first advertisement 32
to include in the slot 33
based, at least in part, 34
on the first contract having been 35
formed before the second contract; 36
[16] inserting said first advertisement into the slot 37
to create a modified piece of electronic content; 38
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[17] delivering, 1
as a response to the request, 2
the modified piece of electronic content 3
to the user; 4
[18] wherein the steps of 5
receiving, reading, comparing, selecting, inserting, and 6
delivering 7
are performed on one or more computing devices. 8
9
The Examiner relies upon the following prior art: 10
Carruthers US 2002/0128904 Al Sep. 12, 2002
11
Claims 21-28 and 30-37 stand rejected under 35 U.S.C. § 103(a) as 12
unpatentable over Carruthers. 13
ISSUES 14
The issues of obviousness turn primarily on whether Carruthers 15
describes selecting an ad to insert in a page based on the subject of the 16
content the ad is inserted in. 17
FACTS PERTINENT TO THE ISSUES 18
The following enumerated Findings of Fact (FF) are believed to be 19
supported by a preponderance of the evidence. 20
Facts Related to the Prior Art 21
Carruthers 22
01. Carruthers is directed to managing the delivery of content (such as 23
advertisements) to online users and, more particularly, to a method 24
and system for scheduling targeted content delivery. Carruthers, 25
para. [0002]. 26
02. Carruthers describes scheduling targeted content delivery to 27
online users using operations research and yield management 28
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techniques to forecast the availability of user screen real estate 1
(i.e., inventory), optimize the use of surplus inventory, and 2
generate on-demand selective content delivery schedules to 3
transmit content to the users. Carruthers, para. [0007]. 4
03. Carruthers’ scheduler system reviews new advertising campaigns 5
proposed by advertisers and predicts whether campaign objectives 6
are achievable in view of forecasted inventory. This generates a 7
master delivery plan based on expected values to fulfill advertiser 8
contracts and optimize usage of surplus inventory. The plan is 9
periodically modified based on delivery feedback information. 10
The system also dynamically generates individual user schedules 11
on user login. Carruthers, para. [0008]. 12
04. U.S. patent application Ser. No. 09/558,755 filed Apr. 21, 2000 13
and entitled "Method And System For Web User Profiling And 14
Selective Content Delivery" is expressly incorporated by 15
reference. That application discloses a method and system for 16
profiling online users (who are also referred to herein as clients or 17
subscribers) based on their observed surfing habits and for 18
selectively delivering content, e.g., advertising, to the users based 19
on their individual profiles. Carruthers, [0014]. 20
05. Carruthers is directed to optimizing content delivery to online 21
users and can be implemented in a content delivery system such 22
as, e.g., that disclosed in the above-mentioned application Ser. No. 23
09/558,755. Carruthers, para. [0015]. 24
06. FIG. 1 illustrates a general representative network that includes 25
client machines operated by various individual users that connect 26
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to multiple servers via the Internet or Intranet. The Web servers 1
operate so-called "Web sites" and support files in the form of 2
documents and pages. A network path to a Web site generated by 3
the server is identified by a Uniform Resource Locator (URL). 4
Carruthers, para. [0016]. 5
07. The Inventory Manager constructs a delivery plan for all approved 6
campaigns. For each subscriber on user login, the On-Demand 7
scheduler constructs an individual delivery schedule. 8
Advertisements are transmitted to users based on their individual 9
delivery schedules. The system reports advertisement delivery 10
feedback to the Delivery Manager, which is used to update the 11
master delivery plan. Carruthers, para. [0026]. 12
08. The Inventory Manager constructs the master delivery plan on a 13
periodic basis, based on the calculated goals of each of the active 14
advertising campaigns. The plan specifies a prioritized master list 15
of advertisements, which is sent to the On-Demand Scheduler at 16
each POP server. The prioritized content list identifies the order 17
in which advertisements are to be displayed. The order is based 18
preferably both upon priority and some weighting mechanism that 19
indicates how many impressions are needed by each campaign. 20
Carruthers, para. [0034]. 21
09. The Delivery Manager can reorder or reprioritize the master list of 22
scheduled advertisements based upon delivery feedback data and 23
queuing logic/algorithms. For example, if the goal for a given 24
campaign is to evenly distribute an advertisement over the course 25
of the campaign length, the advertisement can be moved down in 26
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the queue of advertisements to be displayed if it gets ahead of its 1
daily goals. Similarly, if an advertisement gets behind in meeting 2
its goals, it may be automatically promoted in priority. If an 3
advertisement exceeds its daily goal it can be effectively shut off 4
by being placed at the very end of the queue. Carruthers, para. 5
[0035]. 6
10. The scheduler system is capable of delivering `instant` 7
advertisements (or other content) to subscribers. These are 8
advertisements that are delivered to users if they perform some 9
given action, e.g., enter a particular keyword in a search engine 10
query or enter a particular URL address. The system can preempt 11
the normal queue of ordered advertisements in an individual 12
schedule with an instant advertisement when needed. The system 13
allows the percentage of time that instant advertisements can 14
preempt the normal queue to be configurable in order to reduce 15
errors in calculations made by the Capacity Forecaster. 16
Carruthers, para. [0076]. 17
ANALYSIS 18
This is the second time this application has come before the Board. 19
Although the same art is now applied as before, the claims at issue are 20
substantially different, rendering analysis based on the amendments 21
unproductive. Appellants summarize what they see as missing from the art 22
at Appeal Brief 5-6: 23
1) Accepting a second contract after accepting a first contract 24
even though fulfillment of the second contract would likely 25
prevent the delivery obligations of the first contract from being 26
fulfilled; 27
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2) Selecting a first advertisement instead of a second 1
advertisement even though the second advertisement is "more 2
behind" than the first advertisement; 3
4
3) The time of contract formation is a factor in determining 5
which advertisement to select for display; 6
7
4) An advertisement is selected, from among a plurality of 8
advertisements, in response to a user request for electronic 9
content; 10
11
5) User-requested electronic content includes a slot into which 12
an advertisement is to be placed; 13
14
6) The slot includes slot attributes and the slot attributes are 15
compared with the delivery criteria associated with multiple 16
contracts; 17
18
7) The subject of the requested electronic content is one of the 19
slot attributes compared with the delivery criteria; 20
21
8) An advertisement is inserted into the slot to create a modified 22
piece of electronic content; and 23
24
9) The modified piece of electronic content is delivered to the 25
user as a response to the initial request. 26
27
Argument (7) is dispositive, directed to newly added limitations [7], [8], 28
and [11]. The Examiner does not provide a response (Answer 11), but 29
instead directs us to the rejection analysis (Answer 5-6). The Examiner here 30
found that 31
because the user profile of Carruthers et al includes 32
the subject/category for the page content currently 33
being requested/browsed, the targeted banner 34
advertisement insertion into the surplus web page 35
36
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space therefore meets applicant's [sic] claimed slot 1
attributes corresponding to the content subject. 2
Ans. 6. 3
4
As Appellants point out, this is incorrect. Carruthers’ user profile 5
does not include any data regarding the page requested. The Examiner, 6
apparently sensing this, then posits the predictability of relying on the 7
current page to select an advertisement. Id. But, again as Appellants point 8
out, Carruthers makes no disclosure that would suggest doing so, and 9
Carruthers’ reliance on a master delivery plan would suggest that deviating 10
from that plan based on actual content of delivered pages would be 11
detrimental. The Examiner has not provided reasoning with rational 12
underpinning to add selection criteria regarding web page content to 13
Carruthers. While it is certainly known to do so in other contexts, it is 14
unclear why Carruthers would have added these criteria. 15
16
CONCLUSIONS OF LAW 17
The rejection of claims 21-28 and 30-37 under 35 U.S.C. § 103(a) as 18
unpatentable over Carruthers is improper. 19
20
DECISION 21
The rejection of claims 21-28 and 30-37 is reversed. 22
23
REVERSED 24
25
Klh 26