Ex Parte Morgan et alDownload PDFPatent Trial and Appeal BoardOct 29, 201412005531 (P.T.A.B. Oct. 29, 2014) Copy Citation 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. 12/005,531 12/27/2007 Thomas J. Morgan BKA.0014US 3438 21906 7590 10/30/2014 TROP, PRUNER & HU, P.C. 1616 S. VOSS ROAD, SUITE 750 HOUSTON, TX 77057-2631 EXAMINER BAIRD, EDWARD J ART UNIT PAPER NUMBER 3692 MAIL DATE DELIVERY MODE 10/30/2014 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 THOMAS J. MORGAN, CHRISTOPHER A. WHITE, MATTHEW WONG, LESLIE M. CARTER, and MASON T. JONES ____________ Appeal 2012-006057 Application 12/005,5311 Technology Center 3600 ____________ Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and JAMES A. WORTH, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1–25. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellants claim a method of dynamic insertion of advertisements into entertainment content. (Specification 1:4-5) 1 Appellants identify B1ackArrow, Inc. as the real party in interest. Br.3. Appeal 2012-006057 Application 12/005,531 2 Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A method comprising: automatically electronically splitting a right to sell advertising opportunities in a dynamic advertisement insertion computing system between at least two advertising sellers based on predetermined percentages of the opportunities being allocated to each of said sellers. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Eldering US 2002/0087980 Al July. 4, 2002 Sagalyn US 2006/0036490 Al Feb. 16,2006 Jain US 2007/0061240 Al Mar. 15,2007 The following rejections are before us for review. Claims 2-25 are indefinite under 35 U.S.C. § 112, second paragraph, for failing to particularly point out and distinctly claim the subject matter which applicants regard as the invention. Claims 1, 11, 21, 23, and 24 are anticipated under 35 U.S.C. § 102(e) by Jain et al. Claims 2–4, 7, 8, 12–14, 17, 18, and 25 are unpatentable under 35 U.S.C. § l03(a) over Jain in view of Sagalyn. Claims 5, 6, 9, 15, 16, and 19 are unpatentable under 35 U.S.C. § 103(a) over Jain in view of Sagalyn and further in view of Eldering Claims 10, 20, and 22 are unpatentable under 35 U.S.C. § 103(a) over Jain in view of Eldering. Appeal 2012-006057 Application 12/005,531 3 FINDINGS OF FACT 1. We adopt the Examiner’s findings as set forth on pages 7-12 of the Answer. 2. Jain discloses FIGS. 6-10 are used to illustrate two examples of the determination of market clearing equilibria. Each of the equilibria is calculated in the exemplary context of auctioning advertising opportunities presentable on a web page 600. Specifically, web page 600 includes a first advertising opportunity 602 and a second advertising opportunity 604. For sake of example, it is assumed that the first advertising opportunity 602 has a likelihood of selection 606 of 100 percent such that, each time the web page 600 is presented, the first advertising opportunity 602 is always selected. The second advertising opportunity 604 has a likelihood of selection 608 of 50 percent such that the second advertising opportunity 604 is selected half the time the web page 600 is presented. An unspent money slot 610 is associated with the web page 600 to capture monies committed to the auction by bidders who submit bids that are less than the market price. Para. 57. 3. Jain discloses FIG. 8 shows a web page 800 graphically depicting the results of the auction. Using a matching or assignment polytope, the first advertising opportunity 802 will be assigned to Bidder A for 50 percent of its impressions 810 and to Bidder B for the other 50 percent of its impressions 812. Similarly, the second advertising opportunity 804 will be assigned to Bidder A for 50 percent of its impressions 814 and to Bidder B for the other 50 percent of its impressions 816. Because Bidder C's bid price 732 (FIG. 7) of $0.50 is below the market clearing price, all funds 818 of Bidder C's auction budget 734 is assigned to the unspent money slot 820. Para. 60. Appeal 2012-006057 Application 12/005,531 4 ANALYSIS 35 U.S.C. § 102(e) REJECTION The Appellants argued claim 1 as representative, and the remaining independent claims 11 and 21 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007). Appellants argue, The reference to Jain mentions advertising opportunities in the cited paragraph 39. However, Jain relates to selling individual advertising opportunities by auction. It does not relate to deciding how a right to sell the advertising opportunities was allocated to Jain's auctioneer, which is what the claimed invention covers. Thus, the cited reference has nothing to do with the claimed invention and therefore, the Section 102 rejection should be reversed (Appeal Br. 10). The Examiner however found, that Jain teaches: • automatically electronically splitting a right to sell advertising opportunities [0005] in a dynamic advertisement insertion computing system between at least two advertising sellers - see at least [0038]- [0040], based on predetermined percentages of the opportunities being allocated to each of said sellers - see at least [0012] [0038] and [0040]. (Answer 7). In light of the breadth of the claim, the Appellants’ argument is not persuasive as to error in the rejection. That is, we disagree with Appellants that Jain “does not relate to deciding how a right to sell the advertising opportunities was allocated to Jain's auctioneer” because we find that Jain explicitly discloses allocating predetermined percentages, i.e., fifty Appeal 2012-006057 Application 12/005,531 5 percent/fifty percent, between first and second advertising opportunities (FF. 2), based on the likelihood of selection of each of the respective first and second advertising opportunities (FF. 3). Concerning claim 23, Appellants argue: Claim 23 calls for an audit manager "to keep track of the credit for ads that were played." But the final rejection in paragraph 16 indicates that Jain teaches tracking credit for ads that were played in paragraphs 60, 61, and Figure 9. The Examiner interpreted auction budget and noted funds spent by buyers committed to an auction is indicative of applicant's tracking credit for ads that were played. In effect, what the Examiner has done is convert claim language that calls for tracking credit for ads that were played to tracking credits for ads that were not played (i.e., merely for auction sales of the right to play ads). (Appeal Br. 10-11). The Examiner however found that Jain discloses tracking credit for ads played at paragraphs [0060] and [0061]. (Answer 7). We agree with the Examiner. Claim 23 is drawn to a device and requires only an audit manager to keep track of credit for ads that were played. We construe this language to be functional. As functional language, we are required to give this language weight only to the extent that the prior art is or is not capable of meeting the limitation. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). We find that the system in Jain is capable of keeping track of credits for ads that played because it tracks likelihood of selection (FF. 2) which is a more complex form of accounting than simply counting actual played promotions. Appeal 2012-006057 Application 12/005,531 6 We also affirm the rejections of claims 2–10, 12–20, 22, 24 and 25 under 35 U.S.C. § 103(a) as Appellants rely on the arguments made for claims 1 and 23 and Appellants do not advance any additional arguments beyond those advanced for the anticipation rejection and thus we will sustain the rejection under 35 U.S.C. § 103(a) for the same reasons given above. 35 U.S.C. § 112 Second Paragraph REJECTION We will not sustain the rejection of claims 2-25 under 35 U.S.C. § 112 second paragraph because the Examiner’s concerns are a matter of claim breadth, not indefiniteness. “Breadth is not indefiniteness.” In re Gardner, 427 F.2d 786, 788 (CCPA 1970). CONCLUSIONS OF LAW We conclude the Examiner did err in rejecting claims 2-25 under 35 U.S.C. § 112 second paragraph. We conclude the Examiner did not err in rejecting claims 1-25 under 35 U.S.C. § 103 and §102, respectively. Appeal 2012-006057 Application 12/005,531 7 DECISION The decision of the Examiner to reject claims 1–25 is affirmed2. 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. § 1.136(a)(1)(iv). AFFIRMED Klh 2 Should there be further prosecution of this application (including any review for allowance), the Examiner may wish to review the claims for compliance under 35 U.S.C. § 101 in light of the recently issued preliminary examination instructions on patent eligible subject matter. See “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.,” Memorandum to the Examining Corps, June 25, 2014. 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