Ex Parte Morris et al

Patent Trial and Appeal Board

Jul 13, 2016

13620278 (P.T.A.B. Jul. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/620,278
100692 7590
AOL Inc./Finnegan
FILING DATE
09/14/2012
07115/2016
901 New York Ave., NW
Washington, DC 20001
FIRST NAMED INVENTOR
Harry W. MORRIS
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.
10587.0338-02000 3017
EXAMINER
TN, BACKHEAN
ART UNIT PAPER NUMBER
2451
NOTIFICATION DATE DELIVERY MODE
07/15/2016 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARRY W. MORRIS, DAVID LOWELL LIPPKE,
BOB WATKINS, ERIC BOSCO, and COLIN STEELE 1
Appeal2015-003361
Application 13/620,278
Technology Center 2400
Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.
FISHMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 64---69, 71-76, and 78-81.2 Claims 1-63, 70, 77, and 82 were
cancelled. App. Br. 15-18. We have jurisdiction over the remaining
pending claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify AOL Inc. as the real party in interest. Appeal Brief 1.
2 In this Decision, we refer to Appellants' Appeal Brief ("App. Br.," filed
July 28, 2014); Appellants' Reply Brief ("Reply Br.," filed January 20,
2015); the Final Office Action ("Final Act.," mailed February 26, 2014); the
Examiner's Answer ("Ans.," mailed on November 19, 2014); and the
original Specification ("Spec.," filed September 14, 2012).
Appeal2015-003361
Application 13/620,278
THE INVENTION
Appellants' invention is directed to "displaying advertisements in a
computer network environment." Spec. Title.
Independent claim 64, reproduced below, is representative with a
disputed limitation in italics:
64. A computer-implemented method for providing an
advertisement, the method comprising:
determining a class of a user;
varying, using at least one processor, a parameter of an
advertisement to be displayed, the parameter being varied
based on a correlation between the determined class of the
user, the parameter, and a click-through rate; and
providing an instruction to display the advertisement to
the user based on the varied parameter.
THE REJECTIONS
Claims 64, 65, 71, 72, 78, and 79 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gerace (US 5,848,396, issued Dec. 8,
1998); Eldering et al. (US 7,690,013 Bl, issued Mar. 30, 2010 (effective
filing date Dec. 3, 1998)) ("Eldering"); and McElfresh et al. (US 6,907,566
Bl, issued June 14, 2005 (filed Apr. 2, 1999)) ("McElfresh"). Final Act. 4--
6.
Claims 66, 67, 73, 74, and 80 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gerace, Eldering, McElfresh, and Cezar
(US 6,128,651, issued Oct. 3, 2000 (filed Apr. 14, 1999)). Final Act. 6-7.
Claims 68 and 75 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gerace, Eldering, McElfresh, Cezar, and Ballard
(US 6,182,050 Bl, issued Jan. 30, 2001 (filed May 28, 1998)). Final Act. 7.
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Application 13/620,278
Claims 69, 76, and 81 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gerace, Eldering, McElfresh, Cezar, and Alberts
(US 5,937,392, issued Aug. 10, 1999). Final Act. 8.
Claims 64---69, 71-76, and 78-81 stand rejected on the ground ofnon-
statutory obviousness-type double patenting as being unpatentable over "all
claims of U.S. Patent No[s]. 7962604,[ ]8341264 in view of US Patent
7,690,013 issued to Eldering et al." Final Act. 2-3.
ANALYSIS
Only those arguments actually made by Appellants have been
considered in this Decision. Arguments Appellants did not make in the
Briefs have not been considered and are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Obviousness Rejections
We are not persuaded by Appellants' contentions of Examiner error
(App. Br. 6-12; Reply Br. 2-13). We adopt as our own the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 3-11) and as set forth by the Examiner in the Answer
(Ans. 3-10). However, we highlight and address specific arguments and
findings for emphasis as follows.
Claims 64, 65, 71, 72, 78, and 79
In rejecting claim 64, the Examiner finds Gerace teaches determining
a user profile and varying a parameter of an advertisement based on the
determined user profile. Final Act. 4. The Examiner further finds Gerace
fails to explicitly teach determining a "class of user" and varying a
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parameter based on the recited correlation but finds Eldering teaches varying
such a parameter based on a class of user and articulates a reason for
combining Gerace and Eldering. Id. at 4--5. Still further, the Examiner finds
Gerace and Eldering fail to teach varying a parameter based on "click-
through rate" but finds McElfresh provides such a teaching and articulates a
reason for combining McElfresh with Gerace and Eldering. Id. at 5.
Furthermore, the Examiner finds the broadest reasonable
interpretation of "correlation," consistent with Appellants' Specification, is
"to have a mutual, complementary, or reciprocal relationship." Ans. 4. In
like manner, the Examiner finds the broadest reasonable interpretation of
"parameter," consistent with Appellants' Specification, "could be color used,
orientation of the ad on the screen, etc., ad content being displayed to user,
or formatting/placement of the ad for display." Id. at 5. The Examiner also
finds Eldering teaches "at least a determination of a class of user and varying
ad parameter (e.g.[,] ad content and the time of when to show certain ads)
based upon this class and there is a relationship between the class of user
and ad content/time of when to show ads." Id. at 6.
Appellants argue the claimed "'correlation' is not just a mere
relationship, but instead a determined interdependence of variables."
Reply Br. 6. Appellants direct attention to sections of Appellants'
Specification as support for their narrower interpretation of "correlation."
Id. at 6 (citing Spec. p. 9, 11. 20-22; p. 30, 1. 31-p. 31, 1. 4; and Figure 24).
Appellants further assert the claimed "parameter" does not affect what
advertisement content is displayed, but instead how advertisement content is
displayed. Id. at 4. More specifically, Appellants argue the Examiner's
interpretation of "parameter" is inconsistent with its use in the Specification
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and direct attention to sections of Appellants' Specification as support for
their narrower interpretation of "parameter." Id. (citing Spec. p. 7, 11. 20-21;
p. 15, 11. 2-3). Appellants contend, "[i]nterpreting 'parameter' to encompass
the advertisement content necessarily requires interpreting 'an
advertisement' to include multiple selectable content options, such that
'varying ... a parameter' changes the content displayed." Id.
We are unpersuaded the Examiner erred in interpreting "correlation"
or "parameter." As admitted by Appellants, the Specification provides an
example of a correlation. Id. at 5 ("Applicant's application does provide an
example of using a correlation technique to determine a 'correlation."').
"Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim." SuperGuide
Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). We
decline to import Appellants' example of a correlation from the
Specification as a definition of the claim term "correlation." Similarly,
Appellants' examples of parameters provide no limiting definition of the
claimed term. Given the lack of a relevant limiting definition in Appellants'
Specification, the Examiner broadly but reasonably construes both
"correlation" and "parameter," consistent with the Specification. See In re
Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Furthermore, we note Appellants' argument with respect to the
claimed "parameter" is unpersuasive of Examiner error because it is not
responsive to the Examiner's rejection. The Examiner does not interpret
"parameter" as encompassing only advertising content. The Examiner finds
Gerace's user advertisement customization, (including display preferences,
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color used, advertisement orientation, content, formatting, and placement),
teaches or suggests the claimed "parameter." Ans. 5 (citing Gerace, col. 2,
11. 30-35; col. 4, 11. 29-36; col. 5, 11. 20-25; col. 6, 11. 59----67; and Abstract);
see also Final Act. 4, 10
Appellants next contend Eldering does not teach or suggest the
disputed claim limitation because Eldering is directed to determining who is
watching content, not which content to display or how content is displayed.
App. Br. 8; Reply Br. 6-7. In particular, Appellants argue Eldering does not
teach varying a time to show certain advertisements, or varying
advertisement content based upon a user class. Reply Br. 6-7 (citing
Eldering, col. 1, 11. 65-67; col. 13, 11. 34--51; col. 14, 11. 33--47).
We are not persuaded the Examiner erred at least because Appellants'
arguments are not responsive to the Examiner's rejection and, furthermore,
Appellants improperly attack the references individually though the rejection
is based on the combined teachings. See, e.g., In re Keller, 642 F.2d 413
(CCPA 1981); In re Merck, 800 F.2d 1091 (Fed. Cir. 1986). Specifically,
the Examiner finds Gerace teaches varying content, color, or orientation (the
claimed "parameter," as discussed supra) of an advertisement to be
displayed, the parameter being varied based on a relationship (the claimed
"correlation," as discussed supra) between a determined user's profile and
the parameter. Ans. 5 (citing Gerace, Abstract; col. 2, 11. 15-36; col. 5,
11. 20-25; col. 6, 11. 59-67; and col. 12, 11. 43-55). The Examiner further
finds Eldering, in combination with Gerace, teaches determining a class of a
user. Id. at 6 (citing Eldering, Abstract; Figures 9A-19; col. 10, 11. 35--44;
col. 13, 11. 20-34; and col. 14, 11. 34--58). Thus, it is the combination of
Gerace with Eldering that teaches or suggests varying a parameter of an
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advertisement to be displayed, the parameter being varied based on a
correlation between a determined class of a user and the parameter, as
claimed.
Accordingly, we sustain the Examiner's rejection of independent
claim 64. Independent claims 71 and 78 are similar to independent claim 64
and are rejected for similar reasons as claim 64. Appellants do not argue
with particularity the rejection of claim independent claims 71 and 78 or
dependent claims 65, 72, and 79. App Br. 6-9. Thus, for the same reasons
as claim 64, we are unpersuaded the Examiner erred in rejecting claims 65,
71, 72, 78, and 79 and we sustain the Examiner's rejections of claims 64, 65,
71, 72, 78, and 79.
Claims 66--69, 73-76, 80, and 81
Appellants contend Cezar does not teach or suggest "adjust[ing] an
amount of time the advertisement is displayed," as recited in claim 73.
App. Br. 10-11; Reply Br. 9-12. In particular, Appellants argue "[s]etting a
timer is not adjusting an amount of time something is displayed."
App. Br. 10 (citing Cezar col. 7, 11. 50-60).
We are not persuaded the Examiner erred. The Examiner finds Cezar
"teaches the art of ads having timers." Ans. 8 (citing Cezar, col. 7, 11. 50-
60). Cezar discloses "timers are set for 30 seconds" to display each of
twelve advertisements so that "total display time for each ad group will be in
the order of one half hour." Cezar, col. 7, 11. 55-57. Cezar, in disclosing
setting the timer for 30 seconds for each advertisement, teaches or suggests
the timer previously possessing a set-time other than 30 seconds. We find
setting the timer for 30 seconds for each advertisement adjusts the amount of
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time from the previous set-time other than 30 seconds. Thus, setting the
timer for 30 seconds teaches or suggests the claimed "adjust[ing] an amount
of time the advertisement is displayed," as recited in claim 73.
Appellants additionally contend the Examiner relied on impermissible
hindsight in rejecting claim 73. Reply Br. 11-12. In particular, Appellants
assert the Examiner admits the combination of Gerace, Eldering, and
McElfresh does not disclose varying the amount of time for advertisement
display, and "Cezar describes variable ad timing as a problem." Id. at 11-12
(citing Cezar col. 2, 11. 12-33). Thus, Appellants conclude, "Appellant's
[sic] specification apparently provides the sole motivation" for "adjust[ing]
an amount of time the advertisement is displayed," as recited in claim 73.
Id. at 11-12 (citing Spec. p. 10, 11. 10-19).
We are not persuaded the Examiner erred. The Examiner reasons the
ordinary skilled artisan would have been motivated to combine Gerace,
Eldering, McElfresh, and Cezar "to customize ads for specific groups of
users." Final Act. 6. Thus, the Examiner has articulated a reason for the
proposed combination based on rational underpinnings. See KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Court in KSR further holds,
"the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ." Id. Appellants have not persuasively shown the Examiner's
reasoning to be in error.
Accordingly, we sustain the Examiner's rejection of claim 73. Claims
66 and 80 are similar to claim 73 and are rejected for similar reasons as
claim 73. Appellants do not argue with particularity the rejection of claim
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claims 66 and 80 or dependent claims 67----69, 74--76, and 81. App. Br. 6-9.
Thus, for the same reasons as claim 73, we are unpersuaded the Examiner
erred in rejecting claims 66-69, 74--76, 80, and 81 and we sustain the
Examiner's rejections of claims 66----69, 73-76, 80, and 81.
Non-Statutory Obviousness-Type Double Patenting
Appellants argue the "double patenting rejection is improper because,
among other things, there is no mapping between the claims of the prior
patents and the pending claims or any explanation of why the claims
purportedly give rise to obviousness-type double patenting." App. Br. 13.
See also Reply Br. 13-14. We agree with Appellants.
[A] ll that is required of the [Patent] [ 0] ffice to meet its prima
facie burden of production is to set forth the statutory basis of the
rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of [35 U.S.C.] § 132.
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). The Examiner has failed
to adequately explain how, nor are we able to ascertain that, all claims of
"US '604 and '264 teaches all the limitation [sic] of the instant claims and/or
the instant claims are well known variant except for the limitation of
determined class of a user, however Eldering teaches this limitation."
Final Act. 3. Accordingly, we find the Examiner has not established a prima
facie case.
DECISION
We affirm the Examiner's decision to reject claims 64----69, 71-76, and
78-81under35 U.S.C. § 103(a).
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We reverse the Examiner's decision to reject claims 64---69, 71-76,
and 78-81 on the ground of non-statutory obviousness-type double
patenting.
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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