11352839 (P.T.A.B. Sep. 22, 2015)

Ex Parte Nicholas et al

Patent Trial and Appeal BoardSep 22, 2015

11352839 (P.T.A.B. Sep. 22, 2015)

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. 11/352,839 02/13/2006 Frank C. Nicholas 7710/33 5573 7590 09/23/2015 FRANK C. NICHOLAS CARDINAL LAW GROUP Suite 2000 1603 Orrington Avenue Evanston, IL 60201 EXAMINER TRAN, NAM T ART UNIT PAPER NUMBER 2452 MAIL DATE DELIVERY MODE 09/23/2015 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 FRANK C. NICHOLAS and IAN B. CARSWELL ____________ Appeal 2013-007515 Application 11/352,839 Technology Center 2400 ____________ Before DEBRA K. STEPHENS, NATHAN A. ENGELS, and MELISSA A. HAAPALA, Administrative Patent Judges. HAAPALA, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 4, 6–10, and 21–36.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Claims 2, 3, 5, and 11–20 have been canceled. App. Br. 4. Appeal 2013-007515 Application 11/352,839 2 INVENTION Appellants’ invention is directed to systems and methods for providing user interest to a potential feed publisher. Abstract. Claim 1 is representative of the subject matter on appeal: 1. A method of providing user interest to a potential feed publisher within a system comprising an outsourced content provider and a potential feed publisher, wherein the outsourced content provider is independent, separate and distinct from the potential feed publisher, and wherein the potential feed publisher does not publish a publicly accessible feed, the method comprising: publishing on a computer network, from the outsourced content provider, at least one placeholder feed associated with the potential feed publisher, wherein the placeholder feed includes information identifying the potential feed publisher, and wherein the placeholder feed does not include content sent from the potential feed publisher to the outsourced content provider; receiving request information associated with the placeholder feed; and providing the request information to the potential feed publisher. REJECTIONS ON APPEAL Claims 1, 9, 21–24, 27, and 30–36 stand rejected as being unpatentable under 35 U.S.C. § 103(a) over the combination of Hussam and Evans. Ans. 2–12. Claims 4, 6, 10, 25, 26, and 28 stand rejected as being unpatentable under 35 U.S.C. § 103(a) over the combination of Hussam (US 2003/0050927 A1; published Mar. 13, 2003), Evans (US 2004/0103030 A1; Appeal 2013-007515 Application 11/352,839 3 published May 27, 2004), and Carlson (US 2005/0267973 A1; published Dec. 1, 2005). Ans. 12–17. Claims 7 and 8 stand rejected as being unpatentable under 35 U.S.C. § 103(a) over the combination of Hussam, Evans, and Adams (US 2002/0124053 A1; published Sept. 5, 2002). Ans. 18–19. Claim 29 stands rejected as being unpatentable under 35 U.S.C. § 103(a) over the combination of Hussam, Evans, Carlson, and DeShan (US 2005/0193010 A1; published Sept. 1, 2005. Ans. 19–20. ISSUES Appellants’ contentions present us with the following issues: A) Did the Examiner err in finding the combined teachings of Hussam and Evans teach or suggest “publishing . . . at least one placeholder feed” and “receiving request information associated with the placeholder feed; and providing the request information to the potential feed publisher” (hereinafter the “request information” limitations), as recited in claim 1? B) Did the Examiner err in finding the combined teachings of Hussam and Evans teach or suggest “providing feed publishing control to the potential feed publisher,” as recited in claim 9? C) Did the Examiner err in finding the combined teachings of Hussam and Evans teach or suggest “providing an aggregate feed comprising at least one feed item from the placeholder feed,” as recited in claim 23? D) Did the Examiner err in finding the combined teachings of Hussam, Evans, and Carlson teach or suggest “the request information Appeal 2013-007515 Application 11/352,839 4 is provided based on one of an elapsed time period or a request information threshold,” as recited in claim 4? E) Did the Examiner err in finding the combined teachings of Hussam, Evans, and Carlson teach or suggest the limitations of claim 29? F) Did the Examiner err in finding the combined teachings of Hussam, Evans, and Adams teach or suggest the limitations of claim 7? ANALYSIS We have reviewed the Examiner’s rejections in consideration of Appellants’ contentions. We disagree with Appellants’ conclusions that the Examiner’s rejections of the claims are in error. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. The findings highlighted below are noted primarily for emphasis. Issue A: Claims 1, 21, 22, 27, and 30–36 Appellants contend the combination of Hussam and Evans does not teach or suggest “publishing . . . at least one placeholder feed,” as recited in claim 1, because “a feed has been defined as structured data” and Hussam “contains no reference or suggestion to the directory being a feed.” App. Br. 16. Appellants argue the websites in Hussam that are indexed by the spider “teach away from the present limitation” and cannot be “feeds” because “the overall structure of the site is not understood by the spider.” Id. Appellants admit the Examiner “correctly quotes the definition of the placeholder feed as recited in [§ 108] of Appellants’ [S]pecification,” but Appeal 2013-007515 Application 11/352,839 5 argue the directory cannot be a placeholder feed because it is under a control of the online directory provider (Reply Br. 4–5). We are not persuaded by these arguments. The Examiner and Appellants both correctly construe the relevant claim terms to be as defined in Appellants’ Specification, namely “placeholder feed” is “a feed that is maintained and updated by a party other than that represented in the feed title or other feed information” (Spec. ¶ 108; see also Ans. 2); “feed” is “location and the data returned when a request for feed formatted content is made” (Spec. ¶ 4); and “feed formatted content” is “structured data” (id.). See also App. Br. 16; Ans. 21. Using these claim constructions, we agree with the Examiner that Hussam’s online directory teaches a placeholder feed (Ans. 21). As noted by the Examiner, the directory entries are feeds, i.e. structured data (HTML tags) that include a URL location. Furthermore, the cited sections of Hussam teach an editor (party other than that represented in feed information) writes descriptions for the directory for sites (party represented in feed title/information). See Hussam ¶ 168. Thus, we agree with the Examiner that Hussam teaches “publishing . . . at least one placeholder feed” limitation recited in claim 1. We are also not persuaded by Appellants’ contention that the combination of Hussam and Evans does not teach or suggest the “request information” limitations of claim 1 (App. Br. 17–18). We agree with the Examiner that Evans’ inline ads are feeds as broadly defined by Appellants’ Specification and in accordance with our claim construction. See Ans. 21– 22 (citing Evans ¶ 54). We further agree with the Examiner that Evans teaches receiving aggregated request information associated with the feed (capturing user interactions with the inline ad) and providing the aggregated Appeal 2013-007515 Application 11/352,839 6 information to a potential feed publisher (website owner). See Ans. 4; Evans ¶ 54. We are not persuaded by Appellants’ arguments that because the SMEs maintain and update their own inline ads, Evans does not teach a “placeholder” feed (App. Br. 17–18). The Examiner relies on Hussam to teach the “placeholder” feed and as discussed supra, we agree with these findings. Therefore, we determine the Examiner did not err in finding the combined teachings of Hussam and Evans teach or suggest the “request information” limitations of claim 1. For the above stated reasons, Appellants fail to persuade us of error in the rejection of claim 1. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of: (1) claim 1; (2) independent claims 21, 27, 34, 35, and 36, for which Appellants rely on similar arguments as those made for claim 1 (App. Br. 6, 19–24); and (3) their dependent claims 22 and 30–33, for which Appellants do not present separate arguments for patentability. We further sustain the 35 U.S.C. § 103(a) rejection of dependent claims 6, 10, and 25, which are not separately argued. Issue B: Claim 9 With respect to claim 9, Appellants’ reiterate the arguments made for claim 1 and further argue that “there is no reference [in Evans] to publication of any information of any kind.” App. Br. 18. We are unpersuaded by this argument because we agree with the Examiner that Evans teaches the small and medium enterprises have publishing control over their in-line ads (feed publication control). See Ans. 21 (citing Evans ¶ 54). Thus, Appellants do not persuade us of error and we, therefore, sustain the 35 U.S.C. § 103(a) rejection of claim 9. Appeal 2013-007515 Application 11/352,839 7 Issue C: Claim 23 and 24 Appellants contend the combination of Hussam and Evans does not teach or suggest “providing an aggregate feed comprising at least one feed item from the placeholder feed,” as recited in claim 23, because “ [a] ‘group of sites’ is not in any way analogous to an ‘aggregate feed.’” App. Br. 21. We are not persuaded because, for the reasons discussed supra with reference to claim 1, we agree with the Examiner that Hussam teaches an aggregate feed (directory) comprising at least one placeholder feed. See Ans. 22. Appellants, therefore, do not persuade us of error in the rejection of claim 23. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of claim 23 and its dependent claim 24, not separately argued. Issue D: Claims 4 and 26 Appellants argue the combination of Hussam, Evans, and Carlson does not teach or suggest the limitations of claim 4 because Carlson does not disclose “‘request information’ in general.” App. Br. 25. Appellants further argue the request information “must be associated with a placeholder feed” and the “Examiner fails to identify a ‘placeholder feed’ in the Carlson reference.” Id. We are not persuaded by these arguments. The Examiner finds, and we agree, Carlson teaches system reporting/usage for providing request information (content that was clicked) based on an elapsed period of time (such as requests for today). Ans. 13 (citing Carlson ¶ 51); see also Ans. 23. We note Appellants’ arguments that Carlson does not teach a placeholder feed is not persuasive because as discussed supra, the Examiner finds Hussam teaches the “placeholder” feed. See also Ans. 23. One cannot show non-obviousness by attacking references Appeal 2013-007515 Application 11/352,839 8 individually when the rejection is based on a combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Appellants do not persuade us the Examiner erred in finding the combination of Hussam, Evans, and Carlson teaches or suggests the limitations of claim 4. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of: (1) claim 4 and (2) claim 23, for which Appellants rely on the same arguments made for claim 4 (App. Br. 26). Issue E: Claims 28 and 29 With respect to claim 28, Appellants merely argue Carlson “fails to disclose a ‘potential feed publisher’ or to disclos[e] a ‘placeholder feed.’” App. Br. 27. For the reasons noted above, we agree with the Examiner (Ans. 24) that Hussam in view of Evans teaches the claimed “potential feed publisher” and “placeholder feed.” Because Appellants arguments are directed to an individual reference (Carlson) instead of the combination of references, we are not persuaded us of error in the rejection of claim 29. See Keller, 642 F.2d at 426. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of claim 28. We further sustain the 35 U.S.C. § 103(a) rejection of its dependent claim 29, for which Appellants rely on the arguments previously presented for its parent claims 9 and 28 (App. Br. 29–30). Issue F: Claims 7 and 8 Appellants present contentions for the separate patentability of claim 7. App. Br. 28–29. However, Appellants’ contentions amount to no more than arguments that Adams fails to teach the purported deficiencies Appellants argue are present in the independent claim 1 and a recitation of the claim language and an assertion that Adams does not disclose the recited limitations, which is not a separate argument for patentability. See In re Appeal 2013-007515 Application 11/352,839 9 Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Therefore, we are not persuaded of error and accordingly sustain the 35 U.S.C. § 103(a) rejection of claim 7 and its dependent claim 8, not separately argued. DECISION The Examiner’s rejections of claims 1, 4, 6–10, and 21–36 are affirmed.2 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED ACP 2 We note there are numerous typographical numbering errors in the Claims Appendix submitted by Appellants. In particular, claims 22–33 are numbered incorrectly as claims 18–23. See App. Br. 33–34. We remind Appellants that all papers submitted to the Board should be carefully reviewed before submission.