Ex Parte Nicholas et al

Patent Trial and Appeal Board

Feb 4, 2013

10456826 (P.T.A.B. Feb. 4, 2013)

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.
10/456,826 06/06/2003 Frank C. Nicholas 7710/8 1308
7590 02/05/2013
FRANK C. NICHOLAS
CARDINAL LAW GROUP
Suite 2000
1603 Orrington Avenue
Evanston, IL 60201
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
02/05/2013 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, IAN B. CARSWELL,
and PAUL M. HLETKO
____________

Appeal 2011-006647
Application 10/456,826
Technology Center 3600
____________

Before: BIBHU R. MOHANTY, MICHAEL W. KIM, and
JAMES A. TARTAL, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006647
Application 10/456,826

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-13 and 21-271.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates to targeted distribution of advertisements over a
network. (Spec. 1:18-20).
Claims 1 and 7, reproduced below, are further illustrative of the
claimed subject matter.
1. A method of online advertising over a
network comprising:
receiving, at an ad server node, at least one
generic ad request from a generic advertiser, the
generic ad request including a number of requested
impressions;
an ad server of the ad server node providing
availability information to one or more child
advertisers of the generic advertiser based on the
number of requested impressions for the generic ad
request and a web site designation for the generic
ad request;
receiving, at the ad server node, targeted ad
requests including target information from at least
one of the one or more child advertisers;
an ad server of the ad server node
determining a media buy output based on the
received targeted ad requests and the generic ad
request.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed November 8, 2010) and Reply Brief (“Reply Br.,” filed March 9,
2011), and the Examiner’s Answer (“Ans.,” mailed December 9, 2010).
Appeal 2011-006647
Application 10/456,826

3
7. A method of operating an online
target advertising system, the method comprising:
an ad server node providing a generic ad run
comprising a number of requested impressions and
a web site designation;
an ad server of the ad server node providing
availability information relating to the number of
requested impressions and the website designation
of the generic ad run;
receiving, at the ad server node, target ad
run input from an advertiser corresponding to the
availability information at an ad server node, the
target ad run input including target information;
an ad server of the ad server node
determining a generic ad or target ad to be served
based on the target information while the generic
ad run is in effect.

Claims 1-13 and 21-27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Holtz (US 2002/0053078 A1; publ. May 2, 2002) in view
of Armstrong (US 2002/0087352 A1; publ. Jul. 4, 2002) in view of Gerace
(US 5,848,396; iss. Dec. 8, 1998)
We AFFIRM-IN-PART.

ANALYSIS
Independent Claims 1 and 27
We are persuaded the Examiner erred in asserting that a combination
of Holtz, Armstrong, and Gerace discloses or suggests “providing
availability information to one or more child advertisers of the generic
advertiser based on the number of requested impressions for the generic ad
request and a web site designation for the generic ad request,” as recited in
independent claims 1 and 27. (Appeal Br. 6-10; Reply Br. 6-8). The
Appeal 2011-006647
Application 10/456,826

4
Examiner admits that Holtz does not disclose the aforementioned aspect of
independent claims 1 and 27. (Ans. 5-6, 17). The Examiner then asserts
that
Holtz discloses “[77]... Priorities can be set to determine local
versus national, along with cost per thousand (CPM)
downloads.” And, Holtz discloses ad comparison reports where
advertiser and ad firm ad placement purchases can be compared
([241, 245]). And, Gerace discloses that the ranking [of]
advertiser ad priority can be affected by number of impressions
requested by an advertiser (14:65-15:25). Hence, it is obvious
that ad requested information of the national/generic advertiser
can be provided to the child/local advertiser. One would be
motivated to do this so that the child advertiser can better make
ad purchase decisions.

(Ans. 6; emphasis in original). However, paragraph [0077] of Holtz is
directed to determining local versus national priority of advertisements
served, and not the recited generic ad requests. Similarly, paragraphs [0241]
and [0245] of Holtz are directed to compiling reports for advertisements
served, and again, not the recited generic ad requests. The same goes for the
cited portions of Gerace, which are directed to ranking advertiser ad priority
for ads that have already been purchased by a sponsor, and thus are not
related to the recited generic ad requests. In this context, the proffered
rationale for modifying Holtz to meet the aforementioned aspect of
independent claim 1 is an unsupported conclusory assertion. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”).

Appeal 2011-006647
Application 10/456,826

5
The Examiner later cites paragraphs [0077], [0239], [0246], [0313],
[0315], and [0318] of Holtz for support that
since Holtz knows how many ad impressions the national
advertiser has purchased, and Holtz knows how many ad
impressions have actually been shown, and Holtz synchronizes
the national and local advertising, and since Holtz reports on
national and local ad metrics and performance, it is obvious that
Holtz can share the number of national ads requested and
shown information with the local/child advertiser.

(Ans. 17-21). While the Examiner has accurately summarized what the
aforementioned paragraphs of Holtz disclose, we are unclear as to how any
of those paragraphs can serve as a rationale underpinning for “shar[ing] the
number of national ads requested and shown information with the local/child
advertiser.” For example, just because paragraph [0239] of Holtz discloses
that a sales manager knows the parameters of an advertising order, which
includes hit limits, it does not follow that this information would be made
available to other parties. In another example, just because Holtz discloses
synchronizing and reporting national and local advertising, it does not follow
that particular generic/national ad requests are made available to child/local
parties.
Accordingly, because the Examiner has not set forth an adequately
supported rationale for modifying Holtz to include “providing availability
information to one or more child advertisers of the generic advertiser based
on the number of requested impressions for the generic ad request and a web
site designation for the generic ad request,” we cannot sustain the rejection
of independent claims 1 and 27, or their respective dependent claims.

Appeal 2011-006647
Application 10/456,826

6
Independent Claim 7
We are not persuaded the Examiner erred in asserting that a
combination of Holtz, Armstrong, and Gerace discloses or suggests “an ad
server of the ad server node providing availability information relating to the
number of requested impressions and the website designation of the generic
ad run,” as recited in independent claim 7. In contrast to independent claims
1 and 27, independent claim 7 does not recite a generic advertiser/child
advertiser relationship. Accordingly, the fact that managers 1402, 1408, and
1410, disclosed in paragraphs [0241], [0245], and [0246] of Holtz, are
configured to compile advertising exposure reports based on an advertised
customer (i.e., sponsor) meets the aforementioned aspect of independent
claim 7.
DECISION
The decision of the Examiner to reject claims 1-6 and 21-27 is
REVERSED.
The decision of the Examiner to reject claims 7-13 is AFFIRMED.

AFFIRMED-IN-PART

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