Ex Parte Nicholas et al

Patent Trial and Appeal Board

May 27, 2016

11573178 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111573, 178 02/02/2007
30016 7590 06/01/2016
CARDINAL LAW GROUP, LLC
SUITE 2000
1603 ORRINGTON A VENUE
EVANSTON, IL 60201
FIRST NAMED INVENTOR
Frank C. Nicholas
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.
7710.27.USN 7831
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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):
docket@cardinallawgroup.com
clg_ docketing@cardinal-ip. com
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
Appeal2014-002973
Application 11/573,178 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frank C. Nicholas and Ian B. Carswell (Appellants) seek our review
under 35 U.S.C. § 134 of the final rejection of claims 6-11 and 17-25.
Claims 12-16 have been withdrawn. See Br. 21-22. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Dizpersion Corporation as the real party in
interest. Br. 3.
Appeal2014-002973
Application 11/573, 178
THE INVENTION
Claim 6, reproduced below, is illustrative of the subject matter on
appeal.
6. A method of sponsoring feed content over a network of
computing devices, the method comprising:
providing a template advertising opportunity at a server;
receiving at least one keyword at a server from a user;
associating the user with the template advertising
opportunity at a server based on a nature sketch, the keyword,
and at least one factor external to the user, wherein the
association includes a degree of certainty and the nature sketch
is based on characteristic response data;
determining, by a server, feed formatted content
associated with the keyword;
associating a sponsorship with the feed formatted content
at a server based on the associated template advertising
opportunity; and
providing the feed formatted content with associated
sponsorship from a server to the user based on the
determination.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Gerace
Dombrowski
Thomas
us 5,848,396
US 2003/0163375 Al
US 2005/0091202 Al
The following rejections are before us for review:
Dec. 8, 1998
Aug. 28, 2003
Apr. 28, 2005
1. Claims 6-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gerace and Dombrowski.
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2. Claims 17-25 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Gerace, Dombrowski, and Thomas.
ISSUES
Did the Examiner err in rejecting claims 6-11 under 35 U.S.C. §
103(a) as being unpatentable over Gerace and Dombrowski?
Did the Examiner err in rejecting claims 17-25 under 35 U.S.C. §
103(a) as unpatentable over Gerace, Dombrowski, and Thomas?
FINDINGS OF FACT
We rely on and adopt the Examiner's factual findings stated in the
Answer. Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 6-11under35 USC§ 103(a) as being
unpatentable over Gerace and Dombrowski.
Independent claim 6 is directed to a method of providing a
sponsorship-associated formatted feed content to a user via a template
advertising opportunity at a server. A number of different associations are
claimed, the purpose of which, it appears, is to determine the type of content
that will be provided to the user.
At issue is the claimed association of the user to the template "based
on [(a.)] a nature sketch, [(b.)] the keyword, and [(c.)] at least one factor
external to the user, wherein the association includes a degree of certainty
and the nature sketch is based on characteristic response data" (claim 6).
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The Examiner found that said association is disclosed in Gerace. See
Final Rejection 3--4. In making that finding, the Examiner construed claim
terms in detail.
The Appellants disagree, arguing that (b.) Gerace does not disclose
"the use of a keyword received from the user as a basis for the associating"
(Br. 11 ); ( c.) "[the] Examiner [has not] addressed the 'at least one factor
external to the user' element" (Br. 12), and "assuming arguendo that Gerace
discloses at least one factor external to the user, Gerace does not disclose or
suggest the use of all three of these elements together as a basis for
associating a user with an advertising opportunity" (Br. 10).
Regarding (a.), the "nature sketch," the Appellants cite statements
made by the Examiner in the Advisory Action. See Br. 12. The statements
are cited to support the allegation that the "Examiner [has not] expressly
identif[ied] and/or explain[ed] disclosure in Gerace whereby all three of a
nature sketch, a keyword received at a server from a user, and at least one
factor external to the user are used together as a basis for associating the user
with an advertisement opportunity" (Br. 12).
The Appellants do not otherwise discuss the "nature sketch" element
of the claimed process; that is to say, the Examiner's construction of the
claim phrase "nature sketch" and the finding that Gerace discloses said
"nature sketch" as construed (see Final Rejection 3: the "Examiner interprets
this nature sketch feature as an attribute or psychological attribute of the user
related to the user's profile" and finds this limitation disclosed in Gerace in,
inter alia, the "psycho graphic profile" discussed at col. 13 :20-27; see also
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Answer 14) do not appear to be in dispute. Accordingly, we take as
accepted that Gerace discloses (a.) the "nature sketch" as claimed.
As to the alleged failure of the "Examiner [to] expressly identify
and/or explain disclosure in Gerace whereby all three of a nature sketch, a
keyword received at a server from a user, and at least one factor external to
the user are used together as a basis for associating the user with an
advertisement opportunity" (Br. 12), we disagree. A plain reading of the
Examiner's Final Rejection shows that is not the case. Every claim
limitation is addressed, claim terms are construed, citations to the prior art
references are extensive, and an apparent reasoning with logical
underpinning is provided for one of ordinary skill in the art to combine the
elements disclosed in the prior art and thereby reach the combination as
claimed. We especially note the supplemental discussion the Examiner
provided in the Examiner's Answer that comprehensively responds to the
Appellants' arguments in the Brief (to which there is no Reply Brief). We
are satisfied that the Examiner has satisfied the initial burden of presenting a
prima facie case of obviousness.
Regarding (b.), the keyword, the Appellants argue that "Gerace fails
to disclose the use of a keyword received from the user as a basis for the
associating" (Br. 11 ). The Examiner found said limitation in various
passages of Gerace, including col. 9:40-50 which discloses that "a search is
initiated with user provided parameters" and that "sponsor provided
advertisements are able to be inserted at the top of the screen view and at the
end" (Ans. 15, emphasis omitted). The Examiner also finds that Gerace
discloses that "[ c ]lassifieds should be searchable by category, model,
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condition, price, seller's location, and keyword" (id.). As an example, the
Examiner pointed out that "Gerace discloses that a business partner in
Detroit is looked up, that the particular word Detroit is then listed as a city of
interest for the user, that appropriate ads are integrated with the page
presenting Detroit related information, and that a weather notice about
Detroit can be provided ... " (Answer 17; see also Final Rejection 3). The
Appellants responded by arguing that "there is no disclosure or evidence in
Gerace that 'Detroit' is received as a keyword from a user," and "[t]here is
no disclosure in Gerace that 'Detroit' or any other keyword is used as a basis
for associating the user with an advertising opportunity, especially not in
conjunction with a nature sketch and at least one factor external to the user"
(Br. 11-12) (emphasis added). As to the former argument, it is unpersuasive
as to error in the rejection. To one of ordinary skill in the art reading, for
example, col. 16, lines 35-55, Gerace suggests a user inputting a place-name
like "Detroit" as a search query. To one of ordinary skill in the art, a search
query implies a keyword. "[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom." In re Preda, 401 F.2d 825, 826 (CCPA 1968).
We address the latter argument below.
Regarding (c.), "at least one factor external to the user," the
Appellants argue that the "Examiner has not identified the portion( s) of the
Gerace document (e.g. by column and line number) that include [] alleged
disclosures, nor has Examiner addressed the 'at least one factor external to
the user' element" (Br. 12). That is not the case. The Examiner cites
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numerous passages in Gerace as evidence that Gerace discloses said "at least
one factor external to the user" (claim 6). See Final Rejection 3 and Answer
18. The Appellants have not addressed the evidence. Accordingly, the
argument as to error in the rejection, that the Examiner has not identified
passages in Gerace, is unpersuasive.
Finally, the Appellants argue that Gerace does not disclose
"associating the user with an advertising opportunity (let alone a template
advertising opportunity) based on a nature sketch, the keyword, and at least
one factor external to the user, as required by the claim" (Br. 10) (emphasis
original). In particular, Appellants argue that even if Gerace discloses each
of these features individually, "Gerace does not disclose or suggest the use
of all three of these elements together as a basis for associating a user with
an advertising opportunity" (Br. 10). This argument is repeated in various
places in the Brief concomitantly with discussion of each of the three
elements; e.g., regarding (b.), the keyword, the Appellants argue that
"[t]here is no disclosure in Gerace that 'Detroit' or any other keyword is
used as a basis for associating the user with an advertising opportunity,
especially not in conjunction with a nature sketch and at least one factor
external to the user" (Br. 11-12) (emphasis added).
The argument is unpersuasive as to error in the rejection.
The Examiner has taken the position that, given that Gerace discloses
each of elements (a.), (b.), and (c.) for ad targeting, it would have been
obvious to one of ordinary skill in the art to combine all three as claimed for
the same purpose. See, for example, the Answer at 11-13: "Gerace discloses
a variety or combination of different criteria or characteristics for targeting
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the user for the ad" and "since the different criteria can be weighted (as seen
in the citations preceding), there are clearly multiple criteria that can be used
at the same time for the ad targeting" (Ans. 11-13). "The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results." KSR Int'! Co. v. Teleflex
Inc., 127 S. Ct. 1727, 1739 (2007). In that regard, the Appellants have not
come forward with secondary factors to dislodge the prima facie
obviousness determination.
We also note that the Examiner addressed the template as claimed and
the association of the elements to said template as claimed, relying in part on
Dombrowski. See Final Rejection 4-5. The Appellants allude to the template
in challenging the rejection. But other than saying that Dombrowski fails to
remedy the deficiencies in Gerace, it is not addressed.
The remaining arguments are unpersuasive.
For the foregoing reasons, the arguments challenging the rejection of
claim 6 are unpersuasive as to error in the rejection. Accordingly, the
rejection is sustained.
Appellants do not separately argue the rejection of claims 7-11, each
of which depends from claim 6. Therefore, we sustain the rejection of
claims 7-11 for the reasons discussed above regarding claim 6.
The rejection of claims 17-25 under 35 US.C. § 103(a) as unpatentable
over Gerace, Dombrowski, and Thomas
Appellants provide the same arguments in challenging the rejection of
independent claim 17 as they did in challenging the rejection of claim 6 (Br.
13-1 7). For the same reasons, we sustain the rejection of claim 1 7.
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Appellants also argue that the Examiner erred in rejecting dependent
claims 19 and 20 (Br. 18). The Examiner found the claimed subject matter
disclosed in, inter alia, Thomas at paragraph 67, which discloses a
"recommendation engine" that "works in conjunction with email services
allowing a user to forward content found at a URL in an email" (Ans. 10).
According to Appellants:
claim 19 provides feed formatted content through "personal
message feed." Paragraph 67 of Thomas makes no mention of
feed formatted content or a personal message feed. In fact it
specifically states, " ... the recommendation engine works in
conjunction with email services," referencing email, which is an
entirely different mode of content delivery or sharing.
Similarly, claim 20 references a "personal message feed" and
examiner points to the same paragraph and figures that do not
demonstrate a "personal message feed."
Br. 18.
As a preliminary matter, regarding the argument that "Thomas makes
no mention of feed formatted content," the Examiner relied on Gerace, not
Thomas, as disclosing the claimed "feed formatted content" (Ans. 7).
Regarding the argument that "Thomas makes no mention of ... a
personal message feed", the Examiner construed "personal message feed" to
cover the recommendation engine of Thomas. The Specification does not
provide an express definition for "personal message feed." The
Specification describes the personal message feed in exemplary terms at
page 40, lines 14--29:
In one embodiment, a personal message feed is created
and available as a method to send feed formatted content
directly to the user. Personal message items may be created by
users through an online or software interface, by email parsing,
via a call center, or the like and these items may then be
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indexed to the personal message feed of a user or group of
users. In one embodiment, a user may forward an email
account to, set messages to be copied from, or receive email
directly at an email address that parses email and places it in a
personal message feed.
In light of this description in the Specification, the Examiner reasonably
broadly construed "personal message feed" as covering the recommendation
engine of Thomas. The Appellants' argument that email is "an entirely
different mode of content delivery or sharing" does not comport with the
disclosure in the Specification of parsing email and placing it in a personal
message feed. See page 40, lines 14--29, reproduced above.
We also observe that, in the Answer, the Examiner noted that Gerace
discloses an "internal and user to user messaging feature" (Ans. 21 ). This
note, which appears to reasonably characterize the scope and content of
Gerace and which remains unrebutted, appears to give further support to the
Examiner's finding of fact that the prior art discloses the "personal message
feed" of claims 19 and 20.
For the foregoing reasons, Appellants arguments' are unpersuasive as
to error in the rejection of claim 19 and 20, and accordingly the rejection is
sustained.
Appellants do not separately argue the rejection of claims 18 and 21-
25, each of which depends from claim 17. Therefore, we sustain the
rejection of claims 18 and 21-25 for the reasons discussed above regarding
claim 17.
CONCLUSIONS
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The rejection of claims 6-11under35 U.S.C. § 103(a) as being
unpatentable over Gerace and Dombrowski is sustained.
The rejection of claims 17-25 under 35 U.S.C. § 103(a) as
unpatentable over Gerace, Dombrowski, and Thomas is sustained.
DECISION
The decision of the Examiner to reject claims 6-11 and 17-25 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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