Ex Parte Nyhan et al

Patent Trial and Appeal Board

Oct 28, 2014

09900674 (P.T.A.B. Oct. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NICK NYHAN; and RONIT AVIV
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Appeal 2012-002536
Application 09/900,6741
Technology Center 3600
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Before, HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, 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, 3, 5–7, 9–17, 21, 26–28, and 32–33. Claims 8,
and 22-24 are objected to. We have jurisdiction under 35 U.S.C. § 6(b). A
telephonic hearing was held on November 15, 2012.

SUMMARY OF DECISION
We AFFIRM IN PART.

1 Appellants identify Dynamic Logic, Inc.as the real party in interest. Br. 1.

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THE INVENTION
Appellants claim on-line advertising and, more particularly, to
soliciting computer users to take on-line surveys.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method for conducting an on-line survey in association
with presentation of an on-line advertisement by a browser
client, the method comprising:
receiving, by a user computer hosting the browser client,
a web page configured to display an on-line advertisement;
issuing, by the user computer in association with
processing the received web page, a request to an ad server, for
a block of data comprising computer-readable instructions for
presenting the on-line advertisement via the browser client;
sending, by the ad server in response to the issued request
from the user computer, the block of data including computer-
readable instructions for presenting the on-line advertisement
and the block of data further including additional computer-
readable instructions that facilitate decision-making steps for
determining whether to present an on-line survey solicitation
via the browser client, wherein acceptance of the on-line survey
solicitation by the user results in presentation of an on-line
survey via the browser client;
accessing, on the user computer, a timestamp value
indicative of a period of time that has passed since the on-line
survey solicitation was previously presented by the browser
client; and
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executing the additional computer-readable instructions if
the timestamp value indicates passage of a period of time
satisfying a prescribed wait period between consecutive
presentations of the on-line survey solicitation by the browser
client on the user computer.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Smith US 2002/0128898 Al Sep. 12, 2002
de Ment US 6,728,755 B1 Apr. 27, 2004
Winn US 6,901,424 B1 May 31, 2005

The following rejections are before us for review.

Claims 1, 3, 5–7, 11–17, 26–27, and 33 are rejected under 35 U.S.C.
103(a) as being unpatentable over Smith in view of de Ment.
Claims 9, 10, 21 and 28–32 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Smith in view of de Ment and in further view of
Winn.
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 5–20 of
the Answer.
2. Figure 1 of de Mint is shown below illustrating the pop-up
servlet 116.
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Figure 1 of de Mint is shown above illustrating the pop-up servlet 116.

3. de Mint discloses, “[a]t decision step 216, the routine
determines whether or not the user has seen the particular survey within the
last six months. This involves initially checking to see whether the user has
a cookie corresponding to the pop-up survey routine.” Col. 4, ll. 47–51.
4. de Mint discloses that, “. . . if it is determined that the user has
been presented with the survey in the last six months, then again, the routine
returns a value at step 210 indicating that the survey is not to be popped.”
Col. 4, ll. 56–59.
5. Smith discloses that “[a]ccording to another aspect, the set of
one or more screening questions is generated based on the target
participation criteria that is associated with one or more active surveys.”
¶ 23.

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ANALYSIS
35 U.S.C. § 103(a) REJECTION

Appellants argue claims 1 and 13 as a group. We select claim 1 as the
representative claim for this group, and the remaining independent claim 13
stands or falls with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
For the reasons that follow, we sustain the Examiner’s rejection of
claim 1.
Claim 1 recites, in pertinent part, the step of, issuing, by the user
computer in association with processing the received web page, a request to
an ad server, for a block of data comprising computer readable instructions
for presenting the on-line advertisement via the browser.
Concerning this limitation Appellants argue that
The Final Office Action has thus relied upon de Ment's general
statement of "any action" to support the specific on-line
advertisement delivery mechanism recited in Appellants'
"issuing" step. Moreover, Appellants' claimed "issuing" step is
directed to how an on-line ad block is initially requested, not
how a popup survey routine is commenced (as described in
cols. 3, 11 and 10-14 of de Ment cited in the Final Office
Action).
(Appeal Br. 10).
We disagree with Appellants because we find with the Examiner that
an action commenced on the part of the user in de Ment in association with
processing the received web page, constitutes issuing a request as required
by the claims.” (Answer 6). Our review of de Ment at Column 3, lines 10-
14 reveals that “the pop-up routine is invoked in response to the user
initiating execution of the web tool.” We thus agree with the Examiner that
action taken by the user using the web tool that causes the response by the
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pop up routine, is taken by an ad server as a request for a block of data
comprising computer readable instructions for presenting the on-line
advertisement via the browser, because of the cause and effect nature of the
response.
Claim 1 also recites in pertinent part,
sending, by the ad server in response to the issued request from
the user computer, the block of data including computer-
readable instructions for presenting the on-line advertisement
and the block of data further including additional computer-
readable instructions that facilitate decision-making steps for
determining whether to present an on-line survey solicitation
via the browser client, wherein acceptance of the on-line survey
solicitation by the user results in presentation of an on-line
survey via the browser client… .

Concerning this sending step, Appellants argue that: “Appellants first
note that the ‘sending’ step is performed by the ad server in response to the
‘issuing’ step that, as explained above, is not described in either Smith or de
Ment. For at least this reason alone, the ‘sending’ step is not disclosed by
either Smith or de Ment.” (Appeal Br. 11).
Appellants’ argument is not persuasive as to error in the rejection
because Appellants have not explained why sending the “additional
computer-readable instructions that facilitate decision making steps” by a
server is not obvious over the manner by which the pop up survey is
accomplished in de Mint. According to Figure 1 of de Mint, the system
includes a pop-up survey servlet and associated program 117 which are in
communication with the web user via the Internet 105. (FF. 2). Thus, we
find that de Mint discloses all the elements which are recited in the method
step including computer-readable instructions that facilitate decision-making
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steps for determining whether to present an on-line survey solicitation via
the browser client. (FF. 3). While de Mint is silent as to from where these
instructions are executed (server side or user computer side), we find that the
mere existence of differences between the prior art and the claim does not
establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976).
The issue is “whether the difference between the prior art and the subject
matter in question ‘is a differen[ce] sufficient to render the claimed subject
matter unobvious to one skilled in the applicable art.’” Dann, 425 U.S. at
228 (citation omitted) (finding system for automatic record keeping of bank
checks and deposits obvious in view of nature of extensive use of data
processing systems in banking industry and “closely analogous” patent for
an automatic data processing system used in a large business organization
for keeping and updating system transaction files for each department of the
organization).
We also disagree with Appellants that it would not have been obvious
to “modify Smith in view of de Ment, since Smith does not express any need
to limit the quantity/frequency of survey solicitations presented to users.”
(Appeal Br. 12) This is because we find that Smith does actually use
screening questions based on the target participation criteria that is
associated with one or more active surveys (FF. 5), which suggests limiting
of the surveys to applicable people.
Appellants also argue that, “Appellants initially note that de Ment
tracks when a survey was last taken by a user –not (as claimed) when a
survey solicitation was last presented. If anything, the combination of Smith
and de Ment results in a system where timestamps are used to enforce a
minimum wait period between taking a survey.” (Appeal Br. 13).
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We disagree with Appellants that the difference constitutes error in
the rejection because setting a metric to one of last taken or last presented is
deemed to be no more than a matter of obvious design choice for a person
with ordinary skill in the art depending on what the designer seeks to
accomplish using the time marker . See, In re Hopkins, 342 F2d 1010, 1015
(CCPA 1965).
We also disagree with Appellants that “it is not necessary (or even
desirable) for a timestamp (such as de Ment's) to be used in association with
Smith's presentation of a survey.” (Appeal Br. 13) because the use of the de
Mint timestamp would not prohibit the determination of whether a user has,
or has not, taken a survey. Rather, the modification would beneficially add
to the information about when the involved user took the survey thereby
enhancing further analysis of the gathered data.
Appellants’ arguments to independent claim 17 are addressed supra
concerning (FF. 3).
We also affirm the rejections of dependent claims 3, 5, 12, 14, 16, 26,
27 and 33 since Appellants have not challenged such with any reasonable
specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
Claim 6.
We disagree with Appellants that the combination fails to disclose that
the timestamp value indicates that the on-line survey solicitation was
presented by the browser client (Appeal Br. 14-15) because first, we find
with the Examiner that a timestamp is at least inherently associated with a
cookie in de Mint in order to determine the age of the cookie. (Answer 9,
(FF. 3,4)). That said, we find that the timestamp in de Mint being explicitly
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disclosed as meaning that the survey was presented, hence meets the
requirement for a solicitation. (FF. 3, 4)
Claims 7 and 15
Appellants’ arguments to claims 7 and 15 fail from the outset because
they are not based on limitations appearing in the claims and are not
commensurate with the broader scope of these claims which do not require
“previously presented, but declined, presentations of survey solicitations.”
(Appeal Br. 15). In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Claim 11
We also disagree with Appellants argument that, “Neither Smith nor de
Ment discloses linking the survey questions to a product or service
advertised in the on-line advertisement provided in the block of data
downloaded from the ad server” (Appeal Br. 15) because the content of the
questions cannot distinguish over the prior art because such content is
“discernable only to the human mind.” . . . ; see In re Lowry, 32 F.3d 1579,
1583 (Fed.Cir.1994) (describing printed matter as “useful and intelligible
only to the human mind”) (quoting In re Bernhart,. 417 F.2d 1395, 1399
(CCPA 1969)). See also, In re Xiao, 2011-1195 WL 4821929, at *3–4 (Fed.
Cir. 2011) (Non-precedential). Thus, non-functional descriptive material,
being useful and intelligible only to the human mind, is given no patentable
weight. See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Claims 9-10, 21 and 28-31
We will not sustain the rejection of dependent claim 9 for the reasons set
forth on page 16 of the Appeal Brief. But, because the scope of claim 9 is
narrower than that of the remaining claims grouped by the Appellants (claim
9 requires a look up table whereas none of the remaining grouped claims
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require a look up table), we will sustain the rejection of claims 10, 21 and
28-31 and adopt the Examiner’s findings as proper for them claims as set
forth on pages 15–19 of the Appeal Brief.
Claim 32
We will not sustain the rejection of claim 32 because we do not find
where in the Examiner’s findings that the prior art discloses explicitly or by
making it obvious, appending a random number to a URL used by a
browser.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 3, 5–7,
10–17, 21, 26–31, and 33 under 35 U.S.C. § 103.
We conclude the Examiner did err in rejecting claims 9 and 32 under
35 U.S.C. § 103.
DECISION
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-IN-PART

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