Ex Parte Patton et al

Patent Trial and Appeal Board

Mar 26, 2018

13777914 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
131777,914
114629 7590
Bookoff McAndrews
2020 K Street, NW
Suite 400
FILING DATE
02/26/2013
03/28/2018
Washington, DC 20006
FIRST NAMED INVENTOR
Matthew M. Patton
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.
00008-0002-00000 4285
EXAMINER
BEHESHTI, BRENDON
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
usptomail@bomcip.com
Kross@bomcip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW M. PATTON and SETH DEMSEY
Appeal2016-002845 1
Application 13/777 ,914 2
Technology Center 3600
Before MURRIEL E. CRAWFORD, MATTHEWS. MEYERS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-28. We have jurisdiction under
§ 6(b ). We REVERSE.
1 Our Decision references Appellants' Specification ("Spec.," filed Feb. 26,
2013), Appeal Brief ("Appeal Br.," filed July 16, 2015), and Reply Brief
("Reply Br.," filed Dec. 23, 2015), as well as the Examiner's Final Office
Action ("Final Act.," mailed Nov. 20, 2014), Advisory Action ("Adv. Act.,"
mailed Feb. 26, 2015), and Answer ("Ans.," mailed Oct. 23, 2015).
2 Appellants identify AOL Advertising Inc. as the real party in interest.
Appeal Br. 2.
Appeal2016-002845
Application 13/777,914
SUBJECT MATTER ON APPEAL
The invention "relate[ s] generally to accessing Internet cookies and
performing electronic advertising" and, more specifically, to "systems and
methods for targeting electronic advertising based on first party Internet
cookies." Spec. i-f 1. Claims 1, 11, 21, and 25 are the independent claims on
appeal. Independent claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A computer-implemented method for accessing first party
Internet cookies, the method including:
receiving, over an electronic network, a request for an
electronic advertisement or an Internet cookie, in response to a
user requesting content from a subdomain of an advertiser
domain associated with the user viewing a website of the
advertiser;
sending, from an ad server operated by an ad network to a
device associated with the user, an Internet cookie that is
accessible by the ad server and that has the subdomain of the
advertiser domain;
receiving, from the device associated with the user, a
request for content from a domain of a website of an online
publisher, the website of the online publisher including code for
a universal ad call configured to cause a browser of the user to
make server calls to a plurality of subdomains associated with
cookies set by advertisers, the universal ad call being provided to
a plurality of online publishers, one of which is the on line
publisher;
receiving, from the device associated with the user, upon
transmitting the website of the online publisher to the user and
based on execution of the universal ad call by the browser of the
user, a plurality of server calls to a plurality of subdomains
associated with cookies set by advertisers, one of which is the
subdomain of the advertiser domain; and
upon identifying, by an ad server receiving the plurality of
server calls, that the device associated with the user has stored
the Internet cookie having the subdomain of the advertiser
2
Appeal2016-002845
Application 13/777,914
domain, accessing, by the ad server, data stored in the Internet
cookie sent to the device associated with the user.
Amendment filed Sept. 22, 2014. 3
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Neal et al. ("Neal") US 2006/0282327 Al Dec. 14, 2006
Goldspink et al. ("Goldspink") US 2009/0024737 Al Jan. 22, 2009
Hanson et al. ("Hanson") US 2010/0299434 Al Nov. 25, 2010
REJECTIONS
The Examiner rejects the claims on appeal as follows:
I. claims 1-28 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement;
II. claims 1-28 under 35 U.S.C. § 112, second paragraph, as indefinite;
III. claims 1, 2, 4--8, 10-12, 14--18, 20, 25, 26, and 28 under 35 U.S.C.
§ 103(a) as unpatentable over Neal and Goldspink; and
IV. claims 3, 9, 13, 19, 21-24, and 27 under 35 U.S.C. § 103(a) as
unpatentable over Neal, Goldspink, and Hanson.
3 The Claims Appendix of the Appeal Brief does not include the claims on
appeal. More specifically, the Claims Appendix includes the amended
claims filed on February 6, 2015, after the Final Office Action, which the
Examiner did not enter (Adv. Act. 1 ). As such, the claims on appeal are the
claims the Examiner considers in the Final Office Action, namely the claims
as amended on September 22, 2014 (Final Act. 1 ).
3
Appeal2016-002845
Application 13/777,914
ANALYSIS
Rejection I
The Examiner finds the limitation reciting "code for a universal ad
call configured to cause ... "in each of the independent claims lacks written
description support. Final Act. 3. According to the Examiner, although the
Specification explains that code for a universal ad call exists, the
Specification does not disclose or describe any specific code. Id. (citing
Spec. i-f 50). The Examiner also finds the description of the disputed
limitation is inadequate because the inventor explained during an interview
that the challenge in implementing the invention was to figure out how to
write the code for the universal ad call. Ans. 9.
The test for determining cornp1iance with the written description
requirement is "whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane) (citations omitted). Here, the Examiner's position is that the
disclosure does not convey to those skilled in the art that the inventors had
possession of "code for a universal ad call configured to cause ... ," absent
a disclosure or description of the code. We, however, agree with Appellants
that the disclosure provides sufficient support for the disputed limitation.
Appeal Br. 20-25 (citing Spec. i-fi-123, 24, 33-36, 42, 43, 50); Reply Br. 4--
12.
Initially, we note the Examiner's finding that the disputed limitation
lacks written description support is based on certain statements made by the
inventor during an interview. According to the Examiner:
4
Appeal2016-002845
Application 13/777,914
The interview yielded dispositive admissions, specifically
that (1) the challenge in implementing the invention is in figuring
out how to write the code that is placed on the publisher's website
(i.e. the "universal ad call"); and (2) it took the inventor - i.e.
AOL - approximately 3-4 years of research to figure out how to
write the code to implement the idea of the invention; and that
(3) at the time of interview, roughly 1 year and 8 months after
the filing of the application, AOL had only managed to develop
a prototype.
Ans. 9. These statements simply describe the actual reduction to practice of
the invention, not to mention there is no indication that the amount of time
and level of difficultly associated with this reduction to practice is atypical
for this type of invention.
Moreover, our reviewing court has explained that we evaluate whether
an inventor had possession of the claimed invention by reviewing the
disclosure itself from the perspective of a person of ordinary skill in the art.
Ariad, 598 F.3d at 1351 ("[T]he test requires an objective inquiry into the
four corners of the specification from the perspective of a person of ordinary
skill in the art."). Here, a person of ordinmy skill in the art would be skilled
in the cmnputer implementation of targeted electronic advertising, which
includes knowledge of browsers, cookies, and ad calls. Spec. i-fii 1-5.
From the vantage point of such a person of ordinary skill, we tum to
the disclosure. As the Examiner acknowledges, the Specification describes
that the universal ad call is code. Final Act. 3 (citing Spec. i-f 50 ("a
universal ad call containing code")); see also Spec. i-f 33 ("an ad call
including instructions, or code, for receiving an ad network cookie"). The
Specification also explains that the code for the ad call, which may be a
universal ad call, may be JavaScript code. Spec. i-fi-142, 47. Furthermore, the
"Background" section of the Specification explains that an ad call is known
5
Appeal2016-002845
Application 13/777,914
as code embedded on a browser to pull content, namely ads, from other
domains. Id. i-f 2. The Specification more specifically describes that an ad
call checks for the presence of cookies and then passes any such cookie data
to the network's ad servers to decide which ad to serve. Id. i-f 23. The
Specification additionally explains that a "universal ad call" is an ad call
disseminated to multiple publishers within a network of the ad network. Id.
,-r 42.
In short, the Specification describes that a universal ad call is an ad
call, i.e., code that is known to be embedded on a browser to pull ads from
other domains, and is disseminated to multiple publishers within a network.
Given that a person of ordinary skill in the art would be skilled in the
computer implementation, i.e., coding, of targeted electronic advertising, the
disclosure reasonably conveys to such a person of ordinary skill that the
inventors had possession of "code for a universal ad call configured to
cause ... "at the time of the invention. In other words, although the
Specification does not include the actual code for the universal ad call, the
Specification nonetheless conveys to those skilled in the art that the
inventors had possession of the disputed limitation. We, therefore, do not
sustain the Examiner's rejection of claims 1-28 under 35 U.S.C. § 112, first
paragraph.
Rejection II
The Examiner determines that the limitation reciting "code for a
universal ad call configured to cause" in each of the independent claims
renders the claims indefinite. Final Act. 4; Ans. 12-15. More specifically,
the Examiner construes this limitation as a means-plus-function limitation
6
Appeal2016-002845
Application 13/777,914
subject to 35 U.S.C. § 112, sixth paragraph, and determines that the
Specification does not disclose an algorithm corresponding to the recited
functions. Final Act. 4; Ans. 12-15.
Appellants argue that the Examiner has not made a prima facie case of
indefiniteness because the Examiner has not determined whether the claimed
function can be achieved by a general purpose computer or requires special
programming. Appeal Br. 26; Reply Br. 13. Appellants also argue that the
claims are not indefinite because the Specification discloses both a general
purpose computer and an algorithm. Appeal Br. 26-27 (citing Spec. i-fi-125,
31, 42); Reply Br. 14.
Given that the Examiner's determination of indefiniteness is premised
solely on construing the disputed limitation under 35 U.S.C. § 112, sixth
paragraph, we must consider first whether the disputed limitation invokes
§ 112, sixth paragraph. Here, the disputed limitation does not recite "means
for" or "step for," so there is a rebuttable presumption that the limitation
should not be construed in accordance with§ 112, sixth paragraph.
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en
bane). The Examiner has not rebutted this presumption.
The disputed limitation does not simply recite "code," but instead
recites "code for a universal ad call." The Examiner does not explain, and
we fail to see, why "code for a universal ad call" is a substitute for the
non-descriptive term "means" or "step." For example, Appellants'
Specification explains that an ad call checks for the presence of cookies and
then passes any such cookie data to the network's ad servers to decide which
ad to serve. Spec. i1 23. As such, "ad call" connotes a particular set of
instructions, i.e., code. Moreover, to the extent the Examiner relies on the
7
Appeal2016-002845
Application 13/777,914
inventor's statement during an interview that the challenge was to figure out
how to write the code for the universal ad call (Ans. 15), such a statement
does not show that "code for a universal ad call" is a synonym for the
generic term "means" or "step."
In view of the foregoing, the Examiner has not shown that the
limitation reciting "code for a universal ad call configured to cause" should
be construed under 35 U.S.C. § 112, sixth paragraph. Absent such an
invocation, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 112, second paragraph.
Rejection III
We are persuaded the Examiner has not shown that the combined
teachings of Neal and Goldspink would have resulted in "code for a
universal ad call configured to cause a browser of the user to make server
calls to a plurality of subdomains," as recited in independent claim 1.
Appeal Br. 31-33; Reply Br. 15-17.
In rejecting independent claim 1, the Examiner acknowledges that
Neal does not disclose using browser executed scripting code to cause the
browser to make server calls to a plurality of subdomains, and relies on
Goldspink for such a teaching. Final Act. 8-9. In particular, the Examiner
relies on Goldspink' s teaching of tying together information collected from
different web servers located in different domains. Id. at 9. Although
Goldspink may teach collecting information from web servers in different
domains, we fail to see how Goldspink teaches the claimed universal ad call.
Referring to Goldspink's Figure 2 and its accompanying description,
at steps STl and ST2, a user's browser 7 requests a page 8 from web
8
Appeal2016-002845
Application 13/777,914
server IA. Goldspink i-f 111, Fig. 2. At step ST3, page 8 sends an http
request for a page component from first collection server 4A, and in
response to this request, at step ST4, a first party cookie in domain A is
placed on browser 7. Id. i-f 116, Fig. 2.
In steps ST5 and ST6, browser 7 navigates to a page 8 supplied by
web server IB. Id. i-f 118, Fig. 2. At step ST8, page 8 sends a request for a
page component from second collection server 4B. Id. At this point, there is
no session context in domain B because the first party cookie placed on the
browser is from domain A. Id. i-f 118.
To provide a session context to domain B, second collection server 4B
checks the http referrer information included in the request, which indicates
that the page sending the request was reached via a link in a page in
domain A. Id. i-fi-1 120-121. Second collection server 4 B then consults a list
of domains being monitored and determines that domain A is on the list.
Id. i-fi-1122-123. Consequently, at step ST9, second collection server 4B
sends a redirect message to browser 7 indicating that first collection
server 4A should be used, which, at step STIO, causes browser 7 to resend
the request originally sent to second collection server 4B to first collection
server 4A. Id. i-fi-1123-124, Fig. 2. Although second collection server 4B
causes browser 7 to redirect the http request to first collection server 4A as
part of the method for tying together information collected from different
web servers, page 8 supplied by web server IB sent the http request, i.e.,
server call, to only second collection server 4B.
Despite the fact that Goldspink teaches web pages in different
domains sending http requests, i.e., making server calls, Goldspink teaches
that each web page sends an http request to a respective server. As such, the
9
Appeal2016-002845
Application 13/777,914
Examiner has not shown that Goldspink teaches a website having "code for
a universal ad call configured to cause a browser of the user to make server
calls to a plurality of subdomains," as recited in independent claim 1.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 1 and dependent claims 2, 4--8, and 10 under 35 U.S.C.
§ 103(a) as unpatentable over Neal and Goldspink. Independent claims 11
and 25 recite the same limitation as independent claim 1 discussed above,
and the Examiner' rejection of independent claims 11 and 25 suffers from
the same deficiency. Final Act. 8-11. For the same reasons as independent
claim 1, we do not sustain the Examiner's rejection of independent claims
11, 21, and 25 and dependent claims 12, 14--18, 20, 26, and 28.
Rejection IV
Independent claim 21 includes the same disputed limitation as
independent claim 1, and the Examiner's rejection of independent claim 21
suffers from the same deficiency. Final Act. 17-18. Accordingly, for the
same reasons as independent claim 1, we do not sustain the Examiner's
rejection of independent claim 21 and claims 22-24 depending therefrom
under 35 U.S.C. § 103(a) as unpatentable over Neal, Goldspink, and Hanson.
Each of claims 3, 9, 13, 19, and 2 7 depends from one of independent
claims 1, 11, and 25, and the Examiner does not rely on Hanson in any way
that cures the deficiency of the rejection of the corresponding independent
claims. We, therefore, do not sustain the Examiner's rejection of claims 3,
9, 13, 19, and 27.
10
Appeal2016-002845
Application 13/777,914
DECISION
The Examiner's decision to reject claims 1-28 under 35 U.S.C. § 112,
first paragraph, is reversed.
The Examiner's decision to reject claims 1-28 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner's decision to reject claims 1-28 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
11