Ex Parte Rothschild

Board of Patent Appeals and Interferences

Apr 4, 2012

09755541 (B.P.A.I. Apr. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte ANTHONY R. ROTHSCHILD 8
___________ 9
10
Appeal 2011-001313 11
Application 09/755,541 12
Technology Center 3600 13
___________ 14
15
16
Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and 17
MICHAEL W. KIM, Administrative Patent Judges. 18
19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
22
Appeal 2011-001313
Application 09/755,541
2

STATEMENT OF THE CASE1 1
Anthony R. Rothschild (Appellant) seeks review under 35 U.S.C. § 134 2
(2002) of a final rejection of claims 62, 65, 68-70, 73, 75-77, 81, 84, 86-90, 3
and 92-95, the only claims pending in the application on appeal. Oral 4
arguments were presented on March 8, 2011. We have jurisdiction over the 5
appeal pursuant to 35 U.S.C. § 6(b) (2002). 6
The Appellant invented a way of advertising over a wide area network 7
such as the Internet that allows an Internet user to place an advertisement 8
within a personal communication, and provides a recipient of the personal 9
communication requesting additional information with such information 10
regardless of the network device the recipient is using (Specification 1:18-11
22). 12
An understanding of the invention can be derived from a reading of 13
exemplary claim 62, which is reproduced below [bracketed matter and some 14
paragraphing added]. 15
62. A Web host connected to a wide area network (WAN), 16
comprising: 17
[1] a Web server adapted to communicate with a plurality of 18
network devices via said WAN; 19
[2] a memory device connected to said Web server and adapted 20
to store a plurality of advertisements; 21
and 22
[3] an advertising application, 23

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 9, 2010) and Reply Brief (“Reply Br.,” filed October 20,
2010), and the Examiner’s Answer (“Ans.,” mailed August 20, 2010).
Appeal 2011-001313
Application 09/755,541
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wherein said advertising application provides the 1
functions of: 2
[4] permitting a sender 3
to submit communication data 4
to said Web host 5
and 6
to identify at least one recipient 7
of said communication data; 8
[5] using at least a portion of the content of said 9
communication data 10
to automatically select at least one 11
advertisement 12
from said plurality of advertisements; 13
[6] inserting 14
said at least one advertisement 15
and 16
said communication data 17
into a personal electronic communication, 18
wherein said personal electronic 19
communication comprises an e-mail 20
message; 21
[7] sending said personal electronic 22
communication 23
to said at least one recipient 24
via said WAN; 25
and 26
[8] compensating said sender 27
by providing said sender 28
with a free service 29
Appeal 2011-001313
Application 09/755,541
4

in exchange for allowing said Web host to 1
send said personal electronic 2
communication, 3
including said at least one 4
advertisement, 5
to said at least one recipient. 6
The Examiner relies upon the following prior art: 7
Gabbard US 6,205,432 B1 Mar. 20, 2001
Roth US 6,285,987 B1 Sep. 4, 2001
Claims 62, 65, 68-70, 73, 75-77, 81, 84, 86-90, and 92-95 stand rejected 8
under 35 U.S.C. § 103(a) as unpatentable over Gabbard and Roth. 9
ISSUES 10
The issues of obviousness turn primarily on whether it was predictable to 11
select an ad based on textual content and embed such an ad in an email. 12
FACTS PERTINENT TO THE ISSUES 13
The following enumerated Findings of Fact (FF) are believed to be 14
supported by a preponderance of the evidence. 15
Facts Related to the Prior Art 16
Gabbard 17
01. Gabbard is directed to an advertisement system and method for 18
inserting into an end user communication message a background 19
reference to an advertisement causing an advertisement image to 20
be tiled, or watermarked, across an end user screen behind the text 21
of an e-mail message or public posting. The message server 22
Appeal 2011-001313
Application 09/755,541
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receives an SMTP or NNTP message and transmits an SMTP, 1
POP3 or NNTP message with an HTML portion for a respective 2
HTML-compatible client. Alternately, the message server 3
transmits the entire message in HTML to be used as a stand-alone 4
web page or as a portion of a larger page employing frames or 5
tables. Gabbard 4:6-67. 6
02. Gabbard describes offering a free web-email service in return for 7
using this service. Gabbard 10:8. 8
Roth 9
03. Roth is directed to providing advertisements from a central server 10
to viewers who access web sites. A data base includes 11
information about viewers, information about the characteristics 12
of particular web sites and other information relevant to which 13
advertisements should be displayed for particular viewers. Roth 14
evaluates, in real time, bids submitted by different advertisers in 15
order to determine which particular advertisement will be 16
displayed to a viewer. Roth 1:66 – 2:10. 17
04. The fact that a viewer has accessed a web page which has an 18
HTML reference to the advertising server is referred to as a view 19
opportunity or view-op. The characteristics of each view-op 20
include the characteristics of the particular web site and web page 21
being accessed and the characteristics of the viewer including 22
demographic information about the viewer and information as to 23
what other sites this viewer has accessed in various periods of 24
time. Roth 2:11-19. 25
Appeal 2011-001313
Application 09/755,541
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05. Each advertiser provides one or more "proposed bids" which 1
specify how much the advertiser is willing to pay for displaying a 2
particular advertisement in response to a view-op with certain 3
characteristics. Each proposed bid can specify a price or amount 4
that the advertiser is willing to pay for the opportunity to display 5
an advertisement (a) to a viewer who has a particular set of 6
characteristics and (b) on a web site and web page that meets a 7
particular set of criteria. Each proposed bid can be dependent 8
upon or require satisfaction of various criteria which must be met 9
in order for a bid of a particular amount to be submitted. Roth 10
2:20-47. 11
06. When a view-op arises, the bidding agents evaluate the 12
characteristics of the view-op compared to the specifications in 13
proposed bids and the bidding agents submit bids to the bid 14
selection logic where appropriate. Next, the bid selection logic 15
selects the highest bid from the various available bids and the 16
advertisement which is specified in the highest bid is displayed. 17
Roth 2:54-65. 18
07. Roth describes using words that must be on the page viewed as 19
criteria for ad bidding. Roth 14:23-24. 20
ANALYSIS 21
The Examiner applied Gabbard to show it was known to insert an ad in 22
an e-mail (FF 01) and applied Roth to show it was known to rely on content 23
to select an ad (FF 03-07). We find the Examiner has completely and 24
properly responded to the arguments in the Appeal Brief. Consequently, we 25
Appeal 2011-001313
Application 09/755,541
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adopt the Examiner’s findings of fact and analysis from Answer 3-14 and 1
reach similar legal conclusions. The issues thus reduce down to those 2
presented in the Reply Brief. 3
We are not persuaded by the Appellant’s argument that 4
Roth does not use content data to select an advertisement from 5
a plurality of advertisements, wherein the selected 6
advertisement is inserted into a web page 7
Reply Br. 3-7. Appellant contends that Roth relies on bids to select ads. 8
These bids, however, are formed based on criteria including page content. 9
FF 04-07. The limitation at issue is “using at least a portion of the content of 10
said communication data to automatically select at least one advertisement.” 11
There is no further narrowing of the manner or level of use. Clearly using a 12
portion of the content to form a bid which in turn is used to select an 13
advertisement is within the scope of the claimed use. 14
We are not persuaded by the Appellant’s argument that 15
[i]t would not have been obvious to combine the Internet 16
advertising system of Roth with the email advertising system of 17
Gabbard 18
Reply Br. 7-14. Again, the Examiner applied Gabbard to show it was 19
known to insert an ad into an e-mail and Roth to show it was known to select 20
the ad based on the textual content of a message. Roth is directed to 21
selecting an ad for internet usage, and Gabbard is directed to imbedding such 22
an ad in an email. Thus, Roth is directed to ad selection and Gabbard to ad 23
delivery. One of ordinary skill in the marketing arts knew that both 24
selecting the appropriate ad and delivery vehicle were critical in ad 25
effectiveness. Thus, it was predictable to select references that described 26
Appeal 2011-001313
Application 09/755,541
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each of ad selection and delivery, and apply both to ensure such 1
effectiveness. 2
The Appellant also contends as part of this argument, that one of 3
ordinary skill would not have known how to extract the words in Gabbard’s 4
email for use in Roth’s selection criteria. The Examiner found that simple 5
parsing would do so. Appellant contends there is no evidence that one of 6
ordinary skill knew how to perform such parsing. 7
The Examiner was simply taking notice of the fact that parsing is one of 8
the first techniques undergraduate computer science majors learn, and is 9
typically a freshman or sophomore level exercise. One of ordinary skill out 10
of school and practicing the internet programming arts would have been all 11
too familiar with parsing text to extract words. This is in fact evidenced by 12
Roth’s very use of web pages and Gabbard’s very use of email. Web pages 13
are written in HTML, which requires parsing to display on a screen. Email 14
contains fields directing the message to a particular computer and user, also 15
requiring parsing to extract the data in the fields. 16
We are not persuaded by the Appellant’s claim 88 argument that 17
THE PRIOR ART DOES NOT DISCLOSE USING 18
CONTENT OF AN EMAIL AND ADVERTISEMENT-TYPE 19
DATA TO SELECT AN ADVERTISEMENT FROM A 20
PLURALITY OF ADVERTISEMENTS AND INSERTING 21
THE SELECTED ADVERTISEMENT INTO THE EMAIL 22
Reply Br. 15-17. This argument is similar to that made in support of 23
claim 62. Claim 88 depends from claim 87, also similar to claim 62, and 24
recites further 25
allowing a sender to select a type of advertisement that can be 26
included in said personal communication by submitting 27
Appeal 2011-001313
Application 09/755,541
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advertisement-type data, said sender-provided data further 1
comprising said advertisement-type data; and using said at least 2
a portion of said communication data and said advertisement-3
type data to select said at least one of said plurality of 4
advertisements. 5
Appellant contends that Roth’s user is not the sender. That is not the 6
issue. Gabbard clearly has two senders, the party sending the email and the 7
party embedding the ad which is also sent. The party who selects the ad to 8
be sent is a sender at least in the sense the ad selected by that party is sent. 9
CONCLUSIONS OF LAW 10
The rejection of claims 62, 65, 68-70, 73, 75-77, 81, 84, 86-90, and 92-11
95 under 35 U.S.C. § 103(a) as unpatentable over Gabbard and Roth is 12
proper. 13
DECISION 14
The rejection of claims 62, 65, 68-70, 73, 75-77, 81, 84, 86-90, and 92-15
95 is affirmed. 16
No time period for taking any subsequent action in connection with this 17
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 18
§ 1.136(a)(1)(iv) (2007). 19
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AFFIRMED 21
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MP 25