Ex Parte Shipman et al

Patent Trial and Appeal Board

Feb 26, 2016

11774671 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111774,671 0710912007 Scott Robert Shipman
49845 7590 03/01/2016
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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.
2043.444US 1 3686
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
03/01/2016 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT ROBERT SHIPMAN and AARON K. FORTH
Appeal2013-007814
Application 11/774,671
Technology Center 3600
Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-27. We have jurisdiction under 35 U.S.C. § 6(b ).
STATEMENT OF THE DECISION
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
Apr. 29, 2013), Reply Brief ("Reply Br.," filed May 30, 2013), the
Examiner's Answer ("Ans.," mailed May 24, 2013), and the Final Rejection
("Final Act.," mailed Oct. 30, 2012).
2 Appellants identify the real party in interest as "eBay Inc." App. Br. 2.
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Application 11/774,671
fNVENTION
This invention relates to online advertising, and more particularly, to
contextual advertising and merchandizing based on user configurable
preferences. Spec. i-f 1. Claim 1 is illustrative of the subject matter on
appeal:
1. A method comprising:
[a] obtaining user preference information related to advertising;
[b] using a data processor to present one or more pre-defined user
segments to a particular user with whom the segments are
associated, the one or more segments defining how the user has
been previously automatically classified into the one or more
segments based on user behavior or demographics for the
purpose of targeted advertising;
[ c] using the data processor to enable user configuration of the user
preference information and the one or more segments related to
advertising; and
[ d] using the data processor to modify the presentation of
advertising to the user based upon the user configured
preference information and the one or more user-configured
segments.
App. Br. 25, Claims Appendix (with lettering in brackets added).
REJECTIONS
I. Claims 1-3, 5-12, 14--22, and 24--27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lawton (US 2007/0146812 Al, pub.
June 28, 2007) and Eldering (US 2002/0123928 Al, pub. Sept. 5,
2002). Final Act. 2-7.
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Application 11/774,671
II. Claims 4, 13, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lawton, Eldering, and Angiolillo (US
2008/0022300 Al, pub. Jan. 24, 2008). Id. at 8-9.
DISCUSSION
Rejection I
Claims 1-3, 6, 7, 9-12, 15, 16, 18-22, and 24-27
As an initial matter, we note that independent claims 1, 7, 10, 16, 19,
and 25 recite substantially similar subject matter. Appellants argue against
the rejection of claim 1, and rely on those arguments against the rejection of
all pending independent claims. App. Br. 20. Thus, independent claims 7,
10, 16, 19, and 25 shall stand or fall with independent claim 1. We focus
our discussion on independent claim 1.
Appellants contend that a prima facie case of obviousness has not
been established with respect to claim 1 because the Examiner's citations to
Lawton cover two pages, so it is virtually impossible to determine what the
Examiner is relying on for the rejection, and that the prior art fails to
disclose limitations [b] and [c] of claim I. App. Br. 14--19. We disagree.
Although the Examiner cites numerous paragraphs in rejecting the
limitations, we find that the Examiner explicitly analyzes the claim
limitations and provides an explanation of how the claim elements are
interpreted in relation to the prior art. See Final Act. 3-5. For instance, the
Examiner states with regards to limitation [b]
user interests such as in [0096] -[0098], [0113] and [0119], and
in which these various user segments are pre-defined and re-
configurable by the user through dropdown and pull-down
menu selections and inputted omissions (as in Figure 8 and
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Application 11/774,671
[0096]), and [0096] -[0100] and [0127] -[0128] in which
various user behaviors are used to target the ads and select the
segments.
Id. at 3.
Lawton discloses that "some ads that were not relevant in the past
may become relevant due to a change in the reader's interests or
circumstances" or the system may have mistakenly inferred it based on
another command or profile information. Lawton i-f 99. Limitation [b]
requires, in part, presenting one or more pre-defined user segments to a user
with whom the segments are associated. Segments are groupings into which
a user has been placed based on behavior or demographics, such as gender,
age range, income range, location, marital status, buying habits,
etc. Spec. i-f 25. Figure 8 of Lawton presents at least one pre-defined user
"Change" option (e.g., demographics) associated with a user. Figure 9 of
Lawton shows pre-defined user options defining how the particular user (i.e.,
W. B. Surfer) is classified based on the user's demographics (e.g., female,
married, income of $1 OOK + ), plausibly acquired from the user's profile or
inferred from user behavior as discussed supra. As such, we agree with the
Examiner that Lawton discloses limitation [b].
With respect to limitation [ c] of claim 1, the Specification provides
that "enabl[ing] the user to configure" includes the ability to "edit" various
advertising-related parameters or preference information. Spec. i-f 19. Thus,
consistent with limitation [ c] and the Specification, the reader of Lawton is
able to edit interests (preference information) and demographics (one or
more segments such as marital status or income range) due to a change in
behavior or circumstances. See Lawton Fig. 9; see also Ans. 9-15.
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Application 11/774,671
We are not persuaded by Appellants' argument that the claim only
refers to "the same data processor" but the Examiner refers to three different
processors in rejecting the claim. App. Br. 14. First, we note that
Appellants' argument mischaracterizes the Examiner's position. The
Examiner does not rely on Lawton for disclosing three different processors
utilized by a user, publisher, and advertiser in rejecting the claim. Final
Act. 3; see also Ans. 8. Second, Lawton's invention is primarily directed to
a reader (user) of electronic advertising, not unlike Appellants' claimed
invention. Lawton, Abstract. Third, the rejection of claim 1 is based on
obviousness, so all the disclosures in the references must be read not in
isolation, but rather, for what the combined teachings would have suggested
to those of ordinary skill in the art.
Accordingly, we sustain the rejection of independent claim 1, and
independent claims 7, 10, 16, 19, and 25, which fall with claim 1. Because
Appellants do not separately argue the rejection of dependent claims 2, 3, 6,
9, 11, 12, 15, 18, 20-22, and 24--27, we sustain the rejection of these claims
for the same reasons.
Claims 5, 8, 14, and 17
Appellants argue claims 5, 8, 14, and 17 together. App. Br. 20. We
select claim 5 as representative. Thus, claims 8, 14, and 17 stand or fall with
claim 5. See 37 C.F.R. §41.37(c)(l)(iv).
Claim 5 recites, inter alia, "enabling user configuration of the user
preference information related to advertising includes user configuration of
an opt-out of advertising parameter." Id. at 26, Claim App.
Appellants acknowledge that Lawton discloses the ability to omit ads
or a group of ads that are unwanted by a user, but argue that the "distinction
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Application 11/774,671
between opting-out of all ads in a group of ads, and opting out of
preferences, is important." App. Br. 23. Appellants further argue that
"Lawton states that if the reader omits every ad ... the system could
display some omitted ads." Reply Br. 4. In support of these arguments,
Appellants cite to an example embodiment in the Specification. App. Br. 21
(citing Spec. i-f 24 ).
We are not persuaded by Appellants' arguments. Though
understanding the claim language may be aided by the explanations
contained in the specification, it is important not to import into a claim
limitations that are not a part of the claim. For example, "a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment."
SuperGuide Corp. v. DirecTV Enters, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004) (citing Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048,
1054 (Fed. Cir. 1994)). That is the case here. Appellants would like us to
interpret this limitation as an "opt-out of all advertising parameter," but the
claim recites an "opt-out of advertising parameter." "[A] claim construction
analysis must begin and remain centered on the claim language
itself .... " Innova/Pure Water, Inc. v. Safari Water Filtration Systems,
Inc., 381F.3d1111, 1116 (Fed. Cir. 2004). Here, the Appellants' argument
is not commensurate with the limitations of claim 5; the Appellants are
essentially arguing a limitation not recited in the claim. We decline to read
the argued limitation into the claim.
Accordingly, we sustain the rejection of claim 5, and claims 8, 14, and
1 7, which fall with claim 5.
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Rejection II
Claims 4, 13, and 23
Appellants do not separately argue the rejection of dependent claims
4, 13, and 18. As such, we sustain the rejection of claims 4, 13, and 23 for
the reasons set forth above.
DECISION
The Examiner's decision to reject claims 1-27 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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