Ex Parte Stetson et al

Patent Trial and Appeal Board

Jun 28, 2016

10092369 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/092,369 0310612002
30734 7590 06/30/2016
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT A VE. N.W.
WASHINGTON, DC 20036-5304
FIRST NAMED INVENTOR
Samantha H. Stetson
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.
12000097-0004-002 8236
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
eofficemonitor@bakerlaw.com
edervis@bakerlaw.com
patents@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMANTHA H. STETSON, CARA E. D' AMATO,
CHARLES D. WETMORE, and PETER LEE
Appeal2014-002741
Application 10/092,369 1
Technology Center 3600
Before PATRICK R. SCANLON, MICHELLE R. OSINSKI, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1, 8, 11-13, 16-19, 21, 22, 24, 26, 31, 33, 35,
37, 72, and 74.2 We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing was held telephonically on June 23, 2016.
We AFFIRM.
1 According to Appellants, the real party in interest is IAC Search & Media,
Inc. (Appeal Br. 3.)
2 The Office Action Summary mailed November 16, 2012, inadvertently
omits claims 22 and 33 from the list of claims on appeal. (See Final Action
1, 2.)
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Application 10/092,3 69
CLAIMED SUBJECT MATTER
Appellants' claimed "invention relates generally to a method and
apparatus for displaying a message in conjunction with an advertisement on
a World Wide Web page." (Spec. 1.)
The independent claims on appeal are claims 1, 31, 72, and 74.
Claim 1 is illustrative. It recites:
1. A computer-implemented method comprising:
determining a banner advertisement to be displayed on a
web page, the web page including content other than the banner
advertisement;
determining a message to be displayed on the web page in
which the message is thematically related to the banner
advertisement;
determining targeting criteria associated with the message;
receiving a request to serve the web page from a user;
receiving personal information about the user, the personal
information including a name associated with the user;
serving the web page for display to the user;
serving the banner advertisement for display to the user on
a portion of the web page;
tailoring the message based, at least in part, on the
targeting criteria and the personal information to include a
portion of personal information, including the name associated
with the user, and direct the user's attention to the banner
advertisement; and
if the targeting criteria includes the user name, serving the
tailored message for display to the user on the web page separate
from the banner advertisement, wherein the tailored message, at
least a portion of the content other than the banner advertisement
included in the web page, and the banner advertisement are
simultaneously displayed to the user.
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Application 10/092,3 69
REJECTIONS
Claims 1, 31, 72, and 74 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 1, 8, 11-13, 16-19, 21, 22, 24, 26, 31, 33, 35, 37, 72, and 74
are rejected under 35 U.S.C. § 103(a) as unpatentable over Thomas (US
6, 128,663, iss. Oct. 3, 2000) and Official Notice.
ANALYSIS
The 35 U.S.C. § 112, second paragraph, Rejection
Independent claims 1, 31, 72, and 74 are rejected under§ 112, second
paragraph, "because the 'if statement' makes the claim indefinite." (Final
Action 2.) Specifically, the Examiner determines that if "the targeting
criteria doesn't include a user's [name,] then the tailored message including
the banner ad will not be presented to the user and therefore any steps after
the 'If statement' doesn't [sic] necessarily have to take place." (Id.)
Appellants do not appeal this rejection. (See Appeal Br. 8.)
Therefore, we summarily affirm the§ 112, second paragraph, rejection of
claims 1, 31, 72, and 74.
The§ 103 Rejection
With regard to the rejection under§ 103(a), Appellants do not
separately argue claims 1, 8, 11-13, 16-19, 21, 22, 24, 26, 31, 33, 35, 37,
72, and 74. We elect claim 1 as representative. These claims stand or fall
together with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner relies on Thomas in rejecting claim 1. (See Final
Action 2--4.) Thomas relates to "banner advertising on the Internet whereby
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Application 10/092,3 69
the advertising banners are able to be targeted to the user." (Thomas,
Abstract.) Specifically, Thomas teaches that while it was known to select
banner advertisements related to the content of the displayed web page (id.
at col. 1, 11. 32--42), the problem to be solved by the invention relates to
"improved banner advertising on the Internet whereby the advertising
banners displayed or other portions of a web page are targeted and/or
customized to a user so that the web page is more effective" (id. at col. 1,
11. 59---62).
Anonymity
Appellants argue "Thomas is silent and therefore does not explicitly
teach the limitation of 'tailoring the message based, at least in part, on the
targeting criteria and the personal information to include a portion of
personal information, including the name associated with the user'."
(Appeal Br. 10.) Specifically, Appellants argue that "[t]he Title of the
invention, the specification, and all independent claims in Thomas explicitly
requires [sic] that the requester's identity remains anonymous." (Id. at 12.)
Thus, Appellants argue, "Thomas explicitly teaches away from the claimed
invention." (Id. at 11.)
The Examiner disagrees and answers
that Thomas teaches on col. 4, lines 15-20 the demographic
information includes "user's preferred greeting name" which is
a personal name associated with that particular user. . . . Thomas
teaches using demographics and the like to customize an
appropriate variant of the requested page/ greeting message
(tailored message). . . . It would have been obvious to have
replaced the user's demographic with the user's name in order to
properly address/refer to the user in the greeting (tailored
message). Therefore, Thomas doesn't teach away from using a
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Application 10/092,3 69
user's name since a greeting name is used in Thomas to address
the user, which is a name associated with the particular user.
(Answer 1-2.)
We agree with the Examiner. In relevant part, Thomas discloses that
"demographic information can be provided in a demographic identifier.
As one of many possible examples, a demographic identifier ... could
indicate that the user is a married[] male of age 30-35 and earning 30-50
thousand dollars per year." (Thomas, col. 11, 11. 39--46.) Thomas further
discloses that "[t]he demographics identifier could also contain (additionally
or exclusively) other information about the user beside demographic
categories. Examples of such other information are: hobbies; user's
preferred greeting name; interests; user preferences, etc." (Id. at col. 12, 11.
7-11, emphasis added; see also id. at col. 4, 11. 15-20.)
In short, while the title and claims in Thomas refer to user anonymity,
the written description of Thomas is broader. It discloses providing the
"user's preferred greeting name," to a remote server. (See, e.g., id. at col. 4,
11. 15-20, 53---63.)
Additionally, Appellants do not persuasively argue why a "user's
preferred greeting name," as disclosed in Thomas, is not a "name associated
with the user" as recited in claims 1, 31, 72, and 74. Thus, we are not
persuaded that Thomas is silent on or teaches away from use of a "name
associated with a user."
Targeting Criteria and Thematic Relation
Appellants next argue that "Thomas fails to disclose both determining
targeting criteria associated with a message that is thematically related ... to
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Application 10/092,3 69
an advertisement and tailoring a message based on said targeting criteria."
(Appeal Br. 13.)
The Examiner disagrees and finds that Thomas teaches that a
"requested page often includes an advertising banner" and that the banner is
not chosen "randomly, but in accordance with the demographics identifier."
(Answer 2, quoting Thomas, col. 4, 11. 58---65.) Additionally, Thomas
discloses that "[ w ]hen customization of the page is determined to be both
requested and available, the retrieved page is customized 416 in accordance
with the demographics identifier. There are many examples of
customization, including adding a greeting, selecting an appropriate variant
page, selecting an appropriate advertisement to display." (Thomas, col. 8,
11. 61---66; see Final Action 3.) Thus, in the context of improving advertising
efficiency from merely selecting a banner advertisement in accordance with
a user's displayed search results (Thomas, col. 1, 11. 41--46), Thomas teaches
customization in accordance with the demographics identifier by selecting a
greeting, an appropriate web page and an appropriate banner advertisement.
Appellants do not point to a definition of "targeting criteria."
However, the Specification states, by way of example, that "targeting criteria
may limit a certain advertisement and/or message to being displayed to a
user only when the user is male, under the age of thirty, etc." (Spec. 9.)
Thus, under a broadest reasonable interpretation, "targeting criteria"
includes demographic information including gender and age. Thomas
discloses that the demographics identifier includes gender and age. (See
Thomas col. 11, 11. 39--46.)
In other words, Thomas teaches determining targeting criteria
(demographics identifier) associated with a message (variant of the
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Application 10/092,3 69
requested web page including a greeting) that is thematically related to an
advertisement (a web page being thematically related to a banner
advertisement is a starting point for the invention of Thomas). (See Final
Action 3; Thomas, col. 1, 11. 41--46, col. 4, 11. 58---65, col. 8, 11. 61-66; see
also Appeal Br. 13.) Additionally, Thomas teaches tailoring a message
based on the targeting criteria (variant of the requested web page including a
greeting chosen in accordance with the demographics identifier). (See Final
Action 3; Thomas, col. 4, 11. 58---65; see also Appeal Br. 13.) Therefore, we
are not persuaded of Examiner error.
O(ficial Notice
Finally, Appellants argue that the Examiner improperly took Official
Notice of five facts. (Appeal Br. 15.) However, Appellants do not state why
the noticed facts would not have been considered well known in the art or
common knowledge. (See id. at 14--16.) Nor do Appellants state why, in
view of the noticed facts, the claims would not have been obvious. (See id.)
We agree with the Examiner that "the claims were rejected under the
doctrine of 103 and therefore should be argued accordingly. In addition,
Appellant hasn't provided a proper challenge that would at least cast
reasonable doubt that the known facts weren't known prior to Applicant's
invention. See MPEP 2144.03." (Answer 3.)
Therefore, we are not persuaded that the Examiner improperly took
Official Notice.
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Application 10/092,3 69
DECISION
The Examiner's rejection of claims 1, 31, 72, and 74 under 35 U.S.C.
§ 112, second paragraph, is summarily affirmed.
The Examiner's rejection of claims 1, 8, 11-13, 16-19, 21, 22, 24, 26,
31, 33, 35, 37, 72, and 74 under 35 U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED
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