Ex Parte Strauss et al

Patent Trial and Appeal Board

Jun 16, 2016

13101138 (P.T.A.B. Jun. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/101,138 05/04/2011 Jonathan H. Strauss
20872 7590 06/20/2016
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482
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.
177762000300 4391
EXAMINER
HATCHER, DEIRDRE D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
06/20/2016 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):
EOfficeSF@mofo.com
PatentDocket@mofo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN H. STRAUSS, COREY W. REECE,
and MICHAEL B. ORR 1
Appeal2014-004859
Application 13/101, 13 8
Technology Center 3600
Before EDWARD A. BROWN, LEE L. STEPINA, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jonathan H. Strauss et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's final rejection of claims 2-15. 2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the Real Party in Interest is Snowball Factory,
Inc. Br. 3.
2 Claims 1 and 16-24 are cancelled. Id. at 5. The Examiner did not enter an
amendment submitted after the Final Office Action, adding new claims. Id.
Appeal2014-004859
Application 13/101,138
CLAIMED SUBJECT MATTER
The invention concerns social media marketing. Spec., Abstract.
Claim 2, the sole independent claim, is illustrative of the subject matter on
appeal. Claim 2 recites:
2. A computer-implemented method comprising:
tracking and distinguishing among a plurality of social
media share actions initiated by a common sharer relating to
content on a particular destination page of a website of a
publisher that is a subscriber of a social media campaign tracking
platform, by one or more routines running on one or more
computer systems of the social media campaign tracking
platform, by assigning to each of the plurality of social media
share actions a unique tracking link though which consumers are
able to access the content, wherein the plurality of unique
tracking links facilitate capturing, by the social media campaign
tracking platform, substantially contemporaneously with
initiation of the plurality of social media share actions both (i)
contextual metadata that is specific to a particular social media
channel and (ii) proprietary contextual metadata that is specific
to the subscriber; and
facilitating data analysis in relation to the plurality of
social media share actions by providing statistics to the
subscriber, by the one or more routines, relating to interactions
by consumers with the plurality of unique tracking links.
Br. 27, Claims App. (emphasis added).
REJECTIONS
The claims stand rejected as follows:
I. Claims 2, 3, 5-7, and 9-11under35 U.S.C. § 103(a) as
unpatentable over Curtin (US 2010/0318611 Al, pub. Dec. 16,
2
Appeal2014-004859
Application 13/101,138
2010), Bladel (US 2011/0251895 Al, pub. Oct. 13, 2011), and
Erhart (US 2011/0125793 Al, pub. May 26, 2011). 3
II. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Curtin,
Bladel, Erhart, and Barber (US 2008/0294711 Al, pub. Nov.
27, 2008).
III. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Curtin,
Bladel, Erhart, Chan (US 2011/0258050 Al, pub. Oct. 20,
2011), and Zuckerberg (US 7,945,653 B2, iss. May 17, 2011).
IV. Claims 12-15 under 35 U.S.C. § 103(a) as unpatentable over
Curtin, Bladel, Erhart, and Brandsetter (US 2011/0313815 Al,
pub. Dec. 22, 2011).
ANALYSIS
Obviousness over Curtin, Blade!, and Erhart- Claims 2, 3, 5-7, and 9-11
The Examiner finds that Curtin discloses substantially a computer-
implemented method as recited in claim 2. Final Act. 3. The Examiner
finds that although Curtin discloses "tracking share actions associated with
sharers," Curtin does not disclose explicitly "assigning to each of the
plurality of social media share actions a unique tracking link though which
consumers are able to access the content," as claimed. Id. at 3--4. The
Examiner finds that Bladel teaches "generating a shortened URL which
includes a unique user identifier," which is "equivalent to a tracking link,"
when a user submits a URL to be shared. Id. at 4 (citing Bladel i-f 45). The
3 The heading for this rejection in the Final Office Action does not list
claims 9-11, but the discussion of the rejection after the heading indicates
that these claims are also included. See Final Act. 3, 6.
3
Appeal2014-004859
Application 13/101,138
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of the invention to modify Curtin in light of
Bladel' s teachings "to better facilitate the tracking of online advertisements
resulting from URLs submitted by the user." Id. (citing Bladel i-f 45).
In an Advisory Action mailed after the Final Office Action, the
Examiner finds that Curtin "generates a link based on multiple identifiers
associated with shared content ... and can also use the identifiers to track
share application and resulting clicks and views [and, therefore,] provides
the ability to uniquely track each share action associated with a sharer."
Adv. Act. 2 (mailed June 14, 2013). The Examiner finds that because the
claim does not define the phrase "unique tracking link," the phrase is
interpreted broadly to include links that identify an individual uniquely, links
that facilitate generation of unique content, or links that facilitate tracking of
a share action. Ans. 10-12.
Appellants contend that both Curtin and Bladen teach "user-centric
tracking" in which a single user-identifying tracking link is assigned to
social media share action across multiple social media channels. Br. 11-14,
16 (emphasis omitted). Appellants contend that claim 2 requires, by
contrast, that each social media share action "receive[ s] a different tracking
link," i.e., a "unique tracking link" as claimed. Id. at 13.
We are persuaded by Appellants' argument. Although claim terms
are given their broadest reasonable interpretation during examination, that
interpretation must be reasonable in light of the specification. "The
broadest-construction rubric ... does not give the PTO an unfettered license
to interpret claims to embrace anything remotely related to the claimed
4
Appeal2014-004859
Application 13/101,138
invention." In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010).
"Even under the broadest reasonable interpretation, the [USPTO' s]
construction 'cannot be divorced from the specification and the record
evidence,' and 'must be consistent with the one that those skilled in the art
would reach.' A construction that is 'unreasonably broad' and which does
not 'reasonably reflect the plain language and disclosure' will not pass
muster." Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir.
2015) (citations omitted).
The Examiner's claim construction appears to be based improperly on
the claims alone. Appellants' Specification discloses consistently that a
different tracking link, e.g., a "unique tracking link," is assigned to each
social media share action, so that data can be captured independently for
each social media channel through which content is shared. See, e.g., Spec.
i-f 71 ("[T]he present invention create[ s] a unique tracking link 440a-e to be
embedded within or otherwise associated with each share 420a-e .... In
this manner, traffic data [is] captured independently for each share 420a-e
thereby allowing the subscriber to combine and/or compare the resulting
traffic data across many different channels and accounts."). For example,
the Specification discloses that a unique tracking link "is generated by
concatenating a domain ... and a short sequence of characters," which are
"guaranteed unique for that domain." Id. i-f 84; see also id. i-fi-129 ("Each
tracking link represents the unique social media action within which it is
contained."), 61 ("The tracking link is a unique URL."), Fig. 4 (showing
different links for each social media channel). In other words, the share
action for each discrete social media channel must be assigned a "unique
5
Appeal2014-004859
Application 13/101,138
tracking link" that is different from the tracking links assigned to all other
share actions from other social medial channels, such that no two social
media channels' share actions are assigned the same tracking link.
Appellants' Specification does not support any other interpretation of this
language.
Accordingly, assigning a common (i.e., the same) tracking link across
social media share actions, as disclosed by Curtin and Bladel, does not
satisfy this language. The Examiner does not dispute that Curtin and Bladel
fail to disclose assigning a different, unique tracking link to each social
media share action. Ans. 10-17; Br. 11-16. Further, the Examiner does not
rely on Erhart to cure this deficiency. See Final Act. 4. Therefore, for these
reasons, we reverse the Examiner's rejection of claims 2, 3, 5-7, and 9-11 as
unpatentable over Curtin, Bladel, and Erhart.
Obviousness over Curtin, Blade!, Erhart, and Barber - Claim 4
The Examiner does not rely on Barber to cure the deficiency
discussed above, with respect to independent claim 2. See Final Act. 6-7.
Therefore, we reverse the Examiner's rejection of dependent claim 4 as
unpatentable over Curtin, Bladel, Erhart, and Barber for the same reasons
discussed above.
Obviousness over Curtin, Blade!, Erhart, Chan, and Zuckerberg- Claim 8
The Examiner does not rely on Chan or Zuckerberg to cure the
deficiency discussed above, with respect to independent claim 2. See Final
Act. 7-8. Therefore, we reverse the Examiner's rejection of dependent
claim 8 as unpatentable over Curtin, Bladel, Erhart, Chan, and Zuckerberg
for the same reasons discussed above.
6
Appeal2014-004859
Application 13/101,138
Obviousness over Curtin, Blade!, Erhart, and Brandsetter - Claims 12-15
The Examiner does not rely on Brandsetter to cure the deficiency
discussed above, with respect to independent claim 2. See Final Act. 8-9.
Therefore, we reverse the Examiner's rejection of dependent claims 12-15
as unpatentable over Curtin, Bladel, Erhart, and Brandsetter for the same
reasons discussed above.
DECISION
The Examiner's rejections of claims 2-15 under 35 U.S.C. § 103(a)
are REVERSED.
REVERSED
7