Ex Parte Stubbs et al

Board of Patent Appeals and Interferences

Sep 24, 2009

10930180 (B.P.A.I. Sep. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES STUBBS, LAURIE SCHOLL, DEREK TALBOT,
MATTHEW MULQUEEN, BILL LOTT, W.B. CASWELL JR., and
NEIL SALVAGE
____________

Appeal 10/930,180
Application 2009-005928
Technology Center 3600
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Decided: September 25, 2009
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Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-5, 8-13, and 16-20.
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We have jurisdiction under 35 U.S.C. § 6(b). (2002).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Appellants claim a system and method for using internet search engines to
find pages of which a user may have been previously unaware, whether it is for
personal or business interest so as to deliver a minimum level of traffic to a
customer website responsive to an order associated with a customer. (Spec. 1:11-
16: claim 9).
Claims 1 and 9, reproduced below, are representative of the subject matter
on appeal.
1. A consolidated purchasing system for search term auctions, comprising:
receiving logic operable to receive a plurality of orders from a plurality of
customers;
analyzing logic operable to receive and consolidate the plurality of orders,
analyze a dynamic auction for a plurality of search terms on a search engine,
determine a plurality of search terms upon which to bid and an amount to bid for
the plurality of search terms responsive to a budget and an expected return on the
plurality of search terms; and
purchasing logic operable to receive instructions from the bidding logic and
bid on the plurality of search terms in the dynamic auction, wherein the cost of a
position on a search result list for the search engine changes responsive to the input
from a plurality of auction participants, wherein the system is operable to deliver a
minimum level of traffic to a customer website responsive to an order associated
with a customer, the minimum level of traffic being a guaranteed minimum level
of traffic.

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9. A method for consolidated purchasing of search term auctions, the
method comprising:
receiving a plurality of orders from a plurality of customers; consolidating
the plurality of orders;
determining a plurality of relevant search terms upon which to bid
responsive to the orders;
analyzing a dynamic auction for the plurality of relevant search terms on a
search engine;
determining an amount to bid for the plurality of search terms responsive to
a budget for the plurality of orders, and an expected return on the plurality of
relevant search terms;
bidding on the plurality of relevant search terms in the dynamic auction,
wherein the cost of a position on a search result list for the search engine changes
responsive to the input from a plurality of auction participants; and
delivering a minimum level of traffic to a customer website responsive to
an order associated with a customer, wherein the minimum level of traffic is a
guaranteed minimum level of traffic.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Roy US 2003-0220918 Nov. 27, 2003
Davis US 7,092,901 B2 Aug. 15, 2006

The following rejection is before us for review.
The Examiner rejected claims 1-5, 8-13, and 16-20 under 35 U.S.C. § 103
(a) as being obvious over Davis in view of Roy.

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ISSUE
Have Appellants shown that the Examiner erred in rejecting claims 1-5, 8-
13, and 16-20 under 35 U.S.C. § 103 (a) as being obvious over Davis in view of
Roy on the grounds that a person with ordinary skill in the art would understand
that the traffic limit disclosed in Roy of how many impressions an advertiser can
buy meets the claim requirements of the system being operable to deliver a
minimum level of traffic to a customer website responsive to an order associated
with a customer, the minimum level of traffic being a guaranteed minimum level
of traffic?

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between
the subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the scope
and content of the prior art, (2) any differences between the claimed subject matter
and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-
called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 550 U.S. at 407 (“While the sequence of these questions
might be reordered in any particular case, the [Graham] factors continue to define
the inquiry that controls.”)
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Binding precedent made clear that the Board may find in the prior art a
feature which is capable of performing a function recited in the claims. “The
Board's finding that the scaled-up version of figure 5 of Harz would be capable of
performing all of the functions recited in Schreiber's claim 1 is a factual finding,
which …[otherwise] …must be shown to be clearly erroneous…” In re Schreiber,
44 USPQ2d 1429 (CAFC 1997) at 1434.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found that Davis discloses all the elements of claim 1
except for “not expressly teach[ing] a system which is operable to deliver a
minimum level of traffic to a customer website responsive to an order associated
with a customer, the minimum level of traffic being a guaranteed minimum level
of traffic.” (Ans. 3-4).
2. The Examiner found that:
Roy shows "wherein the system is operable to deliver a
minimum level of traffic to a customer website
responsive to an order associated with a customer, the
minimum level of traffic being a guaranteed minimum
level of traffic" at Page 2, Paragraph 0011- Page 3,
Paragraph 0030. Furthermore, the Examiner notes that a
network, as taught by Roy, would indeed possess a
"traffic limit", where "a guaranteed minimum [and
maximum] level of traffic" was present as the
independent claims of the instant application recites.
Hence, Roy's "traffic limit," in fact, is related to traffic
to/on a website. (Ans. 9).
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3. Roy discloses a traffic limit ¶[0018], but in the sense that “[i]f an
advertiser is over the traffic limit, the search engine provider leaves the extra
impressions blank.” (¶[0018]).
4. Roy discloses that “[a]n impression is the display of a search listing
among search results presented to a searcher.” (¶[0012]).
5. Roy discloses that “[t]here is a limit to how many impressions an
advertiser can buy.” (¶[0017]).
6. Roy discloses that “[w]hen an advertiser wants to buy clicks, the search
engine provider comes up with a cost per click that depends on how often he
expects users to click on the advertiser’s listing….” (¶[0019]).
7. Roy discloses that “[i]f an advertiser follows the provider’s
recommendations, then he is guaranteed to maximize his expected profit.”
(¶[0027]).
8. Davis discloses “[t]he higher the bid, the more advantageous the
placement in the search result list that is generated when the bidded search term
is entered by a searcher using the search engine” (col. 5, ll. 45-47).

ANALYSIS
The rejections are affirmed as to claims 1-5, 6-8, and reversed as to claims
9-13, 16-20.
The Appellants do not provide a substantive argument as to the separate
patentability of claims 2-5, 8 that depend from claim1, which is the sole
independent claim among those claims. Therefore, regarding the claims whose
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rejection is affirmed, we address only claim 1. Claims 2-5, 8 fall with claim 1.
See, 37 C.F.R. § 41.37(c)(1)(vii)(2004).
Appellants argue that “…Davis with Roy fails to teach or suggest at least
"delivering a minimum level of traffic to a customer website responsive to an order
associated with a customer, wherein the minimum level of traffic is a guaranteed
minimum level of traffic." (Appeal Br. 9).
We agree with Appellants in that the proposed combination does not result
in a step of delivering a minimum level of traffic, as recited in process claims 9 and
17. Roy discloses limiting a maximum and not a minimum level of how many
impressions an advertiser can buy (FF 3, 5). We thus conclude Appellants have
shown error in the Examiner’s prima facie case with respect to independent claims
9 and 17.
Since claims 10-13, 16, 18-20 depend from claims 9 and 17, and since we
cannot sustain the rejection of claims 9 and 17, the rejection of claims 20-32
likewise cannot be sustained.
Claim 1 however recites a system. The language of this claim is generally
broader than that of the process steps of claims 9 and 17, in that claim 1 recites the
system is operable to deliver, versus the affirmative step of delivering. We
interpret this language as functional, and thus require a showing by the Examiner
that the prior art need only be capable of delivering a minimum level of traffic to a
customer website responsive to an order associated with a customer, the minimum
level of traffic being a guaranteed minimum level of traffic. See, Schreiber.

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The Examiner found that Davis discloses all the elements of claim 1 except
for a system which is operable to deliver a minimum level of traffic to a customer
website responsive to an order associated with a customer, the minimum level of
traffic being a guaranteed minimum level of traffic. (FF 1, 2). This is not disputed.
We find that Davis discloses the higher the bid, the more advantageous the
placement in the search result list that is generated when the bidded search term is
entered by a searcher using the search engine (FF 8). We thus find that Davis is
capable of delivering a guaranteed minimum level of traffic to the advertiser’s
webpage in the case where only one advertiser bids on search terms relevant to that
advertiser’s web site such that all traffic, including whatever minimum level
flowing therefrom, is delivered to the advertiser’s webpage.
CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred in
rejecting claim 1-5, 6-8.
We conclude the Appellants have shown that the Examiner erred in rejecting
claim 9-13, 16-20.
DECISION
AFFIRMED-IN-PART
JRG

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