Ex Parte TeslerDownload PDFPatent Trial and Appeal BoardAug 9, 201611955841 (P.T.A.B. Aug. 9, 2016) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/955,841 12/13/2007 Lawrence G. Tesler 12729-334 (Y02690US00) 6389 56020 7590 08/09/2016 BGL/Yahoo! Overture P.O. BOX 10395 CHICAGO, IL 60610 EXAMINER FU, HAO ART UNIT PAPER NUMBER 3693 MAIL DATE DELIVERY MODE 08/09/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LAWRENCE G. TESLER ____________________ Appeal 2014-0046511 Application 11/955,8412 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and CYNTHIA L. MURPHY, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–3, 5–10, and 12–19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed September 26, 2013) and Reply Brief (“Reply Br.,” filed March 3, 2014), and the Examiner’s Answer (“Ans.,” mailed January 3, 2014) and Final Office Action (“Final Act.,” mailed March 7, 2013). 2 Appellant identifies Yahoo!, Inc. as the real party in interest. App. Br. 2. Appeal 2014-004651 Application 11/955,841 2 CLAIMED INVENTION Appellant’s claimed invention relates to “systems and methods for improving the performance of digital advertisements” (Spec. ¶ 5). Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A computer-implemented method for optimizing performance of an ad campaign, the method comprising: extending, with a processor, an offer to an advertiser to optimize an ad campaign, the offer providing that an optimized version of the ad campaign performs at least as well as an unoptimized version of the ad campaign; automatically creating, with the processor, the optimized version of the ad campaign after receiving an acceptance of the offer; monitoring, with the processor, a performance of the optimized ad campaign and a performance of the unoptimized ad campaign; automatically adjusting, with the processor, a portion of ad campaign activations allocated to the optimized ad campaign and a portion of ad campaign activations allocated to the unoptimized ad campaign based on the monitored performance of the optimized ad campaign and the monitored performance of the unoptimized ad campaign; and upon a determination that the optimized ad campaign is not performing as well as the unoptimized ad campaign: calculating, with the processor, a compensation amount with a value that is based on a difference in performance between the optimized ad campaign and the unoptimized ad campaign; and compensating, with the processor, the advertiser based on the calculated compensation amount. Appeal 2014-004651 Application 11/955,841 3 REJECTION3 Claims 1–3, 5–10, and 12–19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Lipsky (US 2006/0184421 A1, pub. Aug. 17, 2006), Brazell (US 2006/0085262 A1, pub. Apr. 20, 2006), and Mashinsky (US 2009/0106100 A1, pub. Apr. 23, 2009). ANALYSIS Independent Claim 1 and Dependent Claims 2, 3, and 5–8 We are persuaded by Appellant’s argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because Mashinsky, on which the Examiner relies, does not disclose or suggest “upon a determination that the optimized ad campaign is not performing as well as the unoptimized ad campaign: calculating . . . a compensation amount . . . based on a difference in performance between the optimized ad campaign and the unoptimized ad campaign; and compensating . . . the advertiser based on the calculated compensation amount,” as recited in claim 1 (App. Br. 4–7). Mashinsky is directed to a method and system for advertisement selection, placement management, payment, and delivery in a dynamic, real- time environment (Mashinsky, Abstract). Mashinsky discloses that the system includes a web matching engine configured to accurately match a buyer to the advertisement space that provides the buyer with optimal sales results (id. ¶ 63). Figures 10A through 10E are a flow chart illustrating the 3 We treat the Examiner’s identification (at page 4 of the Final Office Action) of canceled claims 20–23 among the rejected claims as inadvertent error. Appeal 2014-004651 Application 11/955,841 4 decision-making process that is performed by a buyer after the web matching engine has located at least one match between an order from the buyer and at least one offer from the seller (id. ¶ 141). Referring to Figure 10C, Mashinsky discloses that, after the buyer elects to purchase a particular advertisement space, the web matching engine delivers the advertisement to the specified media; tracking agencies then monitor the performance of the advertisement, and this information is forwarded to the matching engine for analysis (id. ¶ 143). Mashinsky discloses that the web matching engine compares the actual level of advertisement space performance with a promised level of performance and, if the actual level of performance is below the promised level of performance, the web matching engine pays a refund, issues a credit, or offers additional space or other compensation to the buyer (id. ¶ 144). The Examiner takes the position that comparing the performance difference between an unoptimized ad campaign and an optimized ad campaign is the same as comparing actual performance against a baseline, as disclosed in Mashinsky (Final Act. 3), and that “[c]ompensating a full amount (refund) vs. compensating a partial amount (the difference between actual performance and baseline performance) is merely a business decision,” and, therefore, not entitled to patentable weight (id.). The Examiner, thus, reasons that Mashinsky’s feature where “the advertiser is protected from any potential loss in choosing to purchase an ad service from the service provider” is “a functional equivalent” of Appellant’s argued feature, and that a person of ordinary skill in the art at the time of Appellant’s invention would have recognized that “full amount Appeal 2014-004651 Application 11/955,841 5 compensation and partial amount compensation are obvious variant[s] of each other and are interchangeable” (id.). The difficulty with the Examiner’s analysis, as Appellant correctly observes, is that although Mashinsky discloses providing a payment to an advertiser if the actual performance of an advertisement space is below a promised level of performance, there is nothing in paragraph 144 of Mashinsky, on which the Examiner relies, that discloses or suggests that, in that situation, i.e., when a determination is made that the optimized ad campaign is not performing as well as the unoptimized ad campaign, the payment amount is calculated “with a value that is based on a difference in performance between the optimized ad campaign and the unoptimized ad campaign,” as recited in claim 1 (App. Br. 6). We agree with Appellant that compensating an advertiser a set amount when an advertising space does not perform as well as promised, as disclosed in Mashinsky, is not the same as compensating an advertiser, in that situation, an amount that is based on a difference in performance between an optimized ad campaign and a baseline (id.). And although the Examiner asserts that the two payment methods are obvious variants of each other, the Examiner cites no support for that assertion. We also do not agree with the Examiner that the amount of compensation is “not related to any technology” and is “merely a business decision between the parties” that carries no patentable weight (Ans. 3). Claim 1 is directed to a method for optimizing an advertising campaign, and recites that the method comprises, inter alia, upon determining that the optimized ad campaign is not performing as well as the unoptimized ad campaign, “calculating, with the processor . . . a compensation amount . . . Appeal 2014-004651 Application 11/955,841 6 and compensating . . . the advertiser based on the calculated compensation amount.” The claimed compensation amount is not merely some arbitrary sum determined by the parties; instead it is a value calculated, with the processor, based on a difference in performance between the optimized ad campaign and the unoptimized ad campaign, and, as such, entitled to patentable weight. The Examiner asserts in the Answer that under the broadest reasonable interpretation, Mashinsky’s compensation also is based on the difference between actual performance and baseline performance because, in Mashinsky, if the difference between actual performance and baseline performance is positive, no compensation is given and if the difference between actual performance and baseline performance is negative (i.e., if the actual performance is worse than the baseline), compensation is determined to be either full refund, issuance of credit, or an offer of additional services (Ans. 4). That assertion cannot stand at least because it ignores the express claim language. Claim 1 explicitly recites that “upon a determination that the optimized ad campaign is not performing as well as the unoptimized ad campaign,” a compensation amount is calculated “with a value that is based on a difference in performance between the optimized ad campaign and the unoptimized ad campaign.” The best that Mashinsky discloses is that in this situation, i.e., when the actual performance is worse than the baseline, the advertiser is awarded a full refund or issuance of a credit. We find nothing in the cited portions of Mashinsky that discloses or suggests that when the actual performance is worse than the baseline, the compensation amount is Appeal 2014-004651 Application 11/955,841 7 calculated based on a difference in the levels of performance, as called for in claim 1. In view of the foregoing, we do not sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the Examiner’s rejection of dependent claims 2, 3, and 5–8. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonobvious”). Independent Claims 9 and 15 and Dependent Claims 10, 12–14, and 16–19 Independent claims 9 and 15 include language substantially similar to the language of claim 1. Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent claims 9 and 15 and claims 10, 12–14, and 16–19, which depend therefrom, for the same reasons set forth above with respect to claim 1. DECISION The Examiner’s rejection of claims 1–3, 5–10, and 12–19 under 35 U.S.C. § 103(a) is reversed. REVERSED Copy with citationCopy as parenthetical citation