Ex Parte Wiseman et al

Patent Trial and Appeal Board

Aug 29, 2013

10742791 (P.T.A.B. Aug. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEORA RUTH WISEMAN
and
SUMIT AGARWAL
____________

Appeal 2011-001031
Application 10/742,791
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 13, 16 to 19, and 39. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).

BACKGROUND
Appellants’ invention is directed to a method and system for
providing targeted graphical advertisements associated with one or more
content-based concepts, such as keywords and subject matters of interest.
Claim 1 is illustrative:
1. A method for providing targeted advertising graphics,
the method comprising the steps of:
identifying an advertisement graphic associated with an
entity and storing the advertisement graphic in a database with
other advertisement graphics;
associating a first set of one or more keywords with each
advertisement graphic in the database;
receiving a request for an advertisement from a publisher
associated with a page, where the page has an associated second
set of one or more keywords that describe content of the page,
the request including a concept, the concept associated with the
second set of one or more keywords and including one or more
terms, the terms not including any keywords of the second set;
identifying at least one advertisement graphic including
matching the one or more terms of the concept to ones of the
first set of one or more keywords in response to the request;
positioning the at least one advertisement graphic for
display based on a ranking among advertisement graphics
associated with the concept, the ranking being based at least on
a price parameter specified by an entity associated with each
advertisement graphic; and
providing the ranking.

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Appellants appeal the following rejections:
Claims 1 to 13, 16 to 19, and 39 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1, 6, 12, 13, 16, 19, and 39 under 35 U.S.C. § 103(a) as
unpatentable over Davis (US 6,269,361 B1; iss. Jul. 31, 2001), Wordtracker
… The Ultimate Way To Build Your Website Traffic : “Discover the
keywords that will skyrocket your website traffic !”
(http://web.archive.org/web/19990913163339lhttp://www.wordtracker.comli
ndex.html) (last visited May 25, 2009 (hereinafter Wordtracker.com).
Claims 2, 7, 8, 10, 11, 17, and 18 are rejected under U.S.C. § 103(a)
as being unpatentable over Davis, Wordtracker.com, and McElfresh (US
6,907,566 B1; iss. Jun. 14, 2005).
Claim 9 is rejected under U.S.C. § 103(a) as being unpatentable over
Davis, Wordtracker.com, and Buck (US 6,078,866; iss. Jun. 20, 2000).
Claims 3-5 are rejected under U.S.C. § 103(a) as being unpatentable
over Davis, Wordtracker.com, Buck, and Official Notice.

FACTUAL FINDINGS
We adopt all of the Examiner’s findings regarding the teachings of the
references as our own. Ans. 5 to 7. Additional findings of fact may appear
in the Analysis that follows.

ANALYSIS
Written Description
The Examiner is of the opinion that the Appellants’ Specification does
not provide support for the recitation in claim 1 of “receiving a request for
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an advertisement . . . the request including a concept . . . associated with the
second set of one or more keywords and including one or more terms, the
terms not including any keywords of the second set. . . .” The Appellants
direct our attention to page 5 of the Specification for support for the above
recitation.
We find that page 5 of Appellants’ Specification discloses that an
advertiser may purchase content-based concepts and associate graphical
advertisement with the concepts. It is further disclosed, as an example, that
an advertiser may purchase the content based concept of baseball and be
matched with content pages that do not have the keyword “baseball,” but
relate to the concept of baseball. In this regard the content page is matched
based on a concept that does not include the keyword baseball. As such, a
person of ordinary skill in the art would understand that the Appellants had
possession of a method that allowed an advertiser to purchase the whole
concept of baseball and thereby purchase words such as bats, strikes, etc.,
that relate to the concept of baseball that come up on a content page that
does not include the keyword “baseball.”
In view of the foregoing, we will not sustain this rejection of the
Examiner.
Obviousness
Claims 1 to 13, 16 to 19, and 39
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Wordtracker.com does not teach a concept
including one or more terms, the terms not including any keywords of the
second set. We agree with the Examiner’s answer to this argument found on
pages 14 to 15 of the Answer. Specifically, we agree that the word
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“altavista” is a concept as broadly claimed and that terms such as the
misspelling of the word “altavista” such as “alltavista” and “altivista” are
terms that do not include the keyword “altavista” and as such meet the
limitations of claim 1. We note in this regard that the word “concept” has
not been defined in Appellants’ Specification, and thus this term is being
given its broadest reasonable construction.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Wordtracker.com does not teach “matching the
one or more terms of the concept to ones of the first set of one or more
keywords in response to the request.” We agree with the finding of the
Examiner on page 7 of the Answer that Wordtracker.com does teach this
subject matter since the user gets the results when the user uses the terms
“altivista” or “alltavista” which are terms related to the concept of
“altavista.”
We are not persuaded of error on the part of the Examiner by
Appellants’ argument in the Reply Brief that Wordtracker.com does not
describe or suggest a concept that is distinct from a set of keywords because
this argument is not commensurate with the recitations in claim 1. Claim 1
does not recite that the concept is distinct from the keywords; only that the
concept associated with the second set of one or more keywords includes
“one or more terms,” the terms not including the keywords of the second set.
The teaching in Wordtracker.com that the term “altivista” is a term
associated with the concept of “altavista” meets this recitation in the claim.
We are also not persuaded of error on the part of the Examiner by
Appellants’ argument that Davis does not describe that the page has an
associated second set of one or more keywords that describe the content of
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the page, because the Examiner relies on Wordtracker.com rather than Davis
for teaching this subject matter. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1.
We will also sustain the rejections directed to claims 2, 6 to 13, 16 to
19, and 39 because the Appellants make the same arguments as to
patentability as was made to the patentability of claim 1.
We will sustain the rejection directed to claims 3 to 5 because the
Appellants’ argument that the Official Notice does not cure the deficiencies
of Davis and Wordtracker.com relies on the same arguments advanced in
regard to the rejection of claim 1.

DECISION
We do not affirm the Examiner’s § 112, first paragraph, rejection of
claims 1 to 13 and 16 to 19, and 39.
We affirm the Examiner’s § 103(a) rejections.
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)(1) (2011).

AFFIRMED

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