Ex Parte Yang

Patent Trial and Appeal Board

Aug 23, 2016

12714642 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121714,642 03/01/2010 CHEN-HUAN JERRY YANG
79230 7590 08/25/2016
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
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.
END920090l35US1 7184
EXAMINER
BEKERMAN, MICHAEL
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
J ennifer@BoiceIP.com
Emily@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHEN-RUAN JERRY YANG
Appeal2014-004080
Application 12/714,642 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
AMEE A. SHAH, 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 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellant's claimed invention relates to "electronic advertisement
placement across multiple platforms." (Spec. i-f 1.)
1 According to Appellant, the real party in interest is International Business
Machines Corporation. (Appeal Br. 2.)
Appeal2014-004080
Application 12/714,642
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1 is
illustrative and is reproduced below:
1. A computer-implemented method of managing
advertisement placement across disparate advertisement media
platforms, the computer-implemented method comprising:
coupling multiple disparate advertisement media
platforms to respective monitoring applications;
utilizing data from the respective monitoring applications
to provide inputs to a business intelligence core; and
the business intelligence core, in response to one or more
of the monitoring applications detecting a real-time event related
to a specific subject, adjusting an amount of electronic
advertisement in one or more of the disparate advertisement
media platforms, wherein the real-time event occurs outside of
the multiple disparate advertisement media platforms.
REJECTIONS
Claims 1-5, 7-12, and 14--20 are rejected under 35 U.S.C. § 102(b) as
anticipated by Skinner (US 2003/0105677 Al, pub. June 5, 2003).
Claims 6 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Skinner and Collins (US 2008/0249855 Al, pub. Oct. 9, 2008).
Claims 7-14 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention.
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Application 12/714,642
The§ 102 rejection
ANALYSIS
Skinner "relates to an automated web ranking system which enables
advertisers to dynamically adjust pay-per-click bids to control advertising
costs." (Skinner, Abstract.)
Appellant argues:
There is no teaching/suggestion of adjusting advertisement
amounts/levels/quantities ("adjusting an amount of electronic
advertisement in one or more of the disparate advertising
media") in Skinner. Rather, Skinner merely teaches that the price
is adjusted for a singular advertisement (e.g., a banner - see
paragraph [0047] of Skinner). There is no teaching/suggestion
of adjusting how much advertisement is within one of the
platforms from the multiple advertisement platforms.
(Appeal Br. 7.)
The Examiner answers that
an "amount of advertisement" has been interpreted to be a bid
amount of an advertisement, and irrefi.1tably Skinner discloses
adjusting bid amounts of advertisements. Simply put, this boils
down to a difference in interpretation. The claims may be read
either way, but Examiner has used a broadest reasonable
interpretation, and that interpretation is that an amount of
advertisement could be a bid amount of a singular advertisement.
Therefore, Skinner reads over Applicant's claimed invention.
(Answer 8.)
We give claims their "broadest reasonable interpretations consistent
with the specification." In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000).
Under this standard, "claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art."
In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).
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Appeal2014-004080
Application 12/714,642
The Specification describes:
[A]n advertisement executive and/or a CMO may reallocate
advertisements between different media based on their relative
performance. For example, assume that clicking area 306, which
corresponds to the column in graph 304 for males between the
ages of 25 and 34, pulls up graph 302 just for this demographic.
As depicted, the guaranteed impressions for males between the
ages of 25 and 34 is not being met by the cable and local
networks, but is being greatly exceeded by the mobile media. In
order to uniformly spread out the advertisement
saturation/penetration, the advertisement executive and/or CMO
can reallocate some of the advertisement from the mobile media
to the cable and/or local networks. This reallocation can be
automatically implemented using software logic.
(Spec. i-f 45, emphasis added.)
The Specification also describes:
[A]utomatically adjust[ing] advertising rotation priority to
achieve higher viewer rating. In this example, assume that a
health care related breaking news story causes a higher click
through rate for flu related contents. The BI core 208 will send
"Health" as a category to the Web advertising server, via an SOA
APT call., and the Web advertising server then puts higher
weighing factors for ready-to-be aired web health related
banners. This results in health related banners to have a higher
rotation in the advertising queue, preferably in all media used.
(Id. i-f 46, emphasis added.)
The Specification further describes:
Referring again to FIG. 3, assume that it is known that males
between the ages of 25 and 34 are the fan-base of this singer, but
that they are not being impressed with advertisement related to
that singer at sufficient levels on cable and local channels. The
BI core 208, which may be a component of the CPAOAP 148
shown in FIG. 1[], can then direct additional advertisements
related to that singer to be immediately inserted into the
advertising rotation on cable and local channels.
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Appeal2014-004080
Application 12/714,642
(Id. if 48, emphasis added.)
Additionally, the Specification distinguishes between the "amount of
electronic advertising" and "advertisement rates."
[T]he business intelligence core adjusts an amount of electronic
advertisement in one or more of the disparate advertising media.
As noted above, the real-time event may occur within one or
more of the disparate advertising media (i.e., a spike in
viewership; a news alert regarding a person, place, thing; etc.),
or it may occur outside of the disparate advertising media (such
as from a news service, etc.). In one embodiment, advertisement
rates are adjusted in response to the real-time event that is
related to the specific subject. That is, if the real-time event
warrants the immediate insertion of a related advertisement into
a medium's advertising rotation, then the cost of airing that
advertisement may be adjusted according to its pre-determined
rate and worth.
(Id. if 49, emphasis added.)
In short, the Specification uses the term "amount of electronic
advertisement" to refer to the quantity of advertisements rather than a bid
amount of an advertisement. Therefore, applying a broadest reasonable
interpretation in light of the Specification leads us to conclude that the claim
term "amount of electronic advertisement" includes the quantity of the
advertisements but does not, absent something more, include the bid amount
of an advertisement.
Applying this claim interpretation, the Examiner does not indicate
where Skinner discloses "adjusting an amount of electronic advertisement in
one or more of the disparate advertisement media platforms." Therefore, we
are persuaded that the Examiner erred in rejecting claim 1 and dependent
claims 2-5 and 7 under§ 102(b). Independent claims 8 and 15 contain
similar language. Therefore, for the reasons discussed above, we are also
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Appeal2014-004080
Application 12/714,642
persuaded that the Examiner erred in rejecting claims 8 and 15 and
dependent claims 9-12, 14, and 16-20 under § 102(b ).
The § 103 (a) rejection
In rejecting claims 6 and 13 under§ 103(a), the Examiner does not
rely on Collins to cure the deficiency of Skinner discussed above.
Therefore, for the reasons discussed above, we do not sustain the Examiner's
rejection of dependent claims 6 and 13 under§ 103(a).
The § 112, second paragraph, rejections
Claims 7 and 14 are rejected under§ 112, second paragraph. Claim 7
is illustrative. Claim 14 contains similar language. Claim 7 is reproduced
below (emphasis added):
7. The computer-implemented method of claim 1, wherein
adjusting a level of electronic advertisement in one or more of
the advertisement media platforms is controlled by a user
manually setting the level of electronic advertisement to a
predetermined action level, wherein the predetermined action
level causes the business intelligence core to automatically adjust
the amount of electronic advertisement in one or more of the
advertisement media platforms.
The Examiner finds that
claims [7 and 14] recite the limitation "wherein adjusting a level
of electronic advertisement in one or more of the advertisement
media is". However, there is no step of adjusting a level of
electronic advertising recited in the parent claim. Therefore, it
would appear that these claims fail to further limit the parent
claims, as there is no step from the parent that is being limited.
Further, since this recitation appears to be attempting to refer
back to a limitation that doesn't appear in the parent claim, it
lacks antecedent basis.
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Appeal2014-004080
Application 12/714,642
(Final Action 2.)
Appellant argues that
[ c] laim 1 claims the feature of "adjusting an amount of electronic
advertisement in one or more of the disparate advertisement
media platforms". The present specification makes clear that
level and amount are interchangeable terms (see paragraphs
[0044] and [0048] of the present specification), meaning a
quantity of advertisement. Thus, Claim 1 provides sufficient
support for the feature of "adjusting the level of electronic
advertisement".
(Reply Br. 2.)
Neither paragraph 44 nor paragraph 48 of the Specification include
the word "amount." Additionally, Appellant's choice of different terms, i.e.,
"amount" vs. "level" suggests that the terms are intended to have different
meanings. The Examiner has identified how the claim is unclear in
describing the claimed invention and Appellant has not provided a
satisfactory response. See In re Packard, 751F.3d1307, 1311 (Fed. Cir.
2014). Therefore, we affirm the rejection of claims 7 and 14 under§ 112,
second paragraph.
Independent claim 8 and dependent claims 9-14 are also rejected
under § 112, second paragraph. Claim 8 is reproduced below:
8. A computer system comprising:
a central processing unit (CPU), a computer readable
memory, and a computer readable storage media;
first program instructions to couple multiple disparate
advertisement media platforms to respective monitoring
applications;
second program instructions to utilize data from the
respective monitoring applications to provide inputs to a
business intelligence core; and
third program instructions for the business intelligence
core to, in response to one or more of the monitoring applications
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Application 12/714,642
detecting a real-time event related to a specific subject, adjust an
amount of electronic advertisement in one or more of the
advertisement media platforms; and wherein
the first, second and third program instructions are stored
on the computer readable storage media for execution by the
CPU via the computer readable memory.
The Examiner finds that
claims [8-14] refer to a system that has a CPU, memory, storage
media, and "program instructions". The program instructions
refer to software elements. System claims are meant to recite
and further limit structural elements. By claiming the program
instructions as actively part of the system, it is unclear as to what
structure is being claimed with the recitation of software
elements.
(Final Action 2.)
Appellant argues that
the recited program instructions are "stored on the computer
readable storage media for execution by the CPU via the
computer readable memory." As such, the "corresponding
strt1cture is not simply a general purpose computer by itself but
the special purpose computer as programmed to perform the
disclosed algorithm." (See Federal Register, Vol. 76, No. 27,
Wednesday, February 9, 2011, "Supplementary Examination
Guidelines for Determining Compliance With 35 U.S.C. 112
and for Treatment of Related Issues in Patent Applications".)
Thus, these claims are both unambiguous and statutory.
(Appeal Br. 5---6.)
In view of Appellant's argument, we are persuaded that the Examiner
erred in this rejection of claim 8 and dependent claims 9-14 under§ 112,
second paragraph.
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Appeal2014-004080
Application 12/714,642
DECISION
The Examiner's rejection of claims 1-5, 7-12, and 14--20 under
35 U.S.C. § 102(b) is reversed.
The Examiner's rejection of claims 6 and 13 under 35 U.S.C. § 103(a)
is reversed.
The Examiner's rejection of claims 7 and 14 under 35 U.S.C. § 112,
second paragraph, is affirmed.
The Examiner's rejection of claims 8-13 under 35 U.S.C. § 112,
second paragraph, is reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv)(2013).
AFFIRMED-IN-PART
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