Google Inc.

Patent Trials and Appeals Board

Sep 30, 2021

2021002777 (P.T.A.B. Sep. 30, 2021)

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.
15/436,303 02/17/2017 Douglas De Jager GGLD-552-CON3 1162
100462 7590 09/30/2021
Dority & Manning P.A. and Google LLC
Post Office Box 1449
Greenville, SC 29602
EXAMINER
FAN, HUA
ART UNIT PAPER NUMBER
2449
NOTIFICATION DATE DELIVERY MODE
09/30/2021 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS DE JAGER,
SIMON OVERELL, and BEN HODGSON
_____________

Appeal 2021-002777
Application 15/436,303
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, ELENI MANTIS MERCADER, and
JOHN A. EVANS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 23–38 and 43–45. Claims 1–22 and 39–42 are canceled. The
Examiner objects to claim 46 as being dependent upon a rejected base claim,
and indicates that claim 46 would be allowable if rewritten in independent
form including all of the limitations of the base claim and any intervening
claims. See Final Act. 7. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). An oral hearing was conducted via video
conference on September 23, 2021. We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest in this
appeal is Google LLC. See Appeal Br. 2.
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STATEMENT OF THE CASE 2
Introduction
Embodiments of Appellant’s claimed subject matter relate to the
delivery of content over a network, and to the analysis of whether that
content is viewable by a user. In particular, but not exclusively, “the present
invention relates to the assessment of whether an advertisement in a web
page is viewable by a user.” Spec. 1.
Illustrative Claim 1
23. A method for determining whether a region of a web
page is in view, comprising:

embedding, at a client device, a test feature within the
region of the web page within

[a] a browser window such that the test feature is
rendered within a content item contained within the region,

[b] the test feature having a characteristic that has a value
that varies depending on whether the test feature is displayed
within or outside of a viewable portion of the web page;

[c1] determining, using code restricted from accessing a
current position of the region within the browser window,

[c2] a first value for the characteristic responsive to
rendering the test feature within the content item; and

2 We herein refer to the Final Office Action, mailed July 20, 2020 (“Final
Act.”); Appeal Brief, filed November 11, 2020 (“Appeal Br.”); the
Examiner’s Answer, mailed January 26, 2021 (“Ans.”); and the Reply Brief
(“Reply Br.”), filed March 22, 2021.

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[d] determining, using the first value of the characteristic,
whether the region is within the viewable portion of the web
page,
wherein the first value of the characteristic indicates that
the region is within the viewable portion of the web page when
the test feature is in an active browser window within the
viewable portion of the web page and indicates that the region
is outside the viewable portion of the web page when the test
feature is in the active browser window and outside the
viewable portion of the web page.

Appeal Br. 18. Claims App. (disputed claim limitation c1 bracketed
and emphasized).

Prior Art Evidence Relied Upon by the Examiner
Name Reference Date
Landau et al. (“Landau”) US 2006/0156283 A1 July 13, 2006
Callaghan et al.
(“Callaghan ”)
US 2009/0326966 A1 Dec. 31, 2009
Baird et al. (“Baird”) US 2011/0137733 A1 June 9, 2011
Otwell et al. (“Otwell”) US 8,635,268 B1 Jan. 21, 2014

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Table of Rejections
Rej. Claims Rejected 35 U.S.C. § Reference(s)/Basis
A3
23, 24,
27–32,
35–38,
43–45
103 Baird, Otwell
B 25, 33 103 Baird, Otwell, Callaghan,
C 26, 34 103 Baird, Otwell, Landau

ISSUES AND ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. Throughout this opinion, we give the claim limitations the
broadest reasonable interpretation (BRI) consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

3 The Examiner omits independent claim 31 from the Rejection A heading
on page 2 of the Final Action, even though the Examiner expressly states
“As to claim 31, see similar rejection to claim 23.” Final Act. 4. The
Examiner similarly omits dependent claim 32 from the Rejection A heading
on page 2 of the Final Action, even though the Examiner expressly states
“As to claim 32, see similar rejection to claim 24.” Final Act. 4. We have
made appropriate corrections in the Table of Rejections above.

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Rejection A under 35 U.S.C. § 103 of
Claims 23, 24, 27–32, 35–38, and 43–45

We focus our analysis on the disputed dispositive limitation c1 of
independent claim 23: “determining, using code restricted from accessing a
current position of the region within the browser window . . . .”
Appellant notes that the Examiner originally relied upon Otwell for
teaching this limitation in the Final Action, but shifted in the Answer (11) by
making a new finding regarding Baird (at paragraph 57) that Appellant
contends directly contradicts the Examiner’s finding in the Final Office
Action, mailed July 20, 2020, that “Baird does not expressly disclose that the
determining the first value is by using code restricted from accessing a
current position of the region within the browser window.” See Final Office
Action, pg. 4 (emphasis added).” Reply Br. 2.
In the Answer, the Examiner relies upon the context provided by
Appellant’s Specification, at page 6, paragraph 1. We reproduce page 6,
paragraph 1 of Appellant’s Specification, in pertinent part below:
In preferred embodiments, the step of monitoring the
behavioural characteristic is carried out by code operating in a
restricted environment such that it is prevented from
discovering features of the host web page. In preferred
embodiments, the restricted or sandboxed environment in
which the code operates is an iframe (potentially nested within
other iframes) within the host web page.
Spec. 6, ll. 1–7 (emphasis added).
Thus, from the description in the Specification (id.), the Examiner
associates code that operates in a restricted or sandboxed environment with
an iframe HTML element. The Examiner specifically finds that “Baird
discloses using code restricted from accessing a current position of the
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region within the browser window by disclosing utilizing an iFrame (see
[0057], ‘the placement is enclosed in an iFrame’).” Ans. 11.
The Examiner also addresses Otwell in the Answer, and finds:
“[a]lternatively, if ‘using code restricted from accessing a current position of
the region within the browser window’ were to be construed [more]
narrow[ly] than above,” then Otwell discloses:
a concept of determining a value for in-view or out-of-view
using code restricted from accessing a current position of the
region within the browser window (claim 20, determining is
based on scroll position, a list height, and a viewport height,
without accessing a current position of the region within the
browser window. It is to be noted that software entities are
coded for [a] specific purpose, e.g., when it is coded to
calculate scroll position then is not permitted to access other
information). See Examiner’s obviousness analysis in the
rejection section.
Ans. 12.
Appellant responds in the Reply Brief, and urges that “[t]he
Examiner’s Answer still fails to adequately explain how Baird and Otwell
teach or suggest ‘determining, using code restricted from accessing a current
position of the region within the browser window, a first value for the
characteristic responsive to rendering the test feature within the content
item,’ because both references explicitly teach that position information is
not only available to the systems, but relied on for proper operation.”
Reply Br. 2–3 (emphasis added).
Appellant argues that “Baird discloses that position information, i.e.,
placement information, is used by the described systems: ‘[t]he following
elements are only passed on the Adimpression event as extended elements,
as referenced in the last column of FIG. 4: iframed: Boolean value indicating
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whether the placement is enclosed in an iFrame.’ (Baird, Para. [0056]-0057],
emphasis added.).” Reply Br. 3.
Appellant further notes that paragraph 57 and Figure 4 of Baird make
clear:
[a]t a block 140, dimensions and x, y coordinates of the
viewport are identified by the program. At a block 146, x, y
coordinates and dimensions of the Ad unit are identified. At a
block 148, an InView event is determined to have occurred if at
least a predefined percentage (n%) of the Ad unit is within the
viewport based on the identified dimensions and x, y
coordinates of the viewport and the Ad.

Reply Br. 3 (citing Baird, ¶ 16) (emphasis added).

Appellant summarizes the argument: “As shown, the Examiner’s
Answer concedes that Otwell expressly uses a scroll position to calculate the
number of item representations within a browser window. Accordingly, the
Examiner has failed to explain the plain efficiencies of Baird and Otwell in
teaching or suggesting ‘using code restricted from accessing a current
position of the region within the browser window’ as recited in Claim 23.”
Reply Br. 4 (emphasis added).
Based upon a preponderance of the evidence, we are persuaded by
Appellant’s arguments for the reasons which follow. First, regarding the
teachings of Otwell, we note that claim 20 of Otwell (as relied upon by the
Examiner) expressly describes:
[A] content notification component providing a notification to a
user of a non-visible portion of the network page and
comprising a counter depicting a number of item
representations included in the non-visible portion of the
network page, wherein the number of item representations
is calculated based at least in part on a scroll
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position, a list height, and a viewport height.

Otwell, col. 14; see claim 20 of Otwell (emphasis added).
Given this language in Otwell’s claim 20 (id.), we find a
preponderance of the evidence supports Appellant’s argument that Otwell
merely uses the scroll position as a factor (along with list height and
viewport height) to calculate the number of item representations (that are
included in the non-visible portion of the network page). See Reply Br. 4;
see also Claim 20 of Otwell.
We find no teaching or suggestion of any restricted code in claim 20
of Otwell, as alternatively found by the Examiner. See Ans. 12. Contrary to
the Examiner’s finding, we find the scroll position in claim 20 of Otwell has
nothing to do with restricted code, in the absence of any additional evidence
being provided by the Examiner in support.4
Second, we consider paragraph 57 of Baird in context with paragraph
56:
[0056] The following elements are only passed on the
AdImpression event as extended elements, as referenced in
the last column of FIG. 4:

[0057] iframed: Boolean value indicating whether the
placement is enclosed in an iFrame;

4 Regarding the Examiner’s shifting position regarding the teachings of
Baird in the Final Action at page 4, and in the Answer at page 11 (regarding
the iframe in paragraph 57), see e.g., In re Vaidyanathan, 381 Fed.App’x.
985, 991 (Fed. Cir. 2010) (“the agency’s contradictory findings of
technological facts based on shifting perceptions of the prior art impeach the
deference normally owed to administrative findings of fact.” (citation
omitted).
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Baird, ¶¶ 56–57.
Based upon this evidence, and without more detail, we agree with
Appellant (Reply Br. 3) that paragraph 57 of Baird merely indicates whether
the placement is enclosed in an iframe or not, as designated by a Boolean
value. See Baird, ¶¶ 56–57. We find no express or inherent description of
the use of any restricted code in paragraphs 56–57 (as associated by the
Examiner with an iframe HTML element), much less “determining, using
code restricted from accessing a current position of the region within the
browser window,” as recited in independent claim 23 (Limitation c1).
Our findings are buttressed by the well-known use of the iframe as an
inline frame element in HTML, in which the “sandbox” (restricted) attribute
is merely an optional iframe attribute. See e.g.,
https://developer.mozilla.org/en-US/docs/Web/HTML/Element/iframe.
Therefore, we agree with Appellant’s response during the oral hearing
that an iframe (as disclosed in Baird’s paragraph 57) is merely a tool that can
be used to create a restricted sandbox environment, but an iframe does not
necessarily (i.e., inherently) create a sandbox environment.
We note that “[t]he inherent teaching of a prior art reference, a
question of fact, arises both in the context of anticipation and obviousness.”
In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (affirmed 35 U.S.C. § 103
rejection based in part on inherent disclosure in one of the references). The
question of obviousness is “based on underlying factual determinations
including . . . what th[e] prior art teaches explicitly and inherently.” In re
Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citations omitted). Our
reviewing court has “recognized that inherency may supply a missing claim
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limitation in an obviousness analysis.” PAR Pharmaceutical, Inc. v TWI
Pharmaceuticals, Inc. 773 F.3d 1186, 1194-95 (Fed Cir. 2014). However,
[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient. If, however, the disclosure is
sufficient to show that the natural result flowing from the
operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure
should be regarded as sufficient. In re Oelrich, 666 F.2d at 581
(emphasis added) (citations and quotation marks omitted). Thus,
our early precedent, and that of our predecessor court,
established that the concept of inherency must be limited when
applied to obviousness, and is present only when the limitation
at issue is the “natural result” of the combination of prior art
elements. Id.
PAR Pharmaceutical, Inc., 773 F.3d at 1195 (quoting In re Oelrich,
666 F.2d 578, 581 (CCPA 1981)).
Applying this controlling authority here, we find on this record that
the Examiner has not established by a preponderance of the evidence that
“using code restricted from accessing a current position of the region within
the browser window” (claim 23) is the natural result flowing from the
operation as taught by Baird (¶ 57) or Otwell (col. 14, claim 20), considered
alone or in combination.
Therefore, based upon a preponderance of the evidence, we are
persuaded of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness regarding obviousness Rejection A
of independent claim 23.
Accordingly, we are constrained on this record to reverse the
Examiner’s obviousness Rejection A of independent claim 23 over the
collective teachings and suggestions of Baird and Otwell. Independent
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claim 31 identically recites the disputed dispositive limitation c1 of claim
23: “determining, using code restricted from accessing a current position of
the region within the browser window, . . .” Claim 31 (emphasis added).
Thus, for the same reasons discussed supra regarding independent claim 23,
we reverse the Examiner’s Rejection A of independent claim 31: “As to
claim 31, see similar rejection to claim 23.” Final Act. 4.
For the same reasons, we also reverse Rejection A of dependent
claims 23, 24, 27–30, 32, 35–38, and 43–45.

Rejections B and C of Dependent claims 25, 26, 33, and 34
In light of our reversal of Rejection A of independent claims 23 and
31, for essentially the same reasons argued by Appellant in the Briefs, as
discussed supra, we also reverse Rejection B of dependent claims 25 and 33
and Rejection C of dependent claims 26 and 34. On this record, the
Examiner has not shown how the additionally cited tertiary references
overcome the aforementioned deficiencies of the base combination of Baird
and Otwell, as discussed above regarding Rejection A of independent claims
23 and 31.

CONCLUSION
The Examiner erred in rejecting claims 23–38 and 43–45 as being
obvious under 35 U.S.C. § 103 over the cited combinations of references.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
23, 24,
27–32,
35–38,
43–45
103 Baird, Otwell
23, 24,
27–32,
35–38,
43–45
25, 33 103 Baird, Otwell, Callaghan, 25, 33
26, 34 103 Baird, Otwell, Landau 26, 34
Overall
Outcome
23–38,
43–45

REVERSED