Eric Horvitz et al.

Patent Trials and Appeals Board

Jul 26, 2019

12490413 - (D) (P.T.A.B. Jul. 26, 2019)

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.
12/490,413 06/24/2009 Eric Horvitz 327284.01 3430
69316 7590 07/26/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
ADAMS, CHARLES D
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
07/26/2019 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC HORVITZ and KAMAL JAIN
____________

Appeal 2017-011286
Application 12/490,4131
Technology Center 2100
____________

Before MAHSHID D. SAADAT, ERIC B. CHEN, and CARL L.
SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–18, 21, and 22, which constitute all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was
held June 25, 2019.
We REVERSE.

1 The real party in interest is identified as Microsoft, Inc. App. Br. 3.

Appeal 2017-011286
Application 12/490,413
2
STATEMENT OF THE CASE
The invention relates to a content provider providing content (full
version and limited version) to requestors, including dealing with sponsoring
referrers. Abstract; Spec. ¶¶ 16–20, 23–28, Figs. 1, 2. Claim 1, reproduced
below, is exemplary of the subject matter on appeal (emphasis added):
1. A method of fulfilling requests for content items of a
content item set accessible to a content item host having a
processor, the method comprising:
executing on the processor instructions that cause the
content item host to:
offer respective content items through a first offer
comprising a referral from a sponsoring referrer that is
providing sponsorship to the content item host for the
content item set and, concurrently, a second offer not comprising
a referral from a sponsoring referrer; and
upon receiving from a requester a request for a content
item:
evaluate the request to determine whether the request
comprises a referral by the sponsoring referrer responsive to the
first offer;
for requests that comprise a referral by the sponsoring
referral responsive to the first offer, provide a full version of the
content item to the requester;
and
for requests responsive to the second offer and that do not
comprise a referral from a sponsoring referrer, provide a limited
version of the content item to the requester.

App. Br. 2 (Claims Appendix) (Revised dated Mar. 2, 2017).

THE REJECTIONS
Claims 1–18, 21, and 22 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to patent-ineligible subject matter. Ans.
Appeal 2017-011286
Application 12/490,413
3
2–6 (New ground of rejection). Claim 21 is also separately rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter in the
Final Office Action. See Final Act. 2–3.
Claims 1–5, 7, 11, 12, 16–18, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fisher et al. (US 2005/0229220 A1;
pub. Oct. 13, 2005) (“Fisher”) in view of Brodersen et al. (US 2010/0057576
A1; pub. March 4, 2010) (“Brodersen”). Final Act. 3–11.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fisher, Brodersen, and Casey et al. (US 2007/0124781 A1; pub. May
31, 2007 (“Casey”). Final Act. 11–13.
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fisher, Brodersen, and Abbott et al. (US 2008/0177588 A1; pub. July
24, 2008) (“Abbott”). Final Act. 13–14.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fisher, Brodersen, and Sanz-Pastor et al. (US 8,005,713 B1; iss. Aug.
23, 2011) (“Sanz-Pastor”). Final Act. 14–15.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fisher, Brodersen, and Andrews (US 7,788,686 B1; iss. Aug. 31,
2010). Final Act. 15–16.
Claim 13–15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fisher, Brodersen, and Axe et al. (US 2008/0046315 A1;
pub. Feb. 21, 2008) (“Axe”). Final Act. 16–18.

Appeal 2017-011286
Application 12/490,413
4
ANALYSIS
The § 101 Rejections
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “‘[l]aws of
nature, natural phenomena, and abstract ideas.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citation omitted); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(brackets in original).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. See Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77).
In accordance with that framework, we first determine what concept the
claim is “directed to.” See id. at 219 (“On their face, the claims before us
are drawn to the concept of intermediated settlement, i.e., the use of a third
party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593,
611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic
concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
Appeal 2017-011286
Application 12/490,413
5
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191–92 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
Appeal 2017-011286
Application 12/490,413
6
patent-eligible application.” Alice, 573 U.S. at 221 (citation). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. (quoting Mayo, 566 U.S. at 77, (alteration in original)).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office (“USPTO”) recently
published revised guidance on the application of § 101. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). Under that guidance, we first determine whether the
claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 54–56.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See Guidance,
Appeal 2017-011286
Application 12/490,413
7
84 Fed. Reg. at 54. When the judicial exception is so integrated, then the
claim is not directed to a judicial exception and is patent eligible under
§ 101. Id.
The § 101 Rejection of claims 1–18, 21, and 22 set forth in the Answer
The Examiner determines claim 1, and independent claims 21 and 22
“restrict access to full versions of content to those who use a sponsored link,
wherein if a sponsored link is not used, a limited version of content is
retrieved.” Ans. 2–6. The Examiner determines
[t]his appears to be similar to an abstract idea of displaying an
advertisement in exchange for access to copyrighted media. In
Ultramercial, Inc. v. Hulu, LLC 772 F.3d 709, 112 U.S.P.Q.2d
1750 (Fed. Cir. 2014), the Federal Circuit found that displaying
an advertisement in exchange for access to copyrighted media is
a patent ineligible abstract idea.
Id. at 2–3. The Examiner determines:
The independent claims do not appear to have any
limitations that individually, or as a combined whole, render the
claims to be substantially more than the abstract idea restricting
access to full versions of content to those who use a sponsored
link.
The sponsoring referrer simply provides sponsorship to
the content item host, and does not appear to add significantly
more to an abstract idea of restricting access to content to those
who use a sponsored link. The content item host simply appears
to be a conventional and routine content item host.
While the claims do contain computer elements such as a
processor and a content item host (claim 1), a memory device
and a content item host (claim 21), and a server having a
processor (claim 22), it is noted that these computer elements
appear to be conventional computer elements performing routine
functions.
Id. at 3.
Appeal 2017-011286
Application 12/490,413
8
Appellants argue, inter alia, the Examiner errs in not properly
identifying a recited abstract idea and not explaining how the specific claim
limitations set forth in the claims correspond to a concept that the courts
have identified as an abstract idea. Reply Br. 5–11. Appellants argue claim
1, and independent claims 21 and 22, do not recite “an ‘advertisement’ or
‘copyrighted’ media.” Id. at 8–11 (emphasis omitted). According to
Appellants:
The “limited” content item may comprise an excerpt, a
summary, a downsampled version, a bibliographic reference,
some descriptive metadata, etc. – none of which constitutes an
advertisement. Moreover, the claimed techniques are presented
as an alternative to inserting advertisements into content, with
numerous examples of why the insertion of advertisements is
undesirable. The examiner may have recognized this nuance had
the examiner chosen not to disregard, as immaterial, the portions
of the specification and claims reciting these aspects, as the
examiner has explicitly admitted while encouraging the Board to
do the same.
Id. at 13 (emphasis omitted).
Appellants argue the Examiner does not recognize that the claims
present significantly more than the abstract idea because of the Examiner’s
unreasonably broad claim interpretation. Id. at 12. Appellants argue
Ultramerical is not applicable because the claims are not directed to
displaying an advertisement in exchange for access to copyrighted material.
Id. at 13 (citing Ultramercial, 772 F.3d at 715). Appellants argue DDR is
applicable because, as in DDR, the claims provide a “‘solution [that] is
necessarily rooted in computer technology to overcome a problem
specifically arising in the realm of computer networks.’” Id. at 14–16
(quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014)).
Appeal 2017-011286
Application 12/490,413
9
We agree with Appellants that the Examiner’s determination that the
claims are directed to the abstract idea of “displaying an advertisement in
exchange for access to copyrighted material” and similar to the patent
eligible claims in Ultramerical is based on an unreasonably broad
interpretation of the claims, and an inadequate review of all elements of the
claims. The claims are unlike the claims of Ultramercial in which the court
held a claim describing “only the abstract idea of showing an advertisement
before delivering free content” is patent ineligible. Ultramercial, 772 F.3d
at 715; Guidance, 84 Fed. Reg. 52 n.13.
Even if claim 1 recites an abstract idea, such as a commercial
interaction (“displaying an advertisement in exchange for access to
copyrighted material” or “restricting access to full versions of content to
those who use a sponsored link”) the Federal Circuit explains the
“directed to” inquiry is not simply asking whether the claims involve a
patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”). Rather, the “directed to” inquiry
applies a stage-one filter to claims, considered in light of the
specification, based on whether “their character as a whole is
directed to excluded subject matter.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
Appeal 2017-011286
Application 12/490,413
10
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery”).
Therefore, we proceed to Step 2A, Prong 2 of the Guidance to
determine whether additional elements of claim 1 integrate the abstract idea
into a practical application. Such additional elements may reflect an
improvement to a technology or technical field. See Guidance, 84 Fed. Reg.
at 55.
We determine additional elements of claim 1 integrate the abstract
idea into a practical application. We refer to the claim 1 limitations “the
content item host to:”
offer respective content items through a first offer
comprising a referral from a sponsoring referrer that is providing
sponsorship to the content item host for the content item set and,
concurrently, a second offer not comprising a referral from a
sponsoring referrer; and
upon receiving from a requester a request for a content
item:
evaluate the request to determine whether the request
comprises a referral by the sponsoring referrer responsive to the
first offer;
for requests that comprise a referral by the sponsoring
referral responsive to the first offer, provide a full version of the
content item to the requester.
These limitations set forth that, for the first offer, the sponsoring
referrer (1) provides the referral and (2) provides sponsorship to the content
item. For example, the sponsoring referrer may constitute a search engine
that receives requests. By providing the referral and sponsorship, the
processing of content request is improved as the content host, sponsoring
Appeal 2017-011286
Application 12/490,413
11
referrer, and advertisers are motivated to provide content to requestors. See
Spec. ¶¶ 28, 35.
The claim 1 limitation regarding a second offer not comprising a
referral from a sponsoring referrer, “upon receiving from a requester a
request for a content item:”
for requests responsive to the second offer and that do not
comprise a referral from a sponsoring referrer, provide a limited
version of the content item to the requester.

Similar to the first offer limitation, discussed supra, this limitation
improves the processing of the content requests and enables the provision of
sponsored and non-sponsored content. See Spec. ¶¶ 28, 35.
The additional elements of claim 1 reflect technology improvement of
improving the processing of content requests. See claim 1; see also DDR,
773 F.3d at 1257 (holding the claims satisfy Alice step two because “the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer
networks”). Additionally, these limitations use the alleged abstract idea
in a meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim
as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP § 2106.05(e).
Because the additional elements of claim 1 integrate the abstract idea
into a practical application, we determine claim 1, and independent claims
21, and 22, are not directed to an abstract idea. See Guidance, Step 2A,
Prong 2. For similar reasons, each of claims 2–18 integrates the abstract
idea into a practical application, and is not directed to an abstract idea.
Appeal 2017-011286
Application 12/490,413
12
Therefore, we do not sustain the rejection of claims 1–18, 21, and 22
under 35 U.S.C. § 101.
The § 101 Rejection of claim 21 set forth in the Final Office Action
In the Final Office Action, the Examiner determines that the claimed
“memory device” of claim 21 is not defined and indicates that computer
readable media may include communication media forms of energy that are
not patent eligible. Final Act. 2–3 (citing Spec. ¶ 51). The Examiner
suggests Appellants use the term “non transitory” to ensure that the claims
are directed towards patentable subject matter (id. at 3 (citing 1351 Off. Gaz.
212 (Feb. 23, 2010) — Kappos Memo on SUBJECT MATTER ELIGIBILITY OF
COMPUTER READABLE MEDIA)).
In the Appeal Brief, Appellants refer to the Specification, paragraphs
51, 53, and Figure 5, and argue that
[t]hese portions of the specification present different terms
to describe different classes of computer-readable media – one
of which is directed to memory devices, such as that shown in
Fig. 5 (as an example of a physical disc storing data), while the
other, “communications media,” includes signals.
It is submitted that the term “memory device,” as
presented in claim 21, would be recognized by those of ordinary
skill in the art as directed to the subset of computer-readable
media identified above as “computer storage media,” and the
well-recognized types of memory devices presented therein,
rather than “communications media” that include signals.
App. Br. 17–18.
Appellants additionally argue that “[n]on-transitory” is not a
requirement, but simply one option and Applicant can choose other ways to
amend the claim in accordance with the original disclosure. Id. at 18 (citing
August 2015 USPTO training materials entitled: “35 USC § 101: STATUTORY
REQUIREMENTS AND FOUR CATEGORIES OF INVENTION”).
Appeal 2017-011286
Application 12/490,413
13
In the Answer, the Examiner
notes that the phrase used in the claim is “a memory device.”
Paragraph [0051] does not include any definition or example of
the claimed “memory device.” It is noted that a “memory 148”
is an example of computer storage media, wherein “computer
storage media” includes media “implemented in any method or
technology for storage of information.” As noted in paragraph
[0053], communication media is a technology that may store
information and a “modulated data signal” such as a carrier wave
or other transport mechanism.
Because there is no explicit definition for “memory
device,” and because the definition for “computer storage media”
is open ended, the claim is not limited to solely non-transitory
forms of media. Because the claimed limitation may encompass
transitory media, the claim is patent ineligible under 35 USC 101.
Ans. 6–7.
We are persuaded by Appellants’ arguments because one of ordinary
skill in the art would understand the term “memory device” as computer
storage media” including exemplary devices. See Spec. ¶ 51, Fig. 5.
Therefore, we do not sustain this rejection of claim 21.
The § 103 Rejections
Appellants argue, inter alia, that the Examiner errs in finding that the
combination of Fisher and Brodersen teaches the claim 1 limitation “offer
respective content items through a first offer comprising a referral from a
sponsoring referrer that is providing sponsorship to the content item host for
the content item set” and “upon receiving from a requester a request for a
content item: evaluate the request to determine whether the request
comprises a referral by the sponsoring referrer responsive to the first offer.”
App. Br. 20–28; Reply Br. 17–20.
In the Answer, the Examiner finds:
Appeal 2017-011286
Application 12/490,413
14
Fisher et al. does not teach, and is not relied upon to teach,
wherein the first offer comprises a referral from a sponsoring
referrer. The first offer, or link to the full version of content in
Fisher et al., requires that a user pay money to access the full
version of content.
Brodersen et al. is relied upon to show that a full version
of content may be supported by advertisements from advertisers,
or “sponsoring referrer.” Advertisements are “a referral from a
sponsoring referrer” because advertisements are referral to a
product provided by the sponsor.
Brodersen et al. discusses where content may be purchased
or viewed with advertisements in lieu of payment (see paragraph
[0039]-[0040]). Notably, this shows that a user may access a full
version of content in exchange for viewing advertisements
instead of paying for, as is required in Fisher et al.
Thus, the combination of Fisher et al. in view of Brodersen
et al. does teach the claim limitations notably a first offer (see
Fisher et al. Figure 7 and paragraph [0076], links to a full version
of content) comprising a referral from a sponsoring referrer that
is providing sponsorship to the content item host for the content
items set (see Brodersen et al. paragraphs [0039]-[0040], wherein
access to a full version of content may be supported by
advertisements), and, concurrently, a second offer not
comprising a referral from a sponsoring referrer (see Fisher et al.
Figure 7 and paragraph [0076], links to a short preview version
of content).
Id. at 9–10 (emphasis omitted).
In the Reply Brief, Appellants reiterate arguments presented in the
Appeal Brief and argue that the Examiner’s claim interpretation is
unreasonably broad:
At page 14, the examiner refers to a portion of the Appeal
Brief noting that “the sponsoring referrer provides, to the content
source, both referrals of requests for content items and
sponsorship,” and asserts that “this subject matter is not
claimed.”
However, claim 1 provides: (1) a sponsoring referrer
provides sponsorship to the content item host for the content item
Appeal 2017-011286
Application 12/490,413
15
set, and (2) determining whether the request comprises a referral
(of a requested content item) by the sponsoring referrer.
Together, these elements provides: a sponsoring referrer that
provides, to the content item host, both sponsorship and referrals
of requests by requesters for content items.
Id. at 19–20 (emphasis omitted).
We are persuaded by Appellants’ arguments that the Examiner’s
claim interpretation is unreasonably broad. In particular, the Examiner’s
interpretation does not properly apply the recited claim terms “through a
first offer comprising a referral from a sponsoring referrer that is providing
sponsorship to the content item host for the content item set” and “evaluate
the request to determine whether the request comprises a referral by the
sponsoring referrer responsive to the first offer.” Emphasis added. Claim
terms in a patent application are given the broadest reasonable interpretation
consistent with the Specification, as understood by one of ordinary skill in
the art. In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004). We agree with
Appellants that in this case, these limitations narrow the claim and must be
taught by the references. See Santarus, Inc. v. Par Pharm., Inc., 694 F.3d
1344, 1351 (Fed. Cir. 2012) (limitation “restricted the claims to this
preferred use[,] . . . [t]his exclusion narrowed the claims, as the patentee is
entitled to do.”).
Here claim 1 recites that “a first offer compris[es] a [1] referral from a
sponsoring referrer that is [2] providing sponsorship to the content item.”
See also Spec. ¶¶ 23, 24, Figs. 1, 2. As used in the Specification,
“sponsoring” includes sharing advertising revenue with the content provider.
See Spec. ¶ 23. Appellants refer to Figure 2 as showing the claimed feature
in which the content provider receives both the request 36 via the referrer 18
and sponsorship 46 via the sponsoring referrer 48. The Examiner
Appeal 2017-011286
Application 12/490,413
16
determines advertisements, as in Brodersen, are “‘a referral from a
sponsoring referrer’ because advertisements are referral to a product
provided by the sponsor.” Ans. 9–10. According to the Examiner,
the claims do not contain any steps wherein a referrer serves as
an intermediary for a request. There is no claim limitation
wherein a request is submitted through a referrer. The examiner
also notes that no explicit definition is provided in the
specification for “referrer.” To differentiate from the cited art,
appellant is relying on subject matter from the specification that
simply does not exist in the claims.

The claims require only a content item host to “offer
respective content items to a first offer comprising a referral from
a sponsoring referrer.”
Id. at 11.
In the Reply Brief, Appellants argue the Examiner errs in interpreting
Brodersen’s “‘. . . full version of content may be supported by
advertisements from advertisers’” as ‘a referral from a sponsoring referrer’
because advertisements are referral to a product provided by the sponsor.”
Reply Br. 17 (citation omitted). According to Appellants:
Once again, the examiner’s argument confuses the concept
of a sponsoring referrer, as provided in the claimed techniques,
with the concept of a sponsored referrer, as provided in
Broders[e]n. The examiner’s interpretation of Broders[e]n
requires the content host to be construed as the “referrer,” and
the advertiser is construed as the “content host” of the advertised
product. However, this interpretation would also require the
content host to submit a sponsorship fee to the advertiser, along
with “referring” users who view and follow the advertisement. It
is submitted that the notion that a content host would pay an
advertiser for the privilege of inserting product advertisements
into content is peculiar, and, in addition, is not shown by either
Broders[e]n or Fisher.
Id. at 17 (emphasis omitted).
Appeal 2017-011286
Application 12/490,413
17
We are persuaded by Appellants’ arguments because the Examiner’s
claim interpretation is unreasonably broad.
In view of the above, we do not sustain the rejection of claim 1, and
independent claims 21 and 22 as these claims are argued together with claim
1 and are commensurate in scope. We also do not sustain the rejection of
dependent claims 2–18. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) (“[D]ependent claims are nonobvious if the independent claims from
which they depend are nonobvious . . . .”).
Because our decision is dispositive of the rejection of these claims, we
do not address additional arguments raised by Appellants.

DECISION
We reverse the Examiner’s decision rejecting claims 1–18, 21, and 22
under 35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 1–18, 21, and 22
under 35 U.S.C. § 103(a).

REVERSED