Ex Parte Calabria et al

Patent Trials and Appeals Board

Jun 25, 2019

10741336 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/741,336 12/19/2003
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
06/25/2019
FIRST NAMED INVENTOR
Hermann Calabria
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.
A3360USNP/XERZ200650US01 8950
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
06/25/2019 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 HERMANN CALABRIA, FRANCINE R. CHEN,
AYMAN 0. FARAHAT, and DANIEL H. GREENE
Appeal2017-006872 1
Application 10/741,3362
Technology Center 3600
Before MURRIEL E. CRAWFORD, MEREDITH C. PETRA VICK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) claims 1, 3, 4, 6-8, 10,
12, 14, 16, 18, 19,22-26,29-39,41--46,48-50,53,55-58,and60-68. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed
October 11, 2016), Reply Brief ("Reply Br.," filed March 25, 2017), the
Examiner's Answer ("Ans.," mailed January 26, 2017), and Final Office
Action ("Final Act.," mailed April 25, 2016).
2 Appellants identify "Palo Alto Research Center" as the real party in
interest. Appeal Br. 1.
Appeal2017-006872
Application 10/741,336
CLAIMED INVENTION
Appellants' claims relate generally to "keyword advertising" and
more particularly, to "at least partially automating generation of bids for
positions of keyword advertisements in a competitive bidding environment"
(Spec. ,r 1 ).
Claims 1, 25, 37, and 50 are the independent claims on appeal. Claim
1 is illustrative of the claimed subject matter:
1. A method of generating a bid in conjunction with a
competitive bidding process for a first advertiser for
placement of an advertisement, the method including:
a) selecting at least one keyword at one or more computer
of a keyword advertisement management system;
b) selecting an advertisement associated with the
first advertiser at the one or more computer of the keyword
advertisement management system for placement in search
results lists generated in response to search queries associated
with the at least one keyword, wherein the selecting of the
advertisement by the one or more computer of the keyword
advertisement management system is based at least in part on
matching content of the advertisement to one or more of the at
least one keyword;
c) rece1vmg information associated with other
advertisers in competition with the first advertiser from a
bidding coordination service at the one or more computer of the
keyword advertisement management system, wherein the first
advertiser and the other advertisers are members of a cooperative
group, wherein the other advertiser information includes
information associated with utility of the at least one keyword to
the other advertisers; and
d) calculating a bid for the first advertiser for each at least
one keyword at the one or more computer of the keyword
advertisement management system based at least in part on
processing the other advertiser information using group
optimization logic to determine a bidding strategy for the first
advertiser in conjunction with the at least one keyword that
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benefits the members of the cooperative group in conjunction
with placement of advertisements in search results lists generated
in response to search queries associated with the at least one
keyword.
REJECTIONS
Claims 1, 3, 4, 6-8, 10, 12, 14, 16, 18, 19, 22-26, 29-39, 41--46, 48-
50, 53, 55-58, and 60-68 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 25, 26, and 29--46 are rejected under 35 U.S.C. § I02(b) as
anticipated by Meisel (US 7,035,812 B2, iss. Apr. 25, 2006).
Claims 1, 3, 4, 6-8, 10, 12, 14, 16, 18, 50, 53, and 60-66 are rejected
under 35 U.S.C. § I03(a) as unpatentable over Meisel and Collusive Bidder
Behavior at Single-Object Second-Price and English Auctions, The Journal
of Political Economy; Dec 1987; 95, 6; ABI/INFORM Global pg. 1217
(hereinafter, "Graham").
Claims 19, 22-24, 55, and 56 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Meisel, Graham, and Skinner (US 2003/0105677 Al, pub.
June 5, 2003).
Claims 48, 49, 57, 58, 67, and 68 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Meisel and Skinner.
Claims 31 and 46 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Meisel, Skinner, and Paine (US 7,225,182 B2, iss. May
29, 2007).
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ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS
Bankint'l, 573 U.S. 208,216 (2014).
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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). 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. Kappas, 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
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (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
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rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Gottschalk, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is "directed to" an abstract idea, we tum 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 patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "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. (alterations in original) (quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). Under that guidance, we
first look to 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, i.e., that "apply, rely on, or use 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 2019 Revised Guidance, 84 Fed. Reg. at 53; see
also MPEP § 2106.05(a}-(c), (e}-(h).
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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 2019 Revised Guidance.
Independent claim 1 and dependent claims 3, 4, 6---8, 10, 12, 14, 16, 18, 19,
22-24, 53, 55, 56, and 60---66
Appellants argue claims 1, 3, 4, 6-8, 10, 12, 14, 16, 18, 19, 22-24, 53,
55, 56, and 60-66 as a group (Appeal Br. 7-12; Reply Br. 2-5). We select
independent claim 1 as representative, and the remaining claims stand or fall
with independent claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
With regard to the first step of the Mayo/Alice framework, the
Examiner states that independent claim 1 is "directed to bidding for display
of web advertising" (Final Act. 3), which the Examiner considers to be an
abstract idea, inasmuch as it may be characterized as being related to
"certain methods of organizing human activity" and a "fundamental
economic practice" (Final Act. 3; see also Ans. 3). The Examiner further
characterizes independent claim 1 as being directed to "the abstract idea of
providing online web advertising (i.e. a fundamental economic practice)
using the conventional technology available to[,] and relying on[,]
information generally available to such conventional technology (web click
advertising systems)" (Final Act. 3).
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Addressing Step 2B of the Alice framework, the Examiner states
independent claim 1
do[es] not include additional elements that are sufficient to
amount to significantly more than the judicial exception because
the only other features of the claims are generic computing
structures and these generically recited computer elements do not
add a meaningful limitation to the abstract idea because they
would be routine in any computer implementation. Further the
generic computing structures are only noted as
performing/implementing/applying the abstract ideas of the
claims, and thereby cannot be said to be significantly more than
the abstract ideas themselves. That is, the claims do not improve
upon the underlying computer devices, rather these conventional
devices merely perform the abstract ideas.
Final Act. 3--4.
In response, Appellants argue that claim 1 is directed to "generating a
bid for placement of an advertisement," and thus, "not focused on the
alleged abstract idea (i.e., 'providing online web advertising using
conventional technology')," as the Examiner suggests (Appeal Br. 10-11).
We cannot agree.
Under the first prong of step 2A of the 2019 Revised Guidance, we
first determine if the claims recite an abstract idea. In this regard, the
Specification is titled "KEYWORD ADVERTISEMENT
MANAGEMENT." The Specification describes that "[i]n order to target
advertising accurately, advertisers or vendors pay to have their
advertisements presented in response to certain kinds of queries" (Spec. ,r 2).
According to the Specification, "[ c ]urrently, an advertiser must participate in
every auction of relevant keywords" and "[t]he multiplicity of keyword
combinations and the multiplicity of considerations for each keyword
combination create a number of opportunities for automation support
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mechanisms for advertisement placement decision making" (id. ,r 14). The
Specification discloses that:
[i]f the process of selecting and bidding for keyword
combinations for an advertiser was automated or more
automated, it [is] likely that less guidance would be required
from the advertiser and that advertisements would be placed on
more effective keywords. It is also likely that such automation
would help maximize return on advertising investment (ROAI),
increase the number sponsored keywords, and maximize click-
through rates for keyword advertisements.
(Id. ,r 19). Taking independent claim 1 as representative, the claimed subject
matter recites generally a method, including steps for selecting at least one
keyword (limitation a)), selecting an advertisement associated with a first
advertiser for placement in search results lists (limitation b )), receiving
information associated with other advertisers from a bidding coordination
service (limitation c) ), and calculating a bid using group optimization logic
(limitation d)).
Understood in light of the Specification, we agree with the Examiner
that independent claim 1 is directed broadly to "bidding for display of web
advertising" (Final Act. 3). When viewed through the lens of the 2019
Revised Guidance, the Examiner's analysis depicts the claimed subject
matter as one of the ineligible "[ c ]ertain methods of organizing human
activity" that include "commercial ... interactions," such as "advertising,
marketing or sales activities or behaviors" and "business relations," as well
as "managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions)," under Prong One of Revised Step 2A. See 2019 Revised
Guidance, 84 Fed. Reg. at 52.
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Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we next consider whether the claim recites "additional
elements that integrate the uudicial] exception into a practical application"
under Prong Two of Revised Step 2A. See 2019 Revised Guidance, 84 Fed.
Reg. at 55.
The 2019 Revised Guidance provides five "exemplary considerations"
that "are indicative that an additional element ( or combination of
elements )[J may have integrated the exception into a practical application."
2019 Revised Guidance, 84 Fed. Reg. at 55 (emphasis added). The first
exemplary consideration is whether "[a]n additional element reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field." Id. (citing MPEP § 2106.05(a)). We find no
indication in the Specification, nor do Appellants direct us to any indication,
that the steps recited in independent claim 1 invoke any inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.").
Instead, we agree with the Examiner that the only additional elements
of the claims "are generic computing structures and these generically recited
computer elements do not add a meaningful limitation to the abstract idea"
(Final Act. 3--4). The additional elements simply allow a generic computer
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(i.e., "any suitable combination of hardware and/or software") to perform the
claimed operations using generic computer functions (see Spec. ,r 39).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention "appl[ies ], rel[ies] on, or us[ es] 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 2019 Revised Guidance, 84 Fed. Reg. at 54.
Turning to Step 2B of the Alice framework, Appellants argue, "the
combination of elements, features, and limitations in the claim are
significantly more than the alleged abstract idea" (Appeal Br. 11-12). More
particularly, Appellants argue the limitations of "'selecting an advertisement
based on matching content of the advertisement to a keyword'" and
"'calculating a bid for an advertiser for a keyword based on processing other
advertiser information using group optimization logic to determine a bidding
strategy that benefits the members of the cooperative group'" are "far from
generic computer functions" (Appeal Br. 11 ). Other than asserting that
limitations b) and d) of independent claim 1 provide significantly more than
the alleged abstract idea (see Appeal Br. 11-12), Appellants fail to persuade
us that "selecting an advertisement based on matching content of the
advertisement to a keyword" and "calculating a bid ... using group
optimization logic to determine a bidding strategy that benefits the members
of the cooperative group" amount to anything more than mere instructions to
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implement the abstract idea on a computer-none of which adds an
inventive concept because they merely require the application of
conventional, well-known analytical steps. See Ultramercial, 772 F.3d at
716 ("[T]he claimed sequence of steps comprises only 'conventional steps,
specified at a high level of generality,' which is insufficient to supply an
'inventive concept."' (citing Alice, 134 S. Ct. at 2357)).
In this regard, we note that the "structural limitations for one or more
computer, a keyword advertisement management system, and a bidding
coordination service" (Appeal Br. 11) for performing the steps of selecting
an advertisement, receiving information, and calculating a bid are routine
computer functions that may be performed by any computer system. See In
re Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower
construction of the terms 'processing,' 'receiving,' and 'storing,' discussed
below, those functions can be achieved by any general purpose computer
without special programming"); Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that considering
claims reciting data retrieval, analysis, modification, generation, display, and
transmission as an "'ordered combination"' reveals that they "amount to
'nothing significantly more' than an instruction to apply [an] abstract idea"
using generic computer technology) (internal citation omitted).
Appellants last argue that claim 1 is not directed to an abstract idea
because it "does not attempt to tie up the alleged abstract idea such that
others cannot practice [the alleged abstract idea]" (Appeal Br. 10-11).
"While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
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see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract"). And, "[w]here a patent's claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot." Ariosa, 788 F.3d at 1379.
Appellants' other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (See 2019 Revised Guidance, 84 Fed. Reg. at 51 ("Eligibility-
related guidance issued prior to the Ninth Edition, R---08.2017, of the MPEP
(published Jan. 2018) should not be relied upon."))).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of independent claim 1, and claims 3, 4, 6-
8, 10, 12, 14, 16, 18, 19, 22-24, 53, 55, 56, and 60---66, which fall with
independent claim 1.
Independent claims 25, 37, and 50, and
dependent claims 26, 29-36, 38, 39, 41-46, 48, 49, 57, 58, 67, and 68
Appellants address independent claims 25, 37, and 50 separately.
However, Appellants' arguments for independent claims 25, 37, and 50 are
substantially the same as those for independent claim 1. As such, we are not
persuaded by Appellants' arguments for the same reasons as to independent
claim 1. Therefore, we sustain the rejection of independent claims 25, 3 7,
50, and their respective dependent claims under 35 U.S.C. § 101 for the
reasons discussed above.
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Anticipation
Independent claim 25
We are not persuaded of error by the Appellants' argument that Meisel
fails to disclose or suggest
selecting an advertisement associated with the advertiser at the
one or more computer of the keyword advertisement
management system for placement of the advertisement at an
advertisement position within a web page presenting search
results lists generated in response to search queries associated
with the at least one keyword, wherein placement of the selected
advertisement at the advertisement position within the web page
is determined by the competitive bidding process, wherein the
selecting of the advertisement by the one or more computer of
the keyword advertisement management system is based at least
in part on matching content of the advertisement to the plurality
of keywords.
Appeal Br. 24--26 ( emphases omitted); see also Reply Br. 6--11.
Instead, we agree with the Examiner (see Final Act. 4--6) that
each advertiser's entry (elements 710a-710h) displayed in Figure 7 of
Meisel' s search results page in response to a search query keyword
can reasonably be construed as "selecting an advertisement associated
with the advertiser at the one or more computer of the keyword
advertisement management system for placement of the advertisement
at an advertisement position within a web page presenting search
results lists generated in response to search queries associated with the
at least one keyword," as presently claimed. More particularly,
Meisel discloses that each advertiser has an account that includes at
least one search listing, each of which includes "five components: a
description of the web site to be listed, the Uniform Resource Locator
(URL) of the web site, a search term comprising one or more
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keywords, a set of bid element amounts, and a title for the search
listing" (Meisel, col. 6, 1. 66----col. 7, 1. 4).
In this regard, the advertiser "crafts the title and description of
the listing to encourage users who are likely to respond to the
propositions of the advertiser's web site to click on the listing" (id. at
col. 16, 11. 50---53; see also id. at col. 22, 1. 66----col. 27, 1. 3). These
search listing records are stored in "search database 40" and "used to
generate search results in response to user queries" (see id. at col. 10,
11. 1-3). The advertiser's displayed entry consists of a title, short
description of their website, and hyperlink that directs a searcher to
the advertiser's website via URL (see id. at col. 24, 11. 38--46). The
Examiner's reliance on the entries returned by Meisel' s search page to
address an "advertisement" further is supported by the fact that Meisel
discloses that an "impression" referral occurs each time a search result
item is displayed to the searcher (see id. at col. 24, 11. 48---52).
Appellants assert that Meisel does not mention "matching
content of the advertisement to the search terms" (Appeal Br. 26; see
also Reply Br. 11 ). We, however, find Appellants' assertion fails to
recognize that the Examiner is relying on each returned entry 71 Oa-
71 Oh depicted in the search page of Meisel' s Figure 7 to address an
"advertisement," rather than the advertiser's website itself (see Ans.
4). Here, each search record listing includes the information in the
displayed entry and the record is "used to generate search results in
response to user queries" (see Meisel, col. 9, 1. 66- col. 10, 1. 3). We
find one of ordinary skill in the art would appreciate that Meisel' s
system is matching the content of the "advertisement" (i.e., the
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displayed entry 710a-710h) to selected keyword(s), as presently
claimed, because Meisel discloses an automated process which
evaluates search terms (i.e., keywords) and corresponding websites
according to a set of predefined rules (see id. at col. 10, 11. 20---32).
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 25. We also sustain the rejection as it is directed to
dependent claims 26, 30, and 32-36 because Appellants have not
argued the separate patentability of these claims.
Independent claim 3 7
Independent claim 3 7 recites two "wherein" clauses for the
requirements of "select[ing] an advertisement associated with an advertiser
for placement of the advertisement at an advertisement position within a web
page presenting search results lists generated in response to search queries
associated with the plurality of keywords" and the selecting being "based at
least in part on matching content of the advertisement to the plurality of
keywords." We construe these limitations in a manner similar to the
substantially similar limitations in independent claim 25, as set forth above.
Appellants' arguments for independent claim 3 7 are substantially the
same as those for claim 25, and rely solely on the disclosure of Meisel (see
Appeal Br. 27-28). As such, we are not persuaded by Appellants'
arguments for the same reasons as to claim 25, supra. Therefore, we sustain
the rejection of independent claim 37 as anticipated by Meisel under
35 U.S.C. § 102(b ), and its respective dependent claims (see Appeal Br. 28).
Obviousness
Independent claim 1
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Independent claim 1 recites two "wherein" clauses for the
requirements of "selecting an advertisement ... for placement in search
results lists generated in response to search queries associated with the at
least one keyword, wherein the selecting ... is based at least in part on
matching content of the advertisement to one or more of the at least one
keyword" and "calculating a bid ... using group optimization logic ... "
We construe the first of these "wherein" clauses in a manner similar to the
substantially similar limitations recited in independent claim 25, as set forth
above.
We are not persuaded of error by the Appellants' argument that
Meisel fails to disclose or suggest:
b) selecting an advertisement associated with the first advertiser
at the one or more computer of the keyword advertisement
management system for placement in search results lists
generated in response to search queries associated with the
at least one keyword, wherein the selecting of the advertisement
by the one or more computer of the keyword advertisement
management system is based at least in part on matching content
of the advertisement to one or more of the at least one keyword.
Appeal Br. 29 (emphasis omitted); see also Reply Br. 13-14.
Appellants' arguments for limitation b) are substantially the
same as those for claim 25, and rely solely on the disclosure of Meisel
(see Appeal Br. 29-31 ). As such, we are not persuaded by
Appellants' arguments for the same reasons as to claim 25, supra.
Regarding the second "wherein" clause, we also are not
persuaded of error by Appellants' arguments that the combination of
Meisel and Graham fails to disclose or suggest:
d) calculating a bid for the first advertiser for each at least one
keyword at the one or more computer of the keyword
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advertisement management system based at least in part on
processing the other advertiser information using group
optimization logic to determine a bidding strategy for the first
advertiser in conjunction with the at least one keyword that
benefits the members of the cooperative group in conjunction
with placement of advertisements in search results lists generated
in response to search queries associated with the at least one
keyword.
Appeal Br. 29 (emphasis omitted); see also Reply Br. 14--15.
Appellants assert that adding the collusive bidding behavior of
Graham to Meisel' s ability to calculate a bid for an advertisement still fails
to disclose or suggest "calculating a bid ... using group optimization logic
to determine a bidding strategy" (Appeal Br. 33).
However, Appellants fail to direct us to any specific definition in their
Specification for the term "group optimization logic" which would serve to
distinguish "group optimization logic" from the cooperative
bidding strategies disclosed in Graham and relied on by the Examiner
( see Ans. 5---6; see also Final Act. 14--15). See In re Am. A cad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) ("[d]uring examination [of a
patent application, a pending claim is] given [the] broadest reasonable
[construction] consistent with the specification, and ... claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art") (internal citation and quotations omitted).
In making this determination, we note that Appellants' Specification
describes that "group optimization logic" includes evaluating bids from
advertisers in a group and formulating cooperative strategies such as
exchanging information between advertisers in the advertiser group for
negotiation or relationship building (see Spec. ,r,r 84--93). Thus, we agree
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with the Examiner that Graham discloses cooperative strategies (see,
e.g., Graham 1220, para. 3, 1218, fn. 3, 1223, para. 4; see also Ans. 5).
Therefore, given that the Examiner relies on Meisel to disclose the
step of calculating a bid for an advertiser for a keyword (see Ans. 5; see also
Final Act. 13-14) and Graham teaches cooperative bidding strategies
commensurate with the scope of Appellants' claims and Specification, we
find the combination of Meisel and Graham discloses "calculating a
bid ... using group optimization logic to determine a bidding strategy for
the first advertiser in conjunction with the at least one keyword that benefits
the members of the cooperative group," as recited by independent claim 1.
Equally unpersuasive is Appellants' argument that Graham "teaches
away from generating a bid for a bidder that 'benefits the members of
the cooperative group"' (Reply Br. 14). Just because Graham describes
a secondary auction between members of the cooperative group, where
one member ultimately obtains the desired item initially bid upon by the
group, does not change the fact that Graham discloses cooperative bidding
strategies, and as such, does not disparage Appellants' alleged purpose. See
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) ("A reference may be said
to teach away when a person of ordinary skill, upon [ examining] the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant").
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 1. We also sustain the rejections as it is directed to
dependent claims 3, 4, 6-8, 10, 12, 14, 16, 18, 53, and 60-66 because the
Appellants have not argued the separate patentability of these claims.
18
Appeal2017-006872
Application 10/741,336
Independent claim 5 0
Appellants' arguments for independent claim 50 are substantially the
same as those for independent claim 1 (see Appeal Br. 34--37). As such, we
are not persuaded by Appellants' arguments for the same reasons as to claim
1, supra. Therefore, we sustain the rejection of independent claim 50 as
unpatentable over Meisel and Graham under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1, 3, 4, 6-8, 10, 12, 14, 16, 18, 19,
22-26, 29-39, 41--46, 48-50, 53, 55-58, and 60-68 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejections of claims 1, 3, 4, 6-8, 10, 12, 14, 16, 18,
19, 22-26, 29-39, 41--46, 48-50, 53, 55-58, and 60-68 under 35 U.S.C.
§ § 102 (b) and 10 3 (a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
19