Ex Parte Kohn et al

Patent Trial and Appeal Board

Oct 19, 2016

13523737 (P.T.A.B. Oct. 19, 2016)

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.
13/523,737 06/14/2012 Tyler Kohn 800054.403C1 4142
500 7590 10/19/2016
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
10/19/2016 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 TYLER KOHN, DAVID SELINGER, and
MICHAEL DECOURCEY
____________

Appeal 2014-0078521
Application 13/523,7372
Technology Center 3600
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 22, 23, and 26–48. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
April 3, 2014) and Reply Brief (“Reply Br.,” filed July 3, 2014), and the
Examiner’s Answer (“Ans.,” mailed May 7, 2014) and Final Office Action
(“Final Act.,” mailed October 3, 2013).
2 Appellants identify the real party in interest as RichRelevance, Inc. App.
Br. 2.
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CLAIMED INVENTION
Appellants’ claimed invention “relate[s] generally to a system and
method for providing targeted content” and, more specifically, “relates to a
system and method for providing targeted content, such as advertising
content on a web page, by analyzing the context in which the content is to be
provided in light of known attributes of the content available to be provided”
(Spec. ¶ 1).
Claims 22, 36, and 44 are the independent claims on appeal.
Claim 22, reproduced below, is illustrative:
22. A computer-implemented method comprising:
receiving, by a configured computer system, a request for
targeted advertising content to be provided to a user along with
a page of information, the request including a plurality of words
associated with the page;
obtaining, by the configured computer system, one or
more contextual relationship graphs that represent one or more
product categories and include a plurality of nodes corresponding
to products within the represented one or more product
categories;
analyzing, by the configured computer system, the
plurality of words and the one or more contextual relationship
graphs to identify one or more of the plurality of nodes that are
related to the plurality of words, the analyzing being based in part
on one or more profile attributes related to the user that include
information about a purchase history of the user;
selecting, by the configured computer system, the targeted
advertising content for the received request to reflect one or more
products corresponding to the identified one or more nodes; and
indicating, by the configured computer system, the
selected targeted advertising content to enable the selected
targeted advertising content to be provided to the user along with
the page of information.

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REJECTIONS3
Claims 22, 23, 26, 29–31, 34, 36, 37, and 43–45 are rejected under
35 U.S.C. § 103(a) as unpatentable over Madhavan (US 2008/0086372 A1,
pub. Apr. 10, 2008) and Gardenswartz (US 2002/0004754 A1, pub. Jan. 10,
2002).
Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Madhavan, Gardenswartz, and Gong (US 2004/0117395 A1, pub. June 17,
2004).
Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Madhavan, Gardenswartz, and Caid (US 5,619,709, iss. Apr. 8, 1997).
Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Madhavan and Broder (US 2008/0201219 A1, pub. Aug. 21, 2008).
Claims 33 and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Madhavan, Gardenswartz, and Google AdSense, as
evidenced by Marsh (US 2007/0033531 A1, pub. Feb. 8, 2007).
Claims 35, 38, 39, 41, 42, and 46–48 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Madhavan and Henkin (US 2005/0149395 A1,
pub. July 7, 2005).

ANALYSIS
Independent Claim 22 and Dependent Claims 23, 26–31, and 35
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting independent claim 22 under 35 U.S.C. § 103(a) because
the combination of Madhavan and Gardenswartz does not disclose or

3 The rejection of claim 22 on the ground of non-statutory obviousness-type
double patenting has been withdrawn. Ans. 2.
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suggest (1) “using information about a purchase history of a user, in addition
to information about the contents of an information page, as part of
identifying product-related nodes to be used in selecting advertising to
provide to the user on the information page” or (2) “analyzing . . . contextual
relationship graphs that include the product-related nodes . . . to identify . . .
product nodes that are related to words associated with the page of
information, to enable . . . providing targeted advertising content
corresponding to products for the identified product nodes,” i.e.,
analyzing . . . the plurality of words [associated with the page of
information] and the one or more contextual relationship graphs
to identify one or more of the plurality of nodes that are related
to the plurality of words, the analyzing being based in part on one
or more profile attributes related to the user that include
information about a purchase history of the user[,]
as recited in claim 22 (App. Br. 11–17).
By way of background, Madhavan is directed to a system and method
to facilitate the display of advertising information contextually related to
web pages requested by users within a network (Madhavan, Abstract).
Madhavan discloses that one or more categories associated with the web
page are retrieved from a data store based on the context information of the
web page, and that advertisements related to the associated categories are
retrieved from an advertising storage module, and transmitted to the user for
display on the user’s client machine (id.). Gardenswartz is directed to a
substantially analogous web advertising system, and discloses that targeted
advertisements are electronically delivered to registered consumers based on
the consumers’ actual or observed offline purchase history (see, e.g.,
Gardenswartz ¶¶ 15, 18, 63).
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In rejecting claim 22 under § 103(a), the Examiner acknowledges that
Madhavan does not explicitly disclose that a user’s purchase history is used,
in addition to context information about the requested web page, in selecting
targeted advertisements for display, i.e., “the analyzing [of the plurality of
words associated with the page of information] being based in part on one or
more profile attributes related to the user that include information about a
purchase history of the user,” as recited in claim 22 (Final Act. 12). The
Examiner cites Gardenswartz to cure the deficiency of Madhavan. And the
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of Appellants’ invention “to modify Madhavan to
include the teaching of Gardenswartz, yielding advertisements better tailored
to [a] user’s behavior and needs, increasing probability of ad response and
resultant revenues” (id. (citing Gardenswartz ¶¶ 15, 18, 63, and 84–86;
Fig. 5, refs. 504, 506; Fig. 9, ref. 82)).
Appellants argue that the Examiner’s proposed modification of
Madhavan in view of Gardenswartz is improper because Gardenswartz
teaches away from the proposed modification (App. Br. 12–14). That
argument is unavailing.
Discussing the background of the invention, Gardenswartz discloses
that then current systems generate advertisements based on a consumer’s
online activity (Gardenswartz ¶¶ 8, 9, 11), and describes that a disadvantage
of generating advertisements based on online activity resides in the fact that
a consumer’s actions on the Internet may not be strongly related to the
consumer’s preferences as a consumer in the offline world and may not
reveal, or may even contradict, a consumer’s offline purchase behavior (id.
¶¶ 11, 85). “Thus, a consumer’s activity on the Internet, including online
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purchases and access to various Web sites, may not reflect what the
consumer will buy at a shopping mall or supermarket” (id. ¶ 11).
Gardenswartz discloses that its system overcomes the drawbacks of
these conventional online advertising systems and methods by delivering
targeted advertisements based on what consumers are known to have
purchased offline, i.e., their observed or actual offline purchase histories. (id.
¶¶ 84–86). Yet, in disclosing that its system of selecting targeted
advertisements based on offline purchase histories is preferable (or even
superior) to prior art systems that select targeted advertisements based on a
consumer’s online activity because the online activity “may not reveal, or
may even contradict, [the] consumer’s offline purchase behavior,” (id. ¶ 85
(emphasis added)), Gardenswartz does not “teach away” from selecting
targeted advertisements based on a user’s online activity, i.e., based on the
user’s online purchases and access to various Web sites, as disclosed in the
prior art, let alone teach away from selecting targeted advertisements based
on the user’s purchase history in combination with an analysis of a plurality
of words associated with a user-requested web page, as called for in
claim 22.
It also is significant here that the Examiner does not propose to
modify Gardenswartz to include an analysis of online content in selecting
targeted advertisements. The Examiner relies on Madhavan as disclosing
that context information about a requested web page is analyzed and used in
selecting targeted advertisements for display to the requesting user. But the
Examiner acknowledges that Madhavan does not disclose that the user’s
purchase history is used in selecting the targeted advertising, and cites
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Gardenswartz for its disclosure of delivering targeted advertisements based
on purchase history.
Appellants have not shown that the Examiner erred in determining
that a person of ordinary skill in the art, using no more than ordinary
creativity, would have modified Madhavan’s method to include the use of
information about a purchase history of the user, as disclosed in
Gardenswartz, to thereby “yield[ ] advertisements better tailored to [the]
user’s behavior and needs, increasing probability of ad response and
resultant revenues” (Final Act. 12). “Obviousness does not require absolute
predictability of success . . . all that is required is a reasonable expectation of
success.” In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis
omitted) (citing In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)).
Modifying Madhavan, as the Examiner proposes, to deliver targeted
advertisements using purchase history, as disclosed in Gardenswartz, is no
more than a combination of prior art elements according to their established
functions, and yields a predictable result. Therefore, it would have been
obvious to a person of ordinary skill in the art at the time of Appellants’
invention. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results”).
We also are not persuaded by Appellants’ further argument that the
combination of Madhavan and Gardenswartz does not disclose or suggest:
analyzing . . . the plurality of words [associated with an
information page] and the one or more contextual relationship
graphs [that represent one or more product categories and include
a plurality of nodes corresponding to products within the
represented one or more product categories] to identify one or
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more of the plurality of nodes that are related to the plurality of
words[,]
as recited in claim 22 (App. Br. 14–17). Instead, we agree with the
Examiner that Madhavan discloses the argued limitation (Final Act. 9–10;
see also Ans. 3–5).
Madhavan discloses that page category tables contain multiple
categories used to group web pages accessed by the processing servers, and
that the categories stored within these page category tables are organized
into a hierarchical taxonomy (Madhavan ¶ 29). Madhavan describes that the
taxonomy may comprise, for example, a high-level category for “music” and
several sub-categories, located hierarchically below the “music” category,
and illustrating different genres of music (id.). And Madhavan discloses
that, in selecting targeted advertising, Madhavan searches the hierarchical
taxonomy for categories that most closely match the context of the requested
web page (see, e.g., id. ¶¶ 41, 55). Madhavan also teaches that the
categorized content may include automobiles, i.e., products (id. ¶ 17). We
agree with the Examiner that a person of ordinary skill in the art would
recognize that an embodiment of Madhavan’s system could substitute
product categories and subcategories for the music category and
subcategories described in paragraph 29 of Madhavan (Ans. 4).
Appellants acknowledge that “Madhavan discloses that
advertisements are associated with high-level categories (e.g., ‘Music’ or
‘Automobiles’), that a Web page is associated with one of the high-level
categories, and that a corresponding advertisement for that high-level
category is selected for display” (App. Br. 16). But Appellants argue that
Madhavan does not meet the claimed language because Madhavan does not
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disclose “identifying or using individual music items (e.g., songs or albums)
or any other types of individual products” (id. at 15).
The difficulty with Appellants’ argument, as the Examiner observes,
is that “there is no recitation in the claims pertaining to individual products”
(Ans. 4–5). We agree with the Examiner that Madhavan’s disclosure of
product categories and subcategories meets the claim language, i.e.,
“contextual relationship graphs that represent one or more product categories
and include a plurality of nodes corresponding to products within the
represented one or more product categories,” under a broadest reasonable
interpretation standard (id. at 5).
Finally, we are not persuaded by Appellants’ argument that the
Examiner failed to provide articulated reasoning with rational underpinning
to support the obviousness determination (App. Br. 16–17). Instead, we find
that the Examiner provided the requisite reasoning at page 11 of the Final
Office Action.
Addressing the argued limitation, the Examiner notes that Madhavan
discloses that content areas can include products, e.g., automobiles (Final
Act. 11). And the Examiner explains that although Madhavan uses music
and music genres, rather than automobiles and automobile types, as an
example of a category and category nodes, “the simple substitution of one
known element for another producing a predictable result renders the claim
obvious” (id.). Appellants have presented no persuasive argument or
technical reasoning to demonstrate that the Examiner’s finding is
unreasonable or unsupported.
In view of the foregoing, we sustain the Examiner’s rejection of
claim 22 under 35 U.S.C. § 103(a). We also sustain the Examiner’s
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rejections of dependent claims 23, 26–31, and 35, which are not argued
separately except to assert, with respect to claims 27, 28, and 35, that the
additional references relied on in rejecting these claims do not cure the
alleged deficiencies in the Examiner’s rejection of independent claim 22,
and that all of claims 23, 26–31, and 35 are allowable based on their
dependence from claim 22 (App. Br. 17).
Dependent Claim 33
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 33 under 35 U.S.C. § 103(a) because the combination of
Madhavan and Gardenswartz does not disclose or suggest that analyzing
contextual relationship graphs and the plurality of words in the page of
information, as recited in claim 22, “is further based on one or more
contextual attributes related to the page of information, the one or more
contextual attributes including information about prior changes to content of
the page of information,” as recited in claim 33 (App. Br. 18–19).
The Examiner acknowledges that neither Madhavan nor Gardenswartz
explicitly discloses that the contextual attributes include “information about
prior changes to content of the page of information,” and the Examiner cites
Marsh to cure this deficiency (Final Act. 19–20 (citing Marsh ¶¶ 95–97,
100)).
Marsh is directed to a method and apparatus for generating and
delivering selected primary content and contextually-related targeted
secondary content to users of a network (Marsh, Abstract), and discloses that
the Google “AdSense for Context” provides contextually targeted
advertisements to users, i.e., advertisements that are contextually related to
the results of a user-specified query (id. ¶¶ 95, 100). Marsh discloses that
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the Google AdSense technology is dynamic, such that “as the page or site
content changes, the advertisements returned by the server change to match”
(id. ¶ 97). But we agree with Appellants that there is nothing in the cited
paragraphs of Marsh that discloses or suggests that information about prior
changes to content of the page of information is analyzed in identifying the
targeted advertisements for display to the user (App. Br. 19–20).
Therefore, we do not sustain the Examiner’s rejection of claim 33
under 35 U.S.C. § 103(a).
Dependent Claim 34
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claim 34 under 35 U.S.C. § 103(a) because the combination of
Madhavan and Gardenswartz does not disclose or suggest that analyzing
contextual relationship graphs and the plurality of words in the page of
information include using an IP address associated with the user, i.e., that
“the received request [recited in independent claim 22] further includes the
one or more profile attributes related to the user, and wherein the one or
more profile attributes further include an IP (Internet Protocol) address
associated with the user,” as recited in claim 34 (App. Br. 18–19).
The Examiner cites paragraph 9 of Gardenswartz as disclosing the
claimed subject matter (Final Act. 13). Gardenswartz discloses in
paragraph 9 that cookies are used to track the various IP addresses accessed
by a consumer’s computer and that specific advertisements may be targeted
to the consumer based on a record of the consumer’s online activities. But
we find nothing in paragraph 9 of Gardenswartz that discloses or suggesting
using the IP address of a user in identifying targeted advertising, as called
for in claim 34.
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Therefore, we do not sustain the Examiner’s rejection of claim 34
under 35 U.S.C. § 103(a).
Independent Claim 36 and Dependent Claims 37–39 and 41–43
Appellants argue that independent claim 36 is allowable with
reference to Appellants’ arguments with respect to independent claim 22
(App. Br. 23–25). We found Appellants’ arguments unpersuasive with
respect to claim 22, and we find them equally unpersuasive with respect to
claim 36.
Therefore, we sustain the Examiner’s rejection of claim 36 under
35 U.S.C. § 103(a) for the same reasons set forth above with respect to
claim 22. We also sustain the Examiner’s rejections of dependent
claims 37–39 and 41–43, which are not argued separately except to assert,
with respect to claims 38, 39, 41, and 42, that Henkin does not cure the
alleged deficiencies in the Examiner’s rejection of independent claim 36,
and that all of claims 37–39 and 41–43 are allowable based on their
dependence from claim 36 (App. Br. 24–25).
Dependent Claim 40
Claim 40 includes language substantially similar to claim 33, and
stands rejected based on the same rationale applied in rejecting claim 33
(Final Act. 20). Therefore, we do not sustain the rejection of claim 40 under
35 U.S.C. § 103(a) for the same reasons set forth with respect to claim 33.
Independent Claim 44 and Dependent Claims 45–48
Appellants argue that independent claim 44 is allowable with
reference to Appellants’ arguments with respect to independent claim 22
(App. Br. 21–23). We found Appellants’ arguments unpersuasive with
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respect to claim 22, and we find them equally unpersuasive with respect to
claim 44.
Therefore, we sustain the Examiner’s rejection of claim 44 under
35 U.S.C. § 103(a) for the same reasons set forth above with respect to
claim 22. We also sustain the Examiner’s rejections of dependent
claims 45–48, which are not argued separately except to assert, with respect
to claims 46–48, that Henkin does not cure the alleged deficiencies in the
Examiner’s rejection of independent claim 44, and that all of claims 45–48
are allowable based on their dependence from claim 44 (App. Br. 23).

DECISION
The Examiner’s rejections of claims 22, 23, and 26–32, 35–39, and
41–48 under 35 U.S.C. § 103(a) are affirmed.
The Examiner’s rejections of claims 33, 34, and 40 under 35 U.S.C.
§ 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART