Ex Parte Krassner et al

Patent Trial and Appeal Board

Jul 13, 2018

12316781 (P.T.A.B. Jul. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/316,781 12/16/2008
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 900
DALLAS, TX 75201-2980
07/17/2018
FIRST NAMED INVENTOR
Brad Krassner
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.
082097.0108 2529
EXAMINER
JOSEPH, SHAWN S
ART UNIT PAPER NUMBER
2176
NOTIFICATION DATE DELIVERY MODE
07/17/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRAD KRASSNER, NIKOLAI MENTCHOUKOV,
ALAN EDWARDS, and IGOR TCHIBIREV
Appeal 2017-011786
Application 12/316, 781
Technology Center 2100
Before ERIC B. CHEN, BARBARA A. BENOIT, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 23 and 65-83, which are all the pending claims. Claims 1-22 and
24--64 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART. 2
1 Appellants identify Rich Media Club, LLC as the real party in interest.
App. Br. 2.
2 As discussed infra in "The Nonstatutory Double Patenting Rejection"
section of the Analysis, because previously pending claims from a related
patent application used by the Examiner for a provisional rejection for
nonstatutory double patenting no longer are pending (and those then-pending
claims differ from the claims of the patent that issued from that application),
we do not address that rejection.
Appeal2017-011786
Application 12/316, 781
Introduction
The present invention is a system and method for
delivering and rendering content automatically and only when
and/ or to the extent that a pre-defined area of the content page
is within the viewer's browser window dimensions and
scrolling position, or within a pre-defined distance from the
viewer's browser window dimensions and scrolling position.
Spec. ,r 7 (Summary of the Invention).
Claim 23 is illustrative (shown with a disputed limitation in italics):
23. A method comprising:
determining, by code executed by a computing system,
whether a pre-defined area of a content page is either at least
partially within a visible area of an application window on a
display device or is within a pre-defined distance outside of the
visible area of the application window by comparing
coordinates of the pre-defined area with coordinates of the
application window;
causing an advertisement to be rendered in the pre-
defined area of the content page in response to determining that
the pre-defined area is either at least partially within the visible
area of the application window or is within the pre-defined
distance outside of the visible area of the application window.
App. Br. 19 (Claims App'x).
Rejections
The Examiner rejected claims 23 and 65-83 for nonstatutory double
patenting over claims 73, 75, 76, 88, 90-92, 95-97, 100, 102, 103, 105-112,
and 114--122 of Application No. 13/731,742. 3 Final Act. 2-10.
Claims 23 and 65-83 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Koeppel et al. (US 2005/0177401 Al; Aug. 11, 2005). Final
Act. 4--46.
3 The cited application is no longer pending; it issued as US 9,824,074 B2.
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Appeal2017-011786
Application 12/316, 781
Claims 23 and 65-83 stand rejected under 35 U.S.C. § 103 as
unpatentable over Koeppel and Dutta et al. (US 2004/0205651 Al; Oct. 14,
2004). Final Act. 46-91.
ANALYSIS
The 35 U.S.C. §§ 102 and 103 Rejections of Claim 23
For both the§ 102 anticipation rejection and the§ 103 obviousness
rejection of claim 23, the Examiner makes identical findings for how
Koeppel discloses or teaches the disputed limitation identified above. See
Final Act. 5---6, 48--49 (both citing Koeppel ,r 170). 4 Appellants argue the
Examiner errs in both rejections because
Koeppel and the proposed Dutta-Koeppel combination fail[] to
disclose, teach, or suggest, "causing an advertisement to be
rendered in the pre-defined area of the content page in
response to determining that the predefined area is either at
least partially within the visible area of the application window
or is within the pre-defined distance outside of the visible area
of the application window," as recited.
App. Br. 9. Specifically, Appellants contend the Examiner errs because any
advertisement in Koeppel "is displayed in a new webpage on a subsequent
visit, not in 'the pre-defined area' that is determined to be 'either at least
partially within the visible area of the application window or is within the
pre-defined distance outside of the visible area of the application window,[']
as required." App. Br. 13 (citing Koeppel ,r,r 38-39).
The Examiner responds that claim 23 does not preclude causing the
advertisement to be rendered in "the pre-defined area" on a subsequent visit.
4 We have considered all of the Examiner's findings and reasons in the
rejection and Answer and find it unnecessary to respond to every issue
raised by the Examiner with which we disagree (e.g., the issue of whether
certain limitations may be read out of the claims (see Final Act. 4, 6)).
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Application 12/316, 781
"For example, during that 'subsequent visit,' the user's 'in view collection
process' ... occurs, and 'the in view status of a target component' is
determined." Ans. 15. As Appellants reply, however, and we agree, the
Examiner's new finding in the Answer runs afoul of the antecedent basis
requirements of claim 23, which requires "determining" ... whether!!. pre-
defined area of!!. content page is either at least partially within a visible
area of an application window" and "causing an advertisement to be
rendered in the pre-defined area of the content page." Reply Br. 4--5.
Koeppel teaches monitoring what is "in view" during a user session
and then using that information for updating Web pages for future user
sessions, including using the "in view" information in the selection of
advertisements for rendering in the subsequent Web pages. See Koeppel
,r,r 38--40, 57. The disputed limitation, on the other hand, requires rendering
an advertisement in the same area of the same content page that is at least
partially within the visible area ( or within a predefined distance), which is
the same content page used in the determining step. Thus, Koeppel's
teaching of providing an advertisement in a subsequently updated Web page
does not teach or suggest "causing an advertisement to be rendered in the
pre-defined area of the content page," as recited. Accordingly, we agree
with Appellants the Examiner errs in finding Koeppel discloses, teaches, or
suggests the disputed limitation.
Therefore, we do not sustain the 35 U.S.C. §§ 102 and 103 rejections
of independent claim 23. We also, accordingly, do not sustain the§§ 102
and 103 rejections of its dependent claims 65-74.
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Appeal2017-011786
Application 12/316, 781
The 35 U.S.C. §§ 102 and 103 Rejections of Claims 75 and 80
In the 35 U.S.C. §§ 102 and 103 rejections of claims 75 and 80, the
Examiner makes identical findings for how Koeppel discloses or teaches the
disputed limitation of "taking a second action in response to determining that
the predefined area is not at least partially within the visible area of the
application window, the second action being different from the first action,"
as recited in both claims (see App. Br 21, 24 (Claims App'x)). Final Act.
22, 40-41, 65---66, 85 (all citing Koeppel ,r 152). Appellants argue the
Examiner errs because-
Koeppel and the proposed Dutta-Koeppel combination fail[] to
disclose, teach, or suggest, "taking a second action in response
to determining that the pre-defined area is not at least
partially within the visible area of the application window, the
second action being different from the first action," as recited.
App. Br. 14; see also id. at 15 and Reply Br. 8-10. Specifically, Appellants
contend that claim 23, on the one hand, "requires taking the second action
when the pre-defined area is not at least partially visible (i.e[.], no portion of
the pre-defined area is visible)," but Koeppel, on the other hand "merely
disclose[ s] determining that a component is less than 100% visible (but is at
least partially visible) and then generating an in view percentage
characteristic." App. Br. 14--15.
Appellants' argument is unpersuasive. Appellants construe Koeppel
too narrowly. As the Examiner responds, and we agree, "[n]owhere does
Koeppel require, or restrict, that the component be 'at least partially
visible."' Ans. 18. An ordinarily skilled artisan would have understood that
the "in view" percentage of Koeppel can be zero, which correlates to, in the
vernacular of claims 75 and 80, the "predefined area of a content page"
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being "not at least partially within the visible area of the application
window," as recited.
Koeppel describes triggering the "in view collection process" in
multiple ways, e.g., based on the occurrence of loading a Web page, or on
detecting scrolling or resizing of the Web browser. See Koeppel ,r 87.
Based on such triggers, Koeppel' s system "begins to collect in view
characteristic data ... to determine the in view status of a target
component." Id. Regardless that Koeppel primarily discusses partially
viewable target components (see Koeppel ,r,r 84 et seq.), ordinarily skilled
artisans would have understood that "determin[ing] the in view status of a
target component" (i-f 87) also includes making the determination for a target
component that is either fully inside or outside of the viewable area.
Koeppel specifically notes the "view data collected" includes "information
such as data indicating whether content is actually viewable." Koeppel
,r 154. For a not-in-view target component, consistent with Koeppel's
disclosed formulae, the calculated in view percentage will simply be zero.
We also note the "taking a second action in response" requirement of the
disputed limitation reads on Koeppel' s action of sending data related to the
indication that the content is not in view to a Web server. See Koeppel
,r 154--55.
Accordingly, Appellants' arguments do not persuade us of Examiner
error in the 35 U.S.C. §§ 102 and 103 rejections of claims 75 and 80. Thus,
we sustain the§§ 102 and 103 rejections of claims 75 and 80, and of their
dependent claims 76, 77, 79, and 81-83, for which Appellants offer no
separate arguments.
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The 35 U.S.C. §§ 102 and 103 Rejections of Claims 67, 69, and 78
Dependent claims 67, 69, and 78 each include a requirement for
determining a scrolling position of an application window, for which the
Examiner's 35 U.S.C. §§ 102 and 103 rejections rely on Koeppel. See Final
Act. 11-12, 14--15, 27-28, 54--55, 57-58, 71-72 (all identically citing
Koeppel ,r,r 85-115 (quoting ,r,r 85-88)). Appellants argue the Examiner
errs because, "while the cited portions of Koeppel may disclose detecting
that a user has scrolled a browser, merely detecting that a user has scrolled a
browser does not disclose, teach, or suggest 'determining . .. a scrolling
position of the application window on the display device,' as recited." App.
Br. 16.
The Examiner responds that "Appellant provides no explanation or
analysis" and the argument "amounts to no more than a mere allegation of
patentability." Ans. 21. We disagree with the Examiner. Here, Appellants
fairly summarize the relied-on disclosure of Koeppel as "merely detecting
that a user has scrolled" and argue, concisely, that detecting the fact of the
occurrence of scrolling is not the same as determining a "scrolling position,"
as recited. App. Br. 16. As Appellants clarify in reply-
[M]erely detecting that a user is scrolling does not necessarily
disclose "determining ... a scrolling position" of an
application window. The Examiner does not explain how or
where the cited portion of Koeppel discloses "determining ... a
scrolling position" of an application window. . . . Appellants
respectfully note that "[a]ll words in a claim must be considered
in judging the patentability of that claim against the prior art."
(M.P.E.P. § 2143.03, citing In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCP A 1970).
Reply Br. 11 (brackets in original).
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Application 12/316, 781
Appellants' argument is persuasive. The cited portions of Koeppel
discuss scrolling as an event that may trigger capture of data, but there is no
indication of determining or using any type of scrolling position, as recited
in claims 67, 69, and 78. See Koeppel ,r,r 85-115. Accordingly, we do not
sustain the 35 U.S.C. §§ 102 and 103 rejections of claims 67, 69, and 78.
The Non-Statutory Double Patenting Rejection
As discussed supra, we reverse the Examiner's 35 U.S.C. §§ 102 and
103 rejections, thus leaving the provisional double patenting rejection as the
only outstanding rejection. The application used for the nonstatutory double
patenting rejection, however, no longer is pending, and the claims of the
patent that issued from that application substantively differ from the claims
pending at the time of the rejection. In this situation, we leave it to the
Examiner to determine whether to withdraw the double patenting rejection
or whether a terminal disclaimer would be required for the application to
issue as a patent. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential); see also MPEP § 804(I)(A).
DECISION
For the above reasons, we affirm the 35 U.S.C. §§ 102 and 103
rejections of claims 75-77 and 79-83, and we reverse the 35 U.S.C. §§ 102
and 103 rejections of claims 23, 65-74, and 78.
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-IN-PART
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