Ex Parte Monteverde

Board of Patent Appeals and Interferences

Feb 21, 2007

09624107 (B.P.A.I. Feb. 21, 2007)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DANTE MONTEVERDE
__________

Appeal No. 2006-2563
Application No. 09/624,107
___________

ON BRIEF
___________

Before OWENS, NAPPI and FETTING, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The appellant appeals from a rejection of claims 23-25, 29-
44 and 48-53, which are all of the pending claims.
THE INVENTION
The appellant claims a method and computer implemented
system for internet based advertising. Claim 23 is illustrative:
23. A method of internet-based advertising comprising:
providing a system having a plurality of advertisers’ web
sites and an advertiser associate’s web site with a first
selectable link;

providing a plurality of advertiser links that are
respectively directed to the advertisers’ web sites;

Appeal No. 2006-2563
Application No. 09/624,107

2
providing in the first selectable link a term chosen by the
advertiser associate’s web site;

displaying the first selectable link on an Internet user’s
computer in response to an Internet user accessing the advertiser
associate’s web site;

transmitting to the Internet user’s computer the advertiser
links in response to selection of the first selectable link by
the Internet user; and

causing transmission of an advertiser’s web site to the
Internet user’s computer in response to selection of a
corresponding advertiser link by the Internet user, thereby
accomplishing a referral to the advertiser’s web site.

THE REFERENCES
Bezos et al. (Bezos) 6,029,141 Feb. 22, 2000
Davis et al. (Davis) 6,269,361 Jul. 31, 2001
(filed May 28, 1999)
THE REJECTION
Claims 23-25, 29-44 and 48-53 stand rejected under
35 U.S.C. § 103 as being unpatentable over Davis in view of
Bezos.
OPINION
We reverse the aforementioned rejection. We need to address
only the independent claims, i.e., claims 23, 31, 37, 39 and 44.
Those claims require a first selectable link having a term chosen
by an advertiser associate’s web site (claims 23, 31, 39 and 44)
or an advertiser associate (claim 37).

Appeal No. 2006-2563
Application No. 09/624,107

3
Davis discloses a system and method that enables an
advertiser such as a web site promoter to influence the position
of the advertiser’s listing in search result lists obtained when
Internet users enter search terms in search engine queries
(col. 4, lines 55-64; col. 5, lines 18-19). Preferably the
position is determined by an online competitive bidding process
by the advertisers (col. 4, line 65 – col. 5, line 4). The
advertisers’ bids are the amounts the advertisers will pay the
search engine owner each time a searcher clicks on the
advertiser’s hyperlink listing in the search results; the higher
the bid, the more advantageous the placement of the advertiser’s
listing in the search result list (col. 5, lines 22-27 and 35-
37). The advertisers select search terms to bid upon that are
relevant to the advertisers’ web sites and preferably are likely
to be entered by searchers seeking information on the
advertisers’ web sites (col. 12, lines 49-53).
Bezos discloses a system and method, implemented in part on
software that runs on merchants’ web sites, that enables the
merchants to have their products reviewed and/or recommended on
the web sites of associates who enroll via an automated
registration process (col. 1, lines 50-61). The associates’ web
sites have referral links that allow users to link to the
merchants’ web sites to purchase products from the merchants
Appeal No. 2006-2563
Application No. 09/624,107

4

(col. 1, lines 62-66; col. 7, lines 12-20). If a user who has
clicked on a merchant’s link on an associate’s web site purchases
a product from the merchant’s web site, the merchant’s software
automatically credits the associate by, for example, crediting a
commission to the associate’s account (col. 2, lines 9-14). The
merchant’s link on the associate’s web site can include a search
term (e.g., “Terrain Skiing”) chosen by the associate (col. 12,
lines 10-14; fig. 6).1
The examiner acknowledges that Davis does not disclose
providing in a first selectable link a term chosen by an
advertiser associate or an advertiser associate’s web site
(answer, 20th page).2 The examiner’s reason for combining Davis
and Bezos is in a single, page and a half long sentence (answer,
23rd to 25th pages). That sentence sets forth what the examiner
asserts one of ordinary skill in the art would have been
motivated to do, e.g., “to have a user or customer visit an
advertiser’s associate web site and seamlessly click on a
referral link or a graphical icon or keyword associated with a
plurality of objects or advertisers’ links and displayed thereon,
without the user’s input or search query and based on the

1 Selecting the associate’s link sends the user to the merchant’s web page.
That selection does not display on the user’s computer the plurality of
advertiser links required by the appellant’s independent claims, and there is
no evidence that the merchant would want a plurality of advertiser links
displayed on the merchant’s web page.
Appeal No. 2006-2563
Application No. 09/624,107

5

background or expertise of the associate (or based on the type of
business the associate is in), to cause the outputting of the
plurality of advertisers’ links or web site addresses on the
user’s computer screen …” (answer, 23rd to 24th pages). Another
example of part of the sentence is “thereby enabling the
associate to participate in the advertising referral service or
system and become associate of at least one advertiser and market
via the associate’s web site a product sold at the at least the
advertiser’s web site in return for a commission when a customer
purchases at the advertiser’s or merchant’s web site a product
when the user seamlessly or effortlessly clicks on one of the
displayed advertiser’s links associated with the graphical icon
or keyword automatically displayed on the user’s computer via the
advertiser associate’s web site” (answer, 24th page).
For a prima facie case of obviousness to be established, the
teachings from the prior art itself must appear to have suggested
the claimed subject matter to one of ordinary skill in the art.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976). The mere fact that the prior art could be modified as
proposed by the examiner is not sufficient to establish a prima
facie case of obviousness. See In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).

2 The pages of the examiner’s answer are not numbered.
Appeal No. 2006-2563
Application No. 09/624,107

6
Davis’ users enter search terms into a search engine query
(col. 4, lines 60-61). The examiner’s proposed modification
would require the users to go to Bezos’ associate’s web site and
select a search term that results in display of a plurality of
advertiser links rather than Bezos’ merchant’s web page. Neither
the examiner’s page and a half long sentence nor the rest of the
examiner’s answer provides the required explanation as to how
that proposed modification of Davis follows from the teachings of
Davis and Bezos themselves.
We therefore conclude that the examiner has not carried the
burden of establishing a prima facie case of obviousness of the
appellant’s claimed invention.
Appeal No. 2006-2563
Application No. 09/624,107

7
DECISION
The rejection of claims 23-25, 29-44 and 48-53 under
35 U.S.C. § 103 over Davis in view of Bezos is reversed.
REVERSED

TERRY J. OWENS
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS
) AND
ROBERT E. NAPPI ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )
Appeal No. 2006-2563
Application No. 09/624,107

8

Seyfarth Shaw, LLP
131 S. Dearborn St., Suite 2400
Chicago, IL 60603-5803

TJO/ki