Ex Parte Schein

Patent Trial and Appeal Board

Jun 14, 2018

13925138 (P.T.A.B. Jun. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/925, 138 06/24/2013 Andrew I. Schein
111003 7590 06/18/2018
Adobe / Finch & Maloney PLLC
50 Commercial Street
Manchester, NH 03101
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.
AD0l.2990US01 4539
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/18/2018 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):
docketing@finchmaloney.com
nmaloney@finchmaloney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW I. SCHEIN
Appeal2017-003384
Application 13/925,138
Technology Center 3600
Before CARL W. WHITEHEAD JR., BARBARA A. BENOIT, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3---6, 9, 10, 12, 14--18, and 19--23, which constitute all the pending
claims. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies Adobe Systems Inc. ( the Applicant) as the real party in
interest. App. Br. 2.
2 Pending claims 9 and 10 depend from claim 24, see App. Br. 12 (Claims
App'x), which is not a pending claim, see Final Act. 1 (identifying claims
24--26 as withdrawn), and, therefore, these claims are not before us.
Appeal2017-003384
Application 13/925,138
Introduction
Appellant describes the invention as relating to "systems and methods
for automatically creating and/or updating, in real-time or near real-time,
aspects of one or more models for forecasting costs and other information
associated with digital marketing activities." Spec. ,r 1.
Claims 1, 12, and 18 are independent. Claim 1 is representative of the
claims on appeal, shown here with disputed limitations in italics:
1. A computer-implemented method of digital
marketing forecasting comprising:
receiving, by a bidding processor, a request to bid on a
digital advertising impression via an online auction;
computing, by the bidding processor, a bid to buy the
advertising impression based on a predictive model;
computing, by the bidding processor, a forecast value
associated with serving the advertising impression to a user
based on the predictive model;
encoding, by the bidding processor, the bid amount and
the forecast value in a uniform resource locator (URL);
sending, by the bidding processor, the URL to an auction
processor;
receiving, by the bidding processor and subsequent to
sending the URL to the auction processor, a message from the
auction processor, the message including the URL previously
sent to the auction processor, the URL having the bid amount
and the forecast value encoded therein;
parsing, by the bidding processor, the encoded forecast
value from the URL included in the message;
computing, by the bidding processor, a prediction error
representing a difference between an actual value associated
with the advertising impression and the associated forecast
value parsed from the URL; and
2
Appeal2017-003384
Application 13/925,138
updating, by the bidding processor, the predictive model
based at least in part on the
prediction error using a stochastic gradient [descent] 3
optimization method.
App. Br. 11 (Claims App'x).
Rejections4
Claims 1, 3, 6, 12, 14, 17, 18, 20, and 21 stand rejected under
35 U.S.C. § 103 as unpatentable over Sculley (US 8,572,011 Bl; Oct. 29,
2013), Lester (US 2011/0173065 Al; July 14, 2011), Agarwal (US
8,380,570 B2; Feb. 19,2013), Wang (US 2012/0158456 Al; June 21, 2012),
and Cheung (US 8,374,949 B2; Feb. 12, 2013). Final Act. 4--10.
Claims 4, 9, 15, and 22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Sculley, Lester, Agarwal, Wang, Cheung, and Baratloo
(US 8,788,336 Bl; July 22, 2014). Final Act. 10.
Claims 5, 10, 16 stand rejected under 35 U.S.C. § 103 as unpatentable
over Sculley, Lester, Agarwal, Wang, Cheung, and Axe (US 2013/0304572
Al; Nov. 14, 2013). Final Act. 11.
ANALYSIS
Appellant argues the Examiner errs in rejecting claim 1 by finding the
cited prior art teaches or suggests all limitations of the recited encoding and
3 We agree with Appellant that "decent" in the independent claims obviously
should be "descent" and the misspelling amounts to an obvious and harmless
"scrivener's error." See App. Br. 3 n.6.
4 We note that in response to Appellant's Appeal Brief, the Examiner's
Answer withdraws the Final Action's rejection of claims 1, 12 and 18 under
35 U.S.C. § 112(b) as indefinite for failing to particularly point out and
distinctly claim the subject matter the inventor regards as the invention. See
Ans. 2
3
Appeal2017-003384
Application 13/925,138
receiving steps. App. Br. 7-10; Reply Br. 1--4. Appellant's argument is
persuasive.
Claim 1 requires a bidding processor to encode both a bid amount and
a forecast value in a uniform resource locator (URL), to send that encoded
URL to an auction processor, and then ("subsequent to sending the URL") to
receive from the auction processor a message that includes the previously
sent URL. While we agree with the Examiner that the combination of Lester
and Agarwal teaches encoding a bid amount and a forecast value in a URL
for sending to an auction processor, see Final Act 5-7, the Examiner does
not sufficiently articulate how the cited art teaches or suggests the bidding
processor subsequently receiving from the auction processor the previously
sent encoded URL, as recited.
In response to Appellant's arguments, the Examiner finds Sculley
teaches "receiving, by the bidding processor ... a message from the auction
processor, the message including the URL." Ans. 5 (citing Sculley Abstract,
8:20-30, 38---65). The Examiner does not explain, however, how Sculley
teaches receiving back the same URL, i.e., the previously sent URL that
includes encoded forecast and bid information. Although the Examiner is
correct that Sculley teaches receiving back a URL in the claimed temporal
sequence, see Ans. 5, the claim requires receiving the previously sent URL.
The Examiner errs by not explaining how or why the cited art teaches or
suggests the bidding processor receiving back from the auction processor the
same encoded information previously sent, as recited.
Accordingly, we do not sustain the rejection of claim 1, and of claims
12 and 18, which include similar limitations and stand rejected on the same
grounds. There is no finding in the rejections of the dependent claims that
4
Appeal2017-003384
Application 13/925,138
cures this deficiency and, therefore, we also do not sustain the rejection of
claims 3-6, 14--17, and 20-23, not argued with particularity by Appellant.
See 37 C.F.R. § 4I.37(c)(iv) ("Notwithstanding any other provision of this
paragraph, the failure of appellant to separately argue claims which appellant
has grouped together shall constitute a waiver of any argument that the
Board must consider the patentability of any grouped claim separately.").
DECISION
For the above reasons, we reverse the rejection of claims 1, 3---6, 12,
14--18, and 20-23. 5
REVERSED
5 See supra note 2.
5