MAXYMISER LTD.

Patent Trials and Appeals Board

Feb 2, 2022

2020006227 (P.T.A.B. Feb. 2, 2022)

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. 14/400,378 11/11/2014 Alexander Polishchuk R00058NP 7353 129668 7590 02/02/2022 Invoke / Oracle 30 Wall Street #800 8th Floor New York, NY 10005 EXAMINER GREENE, JOSEPH L ART UNIT PAPER NUMBER 2452 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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@InvokeIP.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXANDER POLISHCHUK, DMITRIY SKOROKHODOV, and DIMITRIS TSOMOKOS Appeal 2020-006227 Application 14/400,378 Technology Center 2400 Before JOSEPH L. DIXON, MARC S. HOFF, and ELENI MANTIS MERCADER, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3-6,12, 15-17, 19, 23, 32, 38, and 42-49. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2019). Appellant identifies the real party in interest as Maxymiser Ltd Corporation, the assignee of record, which is a subsidiary of the Oracle Corporation. Appeal Br. 1. Appeal 2020-006227 Application 14/400,378 2 CLAIMED SUBJECT MATTER The claims are directed to a method of operating a server apparatus for delivering website content. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. One or more non-transitory machine-readable media storing instructions which, when executed by one or more hardware processors, cause optimizing a webpage comprising a plurality of website content elements comprising: storing a plurality of variants of a first website content element of the plurality of website content elements, and storing a respective weighting for each variant of the plurality of variants of the website content element; causing display, within a web page, of (a) a particular variant of the plurality of variants of the first website content element and (b) a second website content element; determining a number of times that the particular variant was displayed based at least in part on said display of the first variant within the web page; receiving a first user-initiated action directed to the particular variant; determining an action count corresponding to a number of user-initiated actions directed to the particular variant based at least in part on the first user-initiated action; determining a ratio of (a) the action count corresponding to the number of user-initiated actions directed to the particular variant to (b) the number of times that the particular variant was displayed; adjusting the respective stored weighting of the particular variant based on the ratio of (a) the number of user-initiated actions directed to the particular variant to (b) the number of times that the particular variant was displayed; selecting the particular variant from among the plurality of variants for displaying the first website content element based on the adjusted respective stored weighting of the particular variant; and Appeal 2020-006227 Application 14/400,378 3 presenting the particular variant for displaying the first website content element. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Siegel US 2008/0114778 A1 May 15, 2008 Suryanarayana et al. US 2009/0248883 A1 Oct. 1, 2009 Catlin et al. US 2009/0282343 A1 Nov. 12, 2009 Merom et al. US 8,880,607 B1 Nov. 4, 2014 Donovan et al. US 9,143,572 B2 Sept. 22, 2015 Reavis US 9,245,274 B2 Jan. 26, 2016 Phillips WO 2008/076741 A1 June 26, 2008 REJECTIONS Claims 1, 3, 5, 12, 15-17, 23, 32, 38, 42-46, 48, and 49 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Catlin in view of Suryanarayana in view of Siegel and in further view of Reavis. Claims 6 and 47 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Catlin, Suryanarayana, Siegel, and Reavis in further view of Phillips. Claim 4 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Catlin, Suryanarayana, Siegel, and Reavis in further view of Merom. Claim 19 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Catlin, Suryanarayana, Siegel, and Reavis in further view of Donovan. Appeal 2020-006227 Application 14/400,378 4 OPINION 35 U.S.C. § 103(a) We are bound by the controlling guidance of our reviewing court: “[i]t is the claims that measure the invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations omitted); In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (citations omitted) (“[T]he name of the game is the claim.”) (emphasis added). “Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). As articulated by the Federal Circuit, the Examiner’s burden of proving non-patentability is by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“[P]reponderance of the evidence is the standard that must be met by the PTO in making rejections”). “A rejection based on section 103 clearly must rest on a factual basis[.]” In Appeal 2020-006227 Application 14/400,378 5 re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” Id. Upon review of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant’s position in the record. Accordingly, we reverse each of the Examiner’s rejections on appeal essentially for the reasons set forth in the record by Appellant, and add the following for emphasis only. Appellant’s claim 1, recites, inter alia, the limitations: determining a ratio of (a) the action count corresponding to the number of user-initiated actions directed to the particular variant to (b) the number of times that the particular variant was displayed; adjusting the respective stored weighting of the particular variant based on the ratio of (a) the number of user-initiated actions directed to the particular variant to (b) the number of times that the particular variant was displayed. Appellant argues that none of the references describe adjusting a stored weighting of a particular variant based on any ratio, much less adjusting the stored weighting based on the ratio of (a) the number of user- initiated actions directed to the particular variant to (b) the number of times that the particular variant was displayed, as recited in Claim 1. Appeal Br. 4-5. Appellant argues that the Examiner acknowledges that the Catlin reference does not teach the adjusting of the weighting and that the Examiner relies upon the Suryanarayana reference. Appeal Br. 4-5. Appellant argues that Suryanarayana does not describe adjusting a stored weighting but Suryanarayana describes only weighting, not adjusting a Appeal 2020-006227 Application 14/400,378 6 stored weighting, much less adjusting a stored weighting based on the ratio recited in claim 1. Appeal Br. 4-5. Appellant further argues that Siegel does not teach adjusting a stored weighting based on a ratio. Appeal Br. 7- 8. The Examiner replies to Appellant’s arguments and attempts to identify that the Siegel reference was relied upon for teaching the use of a ratio and the Suryanarayana reference teaches adjusting of the weighting was based on the frequency of website content actions. Ans. 14-16. The Examiner finds that “Siegel was utilized to specifically teach that ‘the frequency of the elements was based on the ratio of actions on the element in relation to the frequency in which the element was displayed,’ which can be clearly seen in Siegel (0038).” Ans. 16. The Examiner further finds that paragraph 2 of Siegel explicitly shows that the tags are web page content and paragraph 25 goes into more detail about the displaying metrics. Ans. 16. The Examiner also finds that even though Siegel was not utilized for such teaching, and it was previously shown, it could still be argued that the different tags are different variants of the tags as that claims only require that the variant is “variants of the website content element”. Accordingly, the tags are website content element (0002) and the different text displayed could be considered different variants of the tags under broadest reasonable interpretation. Ans. 16. In the Reply Brief, Appellant argues that the Examiner improperly dissects the claim language in the rejection. Appellant argues that the Examiner’s application of the prior art suggests that the rejection improperly relies upon claim dissection because it is the cooperative function of these Appeal 2020-006227 Application 14/400,378 7 inter-operating elements that establishes the boundaries of the invention. Reply Br. 1-3. Specifically, Appellant also contends that claim 1 requires (1) adjusting a stored weighting of a particular variant based on (2) a ratio of (a) the number of user-initiated actions directed to the particular variant to (b) the number of times that the particular variant was displayed. Reply Br. 2. Appellant further argues that neither of the Seigel or Suryanarayana references cited by the Examiner describe both (1) and (2) or even disclose a cooperation between elements analogous to those claimed, as is necessary to properly combine references to reject claim 1. Reply Br. 2. Appellant contends that the Examiner relies on a combination of isolated portions in the separate references, neither of which disclose or suggest adjusting a stored weighting based on anything, let alone the claimed ratio. Reply Br. 2. Appellant also argues that the references even when considered in combination do not describe the explicitly recited functional “based on” relationship where (1) the stored weighting is adjusted based on (2) a ratio of (a) the number of user-initiated actions directed to the particular variant to (b) the number of times that the particular variant was displayed, as recited in claim 1. Reply Br. 3. We agree with the Appellant that the Examiner’s rejection is based upon hindsight reconstruction where the Examiner dissects the claim language and does not address the claim limitations, as a whole, considering the “based on” functional relationship where (1) the stored weighting is adjusted based on (2) a ratio of (a) the number of user-initiated actions directed to the particular variant to (b) the number of times that the particular variant was displayed, as recited in Claim 1. Reply Br. 3. Appeal 2020-006227 Application 14/400,378 8 Additionally, Appellant argues three additional points regarding the Examiner’s claim interpretation and application of the prior art teachings to the claimed invention regarding the claimed “adjusting a stored weighting,” as based on the claimed ratio, with determining a frequency of content update or content display based on a ratio. Reply Br. 3-4. We further agree with Appellant that the Examiner’s claim interpretation and application of the prior art is unreasonable in light of the express claim limitations recited in the language of independent claim 1. As a result, we cannot sustain the Examiner’s obviousness rejection of independent claim 1 and its respective dependent claim. Because independent claims of 42 and 43 recite similar claim limitations and the Examiner’s rejection is similarly flawed, we cannot sustain the obviousness rejection of independent claims 42 and 43. CONCLUSION We reverse the Examiner’s obviousness rejections. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 5, 12, 15-17, 23, 32, 38, 42- 46, 48, 49 103(a) Catlin, Suryanarayana, Siegel, Reavis 1, 3, 5, 12, 15-17, 23, 32, 38, 42- 46, 48, 49 6, 47 103(a) Catlin, Suryanarayana, Siegel, Reavis, Phillips 6, 47 4 103(a) Catlin, Suryanarayana, 4 Appeal 2020-006227 Application 14/400,378 9 Siegel, Reavis, Merom 19 103(a) Catlin, Suryanarayana, Siegel, Reavis, Donovan 19 Overall Outcome 1, 3-6,12, 15-17, 19, 23, 32, 38, 42-49 REVERSED