Oracle America, Inc.

Patent Trials and Appeals Board

May 4, 2021

2020006607 (P.T.A.B. May. 4, 2021)

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.
14/032,019 09/19/2013 Theodore V. McConnell 088325-1054475
(199200US)
2188
51206 7590 05/04/2021
Oracle / Kilpatrick Townsend & Stockton LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
CARVALHO, ERROL A
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
oraclepatentmail@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THEODORE V. MCCONNNELL, CHRISTOPHER TSOUFAKIS,
MICHAEL GARRETT SEILER, NIKKI KYLE GOMEZ,
JONAH GOODHART, and ANIQ RHMAN
____________

Appeal 2020-006607
Application 14/032,019
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
Non-Final Rejection of claims 1–24. We have jurisdiction under 35 U.S.C.
§ 6(b). Appellant appeared for oral hearing on April 15, 2021.
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a method for conditional signaling of web page
events relating to consumer attention. (Spec. ¶ 1, Title).
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Claim 1 is representative of the subject matter on appeal.
1. A computer-implemented method, comprising:
embedding JavaScript code into a code of a webpage, the
JavaScript code being embedded while the webpage is being
rendered by a client device;
identifying, using the JavaScript code, a set of
instructions in a Uniform Resource Locator (URL) associated
with the webpage;
receiving a switch set that includes one or more
conditional instructions, the one or more conditional
instructions executing the JavaScript code to invoke the set of
instructions upon detecting that a condition of the switch set is
satisfied for a duration of time that exceeds a threshold;
detecting, using the JavaScript code, one or more events
associated with an advertisement on the webpage, the one or
more events corresponding to user interaction with respect to
the advertisement;
determining that at least one of the one or more events
satisfies the condition of the switch set;
enabling a section of the JavaScript code associated with
the condition of the switch set based on the determination that
at least one event of the one or more events satisfies the
condition of the switch set;
triggering a transmission, via the set of instructions, of
interaction information to a remote server, the interaction
information including the at least one event of the one or more
events that satisfied the condition of the switch set; and
receiving a modified version of the advertisement, the
modified version of the advertisement including a modification
to the advertisement based on the interaction information.

THE REJECTIONS
Claims 1–24 are rejected under 35 U.S.C. § 112(a), first paragraph, as
failing to comply with the written description requirement.
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Claims 1–24 are rejected under 35 U.S.C. 103(a) as being
unpatentable over O’Sullivan (US 2008/0320125 A1; Dec. 25, 2008) in view
of Massoudi (US 2014/0278993 A1; Sept. 18, 2014) in further view of
Williams (US 2011/0246267 A1; Oct. 6, 2011).
ANALYSIS
35 U.S.C. § 112(A) REJECTION
The Examiner finds that there is no support for the step “receiving a
modified version of the advertisement” recited in claim 1. (Non-Final Act.
5). The test for the sufficiency of the written description “‘is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). The Examiner finds
Appellant’s Specification does not describe receiving a modified version of
the advertisement, including a modification to the advertisement based on
the interaction information. Appellant argues that support for this recitation
is found on paragraph 17 of the Specification. Specifically, Appellant
directs our attention to the disclosure in paragraph 17 of “analyzing the user
behavior data at the server and using the user (viewer) behavior data for any
purpose relating to the particular advertisement, e.g. to optimize the
performance of the advertisement.” (Appeal Br. 10). We note that this
language is found in paragraph 6 of the Specification, not paragraph 17.
Paragraph 17 discloses that the counter may be used to “optimize the
performance of the advertisement, by analyzing the particular conditions
under which customers have viewed a particular advertisement.” This
paragraph further states that, “information may be compiled on the particular
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publishers or audience segments that resulted in more viewing attention.”
As such, in our view, Paragraphs 6 and 17 disclose that the performance of
the advertisement is optimized by analyzing the publishers and audience
segments actions and perhaps changing the conditions under which
customers view the advertisement. These paragraphs in the Specification do
not disclose that the advertisement itself is modified as required by claim 1.
As such, we will sustain the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 112(a), first paragraph. We will also sustain this rejection as it is directed
to claims 2 to 24 because each of these claims includes the subject matter
found not disclosed in the Specification.
35 U.S.C. §103(A) REJECTION
The Examiner rejects the appealed claims under 35 U.S.C. §103(a) as
being obvious in view of O’Sullivan, Massoudi and Williams. We agree
with the Examiner’s rejection of the claims under 35 U.S.C. §103(a).
We find that O’Sullivan discloses “a server [that] hosts a web page
containing an advertisement. The server includes an input interface capable
of receiving advertisement information related to the advertisement, a
storage device capable of storing the received advertisement and a
processing device.” (O’Sullivan ¶ 6). We agree with the Examiner’s
findings regarding the teachings of O’Sullivan found on pages 6–7 of the
Non-Final Action and adopt same as our own. We specifically agree with
the Examiner that O’Sullivan discloses embedding JavaScript code in a
webpage and that paragraph 25 of O’Sullivan discloses that Javascript codes
are executed to carry out instructions. (Ans. 5). We agree with the
Examiner that O’Sullivan does not disclose receiving a switch set that
includes one or more conditional instructions, the one or more conditional
instructions executing the JavaScript code to invoke the set of instructions
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upon detecting that a condition of the switch set is satisfied for a duration of
time that exceeds a threshold. (Non-Final Act. 7).
We find that Massoudi discloses a method of providing
advertisements which includes an advertising engine that includes
functionality to provide one or more instructions for the client application.
The instructions can request the client application to perform a specified
action and include a condition for performing the specified action.
(Massoudi ¶ 33). In this regard, Massoudi discloses the instructions can be
executed upon detecting user engagement or actions with the user interface.
These actions may include viewing a web page, selecting buttons, hovering
over a display, interacting with a widget, typing into a text box and viewing
a particular content for a period of time exceeding a predefined threshold.
Paragraph 33 discloses that a condition for performing a specified action,
such as a client application, detects a user engagement with the UI element
and subsequently triggers the instruction to execute. Massoudi also
discloses determining that at least one or more events satisfies the condition
of the switch set and triggering a transmission of interaction information to a
remote server. (Massoudi ¶ 37). Massoudi further discloses receiving a
modified version of the advertisement, the modified version of the
advertisement including a modification to the advertisement based on the
interaction information. (Massoudi ¶ 31).
We agree with the Examiner that it would have been obvious at the
time of the invention to modify the teachings of O’Sullivan in view of
Massoudi to achieve the predictable result of a method that displays
rendered advertising content and sends user engagement requests to request
modifications to the advertising content and a method that includes a switch
set that includes one or more conditional instructions as taught by Massoudi.
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We note that the Examiner made findings for motivation (Non–Final Action
8) which we adopt herein and “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416. “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that Massoudi does not disclose executing JavaScript
to invoke the set of instructions and that Massoudi’s instruction merely
request that the application perform a specified action. (Appeal Br. 12). We
agree with the Examiner’s response to this argument found on pages 5–6 of
the Answer. Specifically, this argument is not persuasive because Appellant
improperly attacks the references separately where the rejection is based on
the combined teachings of O’Sullivan and Massoudi. See, e.g., In re Keller,
642 F.2d 413 (CCPA 1981); In re Merck, 800 F.2d 1091 (Fed. Cir. 1986).
Here, as detailed above, O’Sullivan is relied on for teaching JavaScript code
that is executed to carry out instructions. (Ans. 5). The Examiner relies on
Massoudi for disclosing that the instruction can include a condition for
performing a specified action. The Examiner relies on Williams for teaching
that an instruction can be embedded in a URL.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that Massoudi does not disclose transmission of
interaction information. (Appeal Br. 13). We agree with the Examiner’s
response to this argument found on pages 6–7 of the Answer and adopt same
as our own. In this regard we find that Massoudi clearly discloses that
interaction information such as information related to a user viewing a
content item for a period of time is transmitted. (Massoudi ¶¶33 and 37).
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In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will also sustain this rejection as it is directed to the
remaining claims because Appellant does not argue the separate patentability
of these claims.
CONCLUSION
The decision of the Examiner to reject claims 1–24 is affirmed.
DECISION SUMMARY

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–24 112(a) Written
Description
1–24
1–24 103 O’Sullivan,
Massoudi,
Williams
1–24
Overall
Outcome
1–24

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED