Oracle America, Inc.

Patent Trials and Appeals Board

Jan 22, 2021

2020004958 (P.T.A.B. Jan. 22, 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.
13/945,851 07/18/2013 Michael Garrett Seiler 088325-1054471
(199000US)
4553
51206 7590 01/22/2021
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
01/22/2021 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 MICHAEL GARRETT SEILER, DAVI JON TITUS,
CHRISTOPHER ROSS TSOUFAKIS, DANIEL EVAN FCHTER,
NIKKI KULE GOMEZ, JONAH GOODHART, and ANIQ RAHMAN
____________________

Appeal 2020-004958
Application 13/945,851
Technology Center 3600
____________________

Before ROBERT E. NAPPI, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1 through 26. Oral arguments were heard on
January 13, 2021. A transcript of the hearing will be added to the record in
due course. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Oracle is the real party in interest.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a method of determining the in-view status
of an advertisement in a webpage. Spec. ¶ 9. Claim 1 is reproduced below.
1. A computer-implemented method comprising:
executing, in a web browser of a client device, a script
tag that downloads and renders content of a webpage and
JavaScript code;
identifying an area of the webpage at which the content is
located using the JavaScript code;
superimposing, using the JavaScript code, a plurality of
invisible animations onto the area of the webpage such that
each invisible animation of the plurality of invisible animations
is superimposed over at least a portion of the area of the
webpage;
monitoring a frame rate of each of the plurality of the
invisible animations;
for each invisible animation of the plurality of invisible
animations:
tracking a value corresponding to an in-view indicator of
the invisible animation over a first duration of time over which
the webpage is rendered, the value corresponding to the in-view
indicator indicating the invisible animation is in-view when an
average frame rate of the invisible animation is in a range of 50-
60 frames per second and the value corresponding to the in-
view indicator indicating that the invisible animation is not in-
view when the average frame rate of the invisible animation is
in a range of 2-4 frames per second; and
executing a call, by code within the invisible animation,
to the JavaScript code reporting the value of the in-view
indicator of the invisible animation;
generating, using the JavaScript code, an in-view metric
associated with the content of the webpage based on the value
corresponding to the in-view indicator of each of the plurality
of invisible animations, the in-view metric including a second
duration of time over which the content was in-view, the second
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duration of time being less than or equal to the first duration of
time, the in-view metric providing an indication as to whether
the content of the webpage was in-view over an entire duration
over which the webpage was rendered; and
transmitting, to a server over a network, the in-view
metric associated with the content of the webpage.

REJECTIONS2

The Examiner rejected claims 1 through 26 under 35 U.S.C. § 112(a),
as failing to comply with the written description requirement. Final Act. 3–
6.
The Examiner rejected claim 1 through 26 under 35 U.S.C. § 103(a)
as unpatentable over the combined teachings of De Jager (US
2012/0324098) and Uro (“Timing it right”
http://www.kaourantin.net/2010/03/timing-it-right.html). Final Act. 6–10.
ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claims 1 through 26 under 35 U.S.C.
§ 112(a) pertaining to limitation (c) discussed infra. However, Appellant’s
arguments have persuaded us of error in the Examiner’s rejection of claims 1
through 26 under 35 U.S.C. § 112(a) pertaining to limitations (a) and (b)
discussed infra.

2 Throughout this Decision we refer to the Appeal Brief filed December 23,
2019 (“Appeal Br.”); Reply Brief filed June 17, 2020 (“Reply Br.”); Final
Office Action mailed April 25, 2019 (“Final Act.”); and the Examiner’s
Answer mailed April 17, 2020 (“Ans.”).
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Rejection based upon 35 U.S.C. § 112(a)
The Examiner rejects claims 1 through 26 as failing to comply with
the written description requirement. Final Act 4–6. Specifically, the
Examiner finds the following limitations in the independent claims lack
written description support: a) tracking a value corresponding to an in-view
indicator of the invisible animation over a first duration of time; b) executing
a call, by code within the invisible animation, to the JavaScript code
reporting the value of the in-view indicator of the invisible animation; and c)
generating, using the JavaScript code, an in-view metric associated with the
content of the webpage …, the in-view metric providing an indication as to
whether the content of the webpage was in-view over an entire duration over
which the webpage was rendered. Id.
Limitation a)
Appellant argues that paragraphs 21 and 22 of the Specification
support the limitation of tracking a value as “in-view” or “not-in view” are
Boolean values for tracking whether an advertisement is in view. Appeal
Br. 11. Further, with respect to the limitation that the value of the invisible
animation is tracked over a first duration of time, Appellant argues that “it is
implicit that this first duration of time would be the entire duration of time
that the advertisement is open on a page (e.g., a rendered page)” Appeal Br.
11–12.
The Examiner in response to Appellant’s arguments states
“Appellant’s specification has no description or support of tracking a value,
which is used to indicate a first duration of time.” Ans. 3.
The written description requirement serves “to ensure that the
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inventor had possession, as of the filing date of the application relied on, of
the specific subject matter later claimed by him; how the specification
accomplishes this is not material.” In re Wertheim, 541 F.2d 257, 262
(CCPA 1976). We agree with Appellant that “in-view” or “not in-view” are
Boolean values and as such the Specification demonstrates Appellant had
possession of this limitation. With regard to the limitation directed to
tracking the values over a first period of time, we disagree with Appellant’s
rationale that it is implicit that the first duration of time would be the
duration of time the advertisement is open. The claim specifically recites
that the first duration of time is the time over which the webpage is rendered,
not the advertisement is open as argued by Appellant.3 As discussed infra,
Appellant’s Specification does discuss monitoring the amount of time that
an advertisement is in-view. See e.g., Fig. 7, step 708. However,
Appellant’s Specification is silent concerning monitoring or measuring the
duration of time that a webpage is open. Nonetheless, we do not construe
the limitation of “tracking a value corresponding to an in-view …over a first
duration of time over which the webpage is rendered” to recite monitoring or
measuring the duration of time that a webpage is open, rather it is merely
identifying that value is being tracked during the time the webpage is
rendered. We consider Appellant’s Specification to demonstrate Appellant
possessed this claimed feature. See Specification ¶¶ 10, 21, and 22.

3 Appellant’s Specification identifies that the advertisement is something
that is within a webpage and thus, different from the webpage. Specification
¶¶ 2, 4, and 10. Further, as the advertisement is loaded separately from the
webpage site and in some cases fails to load, the duration of time the
webpage is rendered is different and that the duration of time the
advertisement is open. See Specification ¶¶ 2, 4
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Limitation b)
Appellant argues that paragraphs 22 and 56 of the Specification
support the limitation directed to executing a call, by code within the
invisible animation, to the JavaScript code reporting the value of the in-view
indicator of the invisible animation. Appeal Br. 12. Appellant argues that
“it is inherent or at least implied that the animation would have code to
execute a call since it is explicitly disclosed the animation can be enabled to
make or execute a call.” Id.
The Examiner in response to Appellant’s arguments states:
Appellant’s specification states the “frame-rate determination
module 228 is configured to enable calls by the animations to
the JavaScript notifying it whenever their view-ability status
changes.” [0056]. This does not describe that code within the
invisible animation, execute calls to the JavaScript code to
report the value of an in-view indicator of the invisible
animation.
Ans. 4.
We agree with Appellant and disagree with the Examiner. As
identified by the Examiner, the Specification identifies that the frame-rate
module is configured “to enable calls by the animations” in paragraph 56,
thus it is the animations that make the call. Further, the Specification, in
paragraph 22, identifies that animations contain code which monitors the
fame rate. Thus, we consider Appellant’s Specification to demonstrate
Appellant possessed this claimed feature of executing a call, by code within
the invisible animation, to the JavaScript code reporting the value of the in-
view indicator of the invisible animation.
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Limitation c)
Appellant argues that paragraphs 22 and 56 of the Specification
support the limitation directed to generating, using the JavaScript code, an
in-view metric associated with the content of the webpage …, the in-view
metric providing an indication as to whether the content of the webpage was
in-view over an entire duration over which the webpage was rendered.
Appeal Br. 12–13. Specifically, Appellant argues the limitation of:
the in-view metric providing an indication as to whether the
content of the webpage was in-view over an entire duration
over which the webpage was rendered (this is explicitly
described by- the system and methods of the present invention
can advantageously measure, monitor, or track whether or not a
given advertisement is in-view for the entire duration that the
advertisement is open on a page, and this information is
implicitly provided by the generated metric, which includes the
second duration of time over which the advertisement was in-
view).
Appeal Br. 13.
We disagree with Appellant and agree with the Examiner. We do not
find that the originally filed Specification discusses or provides any evidence
that at the time of filing Appellant possessed the limitation directed to a
metric indicating that the webpage was in-view over an entire duration over
which the webpage was rendered. As discussed above Appellant’s
Specification does discuss monitoring the amount of time that an
advertisement is in view. See Specification ¶ 61 and Figure 7, step. 708.
However, Appellant’s Specification does not relate this to the duration that a
webpage is rendered as claimed (or open as argued by Appellant).
Appellant’s Specification does not even suggest monitoring or measuring the
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duration of time (amount of time) that a webpage is rendered. We recognize
that Appellant’s Specification states in paragraph 22 “the present invention
can advantageously measure, monitor, or track whether or not a given
advertisement is in-view for the entire duration that the advertisement is
open on a page” and in paragraph 41 “the present invention can measure
whether or not a given advertisement is ‘in-view’ for the entire duration that
the advertisement is open on a webpage.” However, we see these
paragraphs as merely identifying that the monitoring process can be
performed during the entire time the webpage is open, but not that there is a
metric identifying the advertisement is in view for the entire duration the
webpage is open (or entire duration the webpage is rendered as claimed). As
such, we do not find that Appellant’s Specification demonstrates Appellant
possessed the limitation directed to generating, using the JavaScript code, an
in-view metric associated with the content of the webpage where the in-view
metric provides an indication as to whether the content of the webpage was
in-view over an entire duration over which the webpage was rendered, as
recited in each of independent claims 1, 9, and 18.4 Accordingly, we sustain
the Examiner’s rejection of claims 1 through 26 under 35 U.S.C. § 112(a).

Rejection of claims 1 through 26 under 35 U.S.C. § 103
Appellant argues that Examiner’s rejection is in error as the
combination of DeJager and Uro teach the limitation directed to generating

4 It is well settled that a description that merely renders the invention
obvious does not satisfy the written description requirement. See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en
banc).
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an in-view metric providing an indication as the whether the content of the
webpage was in view over the duration that the webpage was rendered.
Appeal Br. 14. Specifically, Appellant argues that that DeJager, which the
Examiner relies upon to teach this limitation, teaches:
analysis performed by the client side code includes analysis on
the duration of time over which the advertisement 102 was in-
view as compared a total duration of time over which the
advertisement was open on the page. Thus, De Jager’s results of
analysis reported from the client side code to the research server
are logically not disclosed as including a determination as to
whether the advertisement 102 was in-view over an entire
duration over which the webpage was rendered. Instead, De
Jager’s analysis merely includes whether or not the
advertisement 102 is in view (not a duration of time over which
the advertisement 102 was in-view much less whether or not
the advertisement 102 was in-view over an entire duration over
which the webpage is rendered).
Appeal Br. 14.
The Examiner in response to Appellant’s arguments states:
As a first matter an “entire duration” is a relative term not
defined by Appellant's specification, therefore this time
duration could be any particular time period, e.g. 3 seconds, 7
seconds, 30 minutes etc. Second, Appellant only implies a
second duration of time. As such De Jager discloses that
elements (content) of the web page that appear within a
viewable portion of the browser window are viewable to a user
at a particular time (duration). De Jager [0052]. And being that
a particular time necessarily has a starting time and an ending
time, a particular time can be an entire duration, half a duration,
3 minutes, 7 minutes etc. Notwithstanding, De Jager discloses
that its test features (invisible animation) may be aspects of the
advertisement itself and these can be monitored during the
rendering of the web page (i.e. the entire duration) to determine
whether they are in view or not. De Jager [0085]. And as
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Appellant puts forth that in order to know an entire duration of
time it is implicit that a second duration of time must be known;
therefore, since De Jager’s web page is rendered for an entire
duration of time, a second duration of time must also be known
and taught by De Jager.
Ans. 6.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection. We concur with the Examiner that Appellant’s Specification does
not define the “entire duration” over which the webpage was rendered. As
discussed above, Appellant’s Specification does not discuss monitoring or
measuring the duration of time that a webpage is rendered. However, we
disagree with the Examiner that this can be “any particular time period” by
the terms of the claim this duration is determined by the rendering of
webpage. We have reviewed the cited teachings of De Jager and do not find
a teaching of a metric of whether a the content of the webpage was in-view
over a duration which the webpage was rendered, as recited in independent
claims 1, 9, and 18. Accordingly, we do not sustain the Examiner’s
obviousness rejection of claims 1 through 26 under 35 U.S.C. § 103.

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CONCLUSION
In summary:
Claim
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–26 112(a) Written Description 1–26
1–26 103(a) De Jager, Uro 1–26
Overall
Outcome
1–26
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) (2018).
AFFIRMED