Ex Parte 6829587 et al

Board of Patent Appeals and Interferences

Jan 26, 2012

95001068 (B.P.A.I. Jan. 26, 2012)

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.
95/001,068 07/14/2008 6829587 23373-005RX1 6063
7590 01/27/2012
MICHAEL F. HEIM
HEIM, PAYNE & CHORUSH LLP
600 TRAVIS STREET
SUITE 6710
HOUSTON, TX 77002
EXAMINER
GELLNER, JEFFREY L
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
01/27/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

GOOGLE, INC.
Third Party Requestor, Respondent

v.

FUNCTION MEDIA, L.L.C.
Patent Owner, Appellant
________

Appeal 2011-013241
Inter partes Reexamination Control 95/001,068
United States Patent 6,829,587 B2
Technology Center 3900
____________

Before ALLEN R. MACDONALD, KEVIN F. TURNER, and
STEPHEN C. SIU, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013241
Reexamination Control No. 95/001,068
Patent 6,829,587 B2

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Patent Owner Function Media L.L.C. (hereinafter “Patent Owner”)
appeals1 under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to
reject claims 4, 5, 21, 22, 33, 39, 55, and 56 with Patent Owner cancelling
claims 1-3, 6-20, 23-37, 40-54, and 57-68 during reexamination.2 Google,
Inc., (hereinafter “Requester”) is a party to the Patent Owner’s appeal under
35 U.S.C. § 315(b)(2) and disputes the Patent Owner’s contentions.3
We have jurisdiction under 35 U.S.C. §§ 6, 134 and 315. We
AFFIRM.

STATEMENT OF THE CASE
This proceeding arose from a request for inter partes reexamination
filed by John C. Phillips, on behalf of Google Inc., Requester, on July 14,
2008, of United States Patent 6,829,587 B2 (“the '587 patent”), issued to
Lucinda Stone and Michael A. Dean, on December 7, 2004, based on U.S.
Application No. 10/165,091, filed June 7, 2002. The '587 patent claims
priority as a continuation of U.S. Application No. 09/480,303, filed on
January 10, 2000, now U.S. Patent No. 6,446,045 (“the '045 patent”).
In addition to the instant '587 patent, the '045 patent is under
reexamination. The '045 patent, control number 95/001,061, is currently
under appeal, Appeal No. 2011-010724, and is being decided concurrently.4

1 See Patent Owner’s Appeal Brief filed June 7, 2011, hereinafter “App.
Br.,” at 1.
2 See Right of Appeal Notice, mailed March 11, 2011, hereinafter “RAN.”
3 See Requester’s Respondent Brief filed July 7, 2011, hereinafter “TPR
Resp. Br.”
4 Related patents 7,249,059 (“the '059 patent”), control number 95/001,069,
Appeal No. 2011-010893 and 7,240,025 (“the '025 patent”), control number
Appeal 2011-013241
Reexamination Control No. 95/001,068
Patent 6,829,587 B2

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Related Litigation
While the '587 patent is not currently the subject of litigation, the
related '045, '025, and '059 patents were the subject of litigation styled as
Function Media L.L.C. v. Google Inc. and Yahoo, Inc., Civ. A. No. 2:07-cv-
279-CE (E.D. Tex.), which is currently on appeal to the U.S. Court of
Appeals for the Federal Circuit (Docket No. 2012-1020). (See App. Br. 1.)

THE INVENTION
Patentee’s invention relates to a method of using a network of
computers to facilitate and control the publishing of presentations. The
“invention partially resides on the sellers’ computers, controls and edits the
presentation, and then automatically transmits that information and data for
publication in traditional media and electronic networks.” (Col. 5, ll. 26-33.)

95/004,073, Appeal No. 2011-010719, are also under reexamination,
currently under appeal, and being decided concurrently.
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Exemplary dependent claims 4 and 55 on appeal read as follows:
4. The method of claim 1 further providing means for applying
corresponding guidelines of the print media venues.

5. The method of claim 4 further providing means for said print
media venues to input said guidelines and information.

(Claims Appendix CA-i.)

5 Cancelled independent claim 1 reads as follows:
1. A method of using a network of computers to facilitate and control the
publishing of presentations to a plurality of non-resident print media venues
represented by at least one operator comprising:
a) providing means for contracting with non-resident print
media venues by the operator;
b) providing one or more integrated environments, wherein
each integrated environment comprises:
1) providing one or more lists of available print media
venues;
2) providing means for selecting the print media venues;
3) providing means for inputting information; and
4) providing means for transmitting said information to
selected print media venues of the print media venues; whereby
a seller may choose one or more non-resident print media
venues, and transmit the information to the selected print media
venues for publication.
Appeal 2011-013241
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The prior art references relied upon by the Examiner in rejecting the
claims are:
Del Sesto US 6,985,882 B1 Jan. 10, 2006
Sparks et al. US 6,167,382 Dec. 26, 2000
Naqvi et al. WO 97/21183 Jun. 12, 1997

Robbin Zeff and Brad Aronson, Advertising on the Internet, 2nd Ed.,
John Wiley & Sons, 1999, hereinafter “Zeff99.”
Baseview Products, Inc., AdManagerPro Administration Manual
v. 2.0, Dec. 1998, hereinafter “AdManagerPro.”
AdForce, Inc., User Guide: A Complete Guide to AdForce, Ver. 2.6
(1998), hereinafter “AdForce.”
Ad-Star.com website archive from www.archive.org, Apr. 12, 1997
and Feb. 1, 1997, hereinafter “AdStar.”
Baseview Products, Inc., ClassManagerPro Administration Manual
v. 1.0.5, Feb. 1, 1997, hereinafter “ClassManagerPro.”
Robbin Zeff and Brad Aronson, Advertising on the Internet, John
Wiley & Sons, 1997, hereinafter “Zeff97.”

The Examiner rejected the claims as follows:
1. Claims 4, 5, 21, 22, 55, and 56 rejected under 35 U.S.C. § 102(e) as
anticipated by Del Sesto.
2. Claims 4, 5, 21, and 22 rejected under 35 U.S.C. § 103(a) as obvious
over Zeff97 in view of AdStar or Zeff97 in view of AdForce.
3. Claims 4, 5, 21, 22, 55, and 56 rejected under 35 U.S.C. § 103(a) as
obvious over AdStar in view of Del Sesto, AdStar in view of Sparks, Zeff97
in view of AdManagerPro, or Zeff97 in view of ClassManagerPro.
4. Claims 4, 5, 21, 22, 38, 39, 55, and 56 rejected under 35 U.S.C.
§ 103(a) as obvious over AdStar and Naqvi, Del Sesto and Naqvi, or Naqvi
and Del Sesto.
Appeal 2011-013241
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Patent 6,829,587 B2

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ISSUES6
1. Did the Examiner properly interpret the “means for applying
corresponding guidelines” limitation of claims 4, 21, 38, 55 and the “means
for . . . media venues to input said guidelines” limitation of claims 5, 22, 39,
and 56 under 35 U.S.C. § 112, paragraph 6?
2. Does Del Sesto disclose the “means for applying corresponding
guidelines” of claims 4, 21, and 55 and the “means for . . . media venues to
input said guidelines” of claims 5, 22, and 56, and as such anticipate these
claims under 35 U.S.C. §102(b)?
3. Does the combination of Del Sesto and Naqvi disclose the “means
for applying corresponding guidelines” of claims 4, 21, 38, and 55 and the
“means for . . . media venues to input said guidelines” of claims 5, 22, 39,
and 56, and as such make obvious these claims under 35 U.S.C. §103(a)?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).

6 We have considered in this decision only those arguments that Patent
Owner actually raised in the Briefs. Arguments which Patent Owner could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.67(c)(1)(vii).
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'587 Patent
1. The '587 patent is directed to a method of using a network of
computers to facilitate and control the publishing of presentations. (Col. 64,
ll. 13-16.)
2. The '587 patent defines the term “presentation” as “[a]ny content
intended to inform or influence the viewers or readers of a given media
venue. It may be in an advertising, public service, editorial, informational or
any other format. It may be text, graphics, audio, multimedia, or a
combination of any communication methods.” (Col. 11, ll. 26-32.)
3. The '587 patent describes the term “central controller” as “the
controller part or function of the Central Controller and Presentation
Processor 1000.” (Col. 8, ll. 41-43.)
4. The '587 patent states:
[t]he Seller could then choose one or two or all of the
media/means of communication in which to be
represented, with all presentations created by the
Presentation and Configuration Program 4715 (blocks
11130, 11132). The Presentation and Configuration
Program 4715 would then prompt the Seller for the
necessary and optional information to complete the
presentations (block 11140, 11142).
(Col. 41, ll. 47-53; see Fig 4a.)
5. The '587 patent further states:
The invention allows sellers to create presentations on
their computers that are automatically transmitted to be
published and viewed on a variety of traditional and
electronic media networks. The present invention
partially resides on the sellers’ computers, controls and
edits the presentation, and then automatically transmits
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that information and data for publication on traditional
media and electronic networks.
(Col. 57, ll. 57-65.)
6. The '587 patent describes that:
The Presentation and Configuration Program 4715 is
both the gateway to the present invention and the
controlling software interface for the Seller. The
Presentation and Configuration Program 4715 introduces
the Seller to the instance of the present invention and
allows the Seller to choose in which presentations and
which media or advertising channels the Seller wishes to
participate. The Presentation and Configuration Program
4715 offers the choices of media and presentations to the
Seller, giving requirements and cost for each. Upon
choosing media and presentations, the Seller is then
presented with a series of questions to answer. The
answering of these questions contributes to the Seller
Database 4630, Presentation Database 4640, Inventory
Database 4660, Referral Database 4670, and any other
databases necessary. The responses to the questions
asked, text entry areas, photos, graphics, and other input,
either required or optional, are monitored by the
Presentation and Configuration Program 4715 using the
information within the Presentation Rules Database 4650
to guide the Seller in the creation of a presentation that
meets the style, editorial, and content guidelines of that
instance of the present invention for each media venue or
outlet chosen.
(Col. 28, ll. 18-39.)
7. To complete presentations for different media venues, the '587
patent discloses that:
each presentation might have very different standards for
publishing the same information. In those cases, the
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same questions or at least similar prompts may be
presented to the Seller, requiring the entering of virtually
the same information in multiple locations on the forms.
Although this may seem redundant to the Seller, the
differences will become apparent because each separate
entry is controlled by the information contained within
the Presentation Rules Database 4650. As a simple
example, the description in a particular Internet Directory
may allow for up to 3000 characters, whereas a printed
magazine may allow only 300, depending on the
presentations chosen. As the Seller enters information,
the Presentation and Configuration Program 4715, using
the information contained in the Presentation Rules
Database 4650, controls and monitors that entered
information to conform to the controlling format and
style for each targeted media venue or outlet
presentation.
(Col. 41, l. 54 – Col. 2, l. 4.)
8. The '587 patent describes:
[t]he data within the Presentation Rules Database 1650
will be synchronized with the Presentation Rules
Database 4650 FIG. 2c stored on the Seller Interface
4000 FIG. 2c. This synchronization will take place by
the sending of updates from the Central Controller and
Presentation Processor 1000 to the Presentation and
Configuration Program 4715 FIG. 2c, which then updates
the Presentation Rules Database 4650.
(Col. 18, ll. 28-36.)
9. The '587 patent describes that the Presentation Rules Database 1650
includes various data fields based on seller type and media type. These data
fields contain information that controls and limits the style and editing of the
presentations and include inter alia presentation templates, presentation cost
and options, publication dates and deadlines, presentation size restrictions,
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photo or graphics specifications such as size, compression, file format, and
any other guidelines, benchmarks, or controlling algorithms. (Col. 18, ll. 7-
28.)
10. The '587 patent discloses that “[t]he Media Configuration Program
6717 monitors the responses to the questions asked, text entry areas, photos,
graphics, and other input, either required or optional.” (Col. 34, ll. 16-19.)

Del Sesto
11. Del Sesto is directed to a method and system which brings
media sellers (i.e., media venues) and buyers (i.e., advertisers)
together at a central server, via the Internet. Del Sesto is applicable to
a wide range of media venues such as Internet, radio, television,
magazines, newspapers, and billboards. (Col. 2, ll. 23-35 and Col. 4,
ll. 1-18.)
12. Del Sesto describes that “buyers are able to upload to the
server the actual commercial or advertisement in digital form, such as
MPEG, AVI, JPEG, TIF, GIF, BMP, Targa, etc. The seller then
downloads the content in conjunction with the executed contract, and
runs or plays the content during the specified time(s).” (Col. 2, ll. 60-
65; see also Col. 9, ll. 31-43.)
13. Figure 4S of Del Sesto illustrates a contract including
details such as the date and time of the broadcast, the avail category,
and the rate. (Fig. 4S.)
14. Del Sesto’s system provides an interface for media buyers
to create campaigns, create shopping lists, and specify search profiles
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from selected advertising inventory of media sellers based on media
sellers’ input parameters. (Col. 6, l. 20 – Col. 7, l. 4; see also Figs.
4C, 4S.)
15. Del Sesto’s system provides an interface for the seller (i.e.,
media venue) to create and edit rate cards. In the rate cards, the seller
inputs parameters such as the day and time of its broadcast, the avail
category, the price in the case of a late avail, and length of avail.
(Col. 8, ll. 42-46; see also Figs. 5C, 5P.)
16. Del Sesto’s system provides an interface which allows a
seller “to view and update the seller’s inventory by day and time span,
or by program/bundle or daypart.” (Col. 8, ll. 46-48; see also Fig 5D.)

Naqvi
17. Naqvi is directed to a method and system for placing
advertisements stored on a server and retrieved in response to user
queries. The advertisements are dynamically mixed with the content
of the pages returned in response to each query. (Abs; see also 5, ll.
3-11.)
18. Naqvi discloses that “advertisements can be made to satisfy
a set of constraints requested by the advertiser, as well as the
constraints of the publisher of the page . . . .” (5, ll. 11-14.)
19. Naqvi provides advertisers with an interface for creating
targeted advertisements. The interface allows advertisements to be
uploaded into the system and prompts advertisers to enter the
advertisements’ focus tags and then select one or more subcategories
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relevant to the advertiser’s advertisement. This information is stored
in the “ad info database.” (39, l. 13 - 40, l. 20; see also Fig. 10.)
20. Naqvi describes a mixer means which combines a retrieved
advertisement and a content page in response to the query. The mixer
means comprises a layout manager means and a typography manager
means. (9, ll. 18-24; see also 25, ll. 15-20.)
21. Naqvi describes that layout manager 10 comprises a rule
base and layout data base. (See Fig. 1, component 11.) The layout
database contains templates that have been predefined and the rule
base contains a collection of rules defined by the user to ascertain
which layout templates are best under what set of conditions. (12, ll.
15-30.)
22. Naqvi discloses that these user defined rules include “the
amount of data that is to be displayed, the kind of data that is to be
displayed, the amount of text, the amount of advertising material, and
the size of the various maps and multi-media icons that are to be
displayed.” (12, l. 31 – 13, l. 3.)
23. Naqvi describes that the typography manager, a component
of the mixer means, detects special tags and HTML rules in the
content page and for determining which part of the content page the
selected advertisement can be displayed on, and creates a page. ( 9, ll.
23-27; see also 25, ll. 11-20.)
24. Naqvi describes that “the page owner can specify where an
advertisement can be placed by placing a special tag (‘ad space’) on
their page.” (8, ll. 16-18.)
Appeal 2011-013241
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PRINCIPLES OF LAW
Claim Construction
We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may
be aided by explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the claim. For
example, a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment”). The challenge is to interpret claims in view of the
specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
“[S]tructure disclosed in the specification is corresponding structure
only if the specification or prosecution history clearly links or associates that
structure to the function recited in the claim.” Med. Instrumentation &
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003).

Anticipation
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed.
Cir. 1987).

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Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).

ANALYSIS
ISSUE 1
Patent Owner argues that the Examiner has failed to properly interpret
the “means for applying corresponding guidelines” and “means
for . . . media venues to input said guidelines” limitations of claims 4, 21, 38,
55 and 5, 22, 39, and 56, respectively, under 35 U.S.C. § 112, paragraph 6,
by ignoring the specific structures disclosed in the Specification
corresponding to the claims functions. (App. Br. 5.)

Claims 4, 21, 38, 55
Patent Owner asserts that the “means for applying” limitation of
dependent claim 4 should be construed as “a Presentation Generation
Program, running on a computer, creating individualized presentations that
comply with the guidelines of each media venue by applying each media
venue’s presentation rules to raw advertising content input by a seller.”
(App. Br. 9.) To support this interpretation, Patent Owner alleges that the
particular structure, or “means” for performing this step, is the “Presentation
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and Generation Program 1710” which “applies the guidelines to the
information entered by the seller without requiring any further seller
involvement to create a customized presentation for the selected media
venues.” (App. Br. 5-6.) Thus, Patent Owner asserts that “claim 4 requires
automatically creating an advertising presentation for each selected media
venue in compliance with the individual guidelines of that media venue.”
(emphasis original) (App. Br. 9.) Dependent claims 21, 38, and 55 recite
substantially similar limitations using the same means plus function
language.
In response, the Examiner contends that Patent Owner has failed to
establish that the “means for applying” limitation of claim 4 is linked to, or
associated with, the “Presentation and Generation Program 1710” as its
corresponding structure. (RAN 346.) Instead, the Examiner finds that the
corresponding structure for performing the “applying corresponding
guidelines” function is the “Presentation and Configuration Program 4715.”
(RAN 346-350.) We find the Examiner’s position to be compelling.
Construing means-plus-function claim language in accordance with
35 U.S.C. § 112, paragraph 6, is a two-step process.
The first step in construing a means-plus-function
claim limitation is to define the particular function of the
claim limitation . . .
The next step in construing a means-plus-function
claim limitation is to look to the specification and
identify the corresponding structure for that function.
“Under this second step, ‘structure disclosed in the
specification is “corresponding” structure only if the
specification or prosecution history clearly links or
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associates that structure to the function recited in the
claim.’”
Golight, Inc. v. Wal-Mart Stores, 355 F.3d 1327, 1333-34 (Fed. Cir. 2004)
With respect to the first step, we find that the particular function of the
means-plus-function limitation of claim 4 is “applying corresponding
guidelines.” While Patent Owner attempts to argue that a proper
construction of this means plus function limitation requires the automatic
creation of an advertising presentation, the language of the claim makes no
recitation of any “creating” step. As such, we will not import additional
functional limitations that are not recited in the claim. “The court must
construe the function of a means-plus-function limitation to include the
limitations contained in the claim language, and only those limitations.”
Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed.
Cir. 2002).
Turning to the next step, we must look to the Specification and
identify the corresponding structure for this function. Patent Owner does not
specifically identify any specific hardware structure for performing the
identified function7, but instead in their arguments, identifies the
“Presentation Generation Program 1710” of figure 2a, as the “disclosed
software” for performing the step of “applying corresponding guidelines.”
(App. Br. 6.) Additionally, Patent Owner relies on multiple portions of the
'587 patent’s Specification to provide support for their proposition that the

7 Patent Owner has not attempted to show where in the Specification, by
page and line number, there is disclosed structure, material, or acts
corresponding to each claimed function as required by 37 C.F.R.
§ 41.67(c)(1)(v).
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“Presentation Generation Program 1710” is the corresponding structure
necessary to perform the functional limitation of “applying corresponding
guidelines.” (App. Br. 5-9.)
However, we see nothing in these disclosures which describes a
software component specifically corresponding to the function of “applying
corresponding guidelines” that would clearly link, or associate, the
“Presentation Generation Program 1710” to the recited function of claim 4.
Instead, we find that the Patent Owner has carefully reproduced certain
portions of the '587 patent omitting portions using ellipsis in an attempt to
improperly suggest that the functional limitation of claim 4 is accomplished
exclusively via the “Presentation Generation Program 1710.” (App. Br. 5-
9.) Based upon this evidence, Patent Owner has failed to persuade us that
the “Presentation Generation Program 1710” is the particular structure which
performs the recited function of claim 4.
Consequently, we agree with the Examiner that the corresponding
structure for “applying corresponding guidelines” is the “Presentation and
Configuration Program 4715.” (RAN 346.) In making this determination,
we find that the '587 patent explicitly discloses that the “Presentation and
Configuration Program 4715” performs this recited function. (FF 6, 7.)
Specifically, the '587 patent discloses that the “Presentation and
Configuration Program 4715” in conjunction with the “Presentation Rules
Database 4650,” “guide[s] the Seller in the creation of a presentation that
meets the style, editorial, and content guidelines of that instance of the
present invention for each media venue or outlet chosen.” (FF 7.)
Moreover, the '587 patent discloses that “[a]s the Seller enters information,
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the Presentation and Configuration Program 4715, using the information
contained in the Presentation Rules Database 4650, controls and monitors
that entered information to conform to the controlling format and style for
each targeted media venue or outlet presentation.” (FF 9.) Accordingly, we
find the “Presentation and Configuration Program 4715” is the
corresponding structure necessary to perform the recited function of
dependent claim 4, and additionally dependent claims 21, 38, 55 which
recite substantially similar limitations using the same means plus function
language of dependent claim 4.
Notwithstanding the above, given the claim as a whole being directed
to a “method of using a network of computers to facilitate and control the
publishing of presentations,” as recited by cancelled independent claim 1,
we find that one of ordinary skill in the art would construe this limitation to
refer to a computer-enabled means-plus-function limitation. In the same
vein, both the “Presentation Generation Program 1710” and the
“Presentation and Configuration Program 4715” are software programs. A
software implemented algorithm constitutes part of corresponding structure
for a general purpose computer (absent sufficient or specific hardware
structure). See, e.g., WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339,
1349 (Fed. Circ. 1999).
To this end, Patent Owner attempts to imply that the “Presentation
Generation Program 1710 shown in Figure 2a” is an algorithm. (App. Br.
6.) However, nothing in Figure 2a, or the accompany disclosure in the
Specification, provides one of ordinary skill in the art with any
understanding of the programming necessary for a general purpose computer
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to implement the function of “applying corresponding guidelines,” as recited
by dependent claim 4, such that it would perform the function of, as Patent
Owner alleges, “automatically creating an advertising presentation for each
selected media venue in compliance with the individual guidelines of that
media venue.” (emphasis omitted) (App. Br. 9.) Specifically, Patent Owner
has failed to direct us to persuasive evidence in the '587 patent’s
Specification which would explain the structure of the “Presentation
Generation Program 1710’s” algorithm. Additionally, Patent Owner has not
provided evidence on the record demonstrating that one of ordinary skill in
the art at the time of the invention would have understood what this
algorithm would be. Therefore, we will not construe the claim to perform
any additional function other than the function recited by dependent claim 4.
Accordingly, the '587 patent’s Specification does not adequately
describe a “means” corresponding to the “Presentation Generation Program
1710” to support Patent Owner’s contention that the proper interpretation of
dependent claim 4 is “the Presentation Generation Program, running on a
computer, creating individualized presentations that comply with the
guidelines of each media venue by applying each media venue’s
presentation rules to raw advertising content input by a seller.” Therefore,
under these circumstances, we find that for the prior art to disclose or
suggest the “means for applying corresponding guidelines” recited in claims
4, 21, 38, and 55 the corresponding structure or equivalents thereof need
only be a piece of software such as the “Presentation and Configuration
Program 4715” executing on a general purpose computer capable of
“applying corresponding guidelines.”
Appeal 2011-013241
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Claims 5, 22, 39, and 56
Patent Owner asserts that the “Media Configuration Program 6717” is
a corresponding structure for the “means for . . . media venues to input said
guidelines” limitation of claim 5 which “on its face - expressly requires that
the media venue input its own guidelines into the system (instead of some
unknown third party).” (App. Br. 9-10.) Specifically, Patent Owner argues
that the claim requires a means “to input” and the input is be performed by
the “print media venues.” (App. Br. 10.) Dependent claims 22, 39, and 56
recite substantially similar limitations using the same means plus function
language.
In response, the Examiner contends that neither the claims nor the
'587 patent’s Specification requires that the media venues themselves input
their own guidelines. (RAN 346-349.) We find the Examiner’s contention
to be correct.
While there is no dispute as to the identification of the corresponding
structure for claim 5, we cannot agree with Patent Owner that the language
of claim 5 explicitly requires “media venues to input said guidelines”
themselves, as Patent Owner alleges. Instead, we find that the particular
function of the claim limitation is to “input said guidelines and information,”
which is not so limiting as to prevent a third party from inputting guidelines.
Patent Owner has not directed us to a lexicographic definition for the term
“media venue” in the '587 patent which would otherwise limit a third-party
from acting on behalf of the “media venue” to input guidelines or
information. Moreover, the portions of the '587 patent cited by Patent
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Owner (App. Br. 9-10) fail to demonstrate any relationship between the
Patent Owner’s claim construction and the express language of the claim
such that a proper construction would require this additional functional
limitation to be read into the claim.
Similar to our analysis of claim 4, the corresponding structure of
claim 5, the “Media Configuration Program 6717,” is also a software
program. While Patent Owner contends that support for this program can be
found in figures 2a, 2e, and their accompanying disclosure in the '587
patent’s Specification (App. Br. 10), we find that these disclosures fail to
provide one of ordinary skill in the art with any understanding of the
programming necessary for a general purpose computer to implement the
function of “input[ing] said guidelines and information,” such that it would
only require the “media venue” itself to perform the recited function of
dependent claim 5. Accordingly, we will not construe the claim to perform
any additional function other than the function recited by dependent claim 5.
Under these circumstances, we find that for the prior art to disclose or
suggest the “means for . . . media venues to input said guidelines”
limitations of dependent claims 5, 22, 39, and 56, the corresponding
structure, or equivalents thereof, need only be a piece of software such as the
“Media Configuration Program 6717” executing on a general purpose
computer capable of “input[ing] said guidelines and information.”

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ISSUE 2
Claim Term Construction
We begin our analysis of the prior art references by addressing Patent
Owner’s argument that the '587 patent provides an explicit definition for the
claimed term “guidelines.” (App. Br. 11). Specifically, Patent Owner asserts
that the '587 patent Specification “specifically states that presentation rules
or guidelines are ‘information that controls and limits the style and editing of
the presentations created by the Presentation Generation Program 1710.’”
(emphasis in original) (App. Br. 11.)
We are not persuaded by Patent Owner argument and find that Patent
Owner has failed to rebut the presumption that the term “guidelines” should
be construed in a way that is different from its ordinary and customary
meaning. “‘Where an inventor chooses to be his own lexicographer and to
give terms uncommon meanings, he must set out his uncommon definition
in some manner within the patent disclosure’ so as to give one of ordinary
skill in the art notice of the change.” In re Paulsen, 30 F.3d 1475, 1480
(Fed. Cir. 1994), quoting Intellicall, Inc., v. Phonometrics, Inc., 952 F.2d
1384, 1387-88 (Fed. Cir. 1992).
While the '587 patent does indeed set forth several lexicographic
definitions in the “Patent Application Glossary” portion of the '587 patent,
the glossary fails to provide explicit definitions for either terms
“presentation rules” or “guidelines.” (see '587 patent, cols. 7-13) Even so,
Patent Owner asserts that the '587 patent Specification “specifically states
that presentation rules or guidelines are ‘information that controls and limits
the style and editing of the presentations created by the Presentation
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Generation Program 1710.’” (emphasis original) (App. Br. 11.) However,
we find that the portion of the Specification pointed to by Patent Owner (col.
18, ll. 7-10) fails to provide a clear notice of a definition for the disputed
term “guidelines.”
Instead, at this portion of the Specification, we find a non-limiting
statement which describes that the Presentation Rules Databases 1650 and
4650 includes various data fields containing information that controls and
limits the style and editing of the presentations. (FF 8, 9.) The Specification
further describes that these data fields include inter alia presentation
templates, presentation cost and options, publication dates and deadlines,
presentation size restrictions, photo or graphics specifications such as size,
compression, file format, and any other guidelines, benchmarks, or
controlling algorithms. (FF 9.) As such, we find that Patent Owner has
failed to define, redefine, or set out an uncommon definition for the term
“guidelines” with any reasonable clarity, deliberateness, or precision, such
that one of ordinary skill in the art would interpret the term to mean
“information that controls and limits the style and editing of the
presentations created by the Presentation Generation Program 1710.”
Furthermore, while an “understanding [of] the claim language may be
aided by explanations contained in the written description, it is important not
to import into a claim limitations that are not part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the embodiment.”
Superguide Corp., 358 F.3d at 875. “[A]lthough the specification often
describes very specific embodiments of the invention, we have repeatedly
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warned against confining the claims to those embodiments . . . . [C]laims
may embrace ‘different subject matter than is illustrated in the specific
embodiments in the specification.’” Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en banc) (citations and internal quotation marks
omitted).
This reasoning is applicable here, and as such, we decline to read the
argued limitations from Patent Owner’s Specification into the disputed claim
term “guidelines.” Therefore, contrary to Patent Owner’s contention that
“guidelines” are limited to “controlling and limiting the style and editing of
the presentations created by the Presentation Generation Program 1710,” we
broadly but reasonably construe the scope of the claim term “guidelines” to
read on any information that controls and limits the presentations. This
construction comports with the ordinary and customary meaning that the
term “guidelines” would have had to a person of ordinary skill in the art at
the time of the invention given the wide range of media venues that this
invention is intended to be applicable to. (FF 2.) Accordingly, Patent
Owner’s arguments are unpersuasive.

Claims 4, 5, 21, 22, 55, and 56 anticipated under
35 U.S.C. § 102(b) by Del Sesto.
Dependent claims 4, 21, and 55
Patent Owner argues that Del Sesto fails to disclose a “means for
applying corresponding guidelines,” as recited by dependent claim 4. (App.
Br. 12.) Dependent claims 21 and 55 recite substantially similar limitations.
In making this argument, Patent Owner asserts that “[t]here is absolutely
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nothing in Del Sesto equivalent to the Presentation Generation Program of
the '587 that applies the guidelines of a plurality of media venues to seller
information to generate a custom presentation.” (App. Br. 13.)
Additionally, Patent Owner argues that Del Sesto fails to disclose any
guidelines that “control[]and limit[]the style and editing of the
presentations.” (App. Br. 11.) Specifically, Patent Owner contends that
even though a media venue in Del Sesto can “‘view and update her avail
inventory’ and ‘create and edit rate cards’ . . . these are not ‘guidelines’” for
formatting presentations. (App. Br. 11-12.)
Patent Owner’s arguments “fail from the outset because . . . they are
not based on limitations appearing in the claims . . .,” and are not
commensurate with the broader scope of dependent claim 4 which merely
recites a “means for applying corresponding guidelines,” and makes no
recitation directed to either “formatting” or “generating” presentations. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982). Furthermore, as discussed supra,
we construed the particular function of claim 4 to be “applying
corresponding guidelines,” and determined that to anticipate this limitation,
a reference need only disclose a piece of software executing on a general
purpose computer capable of “applying corresponding guidelines.”
Therefore, Patent Owner’s arguments directed to the “Presentation
Generation Program 1710” are not commensurate with the scope of the
claim, and thus unpersuasive.
Additionally, Patent Owner’s argument that Del Sesto fails to disclose
the “guidelines” of claim 4 is not persuasive. Given our aforementioned
broad but reasonable construction for the term “guidelines,” we find that Del
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Sesto’s disclosure of available advertising criteria input by a media seller
(i.e., media venue) such as the day and time of its broadcast, the avail
category, price, and length of the avail to be equivalent to “guidelines,” as
presently claimed. (FF 15.) These inputs correspond with the '587 patent’s
description of “guidelines,” and explicitly refer to at least presentation cost,
publication dates, size, and file format. (FF 9.) While Patent Owner alleges
that these “are not ‘rules’ that media venues use to control the ‘content’ or
‘look and feel’ of the advertisement” (App. Br. 12), neither the language of
the claim nor the Specification requires such.
In light of the above, we find that Del Sesto discloses a “means for
applying corresponding guidelines,” as recited by dependent claim 4.
Specifically, Del Sesto discloses a system which allows buyers (i.e.,
advertisers) to input search parameters and select an advertising campaign
based on avails information provided by the sellers (i.e., media venues)
which results in the formation of a contract. (FF 14, 15; see Fig. 4S.).
Subsequently, Del Sesto describes that once the media buyer agrees to the
contract using the interface depicted in figure 4S, the seller then downloads
the advertisement, previously uploaded to the central server, in conjunction
with the executed contract, and runs or plays the advertisement according to
the guidelines of the contract. (FF 11, 12, 13.)
Therefore, for these reasons and the reasons discussed supra, we find
that Del Sesto discloses “guidelines” under the broadest reasonable
interpretation which control and limit the advertisement, thus anticipating
the “means for applying corresponding guidelines,” recited by dependent
claim 4, 21, and 55.
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Accordingly, we sustain the Examiner rejection of dependent claims
4, 21, and 55 under 35 U.S.C. § 102(b) as anticipated by Del Sesto.

Dependent claims 5, 22, and 56
Patent Owner argues that Del Sesto fails to disclose “guidelines, as
this term is defined in the '587 patent,” and as such, fails to disclose a
“means for . . . media venues to input said guidelines,” as recited by
dependent claim 5. (App. Br. 13.) Dependent claims 22 and 56 recite
substantially similar limitations. We cannot agree.
As discussed with supra, we find that Del Sesto’s disclosure of
available advertising criteria input by a media seller (i.e., media venue) such
as the day and time of its broadcast, the avail category, price, and length of
the avail equivalent to “guidelines,” as presently claimed. (FF 15.) Del
Sesto’s system also provides an interface which allows a seller “to view and
update the seller’s inventory by at least day and time. (FF 16.) While Patent
Owner alleges that “the specification clearly describes presentation rules or
guidelines as impacting content, size, look and/or feel of advertisements
(App. Br. 14), neither the Specification nor language of the claims is so
limiting. See Superguide Corp., 358 F.3d at 875.
Accordingly, based on our broad but reasonable construction of
“guidelines,” we find that Del Sesto discloses the “means for . . . media
venues to input said guidelines,” as recited by dependent claims 5, 22, and
56. Therefore, we sustain the Examiner’s rejection of claims 5, 22, and 56
under 35 U.S.C. § 102(b) as anticipated by Del Sesto.

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ISSUE 3
Claims 4, 5, 21, 22, 38, 39, 55, and 56 obvious over Del Sesto and Naqvi
under 35 U.S.C. § 103(a).
Dependent claims 4, 21, 38, and 55
Patent Owner argues that Naqvi fails to teach or suggest a system
which “appl[ies] presentation rules or guidelines of a media venue to
information entered by the seller to create rule-compliant advertisements – it
simply utilizes the advertisement supplied by the advertiser ‘as is.’” (App.
Br. 21.) Specifically, Patent Owner asserts that Naqvi’s “constraints” are
“optional tags inserted by the webpage publisher to indicate the desired
subject matter of advertisements and the size/placement of those
advertisements on the page” which are not applied by the system. (App. Br.
21-22.) Dependent claims 21, 38, and 55 recite substantially similar
limitations.
We are not persuaded by Patent Owner’s argument and find that
Naqvi discloses a system for placing advertisements stored on a server and
dynamically mixed with content pages, thus creating advertisements that
satisfy a set of constraints requested by the advertiser, as well as the
constraints of the publisher of the page. (FF 17, 18.) Naqvi’s system
provides advertisers with an interface for creating targeted advertisements
based on a focus tag (i.e., subject matter of the advertisement) specified by
the advertiser and stored in the “ad info database.” (FF 19.) Naqvi’s system
describes a mixer means including a layout manager means and a
typography manager means which combines a retrieved advertisement and a
content page in response to a query. (FF 20.) The layout manager
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comprises a rule base which contains templates that have been predefined
and layout data base which contains a collection of rules inputted by the user
(i.e., media venue) defining which layout templates are best under what set
of conditions. (FF 21.)
Naqvi’s rules which are inputted by a media venue and stored in
layout rules database 11 define “the amount of data that is to be displayed,
the kind of data that is to be displayed, the amount of text, the amount of
advertising material, and the size of the various maps and multi-media icons
that are to be displayed.” (FF 22.) Additionally, these rules define specify
the placement of an advertisement on a media venue. (FF 24.) Based on
this disclosure, we interpret Naqvi’s rules to be “guidelines,” as presently
claimed. This interpretation is commensurate with our broad but reasonable
interpretation of “guidelines” as information that controls and limits the
presentations, discussed supra.
While Patent Owner asserts that Naqvi’s “constraints” are optional
tags, we find that this does not change the fact that Naqvi discloses a system
which applies “guidelines” in manner commensurate with the scope of the
'587 patent’s Specification and the language of dependent claims 4, 21, 38,
and 55. Moreover, the rejection of these claims is based on obviousness,
and as such a reference may be relied upon for all that it would have
reasonably suggested, including nonpreferred embodiments. Merck & Co. v.
Biocraft Lab., 874 F.2d 804 (Fed. Cir. 1989). Accordingly, we find that
Naqvi’s system detects corresponding media venues guidelines and applies
these “corresponding guidelines” to create a page for a media venue. (FF
23.)
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Furthermore, contrary to Patent Owner’s contention that Naqvi
“simply utilizes the advertisement supplied by the advertiser ‘as is,’” we find
that Naqvi’s system dynamically mixes advertisement on a content page in
response to a user’s query using focus tags. (FF 17, 18.) While Patent
Owner may be correct that an advertiser uploads an advertisement, we
interpret the advertisement displayed at the media venue to be comprised of
the advertising content and the focus tags, and as such, not “as is.”
Therefore, we find that Naqvi discloses the “means for applying
corresponding guidelines” of claims 4, 21, 38, and 55. Accordingly, we
sustain the Examiner’s rejection of dependent claims 4, 21, 38, and 55 under
35 U.S.C. § 103(a) as obvious over Del Sesto and Naqvi.

Dependent claims 5, 22, 39, and 56
Patent Owner argues that Naqvi fails to “provide any way for
inputting presentation rules or guidelines that will be applied to information
entered by the seller to generate ads customized to each media venue.”
(App. Br. 22.) Additionally, Patent Owner contends that “the embedding of
a tag in a webpage is not the same as ‘inputting’ guidelines into the system
via software equivalent to the Media Configuration Program 6717.” (App.
Br. 23.) Dependent claims 21, 38, and 55 recite substantially similar
limitations.
We are not persuaded by Patent Owner’s arguments and find that
Naqvi discloses the “means for . . . media venues to input said guidelines,”
as recited by dependent claims 5, 22, 39, and 56. Specifically, Naqvi
discloses a mixer means, which as discussed supra, contains a collection of
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rules inputted by the user (i.e., media venue) defining which layout
templates are best under what set of conditions. (FF 21, 22, 24.) Naqvi
additionally discloses that advertisements can be created made to satisfy the
constraints of the publisher of the page. (FF 18.) As such, Naqvi discloses
software capable of allowing media venues to input guidelines and
information.
Additionally, we find Patent Owner’s contention that Naqvi only
embeds a tag in a webpage unpersuasive. Naqvi discloses that users define
rules which control the placement of targeted advertisements on a content
page. (FF 22, 23.) Given our broad but reasonable construction of
“guidelines,” Naqvi discloses inputting these “guidelines” into its system for
placing advertisements. Therefore, Naqvi discloses the “means for . . .
media venues to input said guidelines,” as recited by dependent claims 5, 22,
and 56.
Accordingly, we sustain the Examiner’s rejection of claims 5, 22, and
56 under 35 U.S.C. § 103(a) as obvious over Del Sesto and Naqvi.

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Remaining Rejections
Affirmance of the anticipation rejection of claims 4, 5, 21, 22, 55 and
56 based on Del Sesto and the obviousness rejection for all claims based on
Del Sesto and Naqvi renders it unnecessary to reach the propriety of the
Examiner’s decision to reject those claims on a different basis. Cf. In re
Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections
after finding an anticipation rejection to be upheld). As such, we need not
reach the propriety of the rejection of those claims over the remaining
rejections.

CONCLUSION
We conclude that the Examiner properly interpreted the “means for
applying corresponding guidelines” limitation of claims 4, 21, 38, 55 and the
“means for . . . media venues to input said guidelines” limitation of claims 5,
22, 39, and 56 under 35 U.S.C. § 112, paragraph 6. Additionally, we
conclude that Del Sesto discloses the “means for applying corresponding
guidelines” of claims 4, 21, and 55 and the “means for . . . media venues to
input said guidelines” of claims 5, 22, and 56, and as such anticipates these
claims under 35 U.S.C. §102(b). Lastly, we conclude that the combination
of Del Sesto and Naqvi discloses the “means for applying corresponding
guidelines” of claims 4, 21, 38, and 55 and the “means for . . . media venues
to input said guidelines” of claims 5, 22, 39, and 56, and as such makes
obvious these claims under 35 U.S.C. §103(a).

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DECISION
The Examiner’s decision to reject claims 4, 5, 21, 22, 33, 39, 55, and
56 is AFFIRMED.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED
Ack

cc:
PATENT OWNER:
MICHAEL F. HEIM
HEIM, PAYNE & CHORUSH, LLP
600 TRAVIS STREET
HOUSTON, TX 77002

THIRD PARTY REQUESTER

JOHN C. PHILLIPS
FISH & RICHARDSON P.C.
12390 EL CAMINO REAL
SAN DIEGO, CA 92130