Ex Parte 7240025 B2 et al

Board of Patent Appeals and Interferences

Jan 26, 2012

95001073 (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.
95/001,073 07/30/2008 7240025 B2 23373-007RX1 4124
7590 01/27/2012
MICHAEL F. HELM
HELM, 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 2011-010719
Inter partes Reexamination Control 95/001,073
United States Patent 7,240,025 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 2011-010719
Reexamination Control No. 95/001,073
Patent 7,240,025 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 1, 6, 7, 11-17, 20, 23, 24, 28-32, 36-39, 45-47, 50-52, 62,63,
79, 81, 90, 91, 140, 141, 148, 179, 185, 186, 190-196, 199, 202, 203, 207-
211, 215-218, 224-226, 229-231, 241, 242, 258, 260, 269, 270, 319, 320,
and 327.2 3 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.4
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 30,
2008, of United States Patent 7,240,025 B2 (“the '025 patent”), issued to
Lucinda Stone and Michael A. Dean, on July 3, 2007, based on U.S.
Application No. 10/954,820, filed September 30, 2004. The '025 patent
claims priority as a continuation of U.S. Application No. 10/165,091, filed

1 See Patent Owner’s Appeal Brief filed November 19, 2010, hereinafter
“App. Br.,” at 1.
2 See Right of Appeal Notice, mailed August 20, 2010, hereinafter “RAN.”
3 Remaining claims 2-5, 8-10, 18, 19, 21, 22, 25-27, 33-35, 40-44, 48, 49,
53-61, 64-78, 80, 82-89, 92-139, 142-147, 149-178, 180-184, 187-189, 197,
198, 200, 201, 204-206, 212-214, 219-223, 227, 228, 232-240, 243-257,
259, 261-268, 271-318, 321-326, and 328-397 are not subject to
reexamination. (See RAN.)
4 See Requester’s Respondent Brief filed December 20, 2010, hereinafter
“TPR Resp. Br.”
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on June 7, 2002, now U.S. Patent No. 6,829,587 (“the '587 patent”), which is
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 '025 patent, the '045 and '587 patents are
under reexamination. The '045 patent, control number 95/001,061, and the
'587 patent, control number 95/001,068, are currently under appeal, Appeal
Nos. 2011-010724 and 2011-013241, respectively, and being decided
concurrently.5
A petition to terminate inter partes reexamination pursuant to 35
U.S.C. § 317(b) and 37 C.F.R. § 1.907(b) was filed by Patent Owner on
December 9, 2011. In the Petition, Patent Owner seeks to terminate the
instant proceedings with respect to claims 52, 63, 90, and 231. A formal
decision on this Petition has not yet been rendered; we treat the Petition as
denied for purposes of this Decision.

Related Litigation
The '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.)

5 Related patent 7,249,059 (“the '059 patent”), control number 95/001,069,
Appeal No. 2011-010893 is also under reexamination, currently under
appeal, and being decided concurrently.
Appeal 2011-010719
Reexamination Control No. 95/001,073
Patent 7,240,025 B2

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THE INVENTION
Patentee’s invention relates to an internet advertising system and
method which provides a seller self-serve control for creation, publication,
and display of advertisements on internet media venues owned or controlled
by entities other than the seller in a form automatically modified to comply
with the media venues’ presentation rules. (Abs.)
Exemplary claim 1 on appeal reads as follows:
1. A computer system for creating and publishing customized
electronic advertisements, for a seller, to internet media venues owned
or controlled by other than the seller, comprising:
a first interface to the computer system through which each of
the internet media venues is prompted to input presentation rules for
the internet media venue for displaying electronic advertisements on
the internet media venue;
a first database storing the presentation rules input by the
internet media venues through the first interface;
a second interface to the computer system through which a
seller is prompted to input information to select one or more of the
internet media venues and prompted to input information to create an
electronic advertisement for publication to the selected internet media
venues;
a second database storing the information input by the seller
through the second interface; and
a computer controller of the computer system processing and
publishing the electronic advertisement to one or more of the selected
internet media venues in compliance with the presentation rules of the
internet media venue, whereby the electronic advertisement is
displayed on each of the one or more of the selected internet media
venues in compliance with the presentation rules of the internet media
venue.

(Claims Appendix.)

Appeal 2011-010719
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The prior art references relied upon by the Examiner in rejecting the
claims are:
Brown et al. US 6,026,368 Feb. 15, 2000
Del Sesto US 6,985,882 B1 Jan. 10, 2006
Naqvi et al. WO 97/21183 Jun. 12, 1997

AdForce, Inc., User Guide: A Complete Guide to AdForce, Ver. 2.6
(1998), hereinafter “AdForce.”
AdKnowledge Campaign Manager: Reviewer’s Guide (1998),
hereinafter “Campaign Manager.”
AdKnowledge MarketMatch Planner: Reviewer’s Guide (1998),
hereinafter “MarketMatch.”

The Examiner rejected the claims as follows:
1. Claims 1, 6-7, 11-17, 20, 23-24, 28-32, 36-39, 45-47, 50-52, 62-63, 79,
81, 90-91, 140-141, 148, 179, 185-186, 190-196, 199, 202-203, 207-211,
215-218, 224-226, 229-231, 241-242, 258, 260, 269-270, 319-320, and 327
rejected under 35 U.S.C. § 102(b) as anticipated by AdForce.
2. Claims 1, 6-7, 11-17, 20, 23-24, 28-32, 36-39, 45-47, 50-52, 62-63, 79,
81, 90-91, 140-141, 148, 179, 185-186, 190-196, 199, 202-203, 207-211,
215-218, 224-226, 229-231, 241-242, 258, 260, 269-270, 319-320, and 327
rejected under 35 U.S.C. § 102(b) as anticipated by Del Sesto.
3. Claims 1, 6-7, 11-17, 20, 23-24, 28-32, 36-39, 45-47, 50-52, 62-63, 79,
81, 90-91, 140-141, 148, 179, 185-186, 190-196, 199, 202-203, 207-211,
215-218, 224-226, 229-231, 241-242, 258, 260, 269-270, 319-320, and 327
rejected under 35 U.S.C. § 102(b) as anticipated by Navqi.
4. Claims 1, 47, 50-52, 79, 81, 140-141, 148, 179, 226, 229-231, 258,
260, 319-320, and 327 rejected under 35 U.S.C. § 102(e) as anticipated by
Brown.
Appeal 2011-010719
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5. Claims 1, 6-7, 11-17, 20, 23-24, 28-32, 36-39, 45-47, 50-52, 62-63, 79,
81, 90-91, 140-141, 148, 179, 185-186, 190-196, 199, 202-203, 207-211,
215-218, 224-226, 229-231, 241-242, 258, 260, 269-270, 319-320, and 327
rejected under 35 U.S.C. § 103(a) as obvious over AdForce and
MarketMatch.
6. Claims 1, 6-7, 11-17, 20, 23-24, 28-32, 36-39, 45-47, 50-52, 62-63, 79,
81, 90-91, 140-141, 148, 179, 185-186, 190-196, 199, 202-203, 207-211,
215-218, 224-226, 229-231, 241-242, 258, 260, 269-270, 319-320, and 327
rejected under 35 U.S.C. § 103(a) as obvious over AdForce and Campaign
Manager.
7. Claims 1, 6-7, 11-17, 20, 23-24, 28-32, 36-39, 45-47, 50-52, 62-63, 79,
81, 90-91, 140-141, 148, 179, 185-186, 190-196, 199, 202-203, 207-211,
215-218, 224-226, 229-231, 241-242, 258, 260, 269-270, 319-320, and 327
rejected under 35 U.S.C. § 103(a) as obvious over MarketMatch and Navqi.
8. Claims 1, 6-7, 11-17, 20, 23-24, 28-32, 36-39, 45-47, 50-52, 62-63, 79,
81, 90-91, 140-141, 148, 179, 185-186, 190-196, 199, 202-203, 207-211,
215-218, 224-226, 229-231, 241-242, 258, 260, 269-270, 319-320, and 327
rejected under 35 U.S.C. § 103(a) as obvious over Campaign Manager and
Navqi.

Appeal 2011-010719
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Patent 7,240,025 B2

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ISSUES6
1. Did the Examiner err in construing the “create/creating” limitation
of independent claims 1 and 179?
2. Does AdForce disclose the subject matter of claims 1, 6-7, 11-17,
20, 23-24, 28-32, 36-39, 45-47, 50-52, 62-63, 79, 81, 90-91, 140-141, 148,
179, 185-186, 190-196, 199, 202-203, 207-211, 215-218, 224-226, 229-231,
241-242, 258, 260, 269-270, 319-320, and 327, and as such anticipate these
claims under 35 U.S.C. §102(b)?

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).

District Court’s Memorandum Opinion and Order
1. The United States District Court for the Eastern District of Texas
construed “processing . . . the electronic advertisement . . . in compliance
with the presentation rules of the internet media venue,” as recited by claim
1 to mean “executing a systematic sequence of mathematical and/or logical
operations upon the customized electronic advertisement to make it comply
with the presentation rules of the internet media venues.” (See Function

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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Media, L.L.C. v. Google, Inc., , Civ. A. No. 2:07-CV -279 at 17 (Oct 9,
2009) (Mem. Op. & Order).

'025 Patent
2. The '025 patent describes that its system “provides a seller self-
serve control for creation, publication, and display of advertisements on
internet media venues owned or controlled by entities other than the seller in
a form automatically modified to comply with the media venues’
presentation rules . . . .” (Abs.)
3. The '025 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. 38-43.)
4. The '025 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.)
5. The '025 patent states:
The 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. 42, ll. 13-19.)
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6. The '025 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
that information and data for publication on traditional
media and electronic networks.
(Col. 58, ll. 36-43.)
7. The '025 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.
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(Col. 28, ll. 42-63.)
8. To complete presentations for different media venues, the '025
patent discloses that:
each presentation might have very different standards for
publishing the same information. In those cases, the
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. 42, ll. 7-37.)
9. The '025 patent describes that in the preferred embodiment:
the same rules and guidelines contained in the
Presentation Rules Database 1650 are also held in the
Presentation Rules Database 4650 FIG. 2c, which is part
of the Seller Interface 4000 FIG. 2c. With the same rules
and guidelines as those in the Presentations Rules
Database 1650 applied and enforced during data input at
the Seller Interface 4000 FIG. 2c module, no
modification or editing should be necessary at the Central
Controller and Presentation Processor 1000 module.
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(Col. 19, ll. 55-65.)
10. The '025 patent defines “advertising” as “[a]ny presentation or
effort to inform or influence target demographics or the general public. This
includes all media types and methods such as but not limited to audio and
visual, print, electronic, multimedia etc.” (Col. 8, ll. 4-8.)
11. The '025 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. The rules include inter alia presentation templates,
presentation cost and options, publication dates and deadlines, presentation
size restrictions, photo or graphics specifications such as size, compression,
and file format. (Col. 18, ll. 29-50.)

AdForce
12. AdForce is a manual describing the AdForce™ Internet
advertising management solution which is designed to “create,
manage, target, and report advertising on the World Wide Web”
through centralized serving. (1-1 – 1-3.)
13. AdForce describes that its system combines proprietary
hardware and software to provide “access[] through the Internet by the
AdForce Java Client software (installed on your computer), allowing
real-time communication with extensive advertising and Web site
management databases.” (1-3, 1-4, 1-6.)
14. AdForce describes that users login to its system interface
where the system prompts advertisers and publishers for presentations
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and advertiser input through the advertiser interface. (2-5, 3-3, 3-4, 6-
28 – 6-30.)
15. AdForce depicts an interface where a user is prompted to
inter alia upload a file, select ad style (e.g., GIF89, Java, HTML) and
size (e.g., 468 x 60, 104 x 36, 450 x 60), hypertext, enter Alt text, and
enter redirect ad options. (6-22, 6-28 - 6-31.)
16. AdForce describes that “Alt text appears when the mouse
moves over the ad in the browser.” (6-31.)
17. Information inputted into the AdForce system is stored in
AdForce’s central databases, and the information is compiled and then
provided to publishers who place appropriate web tags requesting
advertisements in their webpages. (1-1 – 1-6 and 7-29 - 7-31.)

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
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specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (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).

ANALYSIS
ISSUE 1
Patent Owner argues that the Examiner has misconstrued the
“create/creating” limitation of independent claims 1 and 179. (App. Br. 4.)
Specifically, Patent Owner alleges that a proper construction of claims 1 and
179 requires the Presentation Generation Program 1710 on computer
controller 1000 to create the customized electronic advertisements by
processing the advertising information stored in the second database in
accordance with the rules of the media venues stored in the first database.
(App. Br. 6.) Patent Owner asserts that when properly construed, the claim
limitation reads as “a second interface that prompts a seller to . . . (b) input
advertising information used (by the computer controller) to create an
electronic advertisement.” (App. Br. 5.) Consequently, Patent Owner
contends that the creation of the customized advertisements is not performed
by the seller in response to user prompts, but instead by the central controller
which “creates the customized advertisements by processing the raw
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advertising information previously entered by the seller, consistent with the
rules provided by the targeted media venues.” (App. Br. 7.) We are not
persuaded by Patent Owner’s argument and find that neither the claims nor
the '025 patent’s Specification support this interpretation.
Turning first to the claim language, Claim 1 recites that “a seller [via a
second interface] is . . . prompted to input information to create an electronic
advertisement for publication to the selected internet media venues.”
(emphasis added) (Claim App’x. 1.) The last limitation of Claim 1 then
recites “a computer controller of the computer system processing and
publishing the electronic advertisement to one or more of the selected
internet media venues in compliance with the presentation rules of the
internet media venue, whereby the electronic advertisement is displayed on
each of the one or more of the selected internet media venues in compliance
with the presentation rules of the internet media venue.” (emphasis added)
(Claim App’x. 1.)
Based upon the plain language of independent claim 1, Patent
Owner’s claim construction must fail. While Patent Owner attempts to blur
the distinction between “information,” “raw advertising information”7 and
an “electronic advertisement” in their Appeal Brief, we find that there is
indeed a clear distinction. Specifically, we find that an “electronic
advertisement” is created from seller “input information” and there is no
“electronic advertisement” created until the seller is prompted to do so by
the second interface of the computer system. Claim 1 further recites that the

7 A text search of the '025 patent failed to find a single instance of the term
“raw advertising information.”
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computer controller “processes” the “electronic advertisement,” which we
find to be distinct from the “information” inputted by the Seller at the second
interface recited by claims 1 and 179. As such, we find that the language of
claim 1 does not require the computer controller to create the customized
electronic advertisements by processing the inputted “information” in
accordance with the presentation rules of the media venues, as Patent Owner
alleges.
Instead, we find that the language of claim 1 reads on the computer
controller processing and publishing the already created “electronic
advertisement.” This interpretation is commensurate with the scope of the
'025 patent’s Specification which describes that the Presentation and
Configuration Program 4715 acts as the controlling software interface for
the seller to choose which media or advertising channels the seller wishes to
participate (i.e., select one or more internet venues) and then presents the
seller with a series of questions with the answers (i.e., input information)
used to create a presentation. (FF 7.) Specifically, the '025 patent describes
that:
[a]s 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.
(FF 8.)
Moreover, the '025 patent describes that when a seller creates multiple
presentations for different media venues, the seller must enter the same
information in multiple locations on the forms in response to the same
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questions (i.e., prompts) because each separate entry is controlled by the
information contained within the Presentation Rules Database 4650. (FF 8.)
Therefore, we find that '025 patent’s Specification reasonably supports a
claim interpretation where the creation of an “electronic advertisement” is
performed by, and in response to, user prompts at the second interface
recited by independent claim 1, and not as Patent Owner contends through
the Presentation Generation Program 1710 executing on computer controller
1000 to “processing the raw advertising information previously entered by
the seller, consistent with the rules provided by the targeted media venues.”
Further, Patent Owner argues that claim 1 automatically creates
presentations “[o]nce the seller has entered raw advertising information . . .
without any further input by/from the seller” using software executing on the
central controller as indicated by the claim’s use of the “processing”
limitation. (App. Br. 8.) Specifically, Patent Owner asserts that the
Presentation Generation Program 1710, executed on the central controller,
automatically creates multiple presentations in accordance with the
presentations rules of each selected media venue. (App. Br. 8.)
We are not persuaded by Patent Owner’s arguments and agree with
the Examiner that independent claim 1 does not require the automatic
creation of advertisements. (RAN 530.) Claim 1 makes no recitation of the
term “automatic” and we will not import such a limitation when the scope of
the claim is broader. See Superguide Corp., 358 F.3d at 875. While Patent
Owner alleges that Presentation Generation Program 1710 is responsible for
automatically creating the multiple presentations during “processing,” we
find that this interpretation is unsupported by the language of independent
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claim 1 and the disclosure of the '025 patent. As discussed supra, the
language of independent claim 1 makes clear that any “processing”
performed by the computer controller is done to “the electronic
advertisement” and not to the “information” inputted by a seller when
prompted at the second interface to create “an electronic advertisement.”
Moreover, we find Patent Owner’s contention that their proffered
claim construction is supported by the Markman Order issued by the District
Court for the Eastern District of Texas to be unpersuasive. (App. Br. 10-11)
Patent Owner attempts to argue that the district court’s construction of the
term “processing” supports Patent Owner’s claim construction, however,
Patent Owner qualifies this argument with their “disagree[ment] with the
Court’s substitution of the phrase ‘customized electronic advertisement’ for
‘inputted information.’” (App. Br. 11.) Therefore, Patent Owner again
attempts to blur the distinction between “information” and “electronic
advertisement,” by trying to argue that the central controller’s “processing”
is being performed on the “information” as opposed to the “electronic
advertisement,” as presently claimed. Consequently, we find the district
court’s Order construing the “processing” limitation of claims 1 and 179 as
“executing a systematic sequence of mathematical and/or logical operations
upon the customized electronic advertisement to make it comply with the
presentation rules of the internet media venues” to support the instant claim
construction under the broadest reasonable interpretation. (See FF 1.)
Claims under reexamination are given their broadest reasonable
interpretation consistent with the patent disclosure. In re Trans Texas
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Holdings Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007) (citing In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)).
Therefore, in contrast to Patent Owner’s assertions that the “electronic
advertisement” is created in accordance with the presentation rules,
automatically, by the Presentation Generation Program 1710, executing on
the computer controller, we find that it is the Presentation and Configuration
Program 4715 using the Presentation Rules Database 4650 to control and
monitor the information entered (i.e., prompted) by the seller to conform to
the controlling media venues’ format and style, thus creating “an electronic
advertisement” in compliance with the presentation rules of that media
venue. “Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification or prosecution history when
those sources expressly disclaim the broader definition.” In re Bigio, 381
F.3d 1320, 1325 (Fed Cir. 2004).
Accordingly, Patent Owner’s argument that the Examiner erred in
construing the “create/creating” limitation of independent claims 1 and 179
is unpersuasive.

ISSUE 2
Claims 1, 6-7, 11-17, 20, 23-24, 28-32, 36-39, 45-47, 50-52, 62-63, 79, 81,
90-91, 140-141, 148, 179, 185-186, 190-196, 199, 202-203, 207-211, 215-
218, 224-226, 229-231, 241-242, 258, 260, 269-270, 319-320, and 327
rejected under 35 U.S.C. § 102(b) as anticipated by AdForce.
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Independent claims 1 and 179
Patent Owner’s arguments generally relate to their contention that
AdForce fails to disclose a system which via a central controller, customizes
raw advertising information input by a seller to create customized electronic
advertisements that conform to the individual guidelines of each media
venue. (App. Br. 13.) However, this contention “fail[s] from the outset
because . . . it is not based on limitations appearing in the claims . . . ,” and is
not commensurate with the broader scope of the independent claims which
recite that an electronic advertisement is created at a second interface, where
a seller is prompted to input information, and not as Patent Owner contends
automatically, by a central controller. In Re Self, 671 F.2d 1344, 1348
(CCPA 1982). As discussed supra, neither the independent claims nor the
'025 patent Specification support the claim interpretation offered by Patent
Owner. Therefore, contrary to Patent Owner’s contention, AdForce need not
disclose a system which automatically customizes raw advertising
information or require the computer controller to create the customized
electronic advertisements to anticipate the subject matter of independent
claims 1 and 179.
Following, Patent Owner argues that AdForce fails to disclose the
creation of advertisements. (App. Br. 14.) Specifically, Patent Owner
contends that merely combining advertising content with tags, Alt text, and
URLs before transmission to the media venue “does not necessarily result in
a rule-compliant advertisement.” (App. Br. 14.) We are not persuaded by
Patent Owner’s argument and agree with the Examiner that AdForce
discloses the creation of an electronic advertisement, as recited by
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independent claims 1 and 179. (RAN 530; see FF 12.) Specifically,
AdForce discloses that an electronic advertisement is created by at least
uploaded advertising content (e.g., banner), hypertext, and “Alt text”
inputted by a seller which appears on a browser when a web user moves
their mouse over the displayed ad. (RAN 530; see FF 14, 15, 16.) This
“Alt text” is processed along with the advertising content in compliance with
the media venue’s advertisement style and size requirements, thus resulting
in a rule-compliant advertisement displayed at an internet media venue. (FF
15, 16, 17.) Accordingly, based on our claim construction supra, we find
that AdForce discloses processing and publishing an electronic
advertisement created from information inputted by a seller in response to
the prompting at a second interface.
However, Patent Owner asserts that the “Alt text” disclosed in
AdForce is not customized or changed in any way by the system to conform
to media venue rules. (App. Br. 14.) Specifically, Patent Owner argues
there is “no computer hardware or software in AdForce that operates to take
information input by an advertiser and, via the processing of this data with
the guidelines of each media venue, generate a plurality of presentations that
each comply with the corresponding media venue guidelines of the one or
more media venues where the presentation is to be published.” (App. Br.
15.) We cannot agree.
Instead, we find that AdForce describes a system which creates,
manages, targets, and reports advertising on the Internet using proprietary
hardware and software over a centralized server network. (FF 12, 13.)
While Patent Owner asserts that the “Alt text” is not customized or changed
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21
by the system to conform to the media venue rules, the claims do not require
such. Instead, to anticipate the claim, we find that the “electronic
advertisement” disclosed in AdForce merely needs to be processed and
published in compliance with a media venue’s presentation rules.
As discussed supra, AdForce processes an electronic advertisement
by compiling the advertising content (e.g., banner display) along with at
least the “Alt text.” Both of these elements are input information entered
into the AdForce system by the advertiser, at the advertiser’s interface, in
response to prompts, and then displayed at an internet media venue on a
browser as the “electronic advertisement.” In addition, once created, the
“electronic advertisement” is processed based at least on advertising style
size, and “Alt text,” and then published by the computer controller in
compliance with the presentation rules of the media venue, as presently
claimed and in a manner commensurate with the scope of the '025 patent’s
Specification. (FF 14, 15.)
Specifically, the '025 patent describes that the presentation rules
control and limit the style and editing of the presentations using inter alia
presentation size restrictions and photo or graphics specifications such as
size, compression, and file format. (FF 11.) Therefore, when the advertiser
is prompted to input information to create an electronic advertisement by
selecting an advertising style such as GIF, Java, or HTML and the
advertisement’s size (FF 14, 15), the AdForce system is ensuring that this
input information conforms to the presentation rules for each media venue.
Accordingly, contrary to Patent Owner’s contention, AdForce discloses a
mechanism to process and publish the “electronic advertisement” to a
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selected internet media venue in compliance with the presentation rules of
the internet media venue, as presently recited by independent claims 1 and
179.
Lastly, Patent Owner argues that because submitted advertisements in
AdForce “must be entirely correct and follow AdForce Service’s rich media
ad guidelines, or campaign delivery can be delayed,” an electronic
advertisement is displayed on a media venue because the advertiser
complied with these guidelines, not because the AdForce system
“‘processed’ the information entered by the advertiser to make it comply
with the rules of the media venue.” (App. Br. 15, citing see AdForce 6-22.)
Patent Owner’s argument is unavailing as it is premised on a limitation not
appearing in the independent claims. As discussed supra, independent
claims 1 and 179 do not recite that the computer controller creates and
individually customizes advertisements in compliance with the presentation
rules. Instead, any “processing” required by the claims is performed on the
“electronic advertisement,” not the “information” entered by the advertiser.
Moreover, Patent Owner’s AdForce guidelines argument is applicable to the
advertiser’s uploaded content, and not to the “electronic advertisement”
created by the seller, comprised of the uploaded advertising content
(e.g., banner) and at least the hypertext and “Alt text” elements. (RAN 526.)
As such, we find that the system disclosed in AdForce would still “process”
and “publish” the “electronic advertisements” in compliance with the
presentation rules (i.e., style and size) of the internet media venue.
Accordingly, for these reasons, and the reasons discussed supra, we
find Patent Owner’s arguments unpersuasive. Therefore, we sustain the
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Examiner’s rejection of independent claims 1 and 179 under 35 U.S.C. §
102(b) as anticipated by AdForce.

Dependent claims 47, 62, 63, 90, 140, 226, 241, 242, 269, 319
Patent Owner again argues that AdForce fails to disclose a system that
creates customized presentations by processing raw advertising information
input by the seller in accordance with the media venue presentation rules.
(App. Br. 15.) Specifically, Patent Owner contends that dependent claims
47, 62, 63, 90, 140, 226, 241, 242, 269, 319 require “the ‘automatic
restructuring’ of the information input by the seller to comply with media
venue presentation rules.” (App. Br. 16.)
We are not persuaded by Patent Owner’s arguments and as discussed
supra find that “processing” is not the same as “creating.” Therefore, any
“processing” is performed on the “electronic advertisement” created by the
Presentation and Configuration Program 4715. (FF 6, 7.) Moreover,
dependent claims 47, 62, 63, 90, 140, 226, 241, 242, 269, 319 make no
recitation requiring an “automatic restructuring,” but instead generally recite
a filter to “automatically apply or compare” the information input by the
seller to comply with media venue presentation rules. As such, the AdForce
system would still “process” and “publish” the “electronic advertisement”
comprised of uploaded advertising content (e.g., banner) and at least the “Alt
text” in compliance with the presentation rules (i.e., style and size) of the
internet media venue. (FF 14, 15, 16.) In fact, the language of the
dependent claims does not even require the presentation rules to be applied,
but only requires a comparison to be performed. Therefore, for these
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reasons, and the reasons discussed supra, we find that AdForce discloses the
subject matter of dependent claims 47, 62, 63, 90, 140, 226, 241, 242, 269,
319.
Accordingly, Patent Owner’s arguments are unpersuasive, and as
such, we sustain the Examiner’s rejection of dependent claims 47, 62, 63,
90, 140, 226, 241, 242, 269, 319 as anticipated by AdForce under 35 U.S.C.
§ 102(b).

Dependent claims 6-7, 11-17, 20, 23-24, 28-32, 36-39, 45, 46, 50-52, 79, 81,
141, 148, 185-186, 190-196, 199, 202-203, 207-211, 215-218, 224, 225,
229-231, 258, 260, 270, 320, and 327
Patent Owner does not separately argue claims 6-7, 11-17, 20, 23-24,
28-32, 36-39, 45, 46, 51, 79, 81, 91, 141, 148, 185-186, 190-196, 199, 202-
203, 207-211, 215-218, 224, 225, 230, 258, 260, 320, and 327, which
depend from independent claims 1 and 179, respectively, claims 50 and 52
which depend from dependent claim 47, claim 91 which depends from
dependent claim 63, claims 229 and 231 which depend from dependent
claim 226, and claim 270 which depends from dependent claim 242, and so
we sustain the rejection of these dependent claims as anticipated by AdForce
under 35 U.S.C. § 102(b) for the same reasons we found as to claims 1, 47,
63, 179, 226, and 242 supra.

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Remaining Rejections
Affirmance of the anticipation rejection for all claims based on
AdForce 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 did not err in construing the
“create/creating” limitation of independent claims 1 and 179. Additionally,
we conclude that AdForce discloses the subject matter of claims 1, 6-7, 11-
17, 20, 23-24, 28-32, 36-39, 45-47, 50-52, 62-63, 79, 81, 90-91, 140-141,
148, 179, 185-186, 190-196, 199, 202-203, 207-211, 215-218, 224-226, 229-
231, 241-242, 258, 260, 269-270, 319-320, and 327, and as such anticipates
these claims under 35 U.S.C. §102(b).

DECISION
The Examiner’s decision to reject claims 1, 6-7, 11-17, 20, 23-24, 28-
32, 36-39, 45-47, 50-52, 62-63, 79, 81, 90-91, 140-141, 148, 179, 185-186,
190-196, 199, 202-203, 207-211, 215-218, 224-226, 229-231, 241-242, 258,
260, 269-270, 319-320, and 327 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).

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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