Ex Parte 7249059 et al

Board of Patent Appeals and Interferences

Jan 26, 2012

95001069 (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.
95/001,069 07/21/2008 7249059 23373-006RX1 3472
7590 01/27/2012
HEIM MICHAEL,
HEIM, PAYNE & CHORUSH, L.L.P.
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 2011-010893
Inter partes Reexamination Control 95/001,069
United States Patent 7,249,059 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

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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 1-52.2 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 21,
2008, of United States Patent 7,249,059 B2 (“the '059 patent”), issued to
Michael A. Dean and Lucinda Stone, on July 24, 2007, based on U.S.
Application No. 10/193,465, filed July 11, 2002. The '059 patent claims
priority as a continuation-in-part 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 '059 patent, the '045 patent is also 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 March 18, 2011, hereinafter “App.
Br.,” at 1.
2 See Right of Appeal Notice, mailed December 22, 2010, hereinafter
“RAN.”
3 See Requester’s Res Brief filed April 18, 2011, hereinafter “TPR Resp.
Br.”
4 Related patents 6,829,587, control number 95/001,068, Appeal No. 2011-
013241 and 7,240,025 (“the '025 patent”), control number 95/001,073,
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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.)

THE INVENTION
Patentee’s invention relates to an internet advertising system and
method which provides a third party professional with self-serve control to
manage the creation, publication, and display of advertisements on internet
media venues owned or controlled by entities other than the seller and third
party professional 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 allowing a third party professional to
manage, create and publish customized electronic advertisements, for
a seller, to internet media venues owned or controlled by other than
the seller and other than the third party professional, 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;

Appeal No. 2011-010719, separately claiming benefit to the '045 patent, are
also under reexamination, currently under appeal, and being decided
concurrently.
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a second interface to the computer system through which a
seller is prompted to input information identifying the seller; and
a second database storing the identifying information input by
the seller through the second interface;
a third interface to the computer system through which the third
party professional 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 the seller for publication to
the selected internet media venues;
a third database storing the information input by the third party
professional through the third 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 whereby the electronic advertisement is
displayed on the one or more of the selected internet media venues in
compliance with the presentation rules of the internet media venue.

(Claims Appendix.)

The prior art references relied upon by the Examiner in rejecting the
claims are:
Brown et al. US 6,026,368 Feb. 15, 2000
Mason US 6,401,075 B1 Jun. 4, 2002
Wojcik et al. US 5,666,493 Sep. 9, 1997

AdForce, Inc., User Guide: A Complete Guide to AdForce, Ver. 2.6
(1998), hereinafter “AdForce.”
Information Access Technologies, Inc., Aaddzz Brochure (1997),
hereinafter “Aaddzz Brochure.”

The Examiner rejected the claims as follows:
1. Claims 1-23, 25-49, and 51-52 rejected under 35 U.S.C. § 102(b) as
anticipated by AdForce.
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2. Claims 1-3, 9-23, 27-29, 35-49 rejected under 35 U.S.C. § 102(b) as
anticipated by Brown.
3. Claims 1-23, 25-49, 51-52 rejected under 35 U.S.C. § 103(a) as
obvious over Aaddzz and AdForce.
4. Claims 1-52 rejected under 35 U.S.C. § 103(a) as obvious over
AdForce and Mason and Brown and Mason.
5. Claims 24 and 50 rejected under 35 U.S.C. § 103(a) as obvious over
Mason and Wojcik, Aaddzz Brochure document, Mason, and Wojcik,
AdForce and Wojcik, the Aaddzz Brochure, AdForce, or Wojcik, and
Brown and Wojcik.

ISSUES5
1. Did the Examiner err in construing the “create/creating” limitation
of independent claims 1 and 27?
2. Does AdForce disclose the subject matter of claims 1-23, 25-49,
and 51-52, and as such anticipate these claims under 35 U.S.C. §102(b)?
3. Are the AdForce and Wojcik references non-analogous art, and as
such, did the Examiner err in finding that AdForce and Wojcik render
obvious claims 24 and 50 under 35 U.S.C. § 103(a)?

5 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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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
Media, L.L.C. v. Google, Inc.,, Civ. A. No. 2:07-CV -279 at 17 (Oct 9,
2009) ) (Mem. Op. & Order).

'059 Patent
2. The '059 patent describes that its system “enables a third party
professional to manage the creation, publication, and display of
advertisements on internet media venues owned or controlled by entities
other than the seller and other than the third party professional in a
form automatically modified to comply with the media venues’ presentation
rules . . . .” (Abs.)
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3. The '059 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. 14, ll. 46-52.)
4. The '059 patent describes the term “central controller” as “the
controller part or function of the Central Controller and Presentation
Processor 1000.” (Col. 11, ll. 55-57.)
5. The '059 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.80, l. 66 – Col. 81, l. 6.)
6. The '059 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
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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. 35, ll. 16-37.)
7. To complete presentations for different media venues, the '059
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. 53, ll. 40-56.)
8. The '059 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. 53, ll. 25-31.)
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9. The '059 patent describes that in the preferred embodiment:
the same rules and guidelines contained in the
Presentation Rules Database 1650 are also held where
appropriate in the Presentation Rules Database 4650 FIG.
2c, which is part of the Seller Interface 4000 FIG. 2c and
Presentation Rules Database 7650 of the Third Party
Professional Interface 7000 FIG. 2f. 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, or the Third
Party Professional Interface 7000 FIG. 2f no
modification or editing should be necessary at the Central
Controller and Presentation Processor 1000 module.
(Col. 24, ll. 55-66.)
10. The '059 patent defines “database” as “referring not only to the
structured or relational storage of data within files, but also to the tables or
sub divisions of data storage within those databases or files or any method or
system of organizing data for storage and access by computers.” (Col. 12, ll.
9-15.)
11. The '059 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. 23, ll. 5-33.)
12. The '059 patent discloses that the Third Party Professional agent of
the Seller may perform any, some, or all actions that may be taken by the
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Seller accomplished through the Presentation and Configuration Program
4715. (Col. 54, ll. 23-28; see also Col. 52, ll. 17-22 and Col. 70, ll. 50-58.)
13. The “Objects and Advantages” portion of the '059 patent
Specification states that “[t]his invention automatically applies not only
editing, style, graphics, data, and content controls but also design
specification and architectural requirements to the design environment of all
forms of specific member media venues or outlets, both electronic print and
all other media formats.” (Col. 6, ll. 62-67.)

AdForce
14. 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” over
centralized serving system. (1-1 – 1-3.)
15. 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.)
16. AdForce describes that users login to its system interface
where the system prompts advertisers and publishers for presentations
and advertiser input through the advertiser interface. Additionally,
SuperUsers can login to the AdForce system by not selecting either
“Advertiser” or “Web Publisher” and adding the string “admin-”
before the SuperUser’s login name. (2-5, 3-3, 3-4, 6-28 – 6-30.)
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17. 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.)
18. AdForce describes that “Alt text appears when the mouse
moves over the ad in the browser.” (6-31.)
19. 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.)
20. AdForce describes that SuperUsers are network users in ad sales
organizations and ad agencies who are able to perform any Web Publisher or
Advertiser operation in addition to network administrative functions. (1-4.)
21. AdForce depicts an interface which prompts web publishers to
specify the fields of “content units” which inter alia includes the size of the
advertisement space reserved on a web page and style. (7-17, 7-20 – 7-30.)
22. AdForce describes that “content units” are “an ad-delivering Web
page or a group of ad-delivering Web pages categorized and labeled by a
Web publisher.” (7-12.)
23. AdForce depicts an interface which includes a list of network
users with tabs for adding a new user or editing users. The list includes the
network users name, status, email, and profile information (e.g., network
admin, traffic admin, sales executive, sales admin). (4-7.)

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Wojcik
24. Wojcik is directed to a system which “efficiently receive[s]
customer orders, process[es] them, create[s] appropriate financial records
and coordinate[s] this information with the inventory and manufacturing
functions to prepare and load consolidated shipments for transportation to a
customer.” (Col. 1, ll. 51-55.)
25. Wojcik describes transaction reports such as sales representative
reports, customer profitability reports, and pricing reports. (Col. 4, ll. 46-
48.)

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).

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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).

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).

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ANALYSIS
ISSUE 1
Patent Owner argues that the Examiner has improperly construed the
“creating/processing” terms of independent claims 1 and 27. (App. Br. 9.)
To support this argument, Patent Owner alleges that “both the patent
specification and claim context make it clear that the creation term does not
‘stand alone’ but is linked to the ‘processing’ phrase within the final claim
clause.” (App. Br. 9.) Specifically, Patent Owner asserts that a proper
construction of claims 1 and 27 requires Presentation Generation Program
1710 to automatically create electronic advertisements on computer
controller 1000 by processing information in compliance with the rules of
the media venues stored in the first database. (App. Br. 8-14.) Thus, Patent
Owner concludes “that the computer controller uses the raw data provided
by the third party professional to automatically create the
advertisements/presentations and then publish[es] the
advertisements/presentations to the appropriate media venues.” (emphasis
original) (App. Br. 14.)
In response, the Examiner states that the language of claims 1 and 27
includes no limitation which would require the automatic creation of
advertisements or for this creation to be performed exclusively at the
computer controller. (RAN 163.)
We find the Examiner’s position to be compelling as neither the
claims nor the '059 patent’s Specification support the claim interpretation
suggested by Patent Owner, and as such, we find that Patent Owner’s claim
construction must fail. Specifically, Claim 1 recites that a “third party
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professional [via a third interface] is . . . prompted to input information to
create an electronic advertisement for the seller for publication to the
selected internet media venues.” (emphasis added) (Claim Appendix 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 whereby the electronic
advertisement is displayed on 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.) Independent claim 27 recites
substantially similar limitations.
Based upon the plain language of the claims, we find claims 1 and 27
recite that an “electronic advertisement” is created from third party
professional “input information” and there is no “electronic advertisement”
created until the third party professional is prompted to do so by the third
interface of the computer system. Claim 1 further recites that the computer
controller “processes” the “electronic advertisement,” which we find to be
distinct from the “information” inputted by the third party professional at the
third interface recited by claims 1 and 27 to create an “electronic
advertisement.” Thus, contrary to Patent Owner’s assertion, the language of
independent claims 1 and 27 fails to make a recitation which would require
the computer controller to automatically create the electronic advertisements
by “processing” the inputted “information.”
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
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'059 patent’s Specification which describes that the Presentation and
Configuration Program 4715 acts as the controlling software interface for
the seller or third party professional to choose which media or advertising
channels the seller wishes to participate in (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, 12.)
Specifically, the '059 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 '059 patent describes that when a seller or third party
professional creates multiple presentation for different media venues, the
seller or third party professional must enter the same information in multiple
locations on the forms in response to the same questions (i.e., prompts)
because each separate entry is controlled by the information contained
within the Presentation Rules Database 4650. (FF 8, 12.) Therefore, we
find that '059 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 third interface recited
by independent claims 1 and 27, and not as Patent Owner contends by the
Presentation Generation Program 1710 using raw data stored on the central
controller to create/process/publish advertisements. (See App. Br. 10.)
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Further, Patent Owner argues that the computer controller of claims 1
and 27 automatically creates advertisements “without human intervention.”
(App. Br. 13.) Specifically, Patent Owner asserts that the '059 patent states,
the “invention automatically applies not only editing, style, graphics, data,
and content controls, but also design specification and architectural
requirements to the design environment . . . .” (App. Br. 13 citing Col. 6, ll.
62-67.) We find Patent Owner’s arguments to be uncompelling.
While we agree with Patent Owner that a portion of the sentence
relied on by Patent Owner in the '059 patent makes this statement, Patent
Owner has failed to reproduce the entire sentence which goes on to state, “of
all forms of specific member media venues or outlets, both electronic print
and all other media formats.” (See FF 13.) When read in full context, this
portion of the '059 patent generally states that the invention automatically
applies presentation rules to the design environment of all forms of member
media venues (FF 13), which we find would refer to the forms that a seller
or third party professional would be prompted to answer as input
information entered into the Presentation and Configuration Program 4715
in conjunction with the Presentation Rules Database 4650 to conform to the
controlling format and style for each targeted media venue as discussed
supra. (FF 7, 12.) As such, we are not persuaded by Patent Owner’s
argument and agree with the Examiner that independent claims 1 and 27 “do
not disclose or require ‘automatic creation’ of advertisements that allows the
sellers to ‘walk away.’” (RAN 165.) Therefore, since claims 1 and 27 make
no recitation of the term “automatic,” we will not import such a limitation
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when the scope of the claims is broader. See Superguide Corp., 358 F.3d at
875.
Moreover, we find Patent Owner’s contention that their suggested
claim construction is consistent with the Markman Order issued by the
District Court for the Eastern District of Texas to be unpersuasive . (App.
Br. 14) 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 a footnote that
“disagree[s] with the Court’s substitution of the phrase ‘customized
electronic advertisement’ for ‘inputted information . . . .’” (App. Br. 11.)
We are not persuaded by Patent Owner’s attempt to substitute the phrase
“customized electronic advertisement” for the phrase “inputted
information,” and as discussed supra, find that the independent claims fail to
support such an interpretation. Furthermore, we find that the district court’s
Order, which construes the “processing” limitation of claims 1 and 27 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” supports our claim
construction. (See FF 1.)
Therefore, in contrast to Patent Owner’s assertions that the “electronic
advertisement” is created automatically by the Presentation Generation
Program 1710, executing on computer controller 1000, 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 or third party professional to conform to the
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controlling media venues’ format and style, thereby 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
interpreting the “create/creating” limitation of independent claims 1 and 27
is unpersuasive.

ISSUE 2
Claims 1-23, 25-49, and 51-52 rejected under 35 U.S.C. § 102(b) as
anticipated by AdForce.
Independent claims 1 and 27
Patent Owner’s arguments generally relate to their contention that
AdForce fails to disclose a computer controller which automatically
generates customized advertisements by automatically applying media venue
presentation rules to raw data provided by a third party professional. (App.
Br. 17.) 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 third interface, where a
third party professional 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
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claims nor the '059 patent Specification support the claim interpretation
suggested 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
automatically create the customized electronic advertisements to anticipate
the subject matter of independent claims 1 and 27.
Following, Patent Owner argues that AdForce fails to disclose a first
interface, second interface, and third interface, as recited by independent
claims 1 and 27. (App. Br. 18-19.) We cannot agree.
Patent Owner first argues that AdForce fails to disclose a “first
interface . . . through which each of the internet media venues is prompted to
input presentation rules.” (App. Br. 21-22.) However, this argument is
premised on Patent Owner’s contention that the AdForce system fails to
create advertisements. (App. Br. 22.) Based on this contention, Patent
Owner reasons that, because AdForce’s advertisements are pre-created, there
is no need for media venue presentation rules, and as such, no need for a first
interface to input these presentation rules. (App. Br. 22.) We are not
persuaded by Patent Owner’s line of reasoning and find that AdForce
discloses a first interface which prompts media venues to input presentation
rules.
Turning first to Patent Owner’s further contention that AdForce fails
to disclose the creation of advertisements, we cannot agree, and find that the
AdForce reference describes hardware and software to “create, manage,
target, and report advertising on the World Wide Web.” (FF 14, 15.)
Specifically, AdForce discloses creating an electronic advertisement
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comprised of uploaded advertising content (e.g., banner), hypertext, and “Alt
text” inputted by a seller or third party professional which appears on a
browser when a web user moves their mouse over the displayed ad. (RAN
180; see FF 16, 17, 18, 20.) These elements are input information entered
into the AdForce system by the advertiser or third party professional in
response to prompts, and then displayed at an internet media venue on a
browser as the “electronic advertisement.” Accordingly, we find that
AdForce discloses creating an advertisement, as presently recited by
independent claims 1 and 27.
Additionally, Patent Owner asserts that merely combining the
advertising elements input by the advertiser in AdForce fails to meet the
limitations of claims 1 and 27 since this combination would result in the
exact same advertisement being delivered to each media venue, not the
automatic creation of customized, rule-compliant electronic advertisement as
required. (App. Br. 20.) We cannot agree with Patent Owner and find that
the electronic advertisement created in AdForce is not just the uploaded
advertising content (e.g., banner), but a combination of the elements
described above. These elements are processed by the AdForce system
based at least on advertising style and size, which we interpret to be
presentation rules, and additionally incorporate “Alt text,” thus resulting in
the creation of customized, rule-compliant electronic advertisements, as
presently claimed. (FF 16, 17, 20.) This interpretation is commensurate
with the scope of the '025 patent Specification which describes that
presentation rules control and limit the style and editing of the presentations
using inter alia presentation size restrictions and photo or graphics
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specifications such as size, compression, and file format. (FF 11.) Based
upon this disclosure, we find that AdForce discloses presentation rules as
recited by independent claims 1 and 27.
Consequently, we find that AdForce discloses a first interface to input
these presentation rules. Specifically, AdForce depicts an interface which
prompts web publishers, which we interpret to be equivalent to media
venues, to specify the fields of “content units” or web pages. (FF 22.)
These fields include the media venues’ presentation rules, as discussed
supra. (FF 21.) Therefore, we find that AdForce discloses a “first
interface . . . through which each of the internet media venues is prompted to
input presentation rules,” as presently recited by independent claims 1 and
27.
Patent Owner next argues that AdForce fails to disclose “a second
interface . . . through which a seller is prompted to input information
identifying the seller,” as presently recited by independent claims 1 and 27.
(App. Br. 18-20) We are not persuaded by Patent Owner’s argument and
find that AdForce discloses a second interface which prompts a seller to
input identifying information. (FF 16.) Specifically, AdForce describes a
login interface which allows users to indicate whether they are an
“advertiser,” which we interpret to be equivalent to a seller, or “web
publisher.” (FF 16.) Additionally, this login interface prompts a user to
identify themselves using a login name and password. (FF 16.)
While Patent Owner contends that it is the third party professional
who enters the seller’s identifying information and not the seller themselves
(App. Br. 20), we find this contention to contradicted by the interface
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depicted by the AdForce reference wherein the advertiser (i.e., seller)
identifies themselves as an “advertiser” and inputs their login name and
password. (FF 16.) Moreover, Patent Owner has not presented evidence
demonstrating that this type of identifying information is not “input
information identifying the seller,” as presently claimed. Accordingly, we
find that AdForce discloses a second interface, as recited by independent
claims 1 and 27, through which a seller is prompted to input information
identifying the seller.
Turning next to a third interface, Adforce discloses SuperUsers who
are able to perform any web publisher or advertiser operation in addition to
their network administrative functions. (FF 20.) SuperUsers can login to
the SuperUser interface by not selecting either “Advertiser” or “Web
Publisher” and adding the string “admin-” before the SuperUser’s login
name. (FF 16.) We interpret AdForce’s SuperUsers to be equivalent to the
third party professionals as presently claimed. (FF 20.)
Contrary to Patent Owner’s contention that SuperUsers are employees
running the AdForce System, AdForce describes that SuperUsers are
network users in ad sales organizations and ad agencies which we consider
to be third party professionals. (FF 20.) This interpretation is parallel to the
'059 patent Specification which similarly discloses that the third party
professional agent of the seller may perform any, some, or all actions that
may be taken by the seller. (FF 12.) Thus, we find that AdForce discloses a
third interface through which a third party professional is prompted to input
information.
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Accordingly, we find that AdForce discloses the first interface, second
interface, and third interface, as recited by independent claims 1 and 27.
Additionally, Patent Owner argues that because advertisers using the
AdForce system must familiarize themselves with AdForce’s ad guidelines,
the AdForce system does not “apply” or “process” these guidelines in any
way. (App. Br. 21.) 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 27 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 seller or third party professional.
Further, Patent Owner’s argument about AdForce’s ad guidelines is
applicable to the advertiser’s uploaded content, and not to the “electronic
advertisement” created by the seller or third party professional, comprised of
the uploaded advertising content (e.g., banner) and at least the hypertext and
“Alt text” elements. (FF 17, 18, 19, 20.) As such, we find that the system
disclosed in AdForce would still process, publish, and display the
“electronic advertisements” in compliance with the presentation rules (i.e.,
style and size) of the internet media venue.
Lastly, Patent Owner again argues that the AdForce system fails to
automatically create and publish customized, rule-compliant advertisements
because advertisements may be rejected by the AdForce system. (App. Br.
22.) To support this argument, Patent Owner asserts that the '059 patent
allows users “to input just a single instance of information into the system,
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and then walk away.” (emphasis original) (App. Br. 22.) We are not
persuaded by Patent Owner’s argument as independent claims 1 and 27
make no recitation which would require us to interpret the independent
claims to automatically create customized, rule-compliant advertisements.
Additionally, we find that Patent Owner’s assertion that a user need
only input a single instance of information into the system to be contradicted
by the express language of the '059 patent, and as such unpersuasive.
Rather, the '059 patent states that when creating a presentation (i.e.,
advertisement), a seller or third party professional might have to input the
same information for each different media venue into the Presentation and
Configuration Program 4715 because each presentation might have very
different standards for publishing the same information. (FF 7, 12.) The
'059 patent even goes on to explain why “this may seem redundant to the
Seller.” (FF 7.) Thus, we find that neither the claims nor Specification
support Patent Owner assertion.
Accordingly, for these reasons, and the reasons discussed supra, we
find Patent Owner’s arguments unpersuasive. Therefore, we sustain the
Examiner’s rejection of claims 1 and 27 under 35 U.S.C. § 102(b) as
anticipated by AdForce.

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Dependent claims 2, 6, 10, 11-23, 28, 32, 36-49
Patent Owner does not separately argue claims 2, 6, 10, 11-23, 28, 32,
36-49, which depend from independent claims 1 and 27, respectively, and so
we sustain the rejection of claims 2, 6, 10, 11-23, 28, 32, 36-49 as
anticipated by AdForce under 35 U.S.C. § 102(b) for the same reasons we
found as to claims 1 and 27 supra.

Dependent claims 3 and 29
Patent Owner argues that AdForce requires third party professionals
to upload a manually created, rule-compliant advertisement, and as such,
fails to require the prompting of a third party to enter information which
creates advertisements for one or more sellers, as generally recited by
dependent claims 3 and 29. (App. Br. 22-23.) We are not persuaded by
Patent Owner’s argument and as discussed supra find that AdForce discloses
the prompting of a third party to enter information which creates
advertisements for one or more sellers. Therefore, we sustain the
Examiner’s rejection of dependent claims 3 and 29 rejected under 35 U.S.C.
§ 102(b) as anticipated by AdForce for the same reasons we found as to
claims 1 and 27 supra.

Dependent claims 4, 5, 8, 9, 25, 26, 30, 31, 34, 35, 51,and 52
Patent Owner argues that AdForce fails to disclose a second interface
which prompts the seller to input any sort of information because the
AdForce system is only designed for use by third party professionals and
media venues. (App. Br. 23.) We are not persuaded by Patent Owner’s
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argument and as discussed supra, find that AdForce discloses a second
interface which prompts a seller to input identifying information. (FF 16.)
While Patent Owner argues that the AdForce system is only designed for use
by a third party professional and media venues, we find that AdForce depicts
an interface which allows a user to identify themselves as an “advertiser,”
which as discussed supra we interpret to be equivalent to a seller. (FF 16.)
Additionally, this interface allows users to identify themselves as either
“web publishers” or “SuperUsers.” Therefore, we sustain the Examiner’s
rejection of dependent claims 4, 5, 8, 9, 25, 26, 30, 31, 34, 35, 51, and 52
rejected under 35 U.S.C. § 102(b) as anticipated by AdForce for the same
reasons we found as to claims 1 and 27 supra.

Dependent claims 7 and 33
Patent Owner argues that AdForce fails to disclose a fourth database
that stores information identifying the third party professional, as required
by dependent claims 7 and 33. (App. Br. 23.) To support this argument,
Patent Owner asserts that the interface relied on by the Examiner in AdForce
“is for use by a Network Administrator to add a SuperUser to the system -
not for a third party professional to enter information about itself.” (App.
Br. 23.) We are not persuaded by Patent Owner’s argument and find that
AdForce discloses stored information identifying third party professionals.
(FF 23.) Specifically AdForce depicts an interface which lists information
identifying SuperUsers. (FF 23.) This list includes the name, status, email,
and profile information of each SuperUser. (FF 23.) As discussed supra,
we interpret AdForce’s SuperUsers to be equivalent to third party
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professionals since they not only perform network administrative functions,
but also perform any web publisher or advertiser operation. (FF 20.) While
Patent Owner asserts that AdForce fails to disclose that a third party
professional enters information about itself, we find that Patent Owner has
failed to provide persuasive evidence demonstrating otherwise.
Accordingly, we find that AdForce discloses information identifying third
party professionals, and since this information is entered, and available in
the AdForce system to be edited, we find that this identifying information is
stored. (FF 20.)
Additionally, Patent Owner contends that AdForce fails to disclose
that this identifying information is stored in a separate fourth database as
recited by dependent claims 7 and 33. (App. Br. 23.) We are not persuaded
by Patent Owner’s contention and find that the '059 patent broadly defines
the term “database” as “referring not only to the structured or relational
storage of data within files, but also to the tables or sub divisions of data
storage within those databases or files or any method or system of
organizing data for storage and access by computers.” (FF 10.) Based upon
this explicit definition, we find that the “fourth database” recited by claims 7
and 33 reads on the network users list stored in AdForce.
Therefore, AdForce discloses “a fourth database storing the
information identifying the third party professional,” as recited by dependent
claims 7 and 33. Accordingly, we sustain the Examiner’s rejection of claims
7 and 33 under 35 U.S.C. § 102(b) as anticipated by AdForce.

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ISSUE 3
Claims 24 and 50 rejected ejected under 35 U.S.C. § 103(a) as obvious over
AdForce and Wojcik.
Patent Owner makes no specific arguments with respect to the
combination of AdForce and Wojcik other than to argue that Wojcik is non-
analogous art because it “does not accept ads or presentations, create ads or
presentations, or transmit ads or presentations.” (App. Br. 29.) Specifically,
Patent Owner asserts that “Wojcik describes integrated hardware and
software components that can be used by a single entity (such as a food
distributor) to take food orders and process and fill them.” (App. Br. 29.)
The Examiner finds that AdForce and Wojcik are analogous art as each
reference deals with a software system used to deliver goods to customers
after a sale. (RAN 190.) We agree with the Examiner.
A reference is reasonably pertinent if, even though it may be in a
different field of endeavor, it logically would have recommended itself to an
inventor’s attention in considering his problem because of the matter with
which it deals. In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). AdForce and
Wojcik are reasonably pertinent to the problem with which Patent Owner is
concerned because both references are generally directed to computer
implemented software systems used to deliver goods or services to
customers after a sale through a network. (FF 14, 24; see also RAN 127.)
While Patent Owner may be correct that Wojcik is not related to creating
advertisements, this alone is not dispositive. Instead, we find that one
skilled in the art would appreciate Wojcik’s teaching of transaction reports
such as sales representative reports, customer profitability reports, and
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pricing reports and selected this reference based upon this teaching. (FF 25.)
Therefore, we find that one of ordinary skill in the art would have been led
by AdForce and Wojcik to the transaction reports recited by dependent
claims 24 and 50.
Accordingly, we do not find Patent Owner’s argument to be
compelling, and as such, sustain the Examiner’s rejection of dependent
claims 24 and 50 under 35 U.S.C. § 103(a) as obvious over AdForce and
Wojcik.

Remaining Rejections
Affirmance of the anticipation rejection of claims 1-23, 25-49, and 51-
52 based on AdForce and the obviousness rejection of claims 24 and 50
based on AdForce and Wojcik 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.

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CONCLUSION
We conclude that the Examiner did not err in construing the
“create/creating” limitation of independent claims 1 and 27. Additionally,
we conclude that AdForce discloses the subject matter of claims 1-23, 25-49,
and 51-52, and as such anticipates these claims under 35 U.S.C. §102(b).
Lastly, we conclude that the AdForce and Wojcik references are analogous
art, and as such, the Examiner did not err in finding that AdForce and
Wojcik render obvious claims 24 and 50 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s decision to reject claims 1-52 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

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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