11953715 (P.T.A.B. Oct. 17, 2016)

Ex Parte Athsani et al

Patent Trial and Appeal BoardOct 17, 2016

11953715 (P.T.A.B. Oct. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111953,715 12/10/2007 Athellina Athsani 76058 7590 10/19/2016 YAHOO! INC C/O GREENBERG TRAURIG, LLP MET LIFE BUILDING 200 PARK A VENUE NEW YORK, NY 10166 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 085804-618050 2680 EXAMINER VYAS, ABHISHEK ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 10/19/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): mendozae@GTLA W.COM cordesp@gtlaw.com njdocket@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ATHELLINA ATHSANI, CHRIS HIGGINS, JOSEPH O'SULLIVAN, MARC DAVIS, and RON MARTINEZ Appeal2014-004864 Application 11/953,715 Technology Center 3600 Before ANTON W. PETTING, NINA L. MEDLOCK, and CYNTHIA L. MURPHY, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 Athellina Athsani, Chris Higgins, Joseph O'Sullivan, Marc Davis, and Ron Martinez (Appellants) seek review under 35 U.S.C. Â§ 134 of a final rejection of claims 1-3, 5-17, and 19-24, the only claims pending in the 1 Our decision will make reference to the Appellants' Appeal Brief ("App. Br.," filed April 11, 2013) and Reply Brief ("Reply Br.," filed February 24, 2014), and the Examiner's Answer ("Ans.," mailed December 24, 2013), and Final Action ("Final Act.," mailed September 7, 2012). Appeal2014-004864 Application 11/953,715 application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). The Appellants invented a way of advertising associated with multimedia content. Specification 1 :Field of the Invention. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A computer implemented method for placing Internet advertisements, the computer implemented method comprising: [1] selecting a first content from a repository of user-generated content, the first content comprises at least one image; [2] analyzing the first content for advertiser references embedded within the first content, the advertiser references compnsmg markers from a producer of the first content and to identify a portion of a surface area of the first content available for insertion of an advertisement a monetization option that defines a monetary payment associated with the insertion of the advertisement into the identified portion of the surface area; [3] matching at least one advertisement to the first content by using the advertiser references, the matching is at least partly based on the monetization option; [ 4] determining, by a computer, 2 Appeal2014-004864 Application 11/953,715 and a set of presentation preferences for presentation of the advertisement in conjunction with the first content, wherein the presentation preferences comprise at least one of audience information, contextual information for the user-generated content, and content metadata; [ 5] displaying the advertisement in the portion of the first content marked by the advertiser references, wherein the displaying is based on the presentation preferences. The Examiner relies upon the following prior art: ,.., _____ --- T TC< '"'I 1\1\ 1 /1\1\'"'I I\'"\') f A 1 C1 --- f '"\{\{\ 1 L-cUlllUll U~ LVVl/VVLVL.JU J-\.l ~t:p. U, LVV l Chiu US 7,543,005 Bl Nov. 2, 2006 Baluja US 2007 /0072676 Al Mar. 29, 2007 Bayer WO 2007 /079219 A2 July 12, 2007 Moonka US 2008/0066107 Al Mar. 13, 2008 Edelman US 7,543,005 Bl June 2, 2009 Claims 1-3, 5, 7, 9, 10, 15-17, 19, 21, and 23 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer and Baluja. Claims 6 and 20 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Baluja, and Moonka. 3 Appeal2014-004864 Application 11/953,715 Claims 8 and 22 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Baluja, and Cannon. Claim 11 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Baluja, and Edelman. Claims 12-14 and 24 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Baluja, and Chiu. ISSUES The issues of obviousness tum primarily on whether the art describes content in which ads are to be inserted that have embedded monetization options. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Bayer 01. Bayer is directed to determining user information for use in targeting ads, and determining and serving relevant ads in virtual environments such as video games. Bayer para. 8. 02. Bayer describes how, if a content owner opts into (or out of) showing video ads, an indication that ads may be (or may not be) served in association with the video is stored. If a content owner selects or defines one or more ad spots, the ad spots selected and/or defined by the content owner are stored in association with 4 Appeal2014-004864 Application 11/953,715 the video. If a content owner enters meta-data, the 1\!Ieta data is stored in association with the video. Bayer para. 154. 03. Bayer describes the advertisement being stored with data regarding pricing and cost per impression. Bayer paras. 167-168. 04. Bayer describes the video document being loaded onto the client device. Code inserted into the video documentÂ· is executed by the client device to generate an ad request. The ad request may include one or more of (i) a video document identifier, (ii) meta- data about the video document, (iii) location information about the client device (e.g., an Internet protocol address, a language selection), (iv) user information, (v) a number of ads needed, (vi) when the ads are needed, (vii) a duration of ads needed, (viii) video owner blocking information, (ix) a video owner identifier, (x) information that may be used to lookup any of the foregoing. Bayer para. 174. 05. Bayer describes relevant ads being determined by comparing the video document metadata (e.g., title, description, transcript, tribune metadata, demographic data about the video, time/ date information, audience location information, audience demographic information, etc.) to serving constraints and/or relevance information (e.g., terms [word or group of words having a particular meaning], concepts, clusters, vertical categories, etc.) associated with the various ads. 2 Bayer para. 175. 2 The American Heritage Dictionary of the English Language, Fifth Edition by Houghton Mifflin Harcourt Publishing Company (2015) 5 Appeal2014-004864 Application 11/953,715 Baluja 06. Baluja is directed to targeting the serving of advertisements, such as advertisements to be rendered in virtual environments like video games for example. In particular, Baluja concerns determining user information for use in targeting ads, and determining and serving relevant ads in virtual environments such as video games. Baluja para. 2. 07. Baluja describes how, when an online ad is served, one or more parameters may be used to describe how, when, and/or where the ad was served. These parameters are referred to as serving parameters. Serving parameters may include, for example, information in an ad request associated with the serving of the ad, a user characteristic (e.g., their geographic location, previous behavior, Web cookies, user device characteristics, etc.), an absolute position of the ad on a screen or page on which it was served, position of the ad within a video game in which the ad was served, a position (spatial or temporal) of the ad relative to other ads served, an absolute size of the ad, a size of the ad relative to other ads, a color of the ad, a number of other ads served, types of other ads served, time of day served, time of week served, time of year served, etc. Baluja para. 18. 08. Baluja describes how the ad serving operations accept requests for ads from the ad spot filling operations. Such requests may include ad size, ad type, when the ad will be needed. Using the https://www.ahdictionary.com/word/search.html?q=term. 6 Appeal2014-004864 Application 11/953,715 request information from the gaming system, the ad serving operations may select relevant ads and/or ad creatives from the ad information. If there are more than one relevant ads competing for a given ad spot (or too many relevant ads competing for a limited number of ad spots), the ad serving operations may run an arbitration to select the best ad or ads. Baluja para. 35. ANALYSIS We are persuaded by Appellants' argument that the references applied fail to describe content for which ads are to be embedded with "advertiser references embedded within the first content, the advertiser references comprising ... a monetization option that defines a monetary payment associated with the insertion of the advertisement." App. Br. 9, (Claim 1). The Examiner initially finds that Bayer describes this. Final Act. 3. None of the portions cited by the Examiner describes this. The closest we find Bayer comes is describing comparing metadata to terms, but Bayer consistently uses the word "terms" as words or phrases with some meaning for determining relevance rather than in the sense of commercial sales terms. In the Examiner's Response to Arguments, the Examiner cites to the portions referring to Price Information and Cost per impression. Ans. 4. These portions refer to the advertisements rather than the content for which advertisements are to be embedded. FF 03. Even were the Examiner to map one ad to the recited content that then embedded information for another ad, as Appellants contend, Bayer does not describe embedding the described price and cost information in a file. Reply Br. 10. 7 Appeal2014-004864 Application 11/953,715 CONCLUSIONS OF LAW The rejection of claims 1-3, 5, 7, 9, 10, 15-17, 19, 21, and 23 under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer and Baluja is improper. The rejection of claims 6 and 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Baluja, and Moonka is improper. The rejection of claims 8 and 22 under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Baluja, and Cannon is improper. The rejection of claim 11 under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Baluja, and Edelman is improper. The rejection of claims 12-14 and 24 under 35 U.S.C. Â§ 103(a) as unpatentable over Bayer, Baluja, and Chiu is improper. DECISION The rejection of claims 1-3, 5-17, and 19-24 is reversed. REVERSED 8