Ex Parte Baer et al

Patent Trial and Appeal Board

Dec 14, 2018

12057374 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/057,374 03/28/2008
145266 7590 12/18/2018
NovoTechIP International PLLC
1717 Pennsylvania Ave. NW, Suite #1025
Washington, DC 20006
FIRST NAMED INVENTOR
Matthias Baer
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.
321669-US-NP
(170101-067)
CONFIRMATION NO.
1237
EXAMINER
BLOOMQUIST, KEITH D
ART UNIT PAPER NUMBER
2178
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
akhlaghi@novotechip.com
shiflett@novotechip.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHIAS BAER, KOLLEN GLYNN,
and AMY C. NATHANSON
Appeal 2018-001516 1
Application 12/057,374
Technology Center 2100
Before THU A. DANG, BETH Z. SHAW, and
NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 9, 15, and 21-37. Claims 2-8, 10-14, and 16-
20 are cancelled. We have jurisdiction over the pending rejected claims
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Microsoft Technology Licensing, LLC. as the real
party in interest. (App. Br. 2.)
Appeal 2018-001516
Application 12/057,374
THE INVENTION
Appellants' disclosed and claimed invention is directed to server
based control of ad placement in client software. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A computing device comprising:
at least one processor;
memory comprising computer-executable instructions
that, based on execution by the at least one processor, configure
the computing device to:
receive, from a server, an advertisement;
move or change, in response to the server enabling
the received advertisement in a particular area of a user
interface of a client application, an element of the user
interface to make room in the particular area for the
enabled advertisement, where the user interface is not a
web page; and
move or change, in response to the server disabling
the enabled advertisement, the element of the user
interface to occupy the particular area of the user
interface.
REJECTIONS
The Examiner rejected claims 1, 9, 15, and 21-36 under 35 U.S.C.
§ I03(a) as being unpatentable over Friedman, et al. (US 7,949,936 B2,
issued May 24, 2011), Sorotokin, et al., (US 2008/0082911 Al, pub. April 3,
2008), and Takayama (US 2005/0102177 Al, pub. May 12, 2005). (Final
Act. 2-7.)
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Application 12/057,374
The Examiner rejected claim 37 under 35 U.S.C. § I03(a) as being
unpatentable over Friedman, Sorotokin, Takayama, and Khoo, et al. (US
2004/0193488 Al, pub. September 30, 2004). (Final Act. 8.)
ISSUE ON APPEAL
Appellants' arguments in the Appeal and Reply Briefs present the
following issue: 2
Whether the Examiner erred in finding the combination of Friedman,
Sorotokin, and Takayama teaches or suggests the limitation of independent
claims 1, 9, 15, and 21, "where the user interface is not a web page." (App.
Br. 7-15.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
arguments, and adopt as our own: ( 1) the findings and reasons set forth by
the Examiner in the Office Action from which this appeal is taken (Final
Act. 2-8); and (2) the reasons set forth by the Examiner in the Examiner's
Answer in response to Appellants' Appeal Brief (Ans. 9-12), and concur
with the conclusions reached by the Examiner.
With respect to the independent claim limitation at issue, the
Examiner relies on the disclosure in Sorotokin of reformatting the layout of
pages of documents or files, such as PDF or eBook files, to comport with the
2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed May 9, 2017); the Reply Brief
(filed Nov. 27, 2017); the Final Office Action (mailed Aug. 18, 2016); and
the Examiner's Answer (mailed Sept. 25, 2017) for the respective details.
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Appeal 2018-001516
Application 12/057,374
display characteristics of a target display, including inserting advertisement
content onto the rendered page. (Final Act. 4; Sorotokin Abstract, Figs. 1, 6,
and 7; ,r,r 6, 22, 51, 52, and 54.) The Examiner finds that Sorotokin teaches
or suggests displaying advertisements in non-web-page user interfaces.
(Final Act. 4; Ans. 11.)
Appellants argue the Examiner errs because, in Sorotokin, the
advertisements are displayed only on web pages. (App. Br. 9.) Appellants
support this argument by listing various techniques and standards referred to
in Sorotokin- including "page masters," "styling rules," "eXtensible
Markup Language (XML)," "Extensible Stylesheet Language (XSL)," "XSL
Formatting Objects (XSL-FO)," "eXtensible HyperText Markup Language
(XHTML)," "XPath," "Cascading Style Sheets (CSS)," -which Appellants
assert are "web page technologies" standardized by the "World Wide Web
Consortium" (W3C). (App. Br. 9--13.)
This unsupported attorney argument is unpersuasive. As the
Examiner concludes:
[T]he claim does not state that the user interface does not
incorporate technologies that are used in the display of web
pages. Rather, the claim states that the user interface is not a
web page.
(Ans. 9.) We find no error in the Examiner's finding that, although
Sorotokin uses World Wide Web technologies in carrying the reformatting
of documents, the disclosure of Sorotokin broadly discloses including
advertisements in non-web-page user interfaces. (Ans. 9--11.) The
Examiner finds, and we agree, that the various W3C technologies such as
XML are used in many non-web-page contexts. (Ans. 10.) Indeed, the
Specification uses XML - a World Wide Web technology- to realize the
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Application 12/057,374
stated goal of displaying advertisements in user interfaces that are not web
pages. (Ans. 10; Spec. ,r,r 2, 30.) As the Examiner correctly finds, Figure 6
of Sorotokin illustrates an advertisement inserted into an eBook user
interface rather than a web page. (Ans. 9.) Significantly, Sorotokin further
describes how clicking on the displayed advertisement can cause additional
information to be displayed on an area of that interface (labelled "Content
Area 602" in Figure 6) or in a separate browser window. (Sorotokin ,r,r 51,
52.) This alternative disclosure at least teaches or suggests that the user
interface of Figure 6 is not a web page. ( Ans. 11.)
Appellants generally allege, without more, that the Examiner fails to
articulate how the combination of Friedman, Sorotokin, and Takayama
teaches or suggests the claim limitation at issue, and that any modification of
Friedman to reflect the non-web-page approach of Sorotokin would change
the principle of operation of Friedman and render Friedman unsatisfactory
for its intended purpose. (App. Br. 13-14.) However, we agree with the
Examiner that these arguments are unpersuasive attorney argument. (Ans.
12.) We are unpersuaded Appellant's arguments because mere lawyer's
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value. In re Geisler, 116 F .3d 1465,
1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).Accordingly, we sustain the Examiner's obviousness rejections of
independent claims 1, 9, 15, and 21.
CONCLUSION
For the reasons discussed above, we sustain the Examiner's
obviousness rejections of claims 1, 9, 15, and 21 over Friedman, Sorotokin,
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Application 12/057,374
and Takayama. In addition, we sustain the obviousness rejections of claims
22-36 over Friedman, Sorotokin, and Takayama, and of claim 37 over
Friedman, Sorotokin, Takayama, and Khoo, which rejections are not argued
separately with particularity.
DECISION
The Examiner's rejections of claims 1, 9, 15, and 21-37 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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