Ex Parte Chao et al

Board of Patent Appeals and Interferences

Sep 10, 2012

11639803 (B.P.A.I. Sep. 10, 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.
11/639,803 12/15/2006 Ming-Hung Chao 12729-216 Y01807US01 7741
56020 7590 09/10/2012
BRINKS HOFER GILSON & LIONE / YAHOO! OVERTURE
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
GATLING, STACIE D
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
09/10/2012 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
____________

Ex parte MING-HUNG CHAO and RAYMOND HON
___________

Appeal 2010-012061
Application 11/639,803
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-012061
Application 11/639,803

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STATEMENT OF THE CASE
Ming-Hung Chao et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-25. We have jurisdiction under 35
U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is “a system for adjusting parameters of a digital ad
and third-party traffic based on a difference in time between geographic
regions.” Spec. para. [0003].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for adjusting
a parameter associated with a digital ad, the
method comprising:
monitoring, with a processor, performance
information associated with a digital ad directed
to potential customers in a first region
associated [with] a first time zone during a first
time period; and
adjusting, with a processor, at least one
parameter associated with a digital ad directed
to potential customers in a second region

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 14, 2010 and Reply Brief (“Reply Br.,” filed Aug. 20, 2010),
and the Examiner’s Answer (“Ans.,” mailed Jun. 23, 2010).

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Application 11/639,803

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associated with a second, later time zone during
a second time period based on the monitored
performance information associated with the
digital ad directed to potential customers in the
first region during the first time period;
wherein at least a portion of the first time
period in the first time zone corresponds to at
least a portion of the second time period in the
second time period in the second, later time
zone.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Saari
Howes
Lukose
US 2004/0168190 A1
US 2005/0187823 A1
US 2006/0041472 A1
Aug. 26, 2004
Aug. 25, 2005
Feb. 23, 2006

The following rejections are before us for review:
1. Claims 1-10 and 12-25 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Saari and Howes.
2. Claim 11 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Saari, Howes, and Lukose.

ISSUE
The issue is whether claims 1-10 and 12-25 are unpatentable over
Saari and Howes. Specifically, whether the Examiner erred because the
combination of Saari and Howes fails to teach using “relationships between
time periods in time zones” to adjust the claimed parameters. The rejection
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of claim 11 under 35 U.S.C. §103(a) as being unpatentable over Saari,
Howes, and Lukose also turns on this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) and any
which appear in the Analysis below are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
1. The Specification does not contain a lexicographic definition of
“corresponding.”
2. A definition of correspond is “to be in conformity or agreement.”
See MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 260 (10th Ed.
1996.)(First entry for “correspond.”)

ANALYSIS
The rejection of claims 1-10 and 12-25 under §103(a) as being unpatentable
over Saari and Howes.
Claims 1-10 and 12
The Appellants argue claims 1-10 and 12 as a group. App. Br. 4-7
and Reply Br. 4-5. We select claim 1 as the representative claim for this
group, and the remaining claims 2-10 and 12 stand or fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii).
To contest the rejection of claim 1, the Appellants argue that: 1) the
combination of Saari and Howes does not teach using “relationships
between time periods in time zones” to adjust the claimed parameters (App.
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Br. 4-7 and Reply Br. 4) and 2) the Examiner has unreasonably broadly
interpreted the claim term “corresponding” (Reply Br. 4-5).
We are not persuaded by the Appellants’ arguments that the Examiner
erred as they are not commensurate with the scope of the claim. Claim 1
recites a method having two steps: 1) monitoring performance information
and 2) adjusting at least one parameter based on the monitored performance
information. Claim 1 characterizes the performance information as being
“associated with a digital ad directed to potential customers in a first region
associated [with] a first time zone during a first time period” and
characterizes the parameter as being “associated with a digital ad directed to
potential customers in a second region associated with a second, later time
zone during a second time period.” These characterizations of the data (i.e.,
the performance information and the parameter) are non-functional
descriptive information because each goes to the content of the involved data
bearing no functional significance on the steps of the claim. Nonfunctional
descriptive material cannot render nonobvious an invention that would have
otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability).
See also In re Xiao, 462 Fed. Appx. 947 (Fed. Cir. 2011) (non-functional
descriptive material, being useful and intelligible only to the human mind, is
given no patentable weight).
Further, we disagree with the Appellants’ argument that the claim
term “corresponding” requires that the first time period be in agreement with
the second time period by “the difference in time between time zones” (e.g.,
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1:00 EST corresponds to 1:00 CST and 1:00 PST) as in the examples given
in the Specification (Reply Br. 4-5). Limitations appearing in the
specification but not recited in the claim are not read into the claim. E-Pass
Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). As the
Examiner points out (see Ans. 8), the term “corresponding” can reasonably
be given a broader interpretation, which is consistent with the Specification
(see FF 1-2) and which encompasses other kinds of agreement between the
first and second time zones.
Accordingly, the rejection of claims 1-10 and 12 under 35 U.S.C. §
103(a) as being unpatentable over Saari and Howes is affirmed.

Claims 13-25
The Appellants argue against the rejection of claims 13 and 23 for the
same reasons used to argue against the rejection of claim 1. See App. Br. 7-
8 and Reply Br. 5-6. Because we found them unpersuasive as to that
rejection, we find them equally unpersuasive as to error in the rejection of
claims 13 and 23. The Appellants make no separate arguments for
dependent claims 14-22 and 24-25 and, therefore, these claims will stand or
fall with claims 13 and 23, from which they depend. Accordingly, the
rejection of claims 13-25 under 35 U.S.C. §103(a) as being unpatentable
over Saari and Howes is affirmed.

The rejection of claim 11 under §103(a) as being unpatentable over Saari,
Howes, and Lukose
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claim 11 as being unpatentable over Saari, Howes, and Lukos
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since the Appellants have not challenged such with any reasonable
specificity, thereby allowing claim 11 to stand or fall with parent claim 1
(see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).

DECISION
The decision of the Examiner to reject claims 1-25 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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