Ex Parte Chen et al

Patent Trial and Appeal Board

Jul 26, 2016

13175743 (P.T.A.B. Jul. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/175,743 07 /01/2011 Daniel Chen
97531 7590 07/27/2016
Mauriel Kapouytian Woods LLP
15 W. 26th Street
7th Floor
New York, NY 10010
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.
10033-2013000 3165
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
MAILDATE DELIVERY MODE
07/27/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL CHEN and MATTHEW AHRENS
Appeal2014-004797 1
Application 13/175,743
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify Yahoo! Inc. as the real party in interest. (Appeal Br. 1)
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Application 13/175,743
Appellants' invention generally is directed to advertising engagement.
Spec., para. 1.
Claim 1 is illustrative:
1. A method comprising:
using one or more computers, targeting a first
advertisement comprising at least one proposed deal to a user
based at least in part on calendar entry information in the user's
electronic calendar, and serving the first advertisement to the
user via the electronic calendar;
using one or more computers, determining if the user has
accepted the deal; and
using one or more computers, if the user has accepted the
deal, targeting a second advertisement to the user based at least
in part on the calendar entry information, and serving the second
advertisement to the user via the electronic calendar.
Appellants appeal the following rejections:
Claims 1--4, 10-13, 18, and 20 are rejected under 35 U.S.C. § 102(e)
as anticipated by Toulotte (US 7,979,319 B2, iss. July 12, 2011).
Claims 6-8 and 15-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Toulotte.
Claims 5 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Toulotte and Official Notice.
Claims 9 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Toulotte and Yankovich (US 2012/0022927 Al, pub. Jan. 26, 2012).
ANALYSIS
Claims 1--4
Claim 1 recites a method that provides an advertisement to a user in
the user's electronic calendar. The advertisement comprises a proposed
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Application 13/175,743
"deal." The term "deal" is not defined or otherwise limited by Appellants'
Specification, but two examples of deals are described where the "deal" is
described as a "discount." (Spec., para. 22 and 5). Based on Appellants'
apparent intention, we rely on the ordinary and customary meaning of "deal"
as a "bargain," which is further defined as "something that is bought or sold
for a price which is lower than the actual value: something bought or sold at
a good price." Merriam-Webster Online Dictionary (last retrieved from
http://www.merriam-webster.com/dictionary/deal, and http://www.merriam-
webster.com/dictionary/bargain, on July 1, 2016). A claimed "proposed
deal" therefore is an offer to buy or sell something at a "good price" or price
below actual value.
Claim 1 recites "determining if the user has accepted the deal." If a
user has accepted a deal, the claim recites a step of targeting and sending a
second advertisement, with certain content restrictions on the advertisement.
If the user does not accept the proposed deal, however, the method ends,
because there are no additional steps. In a broadest reasonable interpretation
of the method, the targeting and sending of the second advertisement is
optional, because it does not always take place. The Examiner thus need not
find this second advertisement step in the prior art, because the step is not
always required.
We are persuaded by Appellants' argument that "clicking on a link is
not 'acceptance of the deal offered'," as claimed. (Reply Br. 2; see also
Appeal Br. 5-8). The Examiner directs us to Toulotte, column 8, lines 14-
51, where the Examiner finds the "determining" step, in Toulotte's
2 In the Specification of July 1, 2011, para. 2 is the second of two instances
of para. 2, on page 2.
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Application 13/175,743
disclosure that "in response to a user clicking on the link 700, the calendar
400 may open a web browser directed to the site within the calendar
computer desktop application 300." (Final Act. 5) (emphasis omitted). The
Examiner further asserts that clicking on the link must be an acceptance of a
deal, because the "user in Toulotte clicks on the link in the first
advertisement in order to be connected to an online store where the user may
purchase the advertised product." (Answer 3).
The Examiner's position thus is that merely following a provided web
link is an acceptance of a "deal." However, the Examiner's explanation, that
a user may subsequently make a purchase, indicates that a generic purchase
is possible but not disclosed in terms that correspond to the claim language,
of a certain, not merely possible, purchase or sale at a good, or below-value,
pnce.
In an anticipation rejection, "[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. of California, 814 F.2d 628, 631 (Fed. Cir. 1987) (citations
omitted). Because the Examiner argues a user may make a purchase, but
Toulotte does not disclose the user always making a purchase by clicking on
a provided link, Toulotte does not expressly meet the claim language.
Of course, Toulette may inherently disclose the claim language. "To
establish inherency, the extrinsic evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted)
(internal quotation marks omitted). "Inherency, however, may not be
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Application 13/175,743
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." Id.
Because a user does not necessarily make a purchase, however, Toulotte
does not disclose it is necessarily present that a user accepts a deal as
claimed. More specifically, the fundamental problem is that merely reacting
to a selected link, which conceivably could be to complete a purchase, does
not meet the recited language of making a determination of whether the deal
is accepted or not. Merely responding to a web link does not necessarily
involve any determination being made at all. Because the Examiner does
not direct us to any location where Toulotte discloses it "determines if the
user has accepted the deal," the Examiner has failed to establish a prima
facie case of anticipation of the "determining" step, even under inherency.
(See Final Act. 4-6).
As a result, we do not sustain the rejection of independent claim 1.
We also do not sustain the rejection of claims 2--4 that depend from claim 1
and are rejected along with claim 1 over Toulotte.
Claims 10--13, and 18
Independent claim 10 recites computers that "are for ... determining
if the user has accepted the deal." As functional language, we are required
to give this "determining" language weight to the extent that the prior art is
or is not capable of meeting the limitation. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997). Because Toulotte does not disclose making any
deal acceptance determination, as we set forth above at claim 1, we see no
evidence on the record that the server in Toulotte is capable of making such
a determination.
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For this reason, we do not sustain the rejection of independent claim
10, nor of claims 11-13 and 18 that depend from claim 10 and are rejected
along with claim 10 over Toulotte.
Claims 5-9, 14-17, and 19
The Examiner has not established on the record that any consideration
of Toulotte, Official Notice, or Yankovich, under an obviousness analysis,
overcome the anticipation shortcomings of Toulotte set forth above at claim
1. Therefore, we do not sustain the rejections under 35 U.S.C. § 103(a) of
claims 5-9, 14-17, and 19 that involve one ofToulotte, Official Notice, or
Yankovich.
Claim 20
Independent claim 20 recites a medium embodying instructions to
implement a method that serves a first advertisement to a user, and then
involves "tracking the user's response to the first advertisement; using one
or more computers, if the user has accepted the deal, targeting a second
advertisement to the user .... "
Claim 20 does not recite determining if the user accepted a deal, as
recited in claims 1 and 10, but merely tracks a "user's response." If a user
does not respond, such as by following a provided link, the claim steps end
without further action. The targeting and sending of a second advertisement,
therefore, is an optional step that is performed only in response to a user's
response. Because this step is optional, the method implemented on the
medium does not always perform steps related to a second advertisement,
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and this portion of the claim need not be found in the prior art to sustain an
anticipation rejection.
As a result, the significance of a "proposed deal" and "determining" if
the user has accepted the deal, is not the same as in claim 1.
Appellants' only arguments, however, pertain essentially only to the
acceptance of the deal. (See Appeal Br. 5-11, Reply Br. 1-2). The steps in
claim 20 need not involve an acceptance of a deal, however, because a user's
response may be inactivity with no further action taken. Appellants thus
have not advanced arguments consistent with the language of claim 20. As a
result, Appellants have waived argument specific to claim 20. As a result,
we affirm the rejection of claim 20 proforma.
DECISION
We reverse the rejection under 35 U.S.C. § 102(e) of claims 1-4, 10-
13, and 18.
We reverse the rejections under 35 U.S.C. § 103(a) of claims 5-9, 14-
17, and 19.
We affirm the rejection under 35 U.S.C. § 102(e) of claim 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
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