Ex Parte Dixon et al

Patent Trial and Appeal Board

Aug 18, 2016

13155940 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/155,940 06/08/2011
71867 7590 08/22/2016
BANNER & WITCO FF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
Chris Dixon
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.
007412.01336 4012
EXAMINER
TEKLE, DANIEL T
ART UNIT PAPER NUMBER
2481
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS DIXON and JASON SMITH
Appeal2015-000270
Application 13/155,940
Technology Center 2400
Before ALLEN R. MacDONALD, NABEEL U. KHAN and MICHAEL M.
BARRY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-000270
Application 13/155,940
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A method, comprising:
providing, from a server to a plurality of display devices, an
advertisement for display in a plurality of different content pages
hosted by a plurality of different publishers;
determining, at the server, that one or more of the display
devices is associated with one or more respective user accounts of a
service provider that provides a service to each of the one or more
user accounts; and
providing from the server to the one or more display devices, in
response to the determining, a modification to the advertisement such
that the advertisement, when modified by the modification, comprises
an interactive control that when selected at each of the one or more
display devices causes instructions to be sent to control the service for
each of the one or more user accounts respectively.
Rejection on Appeal
1. The Examiner rejected claims 1-20 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of White et al. (US 2009/0241150
Al; Sept. 24, 2009) and Perry (US 2004/0215509 Al; Oct. 28, 2004). 1
1 As to this rejection, our decision as to the rejection of claims 1, 6, 11, and
16 is determinative. Therefore, except for our ultimate decision, the rejection
of claims 2-5, 7-10, 12-15, and 17-20, is not discussed further herein.
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Appeal2015-000270
Application 13/155,940
Appellants' Contentions2
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
The Office alleges that the last step of highlighting web
page content [in White i-f 32] is analogous to the claim 1 step of
"providing from the server to the one or more display devices,
in response to the determining, a modification to the
advertisement." However, the web browser plug-in in the
display device receives the advertisement from a web server
over the network and provides the highlight only to itself.
Claim 1, in contrast, recites that the server both: ( 1) provides
the advertisement to a plurality of display devices, each
displaying a different content page; and (2) provides the
modification to the advertisement. The White highlight (i.e.,
the alleged "modification'') is not provided, as recited in
claim 1, ''from the server" which also provides the
advertisement to the plurality of display devices.
App. Br. 9, underlining omitted, Panel emphasis added; see also id. 4--10.
2. Appellants further contend that the Examiner erred in rejecting
claim 6 under 35 U.S.C. § 103(a) because:
Claim 6 is rejected on the same basis as claim 1. The
Office Action appears to allege that White's PC 168 is a display
device, which performs the operations of the claim 6 "system."
See Office Action, p. 5. However, as recited in claim 6, the
display devices are located remotely from the system. Because
the White PC 168 cannot be both a display device and a
system remote from the display device, White fails to disclose
the claim 6 features as alleged in the Office Action.
App. Br. 11, emphasis added.
2 These contentions are determinative as to the rejections on appeal.
Therefore, Appellants' other contentions are not discussed herein.
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Appeal2015-000270
Application 13/155,940
3. Appellants further contend that the Examiner erred in rejecting
claim 11under35 U.S.C. § 103(a) because:
Even assuming the Office is correct that Perry discloses a third
party ad server and a content distributor that communicate over
the internet, paragraph 0012 of Perry does not disclose (nor
does the Office even allege) that the communications include "a
first communication including information associating a user
device with a user account of the service provider."
App. Br. 12, bold emphasis added, underline in original.
4. Appellants further contend that the Examiner erred in rejecting
claim 16 under 35 U.S.C. § 103(a) because:
Claim 16 is rejected on the same basis as claim 1. See Office
Action, p. 6. However, the claim 16 features [of receive and
send] are not the same as the features of claim 1 and are not
independently addressed in the Office Action. Accordingly, the
Office has failed to put forth a prima facie showing of
obviousness with respect to claim 16.
Further, the combination of White and Perry does not
disclose the above claim 16 feature. For example, White's PC
168 allegedly generates a modification of the advertisement
based on detecting metadata in the advertisement itself. White's
PC 168 does not "receive a first communication that is different
from the advertisement and that includes information for
modifying the advertisement."
App. Br. 13, emphasis added.
Issue on Appeal
Did the Examiner err in rejecting claims 1, 6, 11, and 16 as being
obvious?
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Appeal2015-000270
Application 13/155,940
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred.
As to Appellants' above contention 1, we agree. In the Answer, the
Examiner attempts to remedy this articulated reasoning deficiency in the
Final Action. As Appellants correctly point out:
In response to the Appeal Brief, the Examiner's Answer,
on pages 8-11, attempts to summarize particular paragraphs of
White, and based on this summary, concludes that all of the
White tiers (102, 104, and 106) in-combination constitute the
claimed "server" ...
Reply Br. 2. We agree with Appellants that, as set out in White, the system
is not performing the functions on a server as claimed.
Further, the Examiner has not presented a sufficient articulated
reasoning to support an alternative conclusion that it would have been
obvious to one of ordinary skill in the art at the time of Appellants'
invention to convert the system taught by White to a server-based system
with each of the functions being distributed as claimed.
As to Appellants' above contentions 2--4, we agree with Appellants.
We conclude, consistent with Appellants' argument, there is insufficient
articulated reasoning to support the Examiner's findings. Therefore, we
conclude that there is insufficient articulated reasoning to support the
Examiner's final conclusion that claims 6, 11, and 16, would have been
obvious to one of ordinary skill in the art at the time of Appellants'
invention.
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Appeal2015-000270
Application 13/155,940
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-20 as being unpatentable under 35 U.S.C. § 103(a).
(2) On this record, these claims have not been shown to be
unpatentable.
DECISION
The Examiner's rejection of claims 1-20 is reversed.
REVERSED
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