Ex Parte Koningstein et al

Board of Patent Appeals and Interferences

May 24, 2012

10750451 (B.P.A.I. May. 24, 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.
10/750,451 12/31/2003 Ross Koningstein Google-41
(GP-099-00-US)
4989
82402 7590 05/24/2012
Straub & Pokotylo
788 Shrewsbury Avenue
Tinton Falls, NJ 07724
EXAMINER
BEKERMAN, MICHAEL
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
05/24/2012 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 ROSS KONINGSTEIN,
VALENTIN SPITKOVSKY,
GEORGES R. HARIK, and
NOAM SHAZEER
___________

Appeal 2011-012949
Application 10/750,451
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Ross Koningstein et al., (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 2, 5-15, 18-39, 42, 43, 46-56, 59-84,
and 86-88. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART.1

THE INVENTION
This invention is related to targeted advertising using keyword
suggestions that are category-aware and field-proven. Spec. 6:11-13.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method for
determining one or more ad targeting
keywords, the computer-implemented method
comprising:
a. accepting, with a computer system
including a plurality of networked
computers, a category;
b. looking up, with the computer system,
one or more keywords using the accepted
category and a previously stored
association of a plurality of categories
and keywords;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jan. 10, 2011) and Reply Brief (“Reply Br.,” filed Jun. 14, 2011),
and the Examiner’s Answer (“Ans.,” mailed Apr. 14, 2011).

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c. storing, with the computer system, at
least some of the one or more keywords
as one or more ad targeting keywords of
an advertisement; and
d. controlling, with the computer system, a
serving of the advertisement using the
stored one or more ad targeting
keywords, wherein when the
advertisement is served with the
computer system, presentation of the
advertisement to a user is induced.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Giacalone
Bourdoncle
Paine
US 2001/0052000 A1
US 2002/0052894 A1
US 2003/0055816 A1
Dec. 13, 2001
May 2, 2002
Mar. 20, 2003

The following rejections are before us for review:
1. Claims 1, 6-10, 14, 19-23, 27, 30, 32-36, 42, 47-51, 55, 60-64,
69, 71, 73-77, 81-84, and 86-88 are rejected under 35 U.S.C. §
102(e) as being anticipated by Paine.
2. Claims 2, 11, 15, 24, 28, 29, 37, 43, 52, 56, 65, 69, 70, and 78
are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Paine.
3. Claims 5, 18, 31, 46, 59, and 72 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Paine and Bourdoncle.
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4. Claims 12, 13, 25, 26, 38, 39, 53, 54, 66, 67, 79, and 80 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Paine and Giacalone.

ISSUES
The first issue is whether claims 1, 6-10, 14, 19-23, 27, 30, 32-36, 42,
47-51, 55, 60-64, 69, 71, 73-77, 81-84, and 86-88 are anticipated under 35
U.S.C. § 102(e) by Paine. Specifically, the major issue is whether Paine
describes the claimed category and the claimed step of looking up one or
more keywords as recited in claim 1. The rejection of claims 5, 18, 31, 46,
59, and 72 under 35 U.S.C. § 103(a) as being unpatentable over Paine and
Bourdoncle also turns on this issue.
The second issue is whether claims 2, 11, 15, 24, 28, 29, 37, 43, 52,
56, 65, 69, 70, and 78 are unpatentable under 35 U.S.C. § 103(a) over Paine.
Specifically, the major issue is whether Paine teaches at least one or more
keywords for the advertisement is a negative keyword, which negative
keyword is used to make the advertisement ineligible to be served for
requests including the negative keyword as recited in claim 2.
The third issue is whether claims 12, 13, 25, 26, 38, 39, 53, 54, 66, 67,
79, and 80 are unpatentable under 35 U.S.C. § 103(a) over Paine and
Giacalone. Specifically, the issue is whether the combination of Paine and
Giacalone teaches storing the one or more ad targeting keywords in an order
determined using unused inventory information about available ad spots that
otherwise would be unused by an ad.

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FINDINGS OF FACT
We find that the following findings of fact (FF), 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).

ANALYSIS
The rejection of claims 1, 6-10, 14, 19-23, 27, 30, 32-36, 42, 47-51, 55, 60-
64, 69, 71, 73-77, 81-84, and 86-88 under § 102(e) as being anticipated by
Paine
Claims 1, 14, 42, and 55
The Appellants argue claims 1, 14, 42, and 55 as a group. App.
Br. 24-26. We select claim 1 as the representative claim for this group, and
the remaining claims 14, 42, and 55 stand or fall with claim 1. 37 C.F.R. §
41.37(c)(1)(vii) (2011).

The “look up” issue
The Appellants argue that the Examiner has unreasonably broadly
interpreted the claim term “looking up.” App. Br. 26. The Appellants argue
that the term “looking up” has a well-established meaning of “a function in
which a previously constructed index or table of values is searched for a
desired item or items of information.” Id. The Examiner argues that the
term has a broader meaning that encompasses “[g]etting terms used by other
advertisers from existing terms” as described in Paine and that, alternatively,
Paine’s description of using a thesaurus database (see para. [0086]) still
meets the Appellants’ interpretation of the term. Ans. 10.
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The Appellants have not provided any evidence to support their
asserted “well-established” meaning of “looking up” and therefore, we are
not persuaded that the Examiner’s interpretation is unreasonably broad.
Further, we agree with the Examiner (Ans. 10), that even applying the
Appellants’ narrow definition of “looking up,” Paine’s description of using
the initial search terms to find other search terms using a thesaurus database
(see para., [0086]; See also para., [0010] “recommends word by looking
them up in a thesaurus”) anticipates the claim.
Therefore, we are not persuaded by this argument that the Examiner
erred in rejecting claim 1 as being anticipated by Paine.

The “category” issue
The Appellants and the Examiner dispute whether Paine’s initial
search terms entered by the advertiser (see Paine [0086], [0111], and Fig. 10,
step 1004) or initial search terms that are the result of the spider algorithm
(see Paine [0093] and Fig. 10, steps 1006 and 1008) anticipate the claimed
“category.” See App. Br. 17-24 and Ans. 8-10. The Appellants argue
Paine’s search terms are not categories, as required by the claim. App. Br.
17-24.
We are not persuaded by the Appellants’ argument that the Examiner
erred in finding claim 1 anticipated by Paine. The Examiner found (see Ans.
4), and we agree, that Paine describes using initial search terms to
recommend or look up other search terms (i.e., other data). See Paine
[0086]. Paine’s initial search terms are clearly data. The claimed
“category” is also clearly data, albeit the data is specifically characterized as
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a category. The claimed category (i.e., data) is used to look up keywords
(i.e., other data).
There is no evidence on the record to show that the structure of the
data is functionally affected by it being, specifically, characterized as a
category. Absent such evidence, it is reasonable to conclude that the
category aspect of the data is descriptive and not functionally related to any
structure of the claimed invention and as such falls under the category of
patentably inconsequential subject matter. The fact that the claim
characterizes the data, used to look up keywords, as a category does not
change the fact that the data is used to look up keywords but that aspect of
the data being a category is properly considered to be non-functional and
descriptive. See Ex parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005)
(informative) See also Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005)
(informative); In re Xiao, No. 2011-1195, 2011 WL 4821929, at *3-4 (Fed.
Cir. Oct. 12, 2011) (non-precedential) (non-functional descriptive material,
being useful and intelligible only to the human mind, is given no patentable
weight); and In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
Further, we note that, in this case, Pain provides “‘fish’” as examples
of an initial search term (para. [0101]), while, the Specification also provides
“fish” as an example of a category. Spec. 25. See also Ans. 10.
Therefore, we are not persuaded by this argument that the Examiner
erred in rejecting claim 1 as being anticipated by Paine.
Accordingly, the rejection of claims 1, 14, 42, and 55 under 35 U.S.C.
§ 102(e) as being anticipated by Paine is affirmed.

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Claims 27, 68, and 81-84
The Appellants argue against the rejection of claims 27, 68, and 81-84
for the same reason (i.e., “the category issue”) used to argue against the
rejection of claim 1. App. Br. 26-27. Accordingly, because we found their
argument unpersuasive as to that rejection, we find it equally unpersuasive
as to error in the rejection of claims 27, 68, and 81-84.

Claims 86 and 87
The Appellants argue claims 86 and 87 as a group. App. Br. 27-28.
We select claim 86 as the representative claim for this group, and the
remaining claim 87 stands or falls with claim 86. 37 C.F.R. §
41.37(c)(1)(vii).
The Appellants argue that Paine does not describe that “the category
is specifically associated with the keywords in a data structure stored on the
computer system and this specific association is used to lookup the
keywords” as recited in claims 86 and 87. App. Br. 27-28 and Reply Br. 2-5
We agree with the Examiner that Paine describes this limitation (see
Ans. 11). Further, we see nothing in the claims that require that “the
association exists before the keyword(s) are looked up and provided (and
must exist before sine the association is used by the lookup)” as the
Appellants argue on page 28 of the Brief.
Accordingly, the rejection of claims 86 and 87 35 U.S.C. § 102(e) as
being anticipated by Paine is affirmed.

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Claim 88
The Appellants argue against the rejection of claim 88 for the same
reasons used to argue against the rejection of claims 86 and 87. App. Br.
28-29 and Reply Br. 2-5. Accordingly, because we found them
unpersuasive as to that rejection, we find them equally unpersuasive as to
error in the rejection of claim 88.

Claims 6, 19, 32, 47, 60, and 73
The Appellants argue claims 6, 19, 32, 47, 60, and 73 as a group. See
App. Br. 30-32. We select claim 6 as the representative claim for this group,
and the remaining claims 19, 32, 47, 60, and 73 stand or fall with claim 6.
37 C.F.R. § 41.37(c)(1)(vii).
To contest the rejection of claim 6, the Appellants reproduce an
example of qualification testing from the Specification and then argues:
[a]s this example, demonstrates, the Examiner’s
interpretation of ‘qualification testing’ based on
the ‘frequency with which a term appears in
documents on the World Wide Web, and the
frequency with which users search for it’ is
inconsistent with how one skilled in the art would
interpret this term, in light of the specification.
App. Br. 30-32 (emphasis original). See also Reply Br. 6-8.
We are not persuaded by the Appellants’ argument that the Examiner
erred in rejecting claim 6 by applying an unreasonably broad interpretation
of the claimed qualification testing.
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
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of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004).
[W]e look to the specification to see if it provides a
definition for claim terms, but otherwise apply a
broad interpretation. As this court has discussed,
this methodology produces claims with only
justifiable breadth. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984). Further, as applicants
may amend claims to narrow their scope, a broad
construction during prosecution creates no
unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
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).
In as much as the Appellants’ argument is an invitation to read the
example from the Specification into the claim, we decline. The Appellants
provide no other arguments as to why the Examiner’s interpretation is
unreasonably broad. See Ans. 11-12.
Accordingly, we are not persuaded by the Appellants’ argument that
the Examiner erred in rejecting claims 6, 19, 32, 47, 60, and 73 under 35
U.S.C. § 102(e) as being anticipated by Paine and the rejection is affirmed.

Claims 7-10, 20-23, 33, 48-51, 61-64, and 74-77
Claim 7 depends from claim 6 and further defines “the act of
performing qualification testing of the keyword” to include “track[ing] a
performance of a set of one or more advertisements served using the
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keyword as an ad targeting keyword, wherein the set of one or more
advertisements includes the advertisement.”
The Appellants argue that paragraphs [0087] and [0088] of Paine does
not describe this limitation because “merely tracking performance does not
teach using such performance for purposes of performing qualification
testing of keywords. App. Br. 32-33. See also Reply Br. 8-10.
We are persuaded by the Appellants’ argument on pages 8-10 of the
Reply Brief that the Examiner erred. Contrary to the Examiner’s argument
(Ans. 12), claim 7 does not recite a mere intended use of claim 6’s act of
performing a qualification test, but rather further limits the qualification
testing. Further the tracked clicks described in paragraphs [0087] and
[0088] of Paine, cited by the Examiner (Ans. 4-5), are not used in the
filtering of paragraphs [0115] and [0116] of Paine, cited by the Examiner as
anticipating the qualification testing recited in claim 6 (Ans. 4).
We note that claims 20, 33, 48, 61, and 74 recite similar limitations.
Accordingly, the rejection of claims 7, 20, 33, 48, 61, and 74 and claims, 8-
10, 21-23, 49-51, 62-64, and 75-77, dependent thereon, under 35 U.S.C. §
102(e) as being anticipated by Paine is reversed.

Claims 34, 35, and 36
The Appellants group claims 34-36 in the same group as claim 33
above. See App. Br. 33. However, claims 34-36 do not depend from claim
33, but instead depend from claim 27. Claims 34-36 do not recite limitation
as discussed above with respect to claim 33 and the Appellants do not
provide separate arguments directed to these claims. We also shall sustain
the standing 35 U.S.C. § 102(e) rejection of claims 34-36 as being
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anticipated by Paine since the Appellants have not challenged such with any
reasonable specificity, thereby allowing claims 34-36 to stand or fall with
parent claim 27 (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).

Claims 30 and 71
Claim 30 recites “wherein the advertisement includes ad creative
information for rendering the advertisement and an address of a landing
Webpage linked from the advertisement.” Claim 71 recites a similar
limitation. The Appellants dispute that Paine describes this limitation. App.
Br. 33
We are not persuaded by the Appellants that the Examiner erred in
rejecting claims 30 and 71. The Examiner points to Paine’s Figure 7 as
anticipating this limitation. Ans. 5. Figure 7 displays a search result list
which includes ad creative information (description 720 which is rendered in
the listing) and a landing Webpage link (hyperlink 730). See Para. [0074].
Accordingly, we are not persuaded by the Appellants’ argument that
the Examiner erred in rejecting claims 30 and 71 under 35 U.S.C. § 102(e)
as being anticipated by Paine and this rejection is affirmed.

The rejection of claims 2, 11, 15, 24, 28, 29, 37, 43, 52, 56, 65, 69, 70, and
78 under § 103(a) as being unpatentable over Paine
Claims 2, 15, 43, and 56
The Appellants argue claims 2, 15, 43, and 56 as a group. See App.
Br. 34-35. We select claim 2 as the representative claim for this group, and
the remaining claims 15, 43, and 56 stand or fall with claim 2. 37 C.F.R. §
41.37(c)(1)(vii).
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Claim 2 recites that “at least one of the one or more ad targeting
keywords is a negative keyword for the advertisement, which negative
keyword is used to make the advertisement ineligible to be served for
requests including the negative keyword.” The Appellants argue that
Paine’s description of negative scores used in collaborative filtering has
nothing to do with the negative keywords in the present claims. App. Br. 34-
35.
However, in the rejection, the Examiner admits that Paine’s invention
does not include negative keywords and, then, the Examiner cites paragraph
[0008] of Paine as teaching this limitation. See Ans. 5 and 12-13. Paragraph
[0008] of Paine describes a prior art system for suggesting search terms,
which keeps “a reject list of bad words or words that have no relation to the
advertiser’s site or its content.” The Appellants’ argument does not address
this finding made by the Examiner.
Accordingly, we are not persuaded by the Appellants’ argument that
the Examiner erred in rejecting claims 2, 15, 43, and 56 under 35 U.S.C. §
103(a) as being unpatentable over Paine and this rejection is affirmed.

Claims 28 and 69
Claims 28 and 69 recite limitations similar to the limitations at issue
above with regards to claim 2. Claims 28 and 69 were rejected using the
same rationale used to reject claim 2. See Ans. 5. The Appellants argue
against the rejection of claims 28 and 69 for the same reasons used to argue
against the rejection of claim 2. App. Br. 35-36. Accordingly, because we
found the Appellants’ argument unpersuasive as to that rejection, we find
them equally unpersuasive as to error in the rejection of claims 28 and 69.
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The rejection of claims 28 and 69 under 35 U.S.C. § 103(a) as being
unpatentable over Paine and this rejection is affirmed.

Claim 29
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claim 29 as being unpatentable over Paine since the Appellants
have not challenged such with any reasonable specificity (see App. Br. 41),
thereby allowing claim 29 to stand or fall with parent claim 27 (see Nielson,
816 F.2d at 1572).

Claims 11, 24, 37, 52, 65, and 78
This rejection is directed to claims dependent on claims 7, 20, 33, 48,
61, and 74 whose rejection we have reversed above. For the same reasons,
we will not sustain the rejections of claims 11, 24, 37, 52, 65, and 78 over
the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious.").

Claims 5, 18, 31, 46, 59, and 72 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Paine and Bourdoncle
Claims 5, 18, 46, and 59
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 5, 18, 46, and 59 as being unpatentable over Paine and
Bourdoncle since the Appellants have not challenged such with any
reasonable specificity (see App. Br. 41), thereby allowing claims 5, 18, 46,
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and 59 to stand or fall with parent claims 1, 14, 42, and 55 (see Nielson, 816
F.2d at 1572).

Claims 31 and 72
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 31 and 72 as being unpatentable over Paine and
Bourdoncle since the Appellants have not challenged such with any
reasonable specificity (see App. Br. 41-42), thereby allowing claims 31 and
72 to stand or fall with parent claims 27 and 68 (see Nielson, 816 F.2d at
1572 ).

Claims 12, 13, 25, 26, 38, 39, 53, 54, 66, 67, 79, and 80 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Paine and Giacalone
Claims 12, 13, 25, 26, 53, 54, 66, and 67
Claim 12 recites:
wherein the act of storing at least some of the
keywords as one or more ad targeting keywords of
the advertisement stores the one or more keywords
in an order determined using unused inventory
information about available ad spots that otherwise
would be unused by an ads.
The Appellants and the Examiner dispute whether the Examiner’s
combination of Paine and Giacalone teaches this limitation. App. Br. 41-44
and Ans. 14. We are persuaded by the Appellants’ argument that the
Examiner erred. We agree with the Appellants’ argument on pages 43-44 of
the Appeal Brief that Giacalone’s paragraph [0027], which is cited by the
Examiner and describes “key[ing] the advertisement of clothing so that the
ones with the highest inventory are shown more,” fails to teach storing
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keywords in an order determined using unused inventory information about
available ad spots.
Claims 13, 25, 26, 53, 54, 66, and 67 recite similar limitations.
Accordingly, the rejection of claims 12, 13, 25, 26, 53, 54, 66, and 67 under
35 U.S.C. § 103(a) as being unpatentable over Paine and Giacalone is
reversed.

Claims 38, 39, 79, and 80
Claims 38, 39, 79, and 80 recite similar limitations to those at issue
with respect to claims 12 above and were rejected using the same rationale.
See Ans. 7-8 and 14. The Appellants argue against the rejection of claims
38, 39, 79, and 80 for the same reasons used to argue against the rejection of
claim 2. App. Br. 45-47. Accordingly, because we found the Appellants’
argument persuasive as to that rejection, we find them equally persuasive as
to error in the rejection of claims 38, 39, 79, and 80.
Accordingly, the rejection of claims 38, 39, 79, and 80 under 35
U.S.C. § 103(a) as being unpatentable over Paine and Giacalone is reversed.

DECISION
The decision of the Examiner to reject claims 1, 2, 5, 6, 14, 15, 18, 19,
27-32, 34-36, 42, 43, 46, 47, 55, 56, 59, 60, 68, 69, 71-73, 81-84, and 86-88
is affirmed and to reject claims 7-13, 20-26, 33, 37-39, 48-54, 61-67, and 74-
80 is reversed.

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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).

AFFIRMED-IN-PART

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