Ex Parte Krassner et al

Patent Trial and Appeal Board

Dec 14, 2018

11803779 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/803,779
93220 7590
Jones IP Group
2500 Dallas Parkway
Suite 550
Plano, TX 75093
05/16/2007
12/18/2018
FIRST NAMED INVENTOR
Brad Krassner
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.
RV D3 US CIP 7141
EXAMINER
CHOI, PETER H
ART UNIT PAPER NUMBER
3622
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):
docket@jonesip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRAD KRASSNER, NIKOLAI MENTCHOUKOV,
FRED BERNSTEIN, and ALAN EDWARDS 1
Appeal2017-010139 2
Application 11/803,779 3
Technology Center 3600
Before ALLEN R MACDONALD, JAMES B. ARPIN, and
NABEEL U. KHAN, Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
I. DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a), the Examiner's decision
rejecting claims 1, 2, 4, 5, 7, 9-13, 15-18, 20, 21, 23-25, 31, 33, and 35-37.
Final Act. 2, 3; App. Br. 1. Claims 3, 6, 8, 14, 19, 22, 26-30, 32, and 34 are
1 According to Appellants, Rich Media Club, LLC is the real party-in-
interest. App. Br. 2.
2 In this Decision, we refer to Appellants' Appeal Brief ("App. Br.," filed
October 5, 2016) and Reply Brief ("Reply Br.," filed July 24, 2017); the
Final Office Action ("Final Act.," mailed April 5, 2016); the Examiner's
Answer ("Ans.," mailed May 22, 2017); and the originally filed
Specification ("Spec.," filed May 16, 2007).
3 This application is a continuation-in-part of U.S. Patent Application
No. 11/643,245, which is the subject of Appeal No. 2017-009980. Spec. 1.
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cancelled. App. Br. 26-31 (Claims App'x). We have jurisdiction under
35 U.S.C. § 6(b ).
We reverse.
II. STATEMENT OF THE CASE
The recited systems and methods relate to:
creating electronic advertisements using licensed digital content,
and distributing such advertisements for display at desired
network locations, including on multiple networks ( such as,
without limitation, computer networks such as the Internet as
well as cellular, wireless, cable, satellite and other networks),
whereby the ad to be displayed at a particular network location
is selected from a group of ads that reference the same keyword
or category and network location via an auction when the display
location is acted upon by a network user/ad viewer. The digital
content is delivered to designated advertising locations on the
network and becomes part of an advertising display composed at
the time requested by the network user/ad viewer by using a
relational database for storing data required for commands that
execute retrieval, assembly and dispatching of the licensed
digital content files previously stored in one or more servers, as
well as messaging, tracking, display, and billing for both use of
the licensed content and display of the ad at the designated
location on a cost-per-use basis. Third parties that make their
digital content available for licensing and the publishers that
display the advertisements on their network locations are
automatically paid via the system each time an ad is displayed
using their content and ad space, respectively. Ad publishers can
participate in a barter-based ad exchange network wherein ad
publishers can exchange advertising impressions/views in their
publication (whether online or other) for impressions/views of
their advertisements via the network.
Spec. ,r 10.
As noted above, claims 1, 2, 4, 5, 7, 9-13, 15-18, 20, 21, 23-25, 31,
33, and 35-37 are pending. Claims 1 and 18 are independent. App. Br. 25-
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26, 39 (Claims App'x). Claims 2, 4, 5, 7, 9-13, 15-17, 25, 31, and 35-37
depend directly or indirect! y from claim 1 ; and claims 2 0, 21, 2 3, 24, and 3 3
depend directly or indirectly from claim 18. Id. at 26-28, 30-32.
Claim 1, reproduced below, is illustrative.
1. A system comprising:
a electronic database configured to store a plurality of records
compnsmg:
one or more commands for retrieving one or more of a
plurality of electronic content files designated by one or
more advertiser users;
one or more commands for assembling and presenting the
one or more designated electronic content files as an
electronic advertisement at one or more of a plurality of
webpages; and
one or more parameters for presentation of the electronic
advertisement at the one or more webpages; and
one or more computing systems operable to:
generate, in response to one or more options selected by a
particular one of the one or more advertiser users in a user
interface, first code for placement at a particular one of the
webpages, the first code written to cause a billboard
module to be loaded when the particular webpage is
loaded, the billboard module comprising second code
written to:
communicate, over one or more computer networks,
with the one or more computing systems; and
retrieve and display one or more advertisements on the
particular web page;
select, in response to a communication from the billboard
module over the one or more computer networks, a subset
of the plurality of records stored in the database, the
selection based at least in part on one or more keywords in
the communication from the billboard module;
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after selecting the subset of the plurality of records based
at least in part on the one or more keywords in the
communication from the billboard module, conduct an
auction to select a winning advertisement from the
selected subset of records;
provide instructions to the billboard module for the
billboard module to retrieve the winning advertisement
and present the winning advertisement in an area on the
particular webpage designated by the billboard module;
and
provide an interface for a webpage provider to contribute
one or more advertising views/impressions on one or more
web pages of the web page provider in barter exchange for
one or more advertising views/impressions on one or more
webpages of another webpage provider.
Id. at 25-26 ( disputed limitations emphasized); see id. at 28 ( claim 16
(reciting "barter transactions"); claim 17 (reciting "a pool of available
advertising impressions/views.")), 31 ( claim 25 (reciting "the right to
display" given "in exchange for the contributed advertising
views/impressions.")); see also Spec. ,r 110 ("[A]d publishers can participate
in a barter-based advertising exchange network wherein ad publishers can
exchange advertising impressions/views in their publication ( whether online
or other) for impressions/views of their own advertisements at third party
publisher network locations."), Figs. 44--50 (depicting "Ad Swap Program"
embodiment).
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III. REFERENCES
The Examiner relies upon the following prior art in rejecting the
pending claims:
Patel et al. ("Patel") US 7,962,363 B2
Scholl et al. ("Scholl") US 8,447,651 B 1
IV. THE REJECTIONS
Issued June 14, 2011;
Published May 27, 2004
Issued May 21, 2013;
Filed Jan. 25, 2005
Claims 1, 2, 4, 5, 7, 9-13, 15-18, 20, 21, 23-25, 31, 33, and 35-37 are
rejected under 35 U.S.C. § 101 because the claimed invention is directed to a
judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract
idea) without significantly more. Final Act. 2-3. Claims 1, 2, 4, 5, 7, 9-13,
15-18, 20, 21, 23-25, 31, 33, and 35-37 also stand rejected under 35 U.S.C.
§ 103(a) as rendered obvious over the combined teachings of Patel and
Scholl. Id. at 3-10.
Unless otherwise indicated, we adopt the Examiner's findings in the
Answer as our own and add any additional findings of fact appearing below
for emphasis. We address these rejections below.
A. Patent Eligible Subject Matter
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The U.S. Supreme Court has "'long held
that this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable."' Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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The Court in Alice reiterated the two-step framework previously set forth in
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66,
75-79 (2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id.
The Court acknowledged in Mayo "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. Ct. at 71. We, therefore, look to whether
the claims focus on a specific method or means that improves the relevant
technology or are directed instead to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir.
2016). If the claims are not directed to an abstract idea, the inquiry ends. Id.
at 1339. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct.
at 2355 ( quoting Mayo, 566 U.S. at 78, 79). That is whether the claims
recite elements making the claims significantly more than the judicially
excepted subject matter.
With regard to the first step of the Alice analysis, the Examiner
determines that "[c]laim(s) 1-2, 4-5, 7, 9-13, 15-18, 20-21, 23-25,31, 33 and
35-37 is/are directed to the abstract idea of: providing an online advertising
auction platform" and, in particular, to "providing an online advertising
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platform and conducting an auction." Final Act. 2, 11-12. With regard
to the second step of the Alice analysis, the Examiner further finds that
"[t]he claim(s) does/do not include additional elements that are sufficient to
amount to significantly more than the judicial exception because the
additional elements of 'retrieving ... , assembling ... and presenting ... ' are
merely instructions to implement the idea on a general computer." Id. at 2
( emphasis added). Referring to claim 1, the Examiner finds that each of the
additional limitations to the identified abstract idea, namely, including one
or more commands in the database, generating a first code to be uploaded
with a particular webpage, communicating between computer systems,
retrieving and displaying an advertisement on a webpage, selecting a records
subset based on keywords, providing instructions to retrieve and present the
auction winning advertisement, and providing an interface for a webpage
provider to contribute one or more advertising views/impressions in barter
exchange for one or more advertising views/impressions of another webpage
provider, are themselves no more than abstract ideas. Id. at 12-14 (citing
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed.
Cir. 2014); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014);
and Cyberfone Sys., LLC v. CNN Interactive Grp, Inc., 558 F. App'x 988
(Fed. Cir. 2014)); see also Ans. 4--7 (adding citations to Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) and
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
The Examiner determines that:
Generic computers performing generic computer functions,
alone, do not amount to significantly more than the abstract idea.
Considered individually, the steps of receiving and retrieving
electronic content, assembling and presenting electronic
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content, generating information providing an interface and
conducting an auction[ fJurther describe the abstract idea but
do not make it less abstract. . . . Considered as a whole, the
recited steps merely organize the abstract idea into a stepwise
description of a process used to perform the abstract idea and
amount to no more conducting an online auction, receiving
electronic content and applying parameters to assemble and
display electronic content. The claim merely instructs the
practitioner to implement the concept of providing an interface,
conducting an online auction, receiving electronic content
and applying parameters to assemble and display electronic
content with routine, conventional activity specified at a high
level of generality in a particular technological environment.
When view[ ed] either individual[ly] or as an order[ ed]
combination, the claim as a whole does not add significantly
more to the abstract idea of providing an online advertising
auction platform. As such, the claim is not patent eligible.
Ans. 7-8 (italics added).
Appellants contend, however, that the recited systems and methods
are "necessarily rooted in computer technology because they address a
problem that only arises in the realm of computer networks," and, therefore,
are analogous to those found patent eligible in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). App. Br. 10-13; Reply
Br. 2--4. Specifically, Appellants contend that certain features of the claims
"address the problem of minimizing the network and computational
resources needed to facilitate presenting advertisements on webpages. This
problem has no pre-computer analog .... " App. Br. 11.
In DDR Holdings, the Federal Circuit noted that "[a]lthough the
claims address a business challenge (retaining website visitors), it is a
challenge particular to the Internet." DDR Holdings, 773 F.3d at 1257. Like
other cases in which the Federal Circuit found the claims patent ineligible,
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the claims in DDR Holdings "involve both a computer and the Internet." Id.
However, the Federal Circuit found that that the claims in DDR Holdings:
stand apart because they do not merely recite the performance of
some business practice known from the pre-Internet world along
with the requirement to perform it on the Internet. Instead, the
claimed solution is necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of
computer networks.
Id. Here, the claims similarly recite a business challenge, i.e., placing the
appropriate advertisement on webpages retrieved as the result of a search,
but make clear that this problem is technological in nature, involving both
computers and the Internet. App. Br. 1 O; see Spec. ,r,r 7, 19.
As the Specification explains:
The present invention improves over prior advertising
systems and methods in many ways. The present invention does
not embed advertising HTML files within a web page, providing
considerable economies to advertisers in saved labor, time and
cost in terms of both inserting advertisements into web page files,
and later changing any of those advertisements. The present
invention functions totally transparently to a network user and
which neither inconveniences nor burdens the user. The present
invention does not require a network user to download or install
on the user's computer a separate application program
specifically to receive advertising or perform any affirmative act
other than normal browsing to receive such advertising. The
present invention also provides proper accounting to an
advertiser, content licensor and ad publisher by accurately and
validly ascertaining and tracking user click-
throughs/impressions of fully rendered advertisements. The
present invention also allows ad publishers to maximize the
revenues an increase effectiveness they receive from running
third party ads, by being able to select for display (via the
auction) the most profitable ads due to cost-per-click and click-
through rate statistics. The present invention allows advertisers
to more accurately target their advertising on search engine
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websites by separating the advertising auction process from the
search engine process, allowing for second generation relevancy.
The present invention allows for optimization of advertising
campaigns by allowing for real-time auctions for available
advertising spots, taking into account the amount of available
advertising spots at the time of the action, optimizing the value
of the advertising spot at the time it is requested, and by allowing
for the assembly of advertising on the fly for display on the
network, and the ability to license quality digital media creative
files on a cost effective cost-per-use basis, and update campaign
parameter and creative according to campaign results derived in
real[-]time by FSDC tracking.
Spec. ,r 19 ( emphases added); see id. ,r,r 7 ( discussing improvements over
past practices), 8 ( defining "FSDC"). Appellants contend that the recited
system operations and method steps address the described problems and
achieve the sought improvements. App. Br. 10-11. The Examiner asserts,
however, that the claims do not recite how recited systems and methods
achieve the improvements identified in the Specification. Ans. 2-3. We
disagree.
We are persuaded by Appellants' contentions that the claims are
rooted in computer technology. For example, each independent claim
addresses the problem of inserting appropriate advertisements into web pages
based on stored parameters (App. Br. 25-26, 29 (Claims App'x (claims 1
and 18)); see id. at 26, 27, 30 (Claims App'x (claims 5, 9, 23, and 24))) and
recites "generat[ing], in response to one or more options selected by a
particular ... advertiser user[] in a user interface,fzrst code for placement
ata particular one of the webpages, the first code written to cause a billboard
module to be loaded when the particular webpage is loaded" (e.g., id. at 25
(Claims App'x (claim 1 (emphases added)))). Further, each of the
independent claims recites that "the billboard module compris[ es] second
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code written to: communicate, over one or more computer networks, with
the one or more computing systems; and retrieve and display one or more
advertisements on the particular web page." E.g., id. at 25 (Claims App'x
( claim 1 ( emphases added))). Thus, the limitations reciting generation of
"first code" and "a billboard module" comprising "second code" indicate
that the recited systems and methods seek to solve problems rooted in
computer technology and arising in the context of advertising on webpages,
rather than advertising in media in general, and how the recited systems and
methods solve these problems.
In addition, dependent claim 2 recites that "the billboard module is
operable to transmit to the one or more computing systems a tracking string
as a message with tracking data regarding presentation of the displayed
advertisement." App. Br. 26 (Claim App'x ( claim 2 ( emphases added))); see
id. at 27 (Claims App'x (claim 10 (reciting "a tracking server"))). As the
Specification explains:
The present invention allows advertisers to create their
own advertisements and license quality third party digital content
for use in creating their advertisements ( and also for content
creators and providers to market their content) with payment for
licensing of such third party content and ad distribution based on
a cost-per-click, cost-per-impression or other pay-as-used
scheme and with clicks/usage of the licensed ad content being
accurately trackable.
Spec. ,r 12; see id. ,r,r 17 ("The system serves the advertisement files in
addition to tracking impressions and click through rates in real time while
the advertisement runs."), 18 (linking the use of FSDC technology "to
process ad viewer activity tracking data"). The monitoring of such tracking
data, such as impressions and click through rates, relates to data generated
by viewing of advertisements on a webpage, which also seeks to solve
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problems rooted in computer technology and arising in the context of
advertising on webpages, rather than advertising in media in general.
Accordingly, as in DDR Holdings, the claims recite "a solution to this
network-centric challenge," e.g., the efficient, timely, and cost effective
application of advertisements to webpages, for which there was no pre-
computer or pre-Internet analog. App. Br. 10-11. The Examiner provides
no evidence or persuasive argument to the contrary. Thus, the claims here
recite "significantly more" than the abstract idea of "providing an online
advertising platform and conducting an auction."
The Examiner erred in finding the recited systems and methods patent
ineligible, and we do not sustain the Examiner's rejections under 35 U.S.C.
§ 101.
B. Nonobviousness Over Patel and Scholl
The Examiner finds that claims 1, 2, 4, 5, 7, 9-13, 15-18, 20, 21, 23-
25, 31, 33, and 35-37 are rendered obvious over the combined teachings of
Patel and Scholl. Final Act. 3-10. In particular, referring to claim 1, the
Examiner finds that Patel teaches or suggests a system including one or
more servers that store and dispatch one or more webpages on one or more
computers. Id. at 3 (citing Patel, 10:4--11). Further, the Examiner finds that
Patel teaches or suggests a database storing a plurality records, those records
including commands for retrieving and receiving one or more plurality of
electronic content files designated by one or more advertiser users,
commands for assembling and presenting the one or more designated
electronic content files ( e.g., customized content) as an advertisement at one
or more plurality of webpages, and parameters ( e.g., advertisement audience
demographics, location, keyword, type, and/or bid) for presentation of the
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advertisement at the one or more webpages. Id. at 4 (citing Patel, 5:60-64,
9:50-54, 10:4--11, 10:35--47); see also Scholl, 3:52---65 (describing the use
of "stop words" to notify selected advertisers), 6:42---67 ( creating a "stop
list" based on search terms to preclude certain advertisers from an auction).
The Examiner also finds that Patel teaches or suggests generating first
code for placement at a particular one of the one or more webpages in
response to one or more options selected by a particular one of the one or
more advertiser users (e.g., advertisers) in a user interface. The first code
may be written to cause a billboard module (see Spec. ,r 88) to be loaded.
Final Act. 4; Ans. 9 ( citing Patel, 13 :49---67, 14:44---67). In particular, Patel
uses HTML !FRAME tags and JavaScript to identify certain areas of the
webpages to receive advertisements, and the Examiner finds HTML
!FRAME tags to be a type of computer coding. Ans. 9. Because the tags are
for certain areas of the webpages, the Examiner finds these tags teach
generating a first code for advertisement placement. Final Act. 4 ( citing
Patel, 14:44--59, 21:1---6). Further, Patel teaches or suggests that when the
particular webpage is loaded, the call to JavaScript is second code that is
written to communicate over one or more computer networks with the one or
more computing systems and to retrieve and display one or more
advertisements on the particular webpage. Id. at 5 (citing Patel, 15:5-55).
The Examiner finds that Scholl teaches or suggests the system actions
of selecting a subset of the plurality of records in response to a
communication from the billboard module over the one or more computer
networks. Final Act. 5---6 (citing Scholl, 6:1-21, 3:37-38, 3:52---65);
Ans. 10-11. The plurality of records subset is selected based "at least in part
on one or more keywords in the communication from the billboard module."
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Final Act. 6-7 (emphasis omitted); see Patel, 12:52-62, 13:49-55. Further,
Scholl teaches or suggests that, after selecting the plurality of records subset,
the system conducts an auction to select a winning advertisement from the
selected subset of records. Final Act. 6-7 (citing Scholl, 4:39--45, 6:42---67,
8:51-9:9); Ans. 10-11. As a result, the combination of Patel and Scholl
teaches or suggests that, as a result of the auction, the winning advertisement
may be retrieved and presented. Patel, 18:34--41 (describing real-time
auctions), 35:23-55 (describing media exchange via auction); Scholl 6:27-
41 (describing dynamic bidding in response to search request); see Final
Act. 7; Ans. 10-11.
The Examiner also finds that Patel teaches or suggests "provid[ing] an
interface for a webpage provider to contribute one or more advertising
views/impressions ... on one or more webpages of the webpage provider in
barter exchange ... for one or more advertising views/impressions ... on
one or more webpages of another webpage provider." Final Act. 7-8
( emphasis omitted); Ans. 11. In particular, the Examiner finds that Patel
teaches or suggests that a pool or plurality of creatives may be used for a
"banner barter service." Final Act. 8; Patel, 12:25--42. Moreover, the
Examiner finds that the recited "barter exchange" "allows advertisers and
publishers an alternative method for ad display an optimizing benefits for ad
distribution" ( Ans. 11 ( citing Spec. ,r,r 9, 13, 14)) and that the "interface"
recited in this limitation is "not a new or additional interface" (id. ( citing
Patel, 12:22--42, 19:42--44)).
The Examiner finds that because Scholl teaches that the search engine
sends the invitation to advertisers to participate in the dynamic bidding, a
person of ordinary skill in the art would understand that an auction would be
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conducted after the search engine receives the user's search query. Final
Act. 6-7; Ans. 10-11; see Scholl, 4:39--44, 8:51-9:9 (describing search
query prompting dynamic bids). The Examiner further finds that a person of
ordinary skill in the art would have had reason to combine Scholl' s teaching
regarding the dynamic bidding motivations and techniques (Scholl, 3:52-65,
4:39--44, 6:27----67) with Patel's teachings regarding the use of embedded
transparent pixels to communicate with the advertisement server (Patel
14:44----67), thus, giving a person of ordinary skill reason to program the
transparent pixel with code language and to initiate an auction. See Final
Act. 6-7; Ans. 10-11. "When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007); see Patel, 2:31-58 ( describing known problems with
the exchange of advertising media and the placement of advertisements on a
webpage); Scholl, 2:14--49 (describing known problems with search result
advertising bidding). Because Patel and Scholl are directed to advertising
selection, the Examiner finds that a person of ordinary skill in the art would
have had reason to combine their teachings to achieve the recited systems
and methods.
1. Independent Claim 1
Appellants disagree for at least three reasons. App. Br. 15-23; Reply
Br. 5-11. First, Appellants contend that Patel does not teach or suggest the
system action of generating first code for placement at a webpage in
response to one or more options selected by a user in a user interface. App.
Br. 16-17; Reply Br. 5----6. In particular, Appellants contend that the portions
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of Patel, upon which the Examiner relies, may teach the use of HTML
!FRAME tags and JavaScript and activation of a throttling mechanism for
banner serving, but do not teach or suggest generating the claimed "first
code" in response to "one or more options selected by a particular one of the
one or more advertiser users in a user interface," as recited in claim 1. App.
Br. 17. We disagree.
The Examiner finds that Patel teaches the use of HTML !FRAME tags
and JavaScript, which designates a section of the webpage at which
information will be displayed. Ans. 9 (citing Patel, 14:44---67). In particular,
Patel states that:
if the consumer's browser supports the !FRAME tag, said tag is
used. If said browser does not support !FRAME tags, but does
support JavaScript, JavaScript is used to insert the HTML into
the web page at the desired location. If said browser does not
support JavaScript, a default creative is selected for display.
Patel, 14:45-51 ( emphases added). Patel explains that these methods are
used to achieve integration of the advertisement and the webpage. Id.
at 14:21-33, 52-53. The Examiner finds that the identification of the first
code is the HTML !FRAME tags and within that code is a call, i.e., the
second code, to initiate JavaScript running in the designated area of the
webpage to select the advertisement, which shows that a code is generated
for advertisement placement on a webpage. Ans. 9.
Appellants contend that, although the Examiner finds that "[t]he
advertiser [user] does have input or makes selections through the user
interface to make several options such as the ad id, targeting criteria, banner,
dimensions, etc. figs. 18-22 which gets matched to publisher" (Id.; see Patel,
Fig. 21 ("Banner Management Page")), "the Examiner does not explain how
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or cite to any location in Patel that discloses that Patel's 'HTML !frame
tags' ( equated to the claimed 'first code' by the Examiner) is generated 'in
response to one or more options selected by a particular one of the one or
more advertiser users in' any of the webpages of figures 18-22" (Reply
Br. 6). Referring to Figures 21 and 22, however, Patel explains how an
advertiser user's input may manage or edit banner size and shape, including
designating alternative tags. Patel, 25:6-61 ("'Banner Name' and 'Alt. Tag'
are editable"' and "Define an Alternate Tag"). Because the Specification
does not define-or even use- the term "first code" apart from the claims, we
interpret it broadly and are persuaded that the Examiner has shown that Patel
teaches or suggests this limitation.
Second, with respect to claim 1, Appellants contend that Patel does
not teach or suggest a database comprising "one or more commands for
assembling and presenting the one or more designated electronic content
files as an advertisement at one or more of a plurality ofwebpages." App.
Br. 17-18; Reply Br. 7-8. In particular, Appellants contend that (1) the
Examiner erroneously maps "[t]he call to the JavaScript" to both the
billboard module, i.e., the second code, (see Ans. 9) and to commands for
assembling and presenting the advertisement content (see id. at 9-10) and
(2) the "commands for assembling and presenting" are part of the plurality
of records stored on the database, and the Examiner has not shown that Patel
teaches or suggests that the call to JavaScript is stored in the plurality of
records. Reply Br. 7-8. We agree.
With respect to Appellants' contention regarding the mapping of the
call to the JavaScript to both the billboard module and to the commands for
assembling and presenting, we agree that the Examiner's mapping is
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inconsistent. Initially, we note that claim 1 recites the billboard module and
the commands for assembling and presenting as separate elements. App.
Br. 25 (Claims App'x (claim 1)); see id. at 30 (Claims App'x (claim 20
(reciting "commands" and dependent from claim 18))). Further, the
Specification explains that, once the auction has determined the winning
advertisement, the advertisement is displayed within the designated billboard
module according to the commands contained in the relational database file
for the winning advertisement. Spec. ,r,r 72, 73. The Examiner's mapping is
inconsistent with this disclosure.
In addition, although the claims do not recite where the billboard
module is stored, the Examiner does not find that Patel teaches or suggests
that the call for the JavaScript is stored with the plurality of advertisement
records. Final Act. 4--5; Ans. 9-10. Therefore, we agree with Appellants
that Examiner fails to show that Patel's call for the JavaScript teaches or
suggests the commands for assembling and presenting stored in the plurality
of records. Reply Br. 7-8.
Appellants contend, "[f]or at least these reasons, independent Claim 1
and its dependent claims are allowable. For at least certain analogous
reasons, independent Claim 18 and its dependent claims also are allowable.
Accordingly, Appellants respectfully request reconsideration and allowance
of all pending claims." Id. at 6. Because each of independent claim 1
recites that commands for assembling and presenting are stored in the
plurality of records within a database and a separate billboard module, i.e.,
second code, we do not sustain the Examiner's rejections of claim 1 and the
claims that depend therefrom.
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Further, claim 20, which depends from independent claim 18, recites
"storing in the plurality of stored records one or more of: ... one or more
commands for retrieving, assembling, and presenting the one or more
content files and customized text content as an advertisement." App. Br. 30
(Claims App'x ( claim 20)). Because claim 18 recites a billboard module,
i.e., second code, in substantially the same manner as claim 1 , we conclude
that Appellants' contentions regarding the Examiner's mapping of the call
for the JavaScript apply equally to dependent claim 20, but not to
independent claim 18 or to the other claims dependent therefrom.
2. Independent Claim 18
Because the Examiner's findings and Appellants' contentions with
respect to all of the rejections are based on the application of the combined
teachings of Patel and Scholl to the recitations of claim 1, we now consider
Appellants' remaining contentions in so far as they apply to independent
claim 18 and dependent claims 21, 23, 24, and 33. Appellants' third
contention is that the combination of Patel and Scholl does not teach or
suggest "provid[ ing] [ one or more] instructions to the billboard module for
the billboard module to retrieve the winning advertisement and present the
winning advertisement in an area on the particular webpage designated by
the billboard module," as recited in claim 18. See App. Br. 19 ( quoting
claim 1 ). In particular, although Appellants acknowledge that Patel teaches
the HTML !FRAME tag and Scholl teaches a search engine system,
Appellants contend that the portions of Patel and Scholl, relied upon by the
Examiner and quoted in the Reply Brief, fail to show instructions provided
to the billboard module to retrieve and present the winning advertisement.
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App. Br. 19-21; Reply Br. 8-10. In the quoted portion of Scholl, Scholl
states that:
Based in part on the notification response, the search
engine computer system composes a search result web page 112-
also called a "search response"-potentially including an
advertising message specified by the bid in the notification
response. This search result is returned to the client computer
system for display. Table 4 below shows a sample search
response.
Scholl, 5 :22-29 ( emphasis added); see App. Br. 20. Further, in the quoted
portion of Scholl, Scholl states that:
After performing steps 303 and 304, the [software] facility
continues in step 305. In step 305, the facility selects one or more
advertising bids for inclusion with the search result. The selected
advertising bids may be among the bids received in the responses
to the notification, cached bids from responses to earlier
notifications, and/or earlier received prospective bids. Bids may
be selected in a variety of ways, such as by highest bid amount,
highest expected value based upon bid amount and historical
performance of advertising messages from each advertiser, etc.
Scholl, 6:43-51 (emphasis added); see App. Br. 20. Referring to Scholl's
Figure 3, step 306 provides that the facility "repl[ies] to search request with
response containing search result and advertising messages of selected
advertising bids." Scholl, Fig. 3; see id. at 6:51-55. Patel teaches that, upon
receipt of notification, the search engine retrieves and presents the winning
advertisement and Scholl teaches that, upon receipt of notification, the
software facility retrieves and presents the winning advertisement.
However, as discussed above, the Examiner finds that Patel's call to the
JavaScript teaches the recited billboard module. Thus, neither Patel nor
Scholl, alone or together, teaches or suggests that the billboard module, after
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being provided instructions, retrieves and presents the winning
advertisement, as recited in claim 18.
In the Answer, the Examiner does not show where either Patel or
Scholl, alone or in combination, teaches or suggests this limitation.
Ans. 10-11; see Reply Br. 9-10. Thus, we are persuaded that the Examiner
erred in rejecting claim 18 and claims 21, 23, 24, and 33 that depend
therefrom, and we do not sustain those rejections.
3. "barter exchange" limitation
Each of independent claims 1 and 18 recites "provid[ing] an interface
for a webpage provider to contribute one or more advertising
views/impressions on one or more webpages of the webpage provider in
barter exchange for one or more advertising views/impressions on one or
more webpages of another webpage provider." E.g., App. Br. 26 (Claims
App 'x ( claim 1) ). The Examiner finds that this is "an alternative method for
ad display [and] optimizing benefits for ad distribution." Ans. 11 (emphasis
added). However, the Examiner does not show where the claims recite or
the Specification discloses that the barter exchange is an alternative method,
instead of an additional method. Id. (citing Spec. ,r,r 9, 13, 14); see Spec. ,r 6
("Additionally, advertisers and ad publishers would benefit greatly from
having an ad space exchange system where publishers can make available
their ad space/impression/view inventory in exchange not only for revenues
from ad placements but alternately or also in exchange for ad space for their
own ads placed at third party network locations, or other barterable
commodities."). Because we reverse the rejections of the pending claims for
other reasons, we do not address potential deficiencies in the Examiner's
findings regarding this limitation of independent claims 1 and 18 further.
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V. DECISION
For the above reasons, we reverse the Examiner's decision rejecting
claims 1, 2, 4, 5, 7, 9-13, 15-18, 20, 21, 23-25, 31, 33, and 35-37.
REVERSED
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