Ex Parte Kulkarni et al

Patent Trial and Appeal Board

Jun 22, 2016

12774357 (P.T.A.B. Jun. 22, 2016)

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.
12/774,357 05/05/2010 Prasad V. Kulkarni 10033-2004100 7832
97531 7590 06/22/2016
Mauriel Kapouytian Woods LLP
15 W. 26th Street
7th Floor
New York, NY 10010
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
06/22/2016 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 PRASAD V. KULKARNI, ARUN RAMANUJAPURAM,
SANDEEP HEJMADI, and SUBRAHMANYAM DIVAKARLA
__________

Appeal 2014-003295
Application 12/774,3571
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We REVERSE.

1 The Appellants identify Yahoo! Inc. as the real party in interest (App. Br.
2).
Appeal 2014-003295
Application 12/774,357

2
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for use in connection with auction-based online
advertising, comprising:
using one or more computers, obtaining a first set of
information comprising historical online advertising bidding and
delivery information;
using one or more computers, providing a graphical user
interface through which a second set of information can be input,
including a set of one or more advertising campaign parameters,
wherein advertising campaign parameters can include
parameters associated with one or more aspects or portions of an
advertising campaign;
using one or more computers, based at least in part on the
first set of information and based at least in part on the second
set of information, determining, in association with the set of one
or more advertising campaign parameters, a competitive bid
amount or range and a non-competitive bid amount or range; and
using one or more computers, providing a display
indicating the competitive bid amount or range and the non-
competitive bid amount or range.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Collins
Schultz
US 2006/0026063 A1
US 8,024,228 B1
Feb. 2, 2006
Sept. 20, 2011

Appeal 2014-003295
Application 12/774,357

3
Claims 1–8 and 12–20 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Collins.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Collins and Schultz.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Collins.2

ISSUES
Did the Examiner err in rejecting claims 1–8 and 12–20 under 35
U.S.C. § 102(b) as being anticipated by Collins; and claims 9–11 under 35
U.S.C. § 103(a) as being unpatentable over Collins and Schultz?

ANALYSIS
The rejection of claims 1–8 and 12–20 under 35 U.S.C. § 102(b) as being
anticipated by Collins.
The independent claims are claims 1, 17, and 20. Claim 1 includes
the limitation “determining, in association with the set of one or more
advertising campaign parameters, a competitive bid amount or range and a
non-competitive bid amount or range.” Claims 17 and 20 include similar
limitations.
The Examiner concedes that Collins does not explicitly disclose “a
non-competitive bid amount or range” as claimed (Final Act. 3, 9; Ans. 4–

2 Although the statement of the rejection indicates that claim 11 is
unpatentable over Collins, the Examiner also relies on Schultz in the
rejection of claim 11 (Final Act. 7–8). Accordingly, we will address the
rejection of claim 11 together with the rejection of claims 9 and 10.
Appeal 2014-003295
Application 12/774,357

4
6). According to the Examiner, notwithstanding that said limitation is not
described, Collins nevertheless anticipates the claimed subject because “by
exclusion non-competitive performance information are implicit in the
historical performance data analysis that is central to the system of Collins,
keeping in mind that any definition of competitive criteria is a business
decision that varies from advertiser to advertiser” (Final Act. 3).
Appellants contend that claim 1 “involves an actual determination,”
and that the Examiner “has not presented any evidence that Collins discloses
such an actual/active determination” (Appeal Br. 6).
We agree with Appellants.
To establish a prima facie case of anticipation, each and every
element of the claimed invention, arranged as required by the claim, must be
found in a single prior art reference, either expressly or under the principles
of inherency.
Here, the Examiner’s finding that Collins implicitly discloses
determining a non-competitive bid amount or range “by exclusion” is not
supported by a preponderance of the evidence. We do not see described,
expressly or inherently, in Collins, any such determination. Collins is silent
on the subject. Therefore, at best, it is possible that the historical
performance analysis of Collins includes an implicit determination of a non-
competitive bid amount or range. However, this is insufficient. To find
anticipation, “‘[t]he mere fact that a certain thing may result from a given set
of circumstances is not sufficient [to establish inherency].”’ In re Oelrich,
666 F.2d 578, 581 (CCPA 1981) (emphasis added) (citation omitted).
Accordingly, the rejection is not sustained.
Appeal 2014-003295
Application 12/774,357

5

The rejection of claims 9–11 under 35 U.S.C. § 103(a) as being
unpatentable over Collins and Schultz.
The rejection of dependent claims 9–11 is also not sustained. This
rejection relies on the finding that independent claim 1 from which they
depend reads on Collins. Because there is inadequate evidence in support
for said finding, a prima facie case of obviousness has not been made out in
the first instance by a preponderance of the evidence.

CONCLUSION
The rejection of claims 1–8 and 12–20 under 35 U.S.C. § 102(b) as
being anticipated by Collins is not sustained. The rejection of dependent
claims 9–11 under 35 U.S.C. § 103(a) as being unpatentable over Collins
and Schultz is not sustained.

DECISION
The decision of the Examiner to reject claims 1–20 is reversed.

REVERSED