Ex Parte LI

Patent Trial and Appeal Board

Apr 28, 2017

10947337 (P.T.A.B. Apr. 28, 2017)

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.
10/947,337 09/23/2004 Li Li 309184.01/MFCP. 115125 1398
45809 7590 05/02/2017
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT TECHNOLOGY LICENSING, LLC)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
EXAMINER
KEATON, SHERROD L
ART UNIT PAPER NUMBER
2142
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
usdocket@ micro soft .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LI LI
Appeal 2016-003253
Application 10/947,3371
Technology Center 2100
Before MAHSHID D. SAADAT, JAMES W. DEJMEK, and
SCOTT E. BAIN, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—5, 7—11, 15, 16, 19-26, 29, and 30. Claims 6, 12—14, 17, 18, 27,
and 28 have been canceled. Br. 26—29. We have jurisdiction over the
remaining pending claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies MICROSOFT TECHNOLOGY LICENSING LLC as
the real party in interest. Br. 3.
Appeal 2016-003253
Application 10/947,337
STATEMENT OF THE CASE
Introduction
Appellant’s claimed invention is directed to “filtering and delivering
locality-based advertisements or other media to Web or other networked
sites which demonstrate a local nature of connection.” Spec. 13. In a
disclosed embodiment, content of a Web site may be examined for
geographic indicators or identifiers (e.g., names of towns, local radio
stations, or zip codes). Spec. Tflf 6, 12. When such indicators are found,
transmissible advertisements or other corresponding content from a
selectable database may be presented to the user. Spec. 1 6.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics'.
1. A computer system having memories and processors configured
for generating localized content for insertion into networked site
content, comprising:
a parsing agent configured to capture a set of locality identifiers
based on the networked site content',
a database engine configured to receive the set of locality
identifiers from the parsing agent and to establish a relationship
between the set of locality identifiers and a geographic location
associated with the networked site content', and
a content server configured to correlate the locality identifiers
with localized transmissible content provided by subscribing entities
having a relationship with a geographic region corresponding to the
locality identifiers, to identify a media socket within the networked site
content, and to serve, via the media socket and without tracking user
inputs, geographically localized transmissible content based on the
geographic location.
2
Appeal 2016-003253
Application 10/947,337
The Examiner’s Rejections
1. Claims 1—5 and 7—10 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wingard et al. (US 2003/0056218 Al; Mar. 20,
2003) (“Wingard”); Tanaka et al. (US 2003/0036955 Al; Feb. 20, 2003)
(“Tanaka”); Liu et al. (US 2005/0154746 Al; July 14, 2005) (“Liu”); Mills
(US 2001/0021935 Al; Sept. 13, 2001); and Gerken (US 7,376,714 Bl;
May 20, 2008). Final Act. 2—7.
2. Claims 11, 15, 16, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wingard, Nicholas et al. (US
2004/0083133 Al; Apr. 29, 2004) (“Nicholas”), Liu, and Mills. Final
Act. 10-14.
3. Claims 21—26, 29, and 30 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wingard, Liu, Mills, Gerken, and
Leonard (US 2002/0120629 Al; Aug. 29, 2002). Final Act. 7-10.
ANALYSIS2
Rejection of claims 1—5 and 7—10
Appellant presents various arguments regarding the teachings of the
prior art relied on by the Examiner. Br. 8—15. We address Appellant’s
arguments seriatim.
Regarding Wingard, Appellant asserts Wingard teaches away from the
Examiner’s proposed combination of Wingard, Tanaka, Liu, Mills, and
Gerken because Wingard filters based on zip code and configuration records
2 Throughout this Decision, we have considered the Appeal Brief, filed
March 31, 2015 (“Br.”); the Examiner’s Answer, mailed October 8, 2015
(“Ans.”); and the Final Office Action, mailed July 7, 2014 (“Final Act.”),
from which this Appeal is taken.
3
Appeal 2016-003253
Application 10/947,337
rather than the claimed parsing of network site content. Br. 8—10. Further,
Appellant contends Wingard teaches the use of a static head-end (i.e., pre-
configured for a specific region) to deliver content in contrast to the claimed
content server, which “is able to serve any region of the locality identifier
parsed from the network site content by the parsing agent.” Br. 9.
Additionally, Appellant argues the filtering of Wingard does not correspond
to the claimed parsing agent. Br. 9. Also, Appellant argues, if modified as
proposed by the Examiner, Wingard would be rendered inoperable for its
intended purpose because “Wingard does not insert localized content into
the network site content that is viewed by the user.” Br. 9. Appellant asserts
Wingard teaches the use of a walled garden and synthetic channels, which
are counter to the claimed use of a media socket within the network site
content. Br. 9—10.
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Kubin, 561 F.3d 1351, 1357
(Fed. Cir. 2009) (citation omitted).
Appellant points to no explicit teaching of Wingard or the other
references that would discourage or divert a person of ordinary skill in the
art from combining their teachings with those of Wingard. Particularly with
regard to Wingard, Wingard enumerates exemplary techniques to localize
the content prior to transmission including, without limitation, “filtering
based on zip codes, geographic radius look-up, time zones, adding
destination tags or other usable indicia to the content,. . . and other
techniques.” Wingard 126. Accordingly, we do not find that a skilled
4
Appeal 2016-003253
Application 10/947,337
artisan would be led away from combining the references as articulated by
the Examiner. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The
prior art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed”).
Additionally, we are not persuaded by Appellant’s argument that
Wingard’s use of static head-ends are in contradistinction of the claimed
content server. Contrary to Appellant’s assertion, claim 1 does not require
the content server to “serve any region of the locality identifier parsed from
the network site content by the parsing agent” (see Br. 9). Rather, the
content server must correlate locality identifiers with localized transmissible
content and serve the geographically localized transmissible content.
Although the claims are interpreted in light of the specification, limitations
from the specification are not read into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). The Examiner finds, and we agree,
Wingard’s teaching of selecting local content in a database and sending the
content to its corresponding head-end for delivery to the user teaches the
claimed limitation. See Final Act. 2—3 (citing Wingard 2, 25—26, and 42—
43).
We are unpersuaded of Examiner error regarding Appellant’s
argument directed to distinguishing between filtering and parsing because, at
least, it is not responsive to the rejection as articulated by the Examiner. The
Examiner finds, and we agree, Liu teaches the claimed parsing agent. See
Final Act. 3 (citing Liu Tflf 13, 15, 57, and 74).
Further, we do not agree with Appellant that the proposed
modification to Wingard renders the walled garden and synthetic channels
5
Appeal 2016-003253
Application 10/947,337
inoperable for their intended purpose. Wingard teaches the use of a “walled
garden” to allow users to access only certain content or restrict viewers from
accidentally accessing content from geographically distant areas. Wingard
130. Contrary to Appellant’s contention, this supports the Examiner’s
proposed modification to provide geographically localized transmissible
content.
Regarding Liu, Appellant acknowledges Liu describes a parsing
module for parsing webpages, but asserts Liu fails to teach capturing “a set
of locality identifiers based on the networked site content.” Br. 10.
In response, the Examiner finds, and we agree, Liu teaches parsing
base content (i.e., content from a webpage) to extract locality identifiers
(e.g., San Lrancisco). Ans. 4—5 (citing Liu ]Hf 4, 74). The Examiner further
correctly explains such a teaching is consistent with Appellant’s
Specification. Ans. 5 (citing Spec. 112 (extracting locality indicators
including names of cities from Web site content)). Accordingly, we are
unpersuaded of Examiner error.
Appellant also challenges the Examiner’s finding regarding Mills.
Br. 11—12. In particular, Appellant asserts “Mills does not describe a
database engine that establishes a relationship between a geographic location
of the network site and the parsed locality identifiers.” Br. 11. Appellant
continues and asserts “nothing in Mills explains that the network site has a
geographic location that is used to establish a relationship with locality
identifiers that are employed in advertisement selection for the network site
content corresponding to the locality identifiers.” Br. 11—12.
We are unpersuaded of Examiner error. As identified by the
Examiner, Mills provides an example scenario of constructing a webpage
6
Appeal 2016-003253
Application 10/947,337
containing CCG-data (i.e., Classification data, Contact data, and Geographic
location data). Final Act. 4 (citing Mills H 50, 140). In the provided
example, Mills describes an advertisement for a local electrician to be
presented to users within a 30 kilometer radius from his business. Mills
1140.
Appellant additionally argues Gerken teaches away from the claimed
invention because Gerken discloses tracking users’ inputs to derive location
information and that this approach “is the exact opposite of what the claimed
invention requires.” Br. 14; cf. claim 1 (“to serve, via the media socket and
without tracking user inputs, geographically localized transmissible
content”).
We disagree that Gerken teaches away from the claimed invention
because, at least, it does not (and Appellant does not identify) discredit or
disparage Appellant’s claimed approach of not tracking user input. See In re
Fulton, 391 F.3d at 1201. Further, Gerken discloses using information other
than tracking user input to target ads. See Gerken, col. 1,11. 46—52 (using
derived user information including an approximate city of origin, IP
addresses, and/or connection speeds); see also Ans. 6.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 1 and of
claims 2—5 and 7—10, which depend therefrom and were not argued
separately. See Br. 15.
Rejection of claims 11, 15, 16, 19, and 20
Independent claim 11 recites, in relevant part, “searching for localized
transmissible advertisement content based on the set of locality identifiers
7
Appeal 2016-003253
Application 10/947,337
related to a geographic location associated with the Web page, wherein the
Web page belongs to a television station or radio station.”
Appellant presents similar arguments regarding Wingard, Liu, and
Mills. See Br. 15—20. As discussed previously, we do not find these
arguments persuasive of Examiner error.
Appellant argues Nicholas teaches placing localized content (e.g., a
localized advertisement) on a website based on the location of the user’s
computer, rather than based on locality identifiers from the Web page.
Br. 17—18. Appellant points to an example from Nicholas wherein a user,
residing in an area of commercial influence (e.g., a specific zip code) would
receive localized advertisements on a webpage, such as CNN.com. Br. 17—
18 (citing Nicholas 1 53). Appellant contends Nicholas does not teach
parsing the CNN.com website to obtain locality identifiers as required by the
claim language. Br. 17.
Appellant’s argument is not persuasive of Examiner error because it is
not responsive to the rejection as articulated by the Examiner. Non­
obviousness cannot be established by attacking references individually
where, as here, the ground of unpatentability is based upon the teachings of a
combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Here, the Examiner relies on Wingard to teach extracting locality identifiers
from a Web page. See Final Act. 10-11 (citing Wingard ]Hf 25—26, 30—33,
and 41—43). The Examiner relies on Nicholas “because it discloses
providing content to a webpage based on geographic location and further
discloses that it looks at information on television web pages (i.e. CNN) and
further discloses serving local news to be displayed on the webpage.” Final
8
Appeal 2016-003253
Application 10/947,337
Act. 11 (citing Nicholas 153); see also Ans. 7. Thus, the Examiner relies on
the combined teachings of, inter alia, Wingard and Nicholas.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 11 and of
claims 15, 16, 19, and 20, which depend therefrom and were not argued
separately. See Br. 20.
Rejection of claims 21—26, 29, and 30
Appellant presents similar arguments regarding Wingard, Liu, Mills,
and Gerken. See Br. 20-24. As discussed previously, we do not find these
arguments persuasive of Examiner error.
In rejecting claim 21, the Examiner relies on Leonard “because it
discloses delivering advertisements to a geo-subject webpage based on local,
national and international entities.” Final Act. 9 (citing Leonard, Abstract,
1 53); see also Ans. 7. Appellant argues Leonard teaches away from the
claimed invention because Leonard requires user input. Br. 22—23 (citing
Leonard 27, 42, 46, and 53).
We are unpersuaded of Examiner error because, at least, Appellant’s
argument is not responsive to the rejection as articulated by the Examiner.
See Keller, 642 F.2d at 426. The Examiner relies on the combined teachings
of Wingard, Liu, Mills, Gerken, and Leonard in rejecting claim 21 and
relies, inter alia, on Wingard and Liu to teach parsing a website for locality
identifiers without user input. See Final Act. 7—8. Additionally, we are
unpersuaded that Leonard teaches away from the claimed invention because,
at least, it does not (and Appellant does not identity) discredit or disparage
Appellant’s claimed approach of not using user input in determining local
9
Appeal 2016-003253
Application 10/947,337
identifiers from a Web page. See In re Fulton, 391 F.3d at 1201. Rather, the
user input identified by Appellant relates to posting content and organizing
the content within a database for later distribution to a user. See Leonard ]Hf
48, 53, Fig. 5
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 21 and of
claims 22—26, 29 and 30, which depend therefrom and were not argued
separately. See Br. 24.
DECISION
We affirm the Examiner’s decision rejecting claims 1—5, 7—11, 15, 16,
19-26, 29, and 30.
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.
§ 41.50(f).
AFFIRMED
10