Ex Parte Lieberman et al

Patent Trial and Appeal Board

Aug 30, 2016

12917948 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/917,948 11/02/2010
83664 7590 09/01/2016
Davis Wright Tremaine LLP - SF
IP Docketing Dept.
Davis Wright Tremaine LLP
1201 Third Avenue, Suite 2200
Seattle, WA 98101
FIRST NAMED INVENTOR
Todd Lieberman
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.
0105932-00lUSl 2493
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
patentdocket@dwt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD LIEBERMAN, ARI JACOBY and JEFF WEISBERG
Appeal2014-006333
Application 12/917,948
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MOHANTY, 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 1-14 and 24, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
by video was held on August 23, 2016.
SUMMARY OF THE DECISION
We REVERSE.
Appeal2014-006333
Application 12/917,948
THE INVENTION
The Appellants' claimed invention is directed to generating interactive
advertisements (Spec., para. 9). Claim 1, reproduced below with the
numbering in brackets added, is representative of the subject matter on
appeal.
1. A computer implemented method for verifying a user
response corresponding to an interactive advertisement, comprising:
[I] identifying, by a computer, an advertiser based on a user
dataset;
[2] retrieving, by the computer, a plurality of advertising
parameters corresponding to the identified advertiser;
[3] generating based on the plurality of advertising parameters, by
the computer, the interactive advertisement comprising:
(a) a media segment, and
(b) a user input segment configured to receive the user response;
transmitting, by the computer, the interactive advertisement to a user;
receiving, by the computer, the user response;
[ 4] verifying, by the computer, the user response based on a
portion of the plurality of advertising parameters to form a verification
result;
[5] determining a publisher response based on the verification
result, wherein the publication response includes providing access to
content if the verification result sent to a publisher indicates that access
should be given, wherein verifying the user response includes at least
one state wherein the publisher is sent the verification result indicating a
verification when the user response was not a correct user response,
thereby allowing the user to receive content from the publisher even
when the user did not satisfactorily solve a challenge.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-3, 5-10, 12-14, and 24 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Jamal et al. (US 2009/0012855 Al, pub. Jan. 8,
2009 "Jamal").
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Appeal2014-006333
Application 12/917,948
2. Claims 4 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jamal and Lazar (US 2010/0095350 Al, pub. Apr. 15,
2010 "Lazar").
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 1
ANALYSIS
The Appellants first argue that the rejection of claim 1 is improper
because the rejection cites disparate portions of Jamal at Figs. IB, 1 C, and
ID that is improper to meet the required claim elements for claim 1 (App.
Br. 11-13; see also Reply Br. 5-8).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 4, 5, and 8-10).
We agree with the Appellants. Here, the rejection of record for
claim 1 cites to Jamal at Figs. IB, IC, ID; and paragraphs 2 and 21-25
(Ans. 4, 5, and 8). The citations to Jamal at Figs. IB, 1 C, and ID are all
directed to different embodiments (see Jamal paras. 11-13) and the rejection
of record fails to specifically show the separately claimed features in a single
embodiment arranged or combined in the same way to show anticipation.
"Unless a reference discloses within the four comers of the document not
only all of the limitations claimed but also all of the limitations arranged or
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-006333
Application 12/917,948
combined in the same way as recited in the claim, it cannot be said to prove
prior invention of the thing claimed and, thus, cannot anticipate under
35 U.S.C. § 102." Net MoneyIN, Inc. v. VeriSign, Inc. 545 F. 3d 1359, 1371
(Fed. Cir. 2008). For these above reasons the rejection of claim 1 and its
dependent claims is not sustained. Claim 8 has been rejected on similar
grounds and the rejection of that claim and its dependent claims is not
sustained for the same reasons given above as well.
CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.
DECISION
The Examiner's rejection of claims 1-14 and 24 is reversed.
REVERSED
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