Ex Parte McElfresh et al

Patent Trial and Appeal Board

Jun 29, 2017

13617647 (P.T.A.B. Jun. 29, 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.
13/617,647 09/14/2012 Charles McElfresh 9623-806 (Y00904US10) 1065
56020 7590
BGL/Yahoo Holdings
P.O. BOX 10395
CHICAGO, IL 60610
06/29/2017 EXAMINER
STIBLEY, MICHAEL R
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
06/29/2017 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 CHARLES MCELFRESH, PAUL MINEIRO,
and MICHAEL RADFORD
Appeal 2016-001395
Application 13/617,647
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 2—21. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). Appellants appeared for hearing on May 18, 2017.
We REVERSE.
Claim 2 is illustrative:
2. A media system accessible over a network, the media
system comprising:
a user interface module implemented by a server
computer and accessible by a plurality of user computers
Appeal 2016-001395
Application 13/617,647
operated by a plurality of users over the network and operative
to respond to user requests for web pages, the user requests
received at the user interface module over the network from
respective user computers of the plurality of user computers,
and the user interface module further operative to provide
information for web pages to be provided to the respective user
computers of the plurality of users, the server computer
including an advertisement placement function operative to
retrieve stored past performance information collected by
the media system about respective advertisements when the
respective advertisements were previously arranged on web
pages in response to previous received user requests, the past
performance information being indicative of user response to
the respective advertisements when the respective
advertisements were previously arranged on web pages and
provided to user computers, and
arrange a plurality of advertisements on the
provided web pages based on the past performance
information for the plurality of advertisements;
an ad performance database in data communication with
the server computer to store the past performance information
for the advertisements; andan ad performance interface module
implemented by a server computer and in data communication
with the ad performance database, the ad performance interface
module being accessible over the network by an advertiser
computer operated by an advertiser, the ad performance
interface module operative to receive performance monitoring
requests from an advertiser computer operated by an advertiser
and in response to a received performance monitoring request
to provide advertisement performance information to the
advertiser.
Appellants appeal the following rejections:
1. Claims 2—21 under 35 U.S.C. § 101 as being directed to
ineligible subject matter.
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Application 13/617,647
2. Claims 14—21 under 35 U.S.C. § 112, second paragraph as
being indefinite for failing to particularly point out and
distinctly claim the subject matter which the Appellants regard
as the invention.
3. Claims 2—21 under 35 U.S.C. § 102(b) as anticipated by
Merriman et al. (US 2002/0099600 Al, pub. July 25, 2002).
4. Claims 2—21 under 35 U.S.C. § 103(a) as unpatentable over
Merriman and AADDZZ, The Maximum Performance Ad
Networkâ„¢, http://web.archive.org/web/199801300927
46/www. AADDZZ.com/pages/b-highlights
ISSUES
Did the Examiner err in rejecting the claims under 35 U.S.C. § 101
because the Examiner’s rejection is conclusory?
Did the Examiner err in rejecting claim 14 because the recitation of
ad/content is clear?
Did the Examiner err in rejecting claim 2 under 35 U.S.C. § 102(e)
because the Examiner has not established that Merriman discloses an
advertisement placement function operative to arrange a plurality of
advertisements based on past performance data?
Did the Examiner err in rejecting claim 9 under 35 U.S.C. § 102(e)
because the Examiner has not established that Merriman discloses providing
the web page the plurality of advertisements arranged relative to one another
on the web page using past performance data?
Did the Examiner err in rejecting claim 14 under 35 U.S.C. § 102(e)
because the Examiner has not established that Merriman discloses a server
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system operative to provide to a web site ranked advertisements arranged
relative to one another on the web page as a function of ranking?
Did the Examiner err in rejecting claim 2 under 35 U.S.C. § 103(a)
over Merriman and AADDZZ because the Examiner has not established that
that the prior art discloses an ad advertisement placement function operative
to arrange a plurality of advertisements based on past performance data?
Did the Examiner err in rejecting claim 14 under 35 U.S.C. § 103(a)
over Merriman, AADDZZ because the Examiner has not established that
either reference discloses a server system operative to provide to a web site
ranked advertisements arranged relative to one another on the web page as a
function of ranking?
Did the Examiner err in rejecting claim 9 under 35 U.S.C. § 103(a)
over Merriman, AADDZZ because the Examiner has not established that
either reference discloses providing a plurality of advertisements arranged
relative to one another on the web page?
ANALYSIS
Rejection under 35 U.S.C. §101
The Examiner states that the claims are directed to an abstract idea of
arranging a plurality of advertisements on the provided web pages based on
past performance information for the plurality of advertisements. The
Examiner holds that this is a concept involving human activity relating to
fundamental economic practices (Ans. 2).
The Examiner does not explain the nature of the fundamental
economic practice. The Examiner has not explained how, for example, the
arranging a plurality of advertisements on the provided web pages based on
past performance information for the plurality of advertisements involves
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Application 13/617,647
human activity. The Examiner also states that the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception. The Examiner does not explain this conclusion, but
rather restates the listed recitations in the claims and states that none of the
limitations of the claims provide eligibility (Ans. 2—3).
The Examiner’s rejection is conclusory, because the Examiner has
arrived at asserting that the claims are directed to a particular abstract idea
without identifying how the claim limitations correspond to the asserted type
of abstract idea. More specifically, the Examiner has not established what
the claimed invention is directed to in a manner sufficient for us to evaluate
whether that represents a practice long prevalent in our system of commerce,
such that the assertion of being a fundamental economic practice is
sufficiently supported.
Because the Examiner has not sufficiently established that the claimed
invention is directed to an abstract idea, we do not sustain the rejection of
under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 112, second paragraph
We will not sustain this rejection because we agree with the
Appellants that when the recitation “ad/contenf ’ is read in light of the
specification, it is clear that it refers to ads or other content.
Rejection under 35 U.S.C. § 102(e)
We will not sustain this rejection as it is directed to claim 2 because
we agree with the Appellants that Merriman does not disclose an
advertisement placement function operative to arrange a plurality of
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advertisements based on past performance information about respective
advertisements when the respective advertisements were previously arranged
on web pages.
The Examiner directs us to Merriman, paragraphs 11—16, 31, and 40
for disclosing this feature of these claims. (Ans.6—8). We find that
Merriman discloses at paragraph 11 an advertising server that selects an
advertisement for display to a user. Paragraph 12 of Merriman discloses that
the predictive model estimates the performance of a particular
advertisement. Paragraphs 13—16 disclose that the selected advertisement is
delivered to the web page and that the user response is monitored and used
to update that predictive model. Merriman discloses in paragraph 31 and
depicts in Figure 1, at 12, a ranked order of a plurality of advertisements is
output. While paragraphs 13 and 31 of Merriman discloses that a group or
ranking of advertisements are selected by the predictive model, there is no
disclosure that this group of advertisements or ranked order of
advertisements is ever delivered to a web page. Rather, in paragraph 32 it
makes clear that only one advertisement 18 is selected and delivered to the
web page.
In addition, while it may be true that the Merriman system is capable
of ranking advertisements, the Examiner has not established that the
Merriman system is capable of arranging these advertisements on a webpage
based on past performance of the advertisements when the respective
advertisements were previously arranged. Therefore, the Examiner has not
established that Merriman discloses an advertisement placement function
operative to arrange a plurality of advertisements on the provided web page
based on past performance information as required by claim 2.
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In view of the foregoing, we will not sustain this rejection as it is
directed to claim 2 and claims 3—8 dependent therefrom.
We will also not sustain this rejection as it is directed to claim 9 and
claims 11—13 dependent therefrom for similar reasons, i.e., claim 9 requires
that the plurality of advertisements are arranged relative to one another on
the web page based on past performance data.
We will not sustain this rejection as it is directed to claim 14 and
claims 15—21 dependent therefrom for similar reasons, i.e., claim 14 requires
a server operative to provide a web site ranked advertisements arranged
relative to one another on the web page.
In addition to the errors set forth above, the Examiner has generally
argued that functional limitations in claims 2—21 are not given weight
because they relate to intended use only, the Examiner fails to explain which
functional limitations are considered to relate to intended use only. (See
Ans. 56—58). The Examiner also fails to explain how the functional
limitations of the claims are within the capability of the Merriman system.
Rejection under 35 U.S.C. §103
We will not sustain the Examiner’s rejection as it is directed to o
claims 2—21 under 35 U.S.C. § 103 over Merriman and AADDZZ. In this
rejection, like the anticipation rejection, the Examiner relies on Merriman
for teaching advertisement placement functionality we found missing in
Merriman. Therefore, we will not sustain this rejection as it is directed to
claims 2—21 for the same reasons given above in our discussion regarding
the anticipation rejection of these claims.
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DECISION
The decision of the Examiner is reversed.
ORDER
REVERSED
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