Ex Parte McElfresh et al

Patent Trial and Appeal Board

Jun 27, 2017

13617588 (P.T.A.B. Jun. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/617,588 09/14/2012 Charles McElfresh 9623/805 (Y00904US09) 2151
56020 7590
BGL/Yahoo Holdings
P.O. BOX 10395
CHICAGO, IL 60610
06/27/2017 EXAMINER
STIBLEY, MICHAEL R
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
06/27/2017 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 2016-001394
Application 13/617,588
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 1—20. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). Appellants appeared for hearing on May 18, 2017.
We REVERSE.
Appeal 2016-001394
Application 13/617,588
Claim 1 is illustrative:
1. A computer-implemented method of providing placement of a
plurality of graphical objects on a page accessible by a user, each graphical
object of the plurality of graphical objects including graphic and text
symbols, the page having positions for receipt of the objects, each object
having at least one of a link to information, the link being invoked by an
event identifying the object by a computer pointing device, the method
comprising the steps of:
at a data processing system configured for data communication with
user computing systems,
collecting and storing in a memory information about interaction by
the user computing systems with web pages communicated to the user
computing systems;
analyzing the stored information about interaction to differentiate
among particular users having stored interaction information stored in the
memory;
based on the analysis, defining two or more data storage bins in the
memory and defining boundaries among the two or more data storage bins;
based on the information about interaction, storing in respective data
storage bins in the memory performance data associated with the likelihood
of the event occurring for each object;
retrieving the performance data;
calculating the likelihood the event will occur; and
arranging the plurality of graphical objects relative to one another on
the page according to the calculated likelihood.
Appellants appeal the following rejections:
1. Claims 1—20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
2. Claims 2—9 are rejected 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 inventors regards as the invention.
3. Claims 2—20 are rejected under 35 U.S.C. § 102(e) as being anticipated
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Application 13/617,588
by Merriman et al. (US 2002/0099600 Al, published July 25, 2002).
4. Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Merriman et al. in view of Naqvi et al. (WO 97/21183, published June
12, 1997).
5. Claims 1—20 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Merriman et al. in view of Naqvi et al. in further view of Dunkle
(US 6,288,717 Bl, issued Sept. 11, 2001).
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 2 because the recitation of
ad/content is unclear?
Did the Examiner err in rejecting claim 2 under 35 U.S.C. § 102(e)
because the prior art does not disclose a log digester?
Did the Examiner err in in rejecting claim 1 under 35 U.S.C. § 103(a)
because the prior art does not disclose arranging the plurality of graphical
objects relative to one another on the page according to the calculated
likelihood of an event occurring?
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 graphical objects relative to one another on a
webpage according to a calculated likelihood that an event will occur after
analyzing stored information (Ans. 2). The Examiner holds that this is a
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Application 13/617,588
concept involving human activity relating to fundamental economic
practices (id.). The Examiner does not explain the nature of the fundamental
economic practice. The Examiner has not explained how the arranging of
graphical objects relating to one another on a webpage involves 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 (id.). The Examiner does not explain this conclusion but rather
states 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 in each of claims is directed to an abstract idea, we do not sustain
the rejection of claims 1—20 under 35 U.S.C. § 101.
Rejection of claims 2—9 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.
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Application 13/617,588
Rejection of claims 2—20 under 35 U.S.C. § 102(e)
We agree with the Appellants that the prior art does not recite a log
digester to group respective items of user information for the particular users
into predefined bins as required by claim 2. The Examiner relies on
paragraphs 31 and 37 of Merriman for teaching this subject matter (Ans. 4).
Merriman discloses at paragraph 31 that a predictive model is used to use
information inputted to produce a single direct advertisement of a ranked
order of direct advertisement but discloses nothing about grouping user
information. Merriman discloses at paragraph 37 that database information
for the predictive model is stored on external programmed database which
can be accessed through an Oracle or SQL database but discloses nothing
about grouping user information. While the Examiner may be correct that
calling an element a “log digester” is just a label, we do not agree with the
Examiner that it has been established that the software and databases and
generic servers that form the log digester are clearly disclosed in Merriman
(Ans. 31).
The Examiner states that the functional language included within
system claim 2 is intended-use language and does not structurally
distinguish the claim (Ans. 31). The Examiner does not specifically address
the functional language of claim 2 related to the log digester. Although the
limitation that “log digester, responsive to stored user information, to group
respective items of user information for particular users into predefined
bins” is a functional limitation, there is nothing intrinsically wrong with a
functional limitation that further limits a claimed structure. See In re
Swinehart, 439 F.2d 210, 212 (CCPA 1971). Here, the functional limitation
further defines the capability of the log digester. Although an Examiner may
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require an applicant to prove that certain functional characteristics are not
present in the prior art reference, id. at 213, before an applicant can be put to
that burden, the Examiner must provide a sound basis to establish the
reasonableness of the Examiner’s belief that the functional limitation is an
inherent characteristic of the prior art. See In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990). Here the Examiner has not provided such a sound basis.
In this regard, the Examiner has not addressed this limitation specifically
much less addressed how this limitation is inherent in Merriman. Therefore,
the Examiner has not established that this limitation is inherent in Merriman.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 2 and claims 3—9 dependent therefrom.
Independent claims 10 and 16 recite limitations directed to the
placement of advertisements relative to one another on a web page. Claim
10 recites “providing at least some of the advertisements ... for inclusion on
a web page where the ... advertisements are arranged relative to one another
on the web page using the calculated values.” Claim 16 recites “arranging
the candidate advertisements on the web page using the ranking.”
We are persuaded by the Appellants’ arguments that Merriman does
not disclose the recited arranging of advertisements relative to one another
using the calculated value as recited in claim 10, or using the ranking as
recited in claim 16.
The Examiner directs us to Merriman, paragraphs 14, 22, 31—33, 35,
36, 42 for disclosing this feature of these claims. (Ans. 12, 16, 20-21
(addressing similar limitation with respect to claim 1)). Paragraph 14 of
Merriman discloses delivering direct advertisements to a webpage.
Paragraph 31 discloses that the predictive model 10 processes various inputs
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and outputs a single direct advertisement. Merriman does disclose in
paragraph 31 and depict in Figure 1, that a ranked order of a plurality of
advertisements is output. However, there is no disclosure that this ranked
order of advertisements is ever delivered to a web page. Rather, paragraph
32 it makes clear that the ranked order is filtered and only one advertisement
18 is selected and delivered to the web page. While paragraph 36 discusses
a database that includes advertisements (plural), there is no disclosure in this
paragraph that multiple advertisements are delivered to a web page. We find
that paragraphs 22 and 35 likewise does not disclose this subject matter.
Therefore, there is no disclosure in Merriman of providing a plurality of
advertisements arranged relative to one another on a web page using
calculate values as recited in claim 10 or arranging advertisements on a web
page using a ranking as required by claim 16.
We do not agree with the Examiner that the recitation related to
arranging the advertisements or objects on the page relates to printed matter
because the display of the objects has no functional relationship to the
website. Fin. Act. 10; see also Ans. 28—29. Claims 10 and 16 are method
claims. Therefore, the question in regard to printed matter is whether the
subject matter in question alters how the steps of the claim, i.e. the arranging
step, is performed. This it manifestly does in that it affects how the
arranging of the advertisements or objects is done, i.e. relative to one another
according to a calculated value or ranking. Cf, Ex parte Nehls, 88 USPQ2d
1883, 1888 (BPAI2008) (precedential) (“The specific SEQ ID NOs recited
in the claims do not affect how the method of the prior art is performed —
the method is carried out the same way regardless of which specific
sequences are included in the database.”); Ex parte Mathias, 84 USPQ2d
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1276, 1277 (BPAI 2005) (informative) (“Common situations involving
nonfunctional descriptive material are: ... a process that differs from the
prior art only with respect to nonfunctional descriptive material that cannot
alter how the process steps are to be performed to achieve the utility of the
invention.”).
In view of the foregoing, we will not sustain the rejection of any of
independent claim 10 and claims 11—15 dependent therefrom, or
independent claim 16 and claims 17—20 dependent therefrom.
Rejection of claim 1 under 35 U.S.C. § 103(a) over Merriman and Naqvi
We will not sustain this rejection of claim 1 because similar to the
rejection of claim 10 above, the Examiner relies on paragraphs 31 and 36 of
Merriman for teaching “arranging the plurality of graphical objects relative
to one another on the page according to the calculated likelihood.” (Ans.
21). As we found above, Merriman does not disclose arranging of
advertisements or objects relative to one another on a page according to the
calculated value. In rejecting claim 1, the Examiner also relies on paragraph
40 of Merriman for teaching that advertisements are delivered to the user.
(Ans. 21). We find that although this paragraph discloses that the model
selects advertisements, paragraph 41 discloses that after the process flow or
after the selection of advertisements a single direct advertisement is selected
based on various criteria. As such, Merriman does not disclose that
arranging step of claim 1.
Rejection of claims 1—20 under 35 U.S.C. § 103(a) over Merriman, Naqvi
and Dunkle
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Application 13/617,588
In this rejection, the Examiner relies on Dunkle at column 2, lines 3—
11 for teaching the arranging step of claim 1 we found missing in Merriman
above (Ans. 23—24).
We find that column 2, lines 3—11 of Dunkle discloses that the
program first uses the interests of the user recorded on the profile page to
compare against topic interest flags of articles and other customizable
elements are shown on the user’s home page; then weighs the importance,
rarity and significance of each match that it has found; and finally displays
the three highest scoring items on the user’s home page in descending order
of value. There is no disclosure in Dunkle of arranging objects on a page
relative to one another according to a calculated likelihood that an event will
occur as required by claim 1, using calculated values as required by claim
10, or using a ranking as required by claim 16.
Therefore, we will not sustain this rejection as it is directed to claim 1,
claims 10 and 16, and claims 11—15 and 17—20 dependent therefrom
respectively.
We will also not sustain this rejection as it is directed to claim 2 and
claims 3—9 dependent therefrom because the Examiner relies on Merriman
for teaching the log digester and, as we found above, the Examiner has not
established that Merriman discloses the log digester recited in claim 2.
DECISION
The decision of the Examiner is reversed.
ORDER
REVERSED
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