Ex Parte Merriman et al

Board of Patent Appeals and Interferences

May 17, 2012

10254923 (B.P.A.I. May. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DWIGHT ALLEN MERRIMAN
and KEVIN JOSEPH O‟CONNOR
____________

Appeal 2009-015214
Application 10/254,923
Technology Center 3700
____________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD,
and TREVOR M. JEFFERSON, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 23-44. Claims 1-22 and 45-52 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
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Application 10/254,923

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STATEMENT OF THE CASE
Introduction
Appellants‟ invention relates to methods of targeting advertisements
delivered over networks (see Spec. ¶¶ [0008], [0009]).
Exemplary Claim
Claim 23 is illustrative of the invention and reads as follows.
23. An apparatus for advertising, comprising:
a processor; and
a memory storing instructions adapted to be executed by
said processor to:
receive an advertisement request from a user node,
wherein said advertisement request is based upon a link
sent from an affiliate node to said user node in response
to a content request sent from said user node to said
affiliate node; and
select, in response to said advertisement request,
an advertisement based upon stored information about
said user node.
Claim Rejections
Claims 23-37 and 41-44 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Wexler (US 5,960,409).
Claims 38-40 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wexler.

ANALYSIS
The Examiner finds that the claimed selecting step is disclosed by
Wexler‟s description of the third party service 13 in columns 4 and 6,
indicating certain information from the user Web browser is stored and the
user‟s viewing of the information provided by the publisher benefits the
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advertiser (Ans. 4). The Examiner further asserts that “Wexler discloses a
banner wherein a user can click to select an ad which downloads and
display[s] stored information for the user sought by the user to his web
browser” (Ans. 6).
Appellants contend that:
[A] user in Wexler clicking on a banner ad does not:
• select an ad “based upon stored information about said user
node” as recited in independent claim 23, and
• select an ad “in response to said advertisement request”,
wherein “said advertisement request is based upon a link sent
from an affiliate node to said user node in response to a content
request sent from said user node to said affiliate node” as
recited in independent claim 23.
(Br. 4). Appellants explain that the third party system 1 in Wexler “merely
logs the click-through and redirects the browser‟s request (via 15b and 19a)
to the ad‟s associated web site 17” instead of selecting “an ad „based upon
stored information about said user node‟ as recited in independent claim 23”
(Br. 5).
We agree with Appellants that Wexler does not disclose the disputed
claim limitations. Our review of Wexler, and the portions cited by the
Examiner in particular, shows that the third party service 13 in Wexler logs
and accumulates, from the user browser 3, the available statistical
information that is useful to the banner publisher and the advertiser (col. 4,
ll. 61-67). However, Wexler takes no specific action with respect to
selecting an advertisement based on the collected statistical information or
how the advertiser benefits from the information provided by the publisher.
Wexler merely identifies such benefits by describing how the banner-
publishing site may use the number of clicks on the banner to calculate the
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advertising fees (see col. 2, ll. 7-14). While Wexler explains, in general
terms, that the information about the user node is collected and stored (see
col. 4, ll. 61-67), the Examiner has not identified, nor do we find, any
teachings in Wexler indicating that an advertisement is selected based on the
collected and stored statistical information about the user.

CONCLUSION
On the record before us, we conclude that the Examiner erred in
rejecting claim 23, as well as claims 24-37 and 41-44 dependent thereon,
because Wexler does not teach or suggest the disputed claim features.
Therefore, we do not sustain the 35 U.S.C. § 102 rejection of claims 23-37
and 41-44, nor the 35 U.S.C. § 103 rejection of dependent claims 38-40.

DECISION
The decision of the Examiner rejecting claims 23-44 is reversed.

REVERSED

ELD