Ex Parte Morris

Patent Trial and Appeal Board

Nov 13, 2014

10913071 (P.T.A.B. Nov. 13, 2014)

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.
10/913,071 08/06/2004 Robert P. Morris I252/US 4128
49278 7590 11/13/2014
SCENERA RESEARCH, LLC
5400 Trinity Road
Suite 303
Raleigh, NC 27607
EXAMINER
WEISS, JOHN
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
11/13/2014 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 ROBERT P. MORRIS
___________

Appeal 2012–000545
Application 10/913,071
Technology Center 3600
___________

Before ANTON W. FETTING, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE1

Robert P. Morris (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 1–29, the only claims pending in the application on
appeal. After Final amendments to the claims filed Oct. 21, 2009 were
entered by an Advisory Office Action mailed Nov. 6, 2009. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 22, 2010) and Reply Brief (“Reply Br.,” filed August
18, 2011), and the Examiner’s Answer (“Ans.,” mailed June 22, 2011).
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The Appellant invented a way of locating context sensitive services by
and for an electronic device (Specification para. 001).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A method for locating information about a service by an
electronic device comprising;
[1] specifying,
by the electronic device,
a request for a service,
wherein the request is related to at least one of a plurality
of contexts;
[2] receiving,
by the electronic device,
advertising information related to an offered service;
[3] determining,
by the electronic device,
whether the advertising information
matches
the at least one context;
and
[4] presenting the advertising information,
by the electronic device,
in response to determining that the offered service
matches the at least one context,
wherein the advertising information is presented to the
user
in a manner corresponding to the at least one
context.
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The Examiner relies upon the following prior art:
Bandera US 6,332,127 B1 Dec. 18, 2001
Graham US 6,804,659 B1 Oct. 12, 2004
Claims 1–24 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Graham.2
Claims 25–29 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Graham and Bandera.
ISSUES
The issues of anticipation and obviousness turn primarily on the breadth
of the terms “device,” “specifying,” and “determining.”
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art – Graham
01. Graham is directed to online advertising management and more
particularly to techniques for targeting information in the Internet
environment. Specific embodiments can target advertising and
other marketing information. Graham 1:21–25.

2 The Examiner withdrew rejections under 35 U.S.C. § 112, first paragraph
and under 35 U.S.C. § 102(e) as anticipated by PR Newswire. Ans. 4. The
Examiner also withdrew rejections under 35 U.S.C. § 101. Advisory Action
mailed Nov. 6, 2009.
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02. Graham describes an internet target marketing system for
distributing online advertising to viewers based upon the viewers’
interests. Graham can use an n–way matching of user’s concepts
of interest, advertiser’s concepts and concepts contained in a
currently viewed document to target advertising to the viewer of
the current document. Graham can generate a contextually
sensitive advertisement for each page viewed in a browser,
thereby associating an advertisement with every page in a
document. Graham can associate advertising with documents that
are substantially free of embedded advertisements. Graham 1:50–
65.
03. Graham describes targeting advertising to a user based upon
content of an active document. An active document can be one
that is presently displayed to a user, or it can be one that is being
processed by a daemon or background process. Graham describes
analyzing at least one document to identify discussion of
information corresponding to one or more user selectable concepts
of interest. This analysis can provide a user concept relevance,
which can comprise a measure of relevance of the document to
one or more concepts defined by the user. Graham describes
analyzing the document to identify discussion of information
corresponding to one or more advertiser selectable concepts of
interest. This analysis can provide an advertiser concept
relevance, which can comprise a measure of relevance of the
document to one or more concepts defined by the advertiser.
Graham describes comparing the user concept relevance and the
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advertiser concept relevance for the document to determine an
overall relevance. Selecting advertising having a particular
overall relevance can also be part of the method. The particular
relevance can be the greatest relevance, least relevance, or within
a range of greatest or least relevance, for example. Graham
describes displaying the advertisement selected to a user. Graham
1:66 – 2:24.
04. Graham describes targeting advertising to a user based upon
content of one or more documents displayed to the user. Graham
describes a profile content recognizer that analyzes contents of
documents for information corresponding to one or more user
selectable concepts. The profile content recognizer provides an
output of concepts contained in the document that correspond to
the one or more user selectable concepts. Graham describes an
advertising content recognizer that analyzes content of documents
for information corresponding to one or more advertiser selectable
concepts. A comparator compares the output from the profile
content recognizer and the output from the advertising content
recognizer and selects from a plurality of stored advertisements
ones that are relevant to the information contained in the
documents based upon the comparison. Graham 2:25–40.
05. Graham describes automatically associating advertising objects
with web objects. Graham describes analyzing one or more web
objects to identify information corresponding to at least one first
concept of interest and analyzing the one or more web objects to
identify information corresponding to at least one second concept
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of interest. Determining a relevance between the first concepts of
interest and the second concepts of interest can also be part of the
method. Graham describes associating the one or more web
objects with the one or more advertising objects based upon the
relevance. Graham 2:64 – 3:8.
ANALYSIS
We are not persuaded by the Appellant’s argument that
Graham fails to disclose “determining, by the electronic device,
whether the advertising information matches the at least one
context” as recited in amended claim 1. Further, Graham fails
to disclose “presenting the advertising information, by the
electronic device, in response to determining the offered service
matches the at least one related context.”
App. Br. 20. The Examiner found that Graham’s server performed these
steps. Ans. 14. To this, Appellant contends that
[t]he server does not specify any request at all in Graham, much
less a request for a service. The server in Graham receives
requests for new web pages, but is not discussed as specifying
a request. . . .
Reply Br. 6–7. Thus, Appellant contends that (1) Graham performs no
selection as every ad is presented and (2) a server does not specify request
for service.
Claim 1 has four steps, viz. specifying a service request, receiving
advertising, determining whether advertising matches a context, and if so,
presenting the advertising. These four steps pretty much summarize
conventional online advertising paid to accompany content that suggests the
ad might be of interest to the viewer. Appellant appears to be arguing that
Graham does not do so at the user’s computer and does not make the
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selection among plural ads received at the user’s computer after the user has
submitted a service request.
These arguments are not commensurate with the scope of the claims.
The claims do not specify a single computer, but rather a single device.
In computers and computer networks, which are tied together by
communication channels, the distinction between single and plural devices is
largely perceptual rather than physical. A single microchip contains plural
devices, yet is generally accepted as being a single device. A group of
computers tied together in a network form a single network device. Thus,
Graham, even were part of its processing performed on a client and part on a
server, would still fit within the scope of “an electronic device.”
Also, it is not necessarily so that a server does not specify a request for a
service. Although one such request is necessarily received by a server as
part of the server’s function, the server also necessarily specifies service
requests that are implied by that original service request in breaking down
the original service request to feed to the software modules on the server so
as to complete the request. Graham describes selecting an ad based on the
context of what was requested. The server then presents the data back to the
client.
From a different perspective, even at the client, it can be said that a
determination is made of whether the advertising information matches the at
least one context. One example of such different contexts is that of different
media types. The client determines the media type in which advertising is
encapsulated for the purpose of selecting the proper media presentation
service. In such a case, the client device specifies a request for service that
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has the potential for returning various file types as different contexts, thus,
forming the recited relation to a plurality of contexts. Upon return, the client
device determines whether it has a driver that supports the returned file type,
thus, determining whether the advertising matches the context of those
supported file types.

CONCLUSIONS OF LAW
The rejection of claims 1–24 under 35 U.S.C. § 102(e) as anticipated by
Graham is proper.
The rejection of claims 25–29 under 35 U.S.C. § 103(a) as unpatentable
over Graham and Bandera is proper.
DECISION
The rejection of claims 1–29 is affirmed.
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.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED

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