Ex Parte Morris et al

Board of Patent Appeals and Interferences

Apr 30, 2010

09690007 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HARRY W. MORRIS, DAVID LOWELL LIPPKE,
BOB WATKINS, ERIC BOSCO, and COLIN STEELE
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Appeal 2009-011419
Application 09/690,007
Technology Center 2400
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Decided: May 4, 2010
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Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-28, 55-57, and 64-75. Claims 29-54 and 58-63 have
been canceled. Oral arguments were held on April 20, 2010. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse. Pursuant to our authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection under 35 U.S.C. § 112, ¶ 2.

STATEMENT OF THE CASE
Appellants’ invention relates to “[a] method of presenting advertising
to viewers in a computer network environment [that] includes monitoring a
viewer’s interactions with an associated computer system, and adjusting a
timing of displayed advertisements on the viewer’s associated computer
system based on one or more of the viewer’s monitored interactions”
(Abstract). The monitoring of the viewer’s interactions may include (1)
monitoring whether the window displaying the advertisements is maximized,
minimized, or at least partially occluded; or (2) monitoring the viewer’s use
of an input device, such as a keyboard, mouse, or microphone (Spec. 8).
Tuning parameters, which are also downloaded to the user’s
computer, are used to monitor the viewer’s interactions with the computer
(Spec. 8). The tuning parameters are used to adjust the length of time that
each advertisement is displayed before being replaced with a subsequently
displayed advertisement (Spec. 7-9). Various tuning parameters include (1)
“a maximum display count that sets a maximum number of times an
advertisement may be displayed to a user viewing a batch of ads;” (2) “a
minimum display time that sets a minimum amount of time that an
advertisement may be displayed before another advertisement is displayed;”
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(3) “an idle delay that causes a delay from the time a user has gone idle
before a first advertisement is replaced with another advertisement;” (4) “an
active delay that causes a delay from the time a user goes active before
displaying another advertisement;” and (5) “an idle (no spin) timer that stops
the display of a first advertisement from being replaced with the display of
another advertisement after a user goes idle for so long that is it [sic: it is]
unlikely that the user is actually looking at the screen” (Spec. 8).
The “click through rate” can also be monitored to generate statistics
regarding “[t]he rate at which users click on an ad to go to the linked ad”
(Spec. 14). The statistics can indicate for a particular computer user, “the
likelihood of click through relative to, for example, the amount of time that
an ad is displayed or the amount of time that the user is idle before the ad is
displayed. These statistics can be used to control ad timing in ways that
improve click-through rates” (Spec. 14). For example, the statistics can “be
used to determine a correlation between the tuning parameters downloaded
to the user’s computer and the click-through rate of the user” (Spec. 9). The
tuning parameters may then be customized and varied with each batch of
advertisements that is downloaded to the user’s computer in order to
optimize the effectiveness of an internet-advertisement marketing campaign
(Spec. 9-11, 14-15; Figs. 17 and 24).
Claims 1-28, 55-57, and 64-75 stand rejected under 35 U.S.C.
§ 103(a) as obvious over US Patent 6,108,637 [Blumenau] in view of US
Patents 6,119,098 [Guyot] and 6,128,651 [Cezar]. We understand the
Examiner’s position to be that the combination of Blumenau, Guyot, and
Cezar teaches an internet advertising system that varies the length/duration
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of advertisements based on a viewer’s prior interaction with a computer for
the purpose of tailoring advertisements to a particular user (e.g., Ans. 3-6).1
Appellants conversely assert inter alia:
[N]one of the cited references describe or suggest varying an
amount of display time for which a later displayed
advertisement is to be displayed on a viewer's associated
computer system based on any monitored information, much
less the viewer's monitored interactions with the viewer's
associated computer system. . . . [In the portion of Blumenau
relied upon by the Examiner], the amount of display time for a
later advertisement is not varied based on the monitored
information. Rather, the amount of time the content has already
been displayed is determined based on such information.
Reply Br. 2.
Before considering the prior-art rejections or Appellants’ arguments,
though, we must first determine the scope of the claims. In re Geerdes, 491
F.2d 1260, 1262 (CCPA 1974). This investigation leads us to conclude that
one of ordinary skill in the art cannot reasonably ascertain the metes and
bounds of the pending claims. Pursuant to our authority under 37 C.F.R. §
41.50(b), then, we now enter a new ground of rejection under 35 U.S.C. §
112, ¶ 2. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (noting that the test for definiteness under 35
U.S.C. § 112, ¶ 2, is whether “those skilled in the art would understand what
is claimed when the claim is read in light of the specification”) (citations
omitted).

1 Rather than repeat the Examiner’s positions or Appellants’ arguments in
their entirety, we refer to the following documents throughout this opinion
for their respective details: (1) the Appeal Brief (“App. Br.”) filed December
1, 2008; (2) the Examiner’s Answer (“Ans.”) mailed February 12, 2009; and
(3) the Reply Brief (“Reply Br.”) filed April 13, 2009.
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ANALYSIS
Independent claim 1 is illustrative, reading as follows:
1. A method of presenting advertising to viewers in a
computer network environment, the method comprising:
monitoring a viewer's interactions with an associated
computer system;
determining an amount of time to be used in later
displaying advertisements on the viewer's associated computer
system based on the viewer's monitored interactions; and
based on the determined amount of time, varying an
amount of display time for which a later displayed
advertisement is to be displayed on the viewer's associated
computer system, the varied amount of display time being
different than an amount of display time for which the later
displayed advertisement is to be displayed on another viewer's
associated computer system.
It is not reasonably clear what is meant by the claim language,
“based on the determined amount of time, varying an amount of
display time for which a later displayed advertisement is to be
displayed on the viewer's associated computer system.” Nor is it
reasonably clear what relationship is intended for the two claimed
times: “the determined amount of time” (limitation 2 (emphasis
added)) and “the varied amount of display time” (limitation 3
(emphasis added)). The third limitation states that “an amount of
time” (as opposed to “the amount of time”) is varied “based on the
determined amount of time” (emphases added). These antecedent
bases seem to indicate that the “varied amount of time” is some time
period that is distinct from, and occurring subsequent to, the
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“determined time period.” However, if this is so, it would beg the
question: relative to what time period is the “varied amount of display
time” varied? The claim does not provide any objective baseline
standard.
This ambiguity can be described another way. It is unclear whether
the third limitation’s language, “based on the determined amount of time,
varying an amount of display time” (emphasis added) means (1) varying an
amount of display time relative to the determined amount of time or (2)
varying an amount of display time as a function of the determined amount of
time. Under the first interpretation, the determined amount of time is a base
used to implement the varied amount of time, without being used itself.
Under the second interpretation, the determined amount of time is first used
in the claimed monitoring process, and the varied amount of time is later
used in the process.
The first interpretation does not seem reasonable because the act of
“determining an amount of time to be used” is, in turn, “based on the
viewer’s monitored interactions.” This implies that the “determining” step
occurs subsequent to the monitoring, and that this step does not correspond
to merely setting initial download parameters prior to any interactions being
monitored.
Conversely though, the second interpretation is not supported by the
Specification. The Specification nowhere discloses varying an amount of
display time as a function of a time to be used in later displaying
advertisements. Rather, the Specification discloses correlating or varying
the tuning parameters as a function a user’s monitored interactions (e.g.,
Spec. 9-10).
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This ambiguity is compounded by the fact that claim 1 recites
“determining an amount of time to be used in later displaying
advertisements. . .;” and then “varying an amount of display time for which
a later displayed advertisement is to be displayed. . .” (emphases added). It
is not reasonably clear whether the latter limitation is actually intended to
mean, “varying an amount of display time for which a [sic: one of the] later
displayed advertisement is to be displayed.” That is, it is not reasonably
clear whether (1) the later displayed advertisement that has the varied
amount of display time (limitation 3) is one of the advertisements that is
referenced in the second limitation, “determining an amount of time to be
used in later displaying advertisements,” or (2) the later displayed
advertisement having a varied amount of display time is an advertisement
that is displayed even later relative to “the later displaying advertisements”
of the second limitation.
The ambiguities of claim 1 are not clarified by the dependent claims.
Various dependent claims (e.g., claims 2, 3, 6, and 7) recite that the method
of claim 1 further comprises adjusting various tuning parameters. That is,
these claims do not state that the “determining” or “varying” steps of claim 1
more specifically comprise adjusting the tuning parameters. Claim 4 does
recite that the “varying” step of claim 1 comprises adjusting one of the
tuning parameters, but none of the dependent claims further clarifies what
the “determining” step is intended to correspond to. As such, the dependent
claims do not help clarify the intended relationship between the
“determining” and “varying” steps.2

2 Claim 5 recites “The method of claim 1, wherein further comprising
adjusting an idle delay…” (emphasis added). As such, it is unclear what
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The ambiguities of claim 1 are not clarified by Appellants’ Appeal
Brief either. Appellants state that the act of determining an amount of time
to be used in later displaying advertisements is supported by the
Specification “at page 7, line 19 though page 8, line 3, page 8, lines 6-8,
page 10, line 20 through page 11, line 6, page 14, lines 12-18, page 15, lines
1-14, page 18, lines 1-10, page 20, lines 17-21, and page 29, line 8 through
page 31, line 4” (App. Br. 1-2). These cited portions of the Specification
relate to disclosure of the various tuning parameters as well as disclosure of
how to adjust the tuning parameters.
Appellants then state, though, that claim 1’s following step of
varying an amount of display time is also supported by the Specification
at page 7, line 20 though page 8, line 3, page 8, lines 6-8, page
9, line 20 through page 10, line 14, page 10, line 20 through
page 11, line 6, page 14, lines 12-18, page 15, lines 1-14, page
18, lines 1-10, page 20, lines 17-21, and page 29, line 8 through
page 31, line 4.

(App. Br. 2). That is, Appellants cite to large and substantially identical
portions of the Specification for support of both “the determined amount of
time” limitation and “the varied amount of display time” limitation. As
such, the Appeal Brief does not clarify what the difference or relationship
between these two steps is intended to be.
The ambiguities are not clarified by the Specification. For example, it
is unclear whether the step of “determining an amount of time to be used in
later displaying advertisements” is intended to correspond to the act of
determining whether a user is active for the purpose of setting the status to

claim 5 means – how claim 5 is intended to relate to claim 1. Much less
does claim 5 clarify the ambiguities existing in claim 1.
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either active or idle (Spec. 20; Fig. 15, step 1015). Alternatively, the
determining step may be intended to correspond to either (1) storing tuning
on a host computer (e.g., Fig. 24, step 1310), or perhaps (2) downloading an
initial set of the stored tuning parameters to a user’s computer (e.g., Fig 24,
step 1315).
Finally, the ambiguities of claim 1 are not clarified by any of the other
independent claims either. Independent claim 15 is directed to a computer-
readable medium storing a program that similarly comprises “a monitoring
code segment,” “a determining code segment,” and “an adjusting code
segment.” Independent claim 75 recites a method similar to claim 1 that
includes determining an amount of time, and also accessing and adjusting
general timing attributes that indicate an amount of time to display
advertisements based on the determined amount of time.
Independent claim 55 recites a method of optimizing a click-through
rate that includes:
downloading advertisements and a set of tuning parameters to a
user's computer, wherein the set of tuning parameters are
configured to cause a display of a first advertisement on the
user's computer to be changed to a display of another
advertisement on the user's computer by varying an amount of
display time for which the later displayed advertisement is to be
displayed based on a user's activity with respect to the user's
computer. . .
(emphases added). At first blush, the metes and bounds of claim 55 seem to
be generally ascertainable.3 However, the plain language of claim 55 is not
supported by Appellants’ Specification. The claim language seems to set

3 We provisionally interpret the term “the later displayed advertisement” as
intending to refer back to the claimed “another advertisement” as
distinguished from the claimed “a first advertisement.”
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forth that the length of the later advertisement is varied as a function of the
tuning parameter configuration. However, the Specification indicates that a
user’s actions, as monitored by the tuning parameters, affect the length of
time an initial advertisement is presently displayed before a later
advertisement is displayed (e.g., Spec. 7-11) – not the length of time the
later advertisement itself is displayed. The fact that the most plausible
interpretation is not supported by the Specification seems to imply that some
alternative, but unascertainable, interpretation is intended. Moreover, claim
55 does not resolve the ambiguities that exist with the other independent
claims.
For the foregoing reasons then, we find claims 1-28, 55-57, and 64-75
to be indefinite under 35 U.S.C. § 112 ¶ 2. See Ex parte Miyazaki, 89
USPQ2d 1207, 1211 (BPAI 2008) (precedential), available at
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd073300.pdf (holding
that “if a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite”).
Regarding the outstanding obviousness rejection, we note that a prior
art rejection of a claim, which is so indefinite that “considerable speculation
as to [the] meaning of the terms employed and assumptions as to the scope
of such claims” is needed, is likely imprudent. See In re Steele, 305 F.2d
859, 862, 134 USPQ 292 (CCPA 1962) (also holding that the Examiner and
the Board of Patent Appeals were wrong in relying on what at best were
speculative assumptions as to the meaning of the claims and basing a
rejection under 35 U.S.C. § 103 thereon). Accordingly, we reverse the
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Examiner’s rejection of claims 1-28, 55-57, and 64-75 under 35 U.S.C. §
103 without reaching the merits of that rejection.

DECISION
The Examiner’s decision rejecting claims 1-28, 55-57, and 64-75
under 35 U.S.C. § 103 is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection under 35 U.S.C. § 112, ¶ 2.

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). This regulation states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
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the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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) (2007).

REVERSED
37 C.F.R. § 41.50(b)

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