Ex Parte Murray et al

Patent Trial and Appeal Board

Aug 19, 2016

12224506 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/224,506 08/28/2008
21028 7590 08/23/2016
Gowling WLG (Canada) LLP
160 ELGIN STREET
SUITE 2600
OTTA WA, ON KIP 1C3
CANADA
FIRST NAMED INVENTOR
Sean MacLean Murray
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
86503-293 9445
EXAMINER
NGUYEN, QUANG N
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
08/23/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Patprosec@gowlingwlg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN MACLEAN MURRAY, STEPHANE MAXIME
FRANCOIS FORTIER, and JEAN BOUCHARD
Appeal2014-009076
Application 12/224,506
Technology Center 2400
Before CATHERINE SHIANG, TERRENCE W. McMILLIN, and
KAMRAN JIVANI, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-58, 61, 66, 69, and 70, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-009076
Application 12/224,506
STATEMENT OF THE CASE
Introduction
The present invention relates to presenting online content elements.
See generally Spec. 1. Claim 1 is exemplary:
1. A method for presenting online content at a
communication apparatus, said method comprising, in order:
- at a service provider providing network access to the
communication apparatus:
obtaining profile information from a profile
database maintained by the service provider providing
network access to the communication apparatus;
transmitting the profile information to the
communication apparatus;
- at the communication apparatus:
storing the profile information on the
communication apparatus as a cookie;
communicating the profile information contained
in the cookie to an ad server;
- at the ad server:
receiving the profile information communicated by
the communication apparatus;
determining an online content element to be
presented at the communication apparatus based on the
received profile information; and
causing the communication apparatus to present
the online content element
References and Rejections
Claims 1-13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gilmour (WO 01/67313 Al; publication Sept. 13, 2001),
O'Malley (US 2004/0250236 Al; publication Dec. 9, 2004), and Greer (US
2006/0085263 Al; publication Apr. 20, 2006).
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Appeal2014-009076
Application 12/224,506
Claim 14--58, 61, 66, 69, and 70 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gilmour, O'Malley, Greer, and Roberts (US
6,895,387 Bl; issued May 17, 2005).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
conclusion that the Examiner erred in finding Gilmour teaches "at a service
provider providing network access to the communication apparatus:
obtaining profile information from a profile database maintained by the
service provider providing network access to the communication
apparatus," as recited in independent claim 1 (emphasis added). 1
The Examiner initially cites Gilmour's page 3, lines 8-11 for teaching
the disputed claim limitation, but does not specifically map "maintained by
the service provider providing network access to the communication
apparatus." See Ans. 3. In response to Appellants' arguments, the Examiner
continues to cite Gilmour' s page 3, lines 8-11, but still does not explain how
Gilmour teaches the above limitation. See Ans. 13-14.
We disagree with the Examiner. The Examiner maps the claimed
"service provider providing network access to the communication
apparatus" to Gilmour's Internet Service Provider's computer. See Ans. 14;
Gilmour 3 :2-3 ("a computer user connected to the Internet through an
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Appeal2014-009076
Application 12/224,506
Internet Service Provider's computer"). The Examiner maps the claimed
profile database to Gilmour's information database. See Ans. 13-14.
We have reviewed the cited Gilmour portions, and they do not
describe "a profile database maintained by the service provider providing
network access to the communication apparatus," as required by the claim.
Appellants point to Gilmour's Figure 2, which is the only "block diagram
illustrating an embodiment of the invention." Gilmour 6:21; see also App.
Br. 13; Reply Br. 6. Gilmour's Figure 2 shows three databases, and
Interfusion.Net-not the claimed "service provider providing network
access to the communication apparatus"-maintains all three databases. See
Gilmour Fig. 2; see also App. Br. 13; Reply Br. 6.
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 1, and corresponding dependent
claims 2-14 and 61.
Each of independent claims 15, 30, 31, 45, 69, and 70 recites a claim
limitation that is substantively similar to the disputed limitation of claim 1.
See claims 15, 30, 31, 45, 69, and 70. Therefore, for similar reasons, we do
not sustain the Examiner's rejection of independent 15, 30, 31, 45, 69, and
70, and corresponding dependent claims 16-29, 32--44, 46-58, and 66.
DECISION
We reverse the Examiner's decision rejecting claims 1-58, 61, 66, 69,
and 70.
REVERSED
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