Ex Parte Nyhan et al

Patent Trial and Appeal Board

Oct 27, 2016

13554661 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/554,661 07/20/2012
23460 7590 10/31/2016
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Nicholas W. Nyhan
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.
275840 2644
EXAMINER
BOVEJA, NAMRATA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICHOLAS W. NYHAN and RONIT A VIV
Appeal 2014-0077 66
Application 13/554,661
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, 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 21-34. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ). Appellants appeared for oral hearing on October 6,
2016.
We REVERSE.
Claim 21 is illustrative:
21. A method for measuring, through on-line surveys,
effectiveness of advertisements displayed upon a computer for
viewing by a user, the method comprising the steps of:
Appeal2014-007766
Application 13/554,661
rece1vmg, by a user computer, an on-line advertisement,
issued by an advertising server, including a code embedded
within executable instructions;
executing, by the user computer, the on-line
advertisement including the code;
generating, by a server separate and distinct from the
advertising server, an indicator identifying an instance of the
on-line advertisement being executed on the user computer;
storing the indicator within a repository, the indicator
providing information associated with the on-line advertisement
executed on the user computer;
administering, by an on-line survey provider, a survey
relating to the on-line advertisement; and
evaluating responses to the survey in accordance with the
indicator within the repository of previous user exposure to the
on-line advertisement indicated by contents of the repository,
the indicator being used during the evaluating to distinguish
exposed group member responses to the survey from control
group member responses.
Appellants appeal the following rejections:
1. Claims 28-34 under 35 U.S.C. § 112; first paragraph; as failing to
comply with the enablement requirement.
2. Claims 28-34 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 Appellants regard as the invention.
3. Claims 21-34 under 35 U.S.C. § 103(a) as unpatentable over Goldhaber
(US 5,794,210, iss. Aug. 11, 1998) and Official Notice.
ISSUE
Did the Examiner err in rejecting the claims under 35 U.S.C. § 112,
first paragraph, because the Examiner failed to establish that a person of
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Application 13/554,661
ordinary skill in the art could not make or use the invention without undue
experimentation?
Did the Examiner err in rejecting the claims under 35 U.S.C. § 112,
second paragraph, because it is clear how a computer readable medium can
be executed by three different entities?
Did the Examiner err in rejecting the claims because the Examiner did
not establish a reason to modify the method of Goldhaber so that it includes
evaluating responses to a survey in accordance with an indicator that
distinguishes exposed group member responses to the survey from control
group member responses?
ANALYSIS
Enablement
When rejecting a claim for lack of enab1ement, "the [United States
Patent and Trademark Office] bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of protection
provided by that claim is not adequately enabled by the description of the
invention provided in the specification of the application." In re Wright, 999
F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220,
223-24 (CCPA 1971)).
The test for cornp1iance with the enablement requirement is whether
the disclosure, as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Some
experimentation, even a considerable amount, is not "undue" it: e.g., it is
merely routine, or if the specification provides a reasonable amount of
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Application 13/554,661
guidance as to the direction in which the experimentation should proceed.
Id. (citing Ex parte Jackson, 217 USPQ 804, 807 (BP AI 1982) ). The "undue
experimentation" analysis involves the consideration of several factors,
including: ( 1) the quantity of experimentation; (2) the amount of direction or
guidance presented; (3) the presence or absence of working examples; (4)
the nature of the invention; ( 5) the state of the prior art; ( 6) the relative skill
of those in the art; (7) the predictability or unpredictability of the art; and (8)
the breadth of the claims. Wands, 858 F.2d at 737.
The Examiner argues that there is no support for a computer-readable
medium and thus the claims are not enabled by the Specification (Final
Act 3). We note that the Examiner's reasoning appears to be directed to
whether the Specification includes a written description of the claimed
invention rather than whether the claims are enabled. However, in the
rejection, the Examiner clearly states that the claims fail to comply with the
enab1ement requirement (Final Act 2; Ans. 2). As such, we treat this
rejection as one made under the enablement requirement of 35 U.S.C. § 112,
first paragraph. In making this rejection, the Examiner fails to address
whether a person of ordinary skill in the art at the time of the invention
would have been able to make and use the invention without undue
experimentation. Therefore, the rejection cannot be sustained.
Indefiniteness
The Examiner argues that it is unclear how a single computer-readable
medium is being executed by the user computer, the server and the
advertising server (Final Act. 4). We agree with the Appellants that the
claims "a computer readable medium" covers multiple storage entities and
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Application 13/554,661
those entitles can contain the instructions for multiple machines (Appeal
Br. 6). In addition, we note that a single computer-readable storage medium
can be coupled successively to multiple machines, i.e., the advertising
server, the user computer, and the server. Therefore, we will not sustain this
rejection.
Obviousness
The Appellants argue that there is no reason to modify the method of
Goldhaber. We agree.
The Examiner found that Goldhaber discloses the invention except
that Goldhaber does not disclose that responses from a control group are
evaluated (Final Act. 7-9). The Examiner takes Official Notice that it is old
and well known to maintain a control group to which the exposed group may
be compared (Final Act. 9). The Examiner concludes that it would have
been obvious to modify the method of Goldhaber to evaluate responses from
a control group to provide a baseline to which the test group responses may
be compared (Final Act. 10).
We find that Goldhaber discloses an attention brokerage server that
delivers ads to consumers (col. 15, 11. 48-50). A consumer can click on an
ad and have that ad presented (col. 16, 11. 6-10). The advertisement display
may ask the consumer questions or otherwise require consumer interaction
to ensure that the consumer paid attention to the ad and based on
determining that the consumer did pay attention to the ad, an amount of
digital currency may be deposited in the consumer's account (col. 16, 11. 10-
1 7). As such, the objective of Goldhaber is to determine whether the
consumer paid attention to the ad. It is not clear from the rejection of the
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Application 13/554,661
Examiner why a person of ordinary skill in the art would include a control
group in the Goldhaber method. Goldhaber is not comparing the actions of
one group in relation to a control group but instead is determining whether
those consumers that are exposed to the ad, pay attention to the ad.
Therefore, although it may be true that it was known to include a control
group to distinguish two sets of users, it is not clear how such a control
group would be utilized in the Goldhaber method. In this regard, as the
objective in Goldhaber is to determine if a consumer paid attention to an ad
and to reward those that do pay attention, it is not seen how one executing
the Goldhaber method would seek to provide a baseline to which the test
group may be compared. The consumers are all exposed to the ad in
Goldhaber and in accordance with a determination of whether they paid
attention, paid compensation.
As the Examiner has not established a reason to modify Goldhaber in
accordance with the Official Notice taken, we will not sustain this rejection.
DECISION
The decision of the Examiner is reversed.
ORDER
REVERSED
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