Ex Parte Prakah-Asante et al

Patent Trial and Appeal Board

Aug 31, 2017

13444248 (P.T.A.B. Aug. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/444,248 04/11/2012 Kwaku O. Prakah-Asante 83220355 9876
28395 7590 09/05/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER MILLER, ALAN S
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KWAKU O. PRAKAH-ASANTE,
PERRY ROBINSON MACNEILLE, and
GARY STEVEN STRUMOLO
Appeal 2016-001150
Application 13/444,248
Technology Center 3600
Before CAROLYN D. THOMAS, JON M. JURGOVAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2016-001150
Application 13/444,248
STATEMENT OF THE CASE
This is a decision on Appellants’ Request for Rehearing. Appellants’
Request for Rehearing is filed under 37 C.F.R. § 41.521 requesting that we
reconsider our Decision of June 13, 2017,2 wherein we affirmed the
Examiner’s rejection of claims 9, 11—13, and 15—22. We have reconsidered
our Decision in light of Appellants’ comments in the request, and we have
found no error in the result reached. We, therefore, decline to change the
result of the Decision.
Exemplary Claim
The claims are directed to advertisement message coordination. Spec.
Title. Exemplary claim 9 under appeal reads as follows:
9. A computer-implemented method comprising:
receiving at least a proximity parameter, a driver-
workload parameter, and an advertisement optimization
parameter at an advertisement processing server;
determining, via the server, an advertisement having a
delivery value above a threshold value from a plurality of
advertisements, the delivery value for each advertisement based
at least in part on the received proximity parameter, workload
parameter, and advertisement optimization parameter varying an
advertisement monetary value based on driver responsiveness to
previous advertisements; and
delivering the selected advertisement to a vehicle for
driver-delivery.
App. Br. (Appendix 2).
1 “The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board.” 37 C.F.R.
§ 41.52(a)(1).
2 Appellants’ rehearing requests indicates our decision was from September
12, 2016. (Request 1.) We assume this to be a typographical error.
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Application 13/444,248
Appellants ’ Contentions
1. Appellants contend the Board erred in the Decision because
As skilled artisans would understand, it has long been a paradigm
of digital advertising that an advertiser pay one price for the
presentation of an advertisement and a second price if a user
actually responds (i.e., a “click through”) to an advertisement. .
. . An advertiser who is offering to pay based on user response
would have little interest in paying “based on previous user
responses” as the Board suggests, because there is no guarantee
that the user would respond to a present advertisement. So,
essentially, in the scenario proposed by the Board and the
Examiner, the advertiser is allegedly offering to pay a price based
on something the user already did, which has no actual impact
on what the user will presently do ... . Under this model, which
is the commonly accepted advertising model, the teachings of
Barnes plainly relate to an advertiser offering payment for either
transmission to the user or to have the user respond to the present
advertisement. The person selecting the advertisement will have
to decide, for example, whether the lower cost typically
associated with presenting an advertisement is or is not worth the
risk of obtaining nothing if the user does not respond or a
typically much higher value if the user does respond.
(Request 3.)
2. Appellants further contend:
In paragraph [0238], Barnes literally, expressly, and plainly
states “the advertisements have an associated transmission value
that determines how much the advertiser is willins to pay to
have the advertisement transmitted or to have the user respond
to THE advertisementThis teaching does not say “the
transmission value is based on whether or not the user has
previously responded to other advertisements.” This teaching
literally states that the “response” in question is a value
associated with a response to “the” advertisement. As in, the
advertisement currently transmitted.
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Appeal 2016-001150
Application 13/444,248
(Request 3—4.)
3. Appellants also contend:
While the December 2016 Guidance was not available to the
Examiner or Applicant at the time of previous filing of any
previously presented argument on behalf of either party, the
Guidance is instructive in the matter at hand, and Applicant
should not be forced to file an RCE just to point out how the
Guidance demonstrates the error in the rejection and affirmation.
(Request 5.)
ANALYSIS
First Contention
We are unpersuaded by Appellants’ first contention that we
overlooked “one of the most common paradigms in digital advertising.”
(Request 2.). Appellants argue skilled artisans would understand it has long
been a paradigm in digital advertising to pay a first price for presentation of
an ad, and to pay a second price if the user actually responds. This assertion,
however, is supported by no evidence. As such, Appellants’ assertions
amount only to unsupported attorney argument. In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the
place of evidence.”).
Appellants further argue an advertiser who is offering to pay based on
user response would have little interest in paying “based on previous user
responses” as the Board suggests, because there is no guarantee that the user
would respond to a present advertisement. This argument relies on
speculation and not evidence. Moreover, it does not explain why prior
responses to an advertisement cannot be considered by an advertiser as being
indicative of a higher likelihood of response to future advertisements, and
therefore may command a different value based on an increased probability
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Application 13/444,248
of response. Accordingly, we are not persuaded by Appellants’ first
contention.
Second Contention
A request for reconsideration must “state with particularity the points
believed to have been misapprehended or overlooked by the Board.” 37
C.F.R. § 41.52(a)(1). Appellants’ second contention merely reiterates their
previous arguments—arguments we considered and found unpersuasive.
(iCompare Request 3^4 with App. Br. 5—6.) Nevertheless, we provide the
following additional discussion for emphasis.
Appellants’ place great emphasis on the statement in Barnes that “the
advertisements have an associated transmission value that determines how
much the advertiser is willing to pay to have the advertisement transmitted
or to have the user respond to the advertisement.” They argue the statement
demonstrates Barnes discloses basing the transmission value on a response
to the present advertisement. Appellants still do not explain, however, how
the transmission value for an advertisement would be determined after the
advertisement is presented to the user, if the transmission value is used to
select the advertisement prior to it being transmitted.
Barnes discloses the transmission value is determined based on
responses. Barnes 1238 (“transmission values may be different for different
. . . responses . . . .”). Barnes does not expressly state whether the
“responses” are prior responses or present responses. Given, however, that
the transmission value is determined prior to transmitting the advertisement,
and the transmission value determines how much an advertiser will pay to
have the advertisement transmitted, a person of ordinary skill in the art
would understand the “responses” used in setting the transmission value
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Application 13/444,248
would include prior responses. Accordingly, we are not persuaded by
Appellants’ second contention.
Third Contention
Appellants’ third contention is not persuasive because, as we stated in
the Decision, our inquiry is grounded in binding precedent, namely the two-
step test set forth by the Supreme Court in Alice Corp. Pty Ltd. v. CLS Bank
Inti, 134 S. Ct. 2347 (2014). The Guidance, whether issued in 2014 or
2016, does not carry the force of law, Enzo Biochem, Inc. v. Gen-Probe Inc.,
323 F.3d 956, 964 (Fed. Cir. 2002), and we must ensure we follow binding
precedent in evaluating whether the Examiner erred in rejecting the claims
as lacking patent-eligibility. Our decision applied the two-step inquiry
required by Alice, and Appellants’ do not point to any aspect of the Alice
analysis that misapprehended or overlooked Appellants’ prior arguments. In
addition, and as we noted in the Decision, even if the Examiner’s analysis is
not consistent with the Guidance, that inconsistency is not of itself
dispositive of Examiner error. Accordingly, we are not persuaded that the
non-availability of the December 2016 Guidance at the time the Appeal was
briefed is sufficient reason to reconsider our Decision on this issue.
Summary
Appellants have not persuaded us we misapprehended the disclosure
of Barnes in the Decision. Nor are we persuaded Appellants were not given
a fair opportunity to present arguments with respect rejection made under 35
U.S.C. § 101.
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Appeal 2016-001150
Application 13/444,248
DECISION ON REQUEST
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing to the extent of reconsidering our decision, but we deny
Appellants’ request with respect to making any other change thereto.
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)(l)(iv).
REQUEST FOR REHEARING DENIED
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