Ex Parte Shapiro

Patent Trial and Appeal Board

May 2, 2016

12108892 (P.T.A.B. May. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/108,892 04/24/2008
72058 7590 05/25/2016
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
John Shapiro
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.
58083/354549 (B702) 2440
EXAMINER
ONAT,UMUT
ART UNIT PAPER NUMBER
2194
NOTIFICATION DATE DELIVERY MODE
05/25/2016 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):
ipefiling@kilpatrickstockton.com
j lhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN SHAPIRO
Appeal2014-008538
Application 12/108,892
Technology Center 2100
Before THU A. DANG, ELENI MANTIS MERCADER, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 20, 21, 24, 25, 27, 29--37, and 39--47, which constitute all of the
claims pending in this application. Claims 1-19, 22, 23, 26, 28, and 38 have
been cancelled. App. Br. 22-27 (Claims App'x). We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellant identifies Adobe Systems Incorporated as the real party in
interest. App. Br. 3.
Appeal2014-008538
Application 12/108,892
THE INVENTION
The claimed invention is directed to methods, notification server and
non-transitory storage medium for receiving inputs regarding a first and a
second notifications and determining an analytic evaluating the first
notification in reference to the second notification based on those inputs.
Spec. iii! 125-133.
Claim 20, reproduced below, is illustrative of the claimed subject
matter:
20. A computer-implemented method, comprising:
receiving, by a notification server, a first plurality of
inputs for a first notification, wherein each of the first plurality
of inputs indicates a respective amount of interaction with the
first notification by a respective client receiving the first
notification responsive to the notification server delivering the
first notification to the respective client receiving the first
notification;
receiving, by the notification server, a second plurality of
inputs for a second notification, wherein each of the second
plurality of inputs indicates a respective amount of interaction
with the second notification by a respective client receiving the
second notification responsive to the notification server
delivering the second notification to the respective client
receiving the second notification; and
determining, by the notification server, an analytic
evaluating the first notification in reference to the second
notification, wherein the analytic is determined using the first
plurality of inputs and the second plurality of inputs.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Marsh et al. us 5,848,397 Dec. 8, 1998
Lai et al. US 2005/0219061 Al Oct. 6, 2005
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Application 12/108,892
Nicholas et al.
Amidon et al.
US 2006/0026067 Al Feb.2,2006
US 2008/0307066 Al Dec. 11, 2008
REJECTIONS
Claims 20, 21, 24, 25, 27, 30, 31, 33, 35-37, 41, 42, and 44-47 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Marsh. Final Act.
3-16.
Claims 29 and 39 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marsh in view of Nicholas. Final Act. 17-19.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marsh in view of Amidon. Final Act. 19-20.
Claims 34, 40, and 43 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Marsh in view of Lai. Final Act. 20-22.
ANALYSIS
\Ve have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we consider
all evidence presented and all arguments made by Appellant.
Group 1 (Claims 20, 27, 30, 33, 35, 36, 41, 42, and 44-46)
Appellant argues Marsh does not disclose (1) "using inputs for
notifications that indicate amounts of interaction" and evaluating the
notifications in reference to one another. App. Br. 8. Instead, Appellant
argues the Examiner erred in finding the setting of priorities to be the same
as the claimed analytics features because the priorities are assigned by the
server and not related to statistics about the advertisement. App. Br. 8-9.
Furthermore, Appellant argues comparing usage statistics from different
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Application 12/108,892
usage profiles is different than comparing notifications based on interactions
with the notifications as recited in the claim. App. Br. 10; see also Reply Br.
4. Appellant further argues that "[ n ]othing in Marsh discloses that the user
interactions are used for scheduling one advertisement before another
advertisement." Reply Br. 2.
The Examiner finds Marsh discloses an analytic "that both evaluates a
first advertisements in reference to a second advertisement ... and that is
determined using inputs for respective advertisements that indicate the
amounts of user interaction with the respective advertisements." Ans. 6.
Specifically, the Examiner finds Marsh discloses user log statistics that logs,
inter alia, user interactions with an advertisement. Final Act. 3. Marsh
further discloses using the user log in deciding which advertisements to
show. Final Act. 4--5.
We are not persuaded by Appellant's argument that the Examiner
erred. Marsh discloses an advertisement display scheduler that "includes the
ability to log statistics relating to the presentation of advertisements to
users." Marsh 4:30-32. The logged information includes "the number of
times a given advertisement has been presented[] and the period of time
between presentations and user interaction with an advertisement (e.g.,
'clicking' on the advertisement to receive additional information)." Marsh
4:32-36. Applying the broadest reasonable interpretation to "interaction,"
that information is a "plurality of inputs [that] indicates a respective amount
of interaction with the [respective] notification" as recited in claim 20.
We further find Marsh discloses determining "an analytic evaluating
the first notification in reference to the second notification" using the
plurality of inputs as recited in claim 20. Marsh discloses that the
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Application 12/108,892
advertisement distribution scheduler uses a user's "usage profile" in
determining whether to display a first advertisement or a second
advertisement. Marsh 15:54---65. That usage information in the user profile
includes the interaction information discussed above. Id. That interaction
information is then used to compare information about different
advertisements in determining which should be shown. See Marsh 16:33-
43. Specifically, Marsh discloses that it uses interaction information about
advertisements when scheduling advertisements close to the time of the
advertisement's expiry. Id.
Accordingly, we sustain the Examiner's rejection of claim 20, along
with the rejection of claims 35 and 41, which are argued on the same
grounds, and claims 20, 27, 30, 33, 36, 42, and 44--46, which are not argued
separately.
Group 2 (Claim 21)
Claim 21 recites the additional limitation that "the analytic describes a
relative order of importance between the first notification and the second
notification." App. Br. 22 (Claims App'x). Appellant argues that although
Marsh "discloses prioritizing advertisements based on their expiration date,
nothing in the cited portion of Marsh discloses applying any sort of priority
to advertisements using amounts of interaction with the advertisements."
App. Br. 12 (discussing Marsh 16:33--43).
The Examiner finds Marsh discloses an analytic that determines the
relative importance of the two notifications. Final Act. 5; Ans. 12-13.
Specifically, the Examiner finds the advertisement download scheduler
maximizers profits when advertisements are near expiry and uses "user
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interaction information contained in the statistics and log files" to prioritize
advertisements. Ans. 12-13.
Appellant has not persuaded us that the Examiner erred. As discussed
above for Group 1, Marsh discloses the advertisement download scheduler
using user log information, including interaction information, in determining
advertisement placement near an advertisement's expiry. See Marsh 16:33-
43. Applying the broadest reasonable interpretation to "relative order of
importance" as recited in claim 21, we agree with and adopt the Examiner's
findings that Marsh---especially the discussion in column 16 regarding
maximizing revenue---discloses the claimed limitation.
Accordingly, we sustain the Examiner's rejection of claim 21.
Group 3 (Claims 24, 3 7, and 42)
Claim 24 further requires using the analytic in determining how much
to charge the publishers of the respective notifications. App. Br. 23 (Claims
App'x). Appellant argues Marsh discloses that vendors are charged based
on the number of user interactions with an advertisement. According to
Appellant, that charging scheme is different from the claim language that
requires the charge to be based "on an analytic that evaluates the first
notification in reference to the second notification." App. Br. 13-14
(emphasis omitted). Additionally, Appellant argues that Marsh discloses
setting the rates based on priorities and priorities are not based on analytic
based on user interactions. Reply Br. 9-10.
The Examiner finds Marsh discloses using user log information
regarding advertisements is used to bill the publishers of the advertisements.
Final Act. 6 (citing Marsh 4:31-32, 4:37--40); Ans. 14--15. The Examiner
further finds Marsh discloses the use of priorities-which the Examiner
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Application 12/108,892
finds to be analogous to the claimed analytic-in billing publishers. Ans.
14.
Appellant has persuaded us that the Examiner erred in finding that
Marsh disclose the additional limitation of claim 24. Although Marsh
discloses that user log data-including inputs on user interactions-are used
for billing purposes (Marsh 4:30-39), there is no disclosure in the portions
of Marsh cited by the Examiner that an analytic that is based on a
comparison of user interactions with the first notification to user interactions
with a second notification is used in determining the amount to charge a
publisher.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 24, along with the rejections of claims 37 and
42, which are argued on the same grounds.
Group 4 (Claim 25)
Claim 25 recites apportioning a number of additional notifications
from the first and second publisher based on the analytic. Appellant argues
that although Marsh discloses apportioning advertisements based on
relative-user characteristics, it does not apportion advertisements based on
the claimed relative analytic of user interactions. App. Br. 13-14.
Appellant further argues that although Marsh discloses using statistics in
some manner, it does not disclose using them to apportion future
advertisements. Reply Br. 7. Appellant also argues that the disclosure of
apportionment based on demographic information is different than the
claimed use of user interaction information. Reply Br. 7-8.
The Examiner finds Marsh discloses apportionment of additional
advertisements based on analytics. Final Act. 6-7 (citing Marsh 15 :41--44 ).
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More specifically, the Examiner finds Marsh discloses using user
information, such as geographic or location information, to determine
priority and assign advertisements to specific users. Ans. 15-16. However,
the Examiner notes that the "user related information by itself does not
involve comparing advertisements." Ans. 16.
Based on the record before us, we agree with Appellant that the
Examiner erred. Although we agree with the Examiner that Marsh discloses
apportioning advertisements based on user information (Marsh 15:37--43), as
the Examiner noted, the cited sections of Marsh do not disclose basing the
apportionment on a relative comparison of advertisements. Therefore, we
do not agree with the Examiner's reliance on Marsh for expressly disclosing
basing the apportionment on the claimed analytic as recited in claim 25.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 25.
Group 5 (Claim 31)
Claim 31 recites that the inputs for the analytic comprises rankings of
the respective notifications. App. Br. 25 (Claims App'x). Appellant argues
that nothing in the cited sections of Marsh involve rankings of
advertisements. App. Br. 16. Instead, according to Appellant, Marsh merely
discloses using general demographic survey information that is not linked to
any specific notification. Id.
The Examiner finds that Marsh discloses rankings. Final Act. 9
(citing Marsh 2:14--23, 15:31-53). More specifically, "Marsh discloses the
users identifying their interests which in return are used for prioritizing the
advertisements." Ans. 17. This might include information such as a user
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liking football, which would lead football advertisements being ranked
higher than related basketball information. Id.
Appellant has persuaded us that the Examiner erred. Although we
agree with the Examiner that Marsh discloses rankings on interests, the cited
sections do not disclose rankings of notifications or the use of those rankings
in determining an analytic as recited in claim 31. Instead, Marsh discloses
using demographic information, such as New York City residents or college
students in Boston. See Marsh 15:31-53. However, the cited sections of
Marsh do not disclose using rankings of advertisements, let alone using them
to determine an analytic comparison of two different advertisements.
Accordingly, we are constrained on this record to reverse the
Examiner's rejection of claim 31.
Group 6 (Claim 47)
Claim 4 7 is an independent claim. Although similar to claim 20,
discussed above, claim 4 7 differs from claim 20 in that it recites that the
inputs "indicates a respective amount of attention directed to
the ... notification. App. Br. 31-32 (Claims App'x). Although grouped
separately, Appellant's arguments are substantially the same for claim 47 as
they were for claim 20. See App. Br. 17-18. Similarly, the Examiner's
findings are substantially the same. See Final Act. 15-16.
We agree with the Examiner that Marsh discloses logging the amount
of time between presenting an advertisement and a human interaction.
Marsh 4:30-39. We also agree with the Examiner that Marsh discloses
using the amount of interaction in assigning advertisements to be shown.
Marsh 16:33--43. However, Appellant has persuaded us that the Examiner
erred in finding Marsh explicitly discloses determining a relative analytic
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based on "a respective amount of attention directed to the [respective]
notification" as recited in claim 47. See App. Br. 31-32 (Claims App'x).
Accordingly, we are constrained on this record to reverse the Examiner's
rejection of claim 47.
Group 7 (Claim 32)
Claim 32 recites the additional limitation that the analytic is based on
decisions to block the respective publishers. App. Br. 25 (Claims App'x).
Appellant argues Amidon teaches providing advertisements based on
consumer preferences and the terms of the contract governing delivery.
App. Br. 19. That includes limitations based on the timing and delivery of
advertisements based on ad ratings or content flags. Id. However, Appellant
argues that is different than the claimed features of claim 32.
The Examiner finds "Marsh teaches determining an analytic based on
comparing first inputs associated with a first notification with a second
inputs associated with a second notification." Ans. 21; see also Final Act.
19. The Examiner further finds Amidon teaches using advertisement control
information, such as the TV Parental Guidelines System. Ans. 21-23; Final
Act. 19-20. The Examiner concludes that a person of ordinary skill in the
art would have been motivated to modify Marsh with the teachings of
Amidon. Final Act. 20; Ans. 22-24.
We are not persuaded by Appellant's arguments that the Examiner
erred. For the reasons discussed above for claim 20, Marsh teaches all of the
limitations of claim 20. Additionally, we agree with the Examiner, and
adopt the Examiner's findings, that Amidon teaches using decisions to block
ads, such as by user preferences (Amidon i-f 44) or the TV parental ratings
system (Amidon i-f 125). We further agree with the Examiner's conclusion
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that a modification of an old process (the method of claim 20 as taught by
Marsh) using a new source of data (decisions to block as taught by Amidon)
to be obvious. In KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007),
the Supreme Court held that "if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill." Id. at 417. "The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. at 416; see
also id. at 417 ("If a person of ordinary skill in the art can implement a
predictable variation, and would see the benefit of doing so, § 103 likely
bars its patentability."); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) ("It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable." (citations
omitted)). We do not find that the evidence shows changing the inputs to be
used in determining a relative analytic to be "uniquely challenging or
difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418).
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection of claim 32.
Group 8 (Claims 29, 34, 39, 40, and 43)
With respect to dependent claims 29, 34, 39, 40, and 43, Appellant
merely contends that because the additional references used in the rejections
of these claims (Nicholas and Lai) do not cure the deficiencies in claim 20,
the Examiner failed to make a prima facie case of obviousness for these
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claims. App. Br. 20-21. Because we determine there are no deficiencies
associated with claim 20 for the reasons discussed above, we sustain the
rejections of these claims.
DECISION
For the above reasons, we affirm the Examiner's rejection of claims
20, 21, 27, 29, 30, 32-36, and 39-46.
For the above reasons, we reverse the Examiner's rejection of claims
24, 25, 31, 37, 42, and 47 as anticipated. 2
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
2 Because it was not raised in the Final Action or the Answer, we have not
considered whether or not the claims are unpatentable based on 35 U.S.C.
§ 103(a) and KSR. Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See MPEP § 1213.02.
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