Ex Parte Subramanian et al

Board of Patent Appeals and Interferences

Sep 22, 2010

10001772 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/001,772 10/31/2001 Anand Subramanian 03485/100H799-US1 4306
7278 7590 09/22/2010
DARBY & DARBY P.C.
P.O. BOX 770
Church Street Station
New York, NY 10008-0770
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
09/22/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANAND SUBRAMANIAN,
JEREMY STERNS, and
SHANTHINI RAJENDRAM
____________

Appeal 2010-002280
Application 10/001,772
Technology Center 3600
____________

Before HUBERT C. LORIN, JEAN R. HOMERE, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1
An oral hearing was held on Sep. 14, 2010.

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

STATEMENT OF THE CASE
Anand Subramanian, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 15, 16, 21, 22, and 27-89. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.2

THE INVENTION
The invention relates “generally to providing content, services and
advertising about services by means of the Internet and, more particularly, to
bringing to customers various services, content, advertising about services
and affiliate links that are automatically determined to be relevant to the
customer’s current interest on the Internet.” Specification 1:17 -2:2.
Claim 15, reproduced below, is illustrative of the subject matter on
appeal.
15. A system for delivering ads to a user viewing content
operating a station connected to a distributed computer network,
comprising:
an ad server which maintains the ads for the user at the station
across the distributed computer network, the user station allowing the
user to retrieve information containing content;
a data store containing a set of relevancy rules associated with
each ad, the rules being operable to indicate a level of relevancy of the
ad to the content of the information retrieved; and

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Aug. 5, 2009) and Reply Brief (“Reply Br.,” filed Oct. 2, 2009),
and the Examiner’s Answer (“Answer,” mailed Aug. 27, 2009).
Appeal 2010-002280
Application 10/001,772
3
a match maker configured to, in response to the submission of a
URL by the user at the operating station, access the content retrieved
by the user, extract the content according to extracting rules, parse the
content of the information into objects, target an ad from the server to
the content by applying the relevancy rules in the data store to the
objects, free of information about the user, and directly send the
targeted ad to the station for display with the content.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Emens
Herz
US 7,076,443
US 5,835,087
Jul. 11, 2006
Nov. 10, 1998
The following rejections are before us for review:
1. Claims 15, 16, 21, 22, 27-89 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Emens and Herz.

ISSUES
The major issue is whether the prior art combination discloses or
would lead one of ordinary skill in the art to a system and method for
delivering ads to a user viewing content as claimed.

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer
(Answer 3-4) and add the following.
There is no dispute that Emens discloses product icons for display
with search results. See col. 7, ll. 11-31. There is also no dispute that, when
one of the Emen’s displayed product icons are selected, a user is routed to a
product presentation. Col. 7, ll. 28-31.
Appeal 2010-002280
Application 10/001,772
4
The claims call for targeted advertisements for display with content.
The claims do not specify a form for the advertisements. The Specification
indicates that the advertisements may be in the form of a hyperlink
(Specification 21:19-20 discussing Fig. 7) and/or an icon (Specification
34:16-20, discussing Fig. 16).

ANALYSIS
According to the Appellants, “the Emens system is incapable of
displaying an advertisement and content at the same time.” Reply Br. 2
(emphasis original). See also App. Br. 7 (“Point 1”). The Appellants
acknowledge that Emens discloses displaying a product icon and content
(i.e., search results) but “Emens clearly distinguishes the icon or link for
requesting one or more advertisements from the advertisement that is
provided after the user selects the icon or link” (App. Br. 7).
We do not find the Appellants’ argument persuasive. The claims do
not limit the form of the advertisement. The advertisement as claimed
covers icons. See the Specification. Thus the only difference between the
claimed subject matter and that of Emens is the content of the icon.
Assuming that the content of Emens product icon is not for the purpose of
advertising, the difference between an icon that advertises (as would be the
case for the claimed subject matter) and an icon that that is indicative of a
product (Emens) is a distinction over the content of the information on the
icon, that is, descriptive material. Patentable weight need not be given to
descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate (here the system). See In
re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994); In re Ngai, 367 F.3d
Appeal 2010-002280
Application 10/001,772
5
1336, 1338 (Fed. Cir. 2004). In that regard, the Appellants have not come
forward with evidence sufficient to show that the structure of the system is
functionally affected by an icon having an advertising purpose as opposed to
identifying a product (as in Emens). Absent such evidence, it is reasonable
to conclude that the claim limitation of displaying an advertisement, in the
form of an icon, is descriptive and not functionally related to any structure of
the claimed system and as such falls under the category of patentably
inconsequential subject matter. See Ex parte Curry, 84 USPQ2d 1272, 1275
(BPAI 2005) (informative) (“Common situations involving nonfunctional
descriptive material are: - a computer-readable storage medium that differs
from the prior art solely with respect to nonfunctional descriptive material,
such as music or a literary work, encoded on the medium, - a computer that
differs from the prior art solely with respect to nonfunctional descriptive
material that cannot alter how the machine functions (i.e., the descriptive
material does not reconfigure the computer), or - a process that differs from
the prior art only with respect to nonfunctional descriptive material that
cannot alter how the process steps are to be performed to achieve the utility
of the invention.
Thus, if the prior art suggests storing a song on a disk, merely
choosing a particular song to store on the disk would be presumed to be well
within the level of ordinary skill in the art at the time the invention was
made. The difference between the prior art and the claimed invention is
simply a rearrangement of nonfunctional descriptive material.).” See also
Ex parte Mathias, 84 USPQ2d 1276, 1278 (BPAI 2005) (informative).
Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious. In re Ngai, 367 F.3d at 1339. Cf.
Appeal 2010-002280
Application 10/001,772
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In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive
material is not functionally related to the substrate, the descriptive material
will not distinguish the invention from the prior art in terms of patentability).
The Appellants also challenge the relevance of Herz in showing the
obviousness of the claimed invention. App. Br. 10-12 (“Point 2”).
According to the Appellants, the cited art combination would not suggest
“URL submissions for content.” App. Br. 12. We understand the Examiner
to have applied Herz to show accessing content via a URL. But Emens
nevertheless teaches searching over the Internet. See col. 4, ll. 54-67. To
one of ordinary skill in the art this would suggest submitting a URL,
otherwise one would be unable to retrieve search results over the Internet.
Accordingly, we disagree with the Appellants that one of ordinary skill in
the art having these references in hand would not be led to a system whereby
a user retrieves content via submission of a URL.
The Appellants also challenge the rejection on the grounds that the
prior art combination fails to lead one to deliver advertisements to a user
viewing content as claimed. App. Br. 12-13 (“Point 3”). This challenge is
based on the same argument discussed earlier with regard to the argument
that the Emens system is incapable of displaying an advertisement and
content at the same time. For the same reasons, we find the argument
unpersuasive.
We have reviewed the arguments but do not find that they overcome
the prima facie case of obviousness for the subject matter of claims 15, 16,
21, 22, 27-35, and 37-89 over Emens and Herz.
Re claim 36, it further limits the system of claim 1 such that the
extracting rules enable a classification of content according to specific type
Appeal 2010-002280
Application 10/001,772
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of channel (claim 35) related to past consumption by users as a consequence
of ads that were received and responded to by them. The Examiner has
argued that this claimed subject matter was old and well known. Answer 4.
The Appellants seasonably requested evidence in support thereof while
casting reasonable doubt on the conventionality of providing a classifying
channel related to past consumption by users as a consequence of ads that
were received and responded to by them. See e.g., Remarks filed Apr. 27,
2009. No evidence has been provided however. Nevertheless, no apparent
reasoning with logical underpinning has been provided (except that
classifying information based on past consumption was well known) to
explain how one of ordinary skill in the art would have reached the claimed
invention given this allegedly well known knowledge and that the cited prior
art would lead one to display results and associated product icons.
Accordingly, we do not find that a prima facie case of obviousness has been
made out for claim 36 in the first instance.

DECISION
The decision of the Examiner to reject claims 15, 16, 21, 22, 27-35,
and 37- 89 under 35 U.S.C. §103(a) as being unpatentable over Emens and
Herz is affirmed. The rejection of claim 36 under 35 U.S.C. §103(a) as
being unpatentable over Emens and Herz is reversed.
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).

AFFIRMED-IN-PART

mev

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