Prateek Srivastava et al.

Patent Trials and Appeals Board

Dec 20, 2019

13174992 - (D) (P.T.A.B. Dec. 20, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/174,992 07/01/2011 Prateek Srivastava 12729/749 (Y07100US00) 1773
149109 7590 12/20/2019
BGL/Excalibur
P.O. Box 10395
Chicago, IL 60610
EXAMINER
STOLTENBERG, DAVID J
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
12/20/2019 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PRATEEK SRIVASTAVA and KEIN PATEL
____________

Appeal 2018-006622
Application 13/174,992
Technology Center 3600
____________

Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
PHILLIP A. BENNETT, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Excalibur IP,
LLC. Appeal Br. 2.
Appeal 2018-006622
Application 13/174,992

2
The present invention relates generally to giving a user options for
including advertising as part of their content. See Abstr.
Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A computerized method for providing an advertisement
(“ad”) in user generated content, the method comprising:
providing a web interface through which a user can have
the ad included with the user generated content in an ad slot;
previewing a display of the user generated content along
with the ad slot on the web interface, wherein the ad slot is previewed
as part of the user generated content;
allowing, through the web interface, for the user to adjust
and move the ad slot relative to the user generated content;
receiving, from the user through the web interface,
attributes for the ad slot;
analyzing, with at least one processor, the attributes and
the user generated content in order to integrate the ad slot into the user
generated content based on the analysis; and
selecting, with the at least one processor, an
advertisement based on the analysis of the attributes and based on an
analysis of the user generated content, wherein the selected
advertisement is included in the ad slot that is part of the user
generated content.

Appellant appeals the following rejections:
R1. Claims 1–20 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act.
2–7.;
R2. Claims 1–10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stanbach, Jr. (US 6,449,657 B2, Sept. 10, 2002) and
Lucovsky (US 2007/0198340 A1, Aug. 23, 2007) in combination with
various other prior art. Final Act. 7–17.; and
R3. Claims 11–20 are rejected under 35 U.S.C. § 103(a) as being
Appeal 2018-006622
Application 13/174,992

3
unpatentable over Collison (US 2009/0192900 A1, July 30, 2009) and
Muthukrishnan (US 2010/0198694 A1, Aug. 5, 2010) in combination with
various other prior art. Final Act. 17–26.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with the framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). For example, concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity,
Appeal 2018-006622
Application 13/174,992

4
such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
Recently, the USPTO published revised guidance on the application
of 35 U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).
Under the Revised Guidance “Step 2A,” the office first looks to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. 84 Fed. Reg. at 56.

Appeal 2018-006622
Application 13/174,992

5
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 1, and similarly, system
claim 17 and non-transitory computer readable medium claim 11, the
Examiner determines that the claims are directed to “collecting user
generated content and advertisement attributes . . . and selecting an
advertisement for display” (Final Act. 3), which we conclude are
commercial interactions, which is a type of abstract idea under certain
methods of organizing human activity.
For instance, claim 1 recites at least the following limitations:
(1) “providing a web interface through which a user can have the ad
included,” (2) “previewing a display of the user generated content along
with the ad slot,” (3) “allowing . . . the user to adjust and move the ad slot,”
(4) “receiving . . . attributes for the ad slot,” (5) “analyzing . . . the attributes
and the user generated content,” and (6) “selecting . . . an advertisement
based on the analysis.”
Because the claims at least recite advertising activities, they recite
commercial transactions that, under the Guidance, fall under the category of
“certain methods of organizing human activity.” Thus, the claims recite an
abstract idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed
Cir. 2014) (holding that claim “describ[ing] only the abstract idea of
showing an advertisement before delivering free content” is patent
ineligible); In re Ferguson, 558 F.3d 1359, 1364 (Fed Cir. 2009) (holding
methods “directed to organizing business or legal relationships in the
structuring of a sales force (or marketing company)” to be ineligible).
Appeal 2018-006622
Application 13/174,992

6
Upon reviewing the Specification and the claim as a whole, it is
further clear that these limitations, under their broadest reasonable
interpretation, recite commercial interactions.
For example, the Specification discloses:
Online advertising may be an important source of revenue for
enterprises engaged in electronic commerce. Processes associated
with technologies such as Hypertext Markup Language (HTML) and
Hypertext Transfer Protocol (HTTP) enable a web page to be
configured to display advertisements. Advertisements may commonly
be found on many web sites. Web site publishers, such as news and
sports web sites, may provide space for advertisements. The
publishers of these web sites may sell advertising space to advertisers
to defray the costs associated with operating the web sites as well as
to obtain additional revenue. However, web site publishers are only a
part of the information provided on the Internet. As the Internet has
grown, the number of web sites has dramatically increased. Internet
users now supply a significant amount of content displayed and
transferred over the web including emails, images, and videos.
Improved advertising may provide a way for users to monetize their
content.
Spec. ¶ 1.
By way of introduction, a system and method may monetize user
generated content. A user can have options for including advertising
as part of their content. For example, the user may select a location,
size, and shape of an advertisement for display as part of an image.
An advertisement matching those attributes may be included as
part of the image. The user may receive payment for displaying ads
with their user generated content.
Id. ¶ 15. In other words, the Appellant’s Specification describes how users
can have the option for including advertising as part of their content, and
perhaps even receiving payment for displaying such ads.
Here, Appellant does not directly challenge whether the claims recite
an abstract idea, but instead make arguments more directly related to
Appeal 2018-006622
Application 13/174,992

7
integrating the judicial exception into a practical application and whether
specific limitations are not well-understood, routine, conventional activity in
the field. Such arguments are addressed below.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 1 recites an abstract idea, which we conclude are
“commercial interactions” which fall under certain methods of organizing
human activity.
Step 2A—Prong 2 (integration into Practical Application) 2
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
We discern no additional element (or combination of elements)
recited in Appellant’s representative claim 1 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”). For example, Appellant’s claimed additional elements
(e.g., “advertisement provider,” “web server,” “interface,” “receiver,”
“selector,” “embedder,” and “monitor”) (Claim 17) do not: (1) improve the
functioning of a computer or other technology; (2) are not applied with any
particular machine (except for a generic computer); (3) do not effect a
transformation of a particular article to a different state; and (4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

Appeal 2018-006622
Application 13/174,992

8
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellant contends that in the present claims “[t]he transmission of
data and functioning of the graphical user interface is a technological
improvement of computer functions,” as the claims in McRO. Appeal Br. 6.
Appellant further contends that “[j]ust as in Enfish, the instant claims are
directed to an improvement in the functioning of a computer. . . . The
technical solution includes a graphical user interface rendering visual
elements for a web page.” Id. 7–8. We disagree with Appellant.
For example, the claims at issue in Enfish were directed to a specific
type of data structure, i.e., a self-referential table for a computer database,
designed to improve the way a computer carries out its basic functions of
storing and retrieving data. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335–36 (Fed. Cir. 2016). In rejecting a § 101 challenge, the court in
Enfish held that “the plain focus of the claims is on an improvement to
computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity.” Id. at 1336.
Here, Appellant does not point to anything in the claim that resembles
the inventive self-referential data structure at issue in Enfish. Appellant also
does not direct our attention to anything in the Specification to indicate that
the invention provides an improvement in the computer’s technical
functionality.
Instead, the claimed web interface improves economic tasks, i.e.,
providing a way for users to monetize their content. See Spec. ¶ 1. That is,
here the arguably innovative technique of the appealed claims is inextricably
a part of the abstract idea of “collecting user generated content and
Appeal 2018-006622
Application 13/174,992

9
advertisement attributes . . . and selecting an advertisement for display,” i.e.,
commercial interactions. Moreover, nothing in the claims, understood in
light of the Specification, requires anything other than an off-the-shelf,
conventional computer used for collecting and processing/analyzing various
information/data. See Spec. ¶ 22. Therefore, unlike Enfish, the claims are
directed not to improvement in computer capabilities, but to the results of
applying an abstract idea.
Additionally, in McRO, the Federal Circuit concluded that the claim,
when considered as a whole, was directed to a “technological improvement
over the existing, manual 3-D animation techniques” through the “use of
limited rules specifically designed to achieve an improved technological
result in conventional industry practice.” McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Specifically, the
Federal Circuit found that the claimed rules allow computers to produce
accurate and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators; and
the rules are limiting because they define morph weight sets as a function of
phoneme sub-sequences. Id. at 1313 (citations omitted).
In contrast, here, Appellant has not identified any analogous
improvement attributable to the claimed invention. Although providing a
means for monetizing user generated content may improve a business and/or
economic process, it does not achieve an improved technological result.
Thus, we see no parallel between the limiting rules described in McRO and
the results-based rules recited in Appellant’s claims.
Appellant also contend that “[t]he claims at issue thus provide a
technical solution to a problem that is unique to the Internet . . . [and] are
Appeal 2018-006622
Application 13/174,992

10
akin to the patent eligible claims in DDR Holdings.” Appeal Br. 9. We
disagree with Appellant.
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259
(Fed. Cir. 2014), the subject claim was held patent-eligible because it
encompassed “an inventive concept” for resolving a “particular Internet-
centric problem.” Specifically, the invention in DDR Holdings allowed a
host merchant website to maintain the look and feel of the host website when
hyperlinking to outside merchants’ product pages, i.e., “specify how
interactions with the Internet are manipulated to yield a desired result.”
DDR Holdings, 773 F.3d at 1257–58.
In contrast, we find Appellant’s computerized method (claim 1) does
not provide a solution “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
DDR, 773 F.3d at 1257. Because we find all claims on appeal merely use a
generic computer or processor as a tool which is used in the way a computer
normally functions, we conclude that the claims fail to impart any
discernible improvement upon the computer or processor; nor do
Appellant’s claims solve “a challenge particular to the Internet” as
considered by the court in DDR, 773 F.3d at 1256–57. Here, Appellant’s
invention merely allows users to monetize their online content by attaching
advertisements thereto, just like web site publishers. However, coupling of
advertisements with content was conventionally done with paper
publications, such as newspapers and magazines. See Ans. 4–5.
Appellant is reminded that “relying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Appeal 2018-006622
Application 13/174,992

11
Cir. 2015) (citing Alice, 134 S. Ct. at 2359 (“use of a computer to create
electronic records, track multiple transactions, and issue simultaneous
instructions” is not an inventive concept)). As recognized by the Supreme
Court, “the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice, 134 S. Ct. at
2358–59 (concluding claims “simply instruct[ing] the practitioner to
implement the abstract idea of intermediated settlement on a generic
computer” not patent eligible). Furthermore, data management has been a
function of computers for as long as computers have existed and will not
transform an abstract concept into a patentable invention. See, e.g., Alice,
134 S. Ct. at 2359.
For at least the reason noted supra, we determine that claim 1
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, representative claim 1 is directed to the
aforementioned abstract idea.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field,
which is indicative that an inventive concept may be present; or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
Appeal 2018-006622
Application 13/174,992

12
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.
See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d). We
analyze the claim elements, that are well-understood, routine, conventional,
“as an ordered combination,” in addition to any analysis of those claim
elements individually. See Alice, 573 U.S. at 217-18, 221-22 (“we consider
the elements of each claim both individually and ‘as an ordered
combination’” to determine whether the claim includes “significantly more”
than the ineligible concept) (quoting Mayo, 566 U.S. at 78-79).
We find no element or combination of elements recited in Appellant’s
claim 1 that contains any “inventive concept” or adds anything “significantly
more” to transform the abstract concept into a patent-eligible application.
Furthermore, Appellant has not adequately explained how claim 1 is
performed such that it is not a routine and conventional function of a generic
computer. The claims at issue do not require any nonconventional computer
or display components, or even a “non-conventional and non-generic
arrangement of known, conventional pieces,” but merely call for
performance of the claimed providing a web interface and previewing a
display of content with the ad slot “on a set of generic computer
components.” Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1349–52 (Fed. Cir. 2016). Thus, considering the features of
the claims, individually and as an ordered combination, we find there are no
additional elements that transform the nature of the claim into a patent-
eligible application. Alice, 134 S. Ct. at 2355.
The Examiner determines, and we agree, that “it is clear from
[Appellant’s] [S]pecification that the elements and modules in the claims
Appeal 2018-006622
Application 13/174,992

13
require no more than a generic computer (e.g., a general-purpose computer
device) to perform generic computer functions . . . that are well-understood,
routine and conventional activities.” Final Act. 5. The Examiner further
notes that “the claims and written description provide no evidence that the
instant invention includes a non-conventional and non-generic arrangement
of conventional pieces. Instead, generic and conventional computing
systems are disclosed.” Ans. 6.; see also Spec ¶ 24. Such an analysis is a
factual determination. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369
(Fed. Cir. 2018) (“Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination.”).
We find the Examiner’s noting the generic nature of the components
parts recited in the claims provides sufficient evidence of a generic computer
system used to implement the abstraction. See Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining
that “[o]ur law demands more” than claim language that “provides only a
result-oriented solution, with insufficient detail for how a computer
accomplishes it”).
Because Appellant’s independent claim 1 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” we sustain the Examiner’s rejection
of the claims 1–20 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter in light of Alice, its’ progeny, and the Revised Guidance.

Appeal 2018-006622
Application 13/174,992

14
Rejection under § 103(a)
We refer to, rely on, and adopt the Examiner’s findings and
conclusions set forth in the Answer. Our discussions here will be limited to
the following points of emphasis.

Claims 1–10 over at least Stanbach and Lucovsky
Appellant contends that “Stanbach provides no ability for a preview of
the ad slot with user generated content that can be adjusted/moved.” Appeal
Br. 12. Appellant further contends that “[t]he search results in Lucovsky are
not ad slots” (id.), and “it is not possible to move the search results in
Lucovsky relative to that email text because they are always separated. . . .
because Lucovsky illustrates a ‘user selected links’ section for the search
results and they are not placed along with the user generated content.” Id. at
13.
In response, the Examiner finds, and we agree, both Stanbach and
Lucovsky teach ad slots (see Final Act. 7–11 and Ans. 7), specifically
“Lucovsky discloses locations or positions within user created content
within which a user is able to insert an advertisement. . . . commonly
understood as an ad slot.” Ans. 7 (citing Lucovsky ¶ 46).
For example, Lucovsky discloses:
The user may decide to include one or more of the search results in
the email (act 405). The user may do so by simply selecting the
appropriate save link 550, which causes content creation component
235 to copy the corresponding search result into the email. . . . In
other implementations, content creation component 235 may allow the
user to control the placement of the results in the email, such as by
graphically dragging different results to different positions in the
email.
Appeal 2018-006622
Application 13/174,992

15
¶ 46.
In some implementations, content creators that place advertisement
links in their content may be given some form of credit if the reader of
the advertisement selects the advertisement link.
¶ 50. In other words, the claimed “allowing . . . for the user to adjust and
move the ad slot relative to the user generated content” reads on Lucovsky’s
adjusting and moving advertisement relative to the email text. We also find
appropriate the Examiner’s interpretation that the placement of Lucovsky’s
advertisement itself denotes an ad slot. In any case, the Examiner also finds
that Stanbach teaches a template with slots for advertisement (see Final Act.
8, citing Stanbach col. 23, ll. 23–26), which Appellant fails to dispute.
As such, Appellant’s arguments against Lucovsky separately from
Stanbach does not persuasively rebut the combination made by the
Examiner. One cannot show non-obviousness by attacking references
individually, where the rejections are based on combinations of references.
In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller,
642 F.2d 413, 425–26 (CCPA 1981).
For at least the reasons noted supra, we find unavailing Appellant’s
contention that at least the combined teachings of Lucovsky and Stanbach
fails to teaches and/or suggests the aforementioned argued limitations.
Accordingly, we sustain the 103 rejections of claims 1–10.

Claims 11–16 over at least Collison and Muthukrishnan
Appellant contends that “Collison does not include ‘a preview where
the ad slot is part of the image or covering a part of the image’ as claimed.
. . . The user generated content in Collison is not an image as claimed, but is
an email as shown in 506 of Figure 5B.” Appeal Br. 14.
Appeal 2018-006622
Application 13/174,992

16
In response, the Examiner finds, and we agree, that Collison teaches
“user generated content comprised of an image” (Ans. 8), and “a user
engages in the editing of user generated content.” Id.
For example, Collison discloses that “[t]he second document 140
might be an email message, . . . a multimedia document (e.g., image, audio,
video, animation, graphical, etc.).” Collison ¶ 40. In other words, contrary
to Appellant’s contention, Collison is not limited to emails, but also includes
image content. In addition, Collison discloses “user 1 may be enabled to
control the placement of the results in the email, such as by graphically
dragging different results to different positions in the email. . . . user 1 may
be enabled to implement other editorial controls.” Collison ¶ 108.
In other words, Collison discloses various types of user-generated
content, including an image, and controlling the placement of advertisements
relative to such content, e.g., image.
Appellant also contends that “Collison does not provide for an ability
to select the ‘shape and size’ of an ad slot as claimed. . . . [only] allows for
the selection of the ads and the position, but not the shape and size.” Appeal
Br. 14.
In response, the Examiner finds, and we agree, that Collison teaches
allowing users to select advertisements of different sizes and shapes. Ans.
8–9 (citing Collison ¶ 24). We find that claim 11’s “providing . . . an ability
for the user to select a shape and size for an ad slot” reads on and is taught
by Collison’s selection of ads of different sizes and shapes.
Finally, Appellant contends that “Collison does not position the ad
slot relative to the image . . . [instead] Collison illustrate a section for which
the user selected ads are inserted.” Appeal Br. 14.
Appeal 2018-006622
Application 13/174,992

17
In response, the Examiner finds, and we agree, “Collison discloses the
positioning of ad slots over a wide range of possibilities, including positions
relative to a user generated content which may be an image.” Ans. 9.
Appellant fails to persuasively distinguish how Collison’s positioning of the
selected ads, even if in a particular section, is not relative to the image, given
the broadest reasonable interpretation of the term.
For at least the reasons noted supra, we find unavailing Appellant’s
contention that at least the combined teachings of Collison and
Muthukrishnan fails to teaches and/or suggests the aforementioned argued
limitations.
Accordingly, we sustain the 103 rejections of claims 11–16.

Claims 17–20 over at least Sharma, Collison, and Muthukrishnan
Appellant contends that “the claim recites an advertisement in an ad
slot embedded with a user generated image, whereas the user generated
content in Sharma is an email.” Appeal Br. 15. Appellant further contends
that “while Collison describes ads, those ads are never embedded with a user
generated image.” Id. Appellant also contends that “[w]hile Muthukrishnan
describes that a publisher defines an advertisement slot configuration, there
is no disclosure that the configuration is selected by a user and based on slot
location and size attributes as claimed.” Id.
In other words, Appellant contends that (1) Sharma’s content is email,
not an image, (2) Collison never embed ads with an image, and
(3) Muthukrishnan does not disclose user selected slot configurations based
on location and size.
Appeal 2018-006622
Application 13/174,992

18
We find that such Appellant’s arguments do not address the
Examiner’s findings and, instead, are arguing the references individually
because: (1) the Examiner relies upon Collison, not Sharma for image
content (see Final Act. 23); (2) the Examiner relies upon Sharma, not
Collison, for embedding the advertisement (see Final Act. 22; and (3) the
Examiner relies on Collison, not only Muthukrishnan, for selecting location
and size of advertisements (see Final Act. 17).
As such, Appellant’s arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art and is therefore ineffective to rebut the Examiner’s prima
facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA
1981)(“The test for obviousness is not whether . . . the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.”) (citations omitted). This reasoning is
applicable here.
For at least the reasons noted supra, we find unavailing Appellant’s
contention that at least the combined teachings of Sharma, Collison, and
Muthukrishnan fails to teaches and/or suggests the aforementioned argued
limitations.
Accordingly, we sustain the § 103 rejections of claims 17–20.

Appeal 2018-006622
Application 13/174,992

19
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–10 103 at least Stanbach,
Lucovsky
1–10
11–16 103 at least Collison,
Muthukrishnan
11–16
17–20 103 at least
Sharma, Collison,
Muthukrishnan
17–20
Overall
Outcome
1–20

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED