Roetter, Alex et al.

Patent Trials and Appeals Board

Aug 11, 2020

10813356 - (D) (P.T.A.B. Aug. 11, 2020)

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.
10/813,356 03/31/2004 Alex Roetter 098981-0842 5017
10575 7590 08/11/2020
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
BEKERMAN, MICHAEL
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
08/11/2020 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEX ROETTER and DEEPAK JINDAL
____________

Appeal 2019–003688
Application 10/813,3561
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

1 Oral arguments were presented June 23, 2020.
Appeal 2019-003688
Application 10/813,356

2

STATEMENT OF THE CASE2
Alex Roetter and Deepak Jindal (Appellant3) seeks review under
35 U.S.C. § 134(a) of a final rejection of claims 1–10, 12, 21, 23, 40, 42, and
44, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of determining user actions and, more
particularly, of determining user actions associated with advertising.
Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method performed by one or more processing devices
associated with a first serving entity, the method comprising:
[1] receiving, at the one or more processing devices, click
information
indicating a selection of a content item from a first
device, the click information
received in response to an address associated with
the content item
directing the first device to the one or more
processing devices;

2 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed December 20, 2018) and the Examiner’s Answer (“Ans.,” mailed
February 7, 2019), and Final Action (“Final Act.,” mailed February 23,
2018).
3 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 Google
LLC (Appeal Br. 2).

Appeal 2019-003688
Application 10/813,356

3

[2] determining whether the content item is served in a content
slot displayed on a resource accessed from the first device
by the first serving entity or a third-party serving
entity different from the first serving entity
using the click information,
wherein the content slot is configured to be populated by
content provided by either the first serving entity or one
or more of a plurality of third-party serving entities,
and
wherein the resource is provided by a resource source
separate from the first serving entity and the third-party
serving entities that does not control the content served
within the content slot;
[3] generating
a cookie comprising an identifier associated with a
content provider of the content item
and
a flag indicating whether the content item is served by
the first serving entity or the third-party serving entity;
[4] transmitting the cookie to the first device;
[5] receiving, at the one or more processing devices, conversion
information indicating a conversion responsive to a first action
performed on the first device,
the conversion information comprising the cookie,
the conversion information received responsive to the
identifier in the cookie matching a second identifier
stored in code of a page provided to the first device after
the first action is performed;
[6] determining, by the one or more processing devices,
whether the conversion resulted from content provided by the
first serving entity or the third-party serving entity using the
flag of the cookie received within the conversion information;
Appeal 2019-003688
Application 10/813,356

4

[7] logging, by the one or more processing devices, the
conversion information including an indication of whether the
conversion resulted from content provided by the first serving
entity or the third-party serving entity.
The Examiner relies upon the following prior art:
Name Reference Date
Addante US 2002/0004733 A1 Jan. 10, 2002
Cantrell US 2002/0103698 A1 Aug. 1, 2002
Bronnimann US 2004/0044571 A1 Mar. 4, 2004
Claims 1, 2, 5–10, 12, 21, 40, 42, and 44 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Addante and Cantrell.4
Claims 3, 4, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Addante, Cantrell, and Bronnimann.
ISSUES
The issues of obviousness turn primarily on whether the applied art
describes the claim limitations.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Addante
01. Addante is directed to digital advertising via computer
networks, and more particularly, to monitoring and recording
transactions of a user who is redirected to a transaction site after

4 A rejection under 35 U.S.C. § 101 (Final Action 2) was withdrawn.
Answer 3.
Appeal 2019-003688
Application 10/813,356

5

selecting an advertisement, e.g., an ad banner, at a content site.
Addante para. 2.
Cantrell
02. Cantrell is directed to online advertising, and more particularly,
to enabling user control of the design and deployment of online
advertising campaigns. Cantrell para. 3.
ANALYSIS
Claims 1, 2, 5–10, 12, 21, 40, 42, and 44 rejected under 35 U.S.C. § 103(a)
as unpatentable over Addante and Cantrell
We are persuaded by Appellant’s argument that “Addante and
Cantrell do not teach or suggest ‘generating a cookie comprising an
identifier associated with a content provider of the content item and a flag
indicating whether the content item is served by the first serving entity or the
third-party serving entity.’” Br. 17 (emphasis omitted). Examiner responds
that the
cookie of Addante is an "ad server cookie", so inherently the
cookie is linked with the single ad server of Addante. The
multiple ad servers of Cantrell would mean multiple ad server
cookies in the context of the system of Addante. Each ad server
cookie would obviously be different since they would be
coming from different servers, and they would be identified as
such. As explained in the rejection, since Addante already
tracks a source of conversions, it would be obvious to accept
ads from any number of ad servers as taught by Cantrell and
with that system, it would be obvious to track the source of
conversions back to an ad server entity.
Ans. 4. The Examiner determines that if Addante were to use multiple ad
servers as suggested by Cantrell, Addante would then identify such ad
sources in its cookies, and then to properly compensate for the ad, or even
Appeal 2019-003688
Application 10/813,356

6

just to track performance, Addante would then correlate the site where some
ad conversion occurred with the server that provided the ad. Reasonable as
this may be, this simply does not recreate the claims. Claim 21 generates
and relies on a flag indicating whether the content item is served by the
first serving entity or the third-party serving entity. The distinction is
that it is the first entity on whose machines the steps are performed.
Such identification of self referential elements is generally important to
avoid anomalous behavior. The Examiner makes no findings as to
tracking this distinction with a cookie.

Claims 3, 4, and 23 rejected under 35 U.S.C. § 103(a) as unpatentable over
Addante, Cantrell, and Bronnimann
These claims depend from those in the prior rejection and, therefore,
incorporate their limitations.
CONCLUSIONS OF LAW
The rejection of claims 1, 2, 5–10, 12, 21, 40, 42, and 44 under
35 U.S.C. § 103(a) as unpatentable over Addante and Cantrell is improper.
The rejection of claims 3, 4, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Addante, Cantrell, and Bronnimann is improper.
Appeal 2019-003688
Application 10/813,356

7

CONCLUSION
The rejection of claims 1–10, 12, 21, 23, 40, 42, and 44 is reversed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 5–10, 12,
21, 40, 42, 44
103 Addante,
Cantrell
1, 2, 5–10, 12,
21, 40, 42, 44
3, 4, 23 103 Addante,
Cantrell,
Bronnimann
3, 4, 23
Overall Outcome 1–10, 12, 21,
23, 40, 42, 44

REVERSED