Zohar, Meir et al.

Patent Trials and Appeals Board

Jun 24, 2020

2019004899 (P.T.A.B. Jun. 24, 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.
12/019,379 01/24/2008 Meir Zohar 20292/eXe001US02 9882
81905 7590 06/24/2020
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/24/2020 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):
docketing@hfzlaw.com
jflight@hfzlaw.com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEIR ZOHAR and ELAD EFRAIM

Appeal 2019-004899
Application 12/019,379
Technology Center 3600
Before ST. JOHN A. COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HUME,Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 36–44, 46–52, 54, and 56–58, which
are all the claims pending in the application. Claims 1–35, 45, 53, and 55
have been canceled. Appeal Br. 38–43. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant(s)” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as EXELATE
MEDIA LTD. Appeal Br. 2.
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STATEMENT OF THE CASE2
The Invention
The claims are directed to “advertising services, and more particularly
are related to an Internet based interactive targeting event marketplace.” See
Spec. 1:9–10. In particular, one embodiment of the invention is described
as:
A system and method for providing a targeting event
marketplace is provided. Generally, the method contains the
steps of: at least one targeted publisher and a targeting event
marketplace entity agreeing to financial terms associated with
revenues received from at least one buyer that obtains access to
the Internet browser of an end-user; providing an end-user tag
on a Web page of the Web site, wherein the end-user tag is
capable of calling a Web server from an Internet browser of the
end-user; analyzing an end-user action associated with the Web
page, wherein the step of analyzing is performed to categorize
the action into a category of targeting event; the Web server
determining if at least one buyer has interest in at least one end-
user taking an action that is categorized into at least one
category of targeting event; and receiving bids from at least one
buyer for providing access to the Internet browser of the end-
user and selecting at least one buyer.
Spec. 32 (Abstr.).

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Feb. 26, 2019); Reply Brief (“Reply Br.,” filed June 5, 2019); Examiner’s
Answer (“Ans.,” mailed April 5, 2019); Final Office Action (“Final Act.,”
mailed July 26, 2018); and the original Specification (“Spec.,” filed
Jan. 24, 2008).
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Exemplary Claim
Claim 36, reproduced below, is representative of the subject matter on
appeal (emphases added to dispositive limitations):
36. A method to selectively store cookies on
computers, the method comprising:
receiving an electronic communication at a first server
from a targeted publisher via an end-user tag loaded from a
Web page of the targeted publisher, the electronic
communication including targeting event data that is based on
an end-user computer interacting with the Web page of the
targeted publisher;
maintaining, at a central database communicatively
coupled with the first server, a list of a plurality of entities, the
entities respectively associated with a web address and a
targeting channel, the targeting channel associated with
targeting event data;
matching, with the first server, a matched entity from the
list of the plurality of entities to the end-user tag based on an
association between the targeting event data and the targeting
channel of the matched entity, the first server associated with a
different entity than the matched entity; and
in response to matching the matched entity to the end-
user tag with the first server, instructing an internet browser of
the end-user computer to retrieve content from a web address
of the matched entity to facilitate transmission of a request to a
second server, the second server located at the web address of
the matched entity, the transmitted request to cause at least one
of an addition of a cookie or an update to the cookie, the update
to add information associating the cookie with the targeting
channel of the matched entity, the cookie stored in the internet
browser of the end-user computer, and including information
associating the cookie with the targeting channel of the
matched entity, wherein the cookie is utilized by the matched
entity to present a targeted advertisement.

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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Caldwell et al. (“Caldwell”) US 2002/0046286 A1 Apr. 18, 2002
Collins US 2006/0026061 A1 Feb. 2, 2006
Levkovitz et al. (“Levkovitz”) US 2007/0088801 A1 Apr. 19, 2007
Beck et al. (“Beck”) US 7,254,547 B1 Aug. 7, 2007
Rejection on Appeal
Claims 36–44, 46–52, 54, and 56–58 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Collins, Caldwell,
Levkovitz, and Beck. Final Act. 8.3
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 30–36) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the
obviousness rejection of claims 36–44, 46–52, 54, and 56–58 on the basis of
representative independent claim 36.4

3 We note the Examiner withdrew a § 101 rejection of all claims. Ans. 3.
4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUES
Appellant argues (Appeal Br. 30–36; Reply Br. 2–10) the Examiner’s
rejection of claim 36 under 35 U.S.C. § 103(a) as being obvious over
Collins, Caldwell, Levkovitz, and Beck is in error. These contentions
present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests “[a] method to selectively store cookies on computers”
that includes the step of “in response to matching the matched entity to the
end-user tag with the first server, instructing an internet browser of the end-
user computer to retrieve content from a web address of the matched entity
to facilitate transmission of a request to a second server” in which “the
transmitted request [ ] cause[s] at least one of an addition of a cookie or an
update to the cookie, the update to add information associating the cookie
with the targeting channel of the matched entity, the cookie . . . including
information associating the cookie with the targeting channel of the matched
entity, wherein the cookie is utilized by the matched entity to present a
targeted advertisement,” as recited in claim 36?
(b) Did the Examiner err in rejecting claim 36 by providing
improper motivation to combine the references in the manner suggested?
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments the Examiner erred. We disagree with Appellant’s conclusions
with respect to the obviousness rejection of claims 36–44, 46–52, 54, and
56–58, and we adopt as our own: (1) the findings and reasons set forth by
the Examiner in the action from which this appeal is taken and (2) the
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reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Arguments. We highlight and address specific
findings and arguments regarding representative claim 36 for emphasis as
follows.
Issue (a): Are the Disputed Limitations Taught or Suggested?
Appellant argues against the Examiner’s reliance upon Caldwell’s
teaching by asserting that Caldwell does not teach or suggest:
“an addition of a cookie or an update to the cookie, the update
to add information associating the cookie with the targeting
channel of the matched entity, the cookie stored in the internet
browser of the end-user computer, and including information
associating the cookie with the targeting channel of the matched
entity, wherein the cookie is utilized by the matched entity to
present a targeted advertisement.” Caldwell stores a cookie only
for the purpose of user identification and only modifies a
cookie upon the request of a user or operator, unlike matching
the matched entity to the end-user tag, and an update to the
cookie, the update to add information associating the cookie
with the targeting channel of the matched entity as set forth
in claim 36.
Appeal Br. 31.
The Examiner responds by finding
The primary reference of Collins discloses the overall process
of targeting advertisements including the contemplation of and
the creation (alteration) of cookies (0105). Caldwell discloses a
method of synchronizing attributes/applications in a distributed
network environment capable of causing an end user browser to
transmit to a second server at a specific web address that will
result in the addition or modification of a cookie on the end
user's system (0075, 0086, and 0091). The use of cookies to
target advertisements is further disclosed in additional detail
[in] Levkovitz (Abstract, 0361). Beck discloses using cookies
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to target (match) channel specific advertising (Abstract, Figures
4 & 5).
Ans. 3.
We are not persuaded by Appellant’s argument because Appellant is
arguing the references separately. The Examiner cites Caldwell for teaching
“in response to matching the matched entity to the end-user tag with the first
server, instructing an internet browser of the end-user computer to retrieve
content from a web address of the matched entity to facilitate transmission
of a request to a second server, the second server located at the web address
of the matched entity, the transmitted request to cause at least one of an
addition of a cookie or an update to the cookie.” Final Act. 9 (citing
Caldwell ¶¶ 75, 86, 91).
We are not persuaded because we find Caldwell’s cookie data, that
verifies the identity of the first client device before permitting access to use
of an application (Caldwell ¶ 75), and Caldwell’s input device that modifies
a cookie (Caldwell ¶ 91), teach or at least suggest the disputed limitation.
Moreover, the Examiner finds Levkovitz, not Caldwell, teaches or at
least suggests the disputed limitation “the cookie is utilized by the matched
entity to present a targeted advertisement.” Final Act. 9. We find
Levkovitz’s ad serving functions, which call the ad server for a cookie file
with information associated with the advertisement, teach or at least suggest
the disputed limitation. Levkovitz ¶ 361.
Furthermore, the Examiner finds Beck, not Caldwell, teaches or at
least suggests using cookies to match channel specific advertising, i.e., the
disputed limitation “wherein the cookie is utilized by the matched entity to
present a targeted advertisement.” Final Act. 9. We agree with the
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Examiner because Beck’s targeting program cookies, which flow to the
segmented test groups presented with advertising messages, teach or at least
suggest the disputed limitation. Final Act. 9; Ans. 3 (citing Beck, Abstr.,
Figs. 4, 5).
Appellant further contends:
While cookies are described in the Abstract and Para. [0361] of
Levkovitz, the content of the cookie is not described here.
Looking to Para. [0358], Levkovitz describes storing data
indicating whether or not a WAP (Wireless Application
Protocol) advertisement was already presented on a device. As
such, Levkovitz does not teach or suggest an addition of a
cookie or an update to the cookie, the update to add information
associating the cookie with the targeting channel of the matched
entity, the cookie stored in the internet browser of the end-user
computer, and including information associating the cookie
with the targeting channel of the matched entity, wherein the
cookie is utilized by the matched entity to present a targeted
advertisement as set forth in Claim 36.
Appeal Br. 31–32.
Appellant also argues Beck does not teach or suggest “an addition of a
cookie or an update to the cookie, the update to add information associating
the cookie with the targeting channel of the matched entity, the cookie stored
in the internet browser of the end-user computer, and including information
associating the cookie with the targeting channel of the matched entity,
wherein the cookie is utilized by the matched entity to present a targeted
advertisement as set forth in Claim 36.” Appeal Br. 32.
As explained above, Appellant continues to argue the Beck and
Levkovitz references separately and ignores the Examiner’s specific findings
for each cited reference.
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We are unpersuaded by Appellant’s arguments and agree with the
Examiner’s factual findings and legal conclusions because “one cannot show
non-obviousness by attacking references individually where . . . the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413, 426 (CCPA 1981). “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” Id. at 425. In KSR, the Court held “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007).
Issue 1(b): Does The Examiner Provide a Proper Motivation to Combine?
Appellant argues “the motivations provided in the Office Action
failed to support a prima facie obviousness based on the Collins/Caldwell/
Levkovitz/Beck combination. Appeal Br. 33. Appellant argues “[t]he
Office Action alleges that Caldwell "is capable [of] causing an end-user
browser to transmit to an alternative (second) server at a specific web
address/location that will result in the addition or modification of a cookie
on the end user's system." (Final Office Action, p. 9). Even if this were true
(as disputed above), a mere capability of a system does not establish
predictability.” Appeal Br. 33.
We agree with the Examiner's motivation to combine the cited
references in the manner suggested because we find the claimed invention is
merely a combination of old elements according to known methods. See
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KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). In KSR, the Court stated
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416.
When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same reason, 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. . . . [A] court must ask whether the improvement is
more than the predictable use of prior art elements according to their
established functions. Id. at 417.
To the extent that the Examiner relies on the knowledge of one of
ordinary skill in the art to combine the teachings of the references, this
practice is consistent with current case law. For example, the Supreme
Court explains:
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this analysis
should be made explicit. See In re Kahn, 441 F.3d 977, 988
(C.A.Fed.2006) ( “[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must
be some articulated reasoning with some rational underpinning
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to support the legal conclusion of obviousness.”). As our
precedents make clear, however, the analysis need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.
KSR 550 U.S. at 418.
In this case, the Examiner's conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Final Act. 8–10; Ans. 3–4. Thus, we find a
preponderance of the evidence supports the Examiner's findings and
conclusions.
Moreover, Appellant has not demonstrated that the Examiner's
proffered combination of references would have been “uniquely challenging
or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor has Appellant provided objective evidence of secondary
considerations which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 36, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness Rejection of
independent claim 36, and grouped claims 37–44, 46–52, 54, and 56–58
which fall therewith. See Claim Grouping, supra.
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REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–10) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 36–44, 46–52, 54, and 56–58 under 35 U.S.C. § 103(a) over the cited
prior art combination of record, and we sustain the rejection.
DECISION SUMMARY
Claims
Rejected
35
U.S.C §
Basis/
References
Affirmed Reversed
36–44, 46–
52, 54, 56–58
103 Obviousness
Collins, Caldwell,
Levkovitz, Beck
36–44, 46–
52, 54, 56–58

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED