Ex Parte Agarwal et al

Patent Trial and Appeal BoardNov 13, 2012

11112732 (P.T.A.B. Nov. 13, 2012)

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. 11/112,732 04/22/2005 Sumit Agarwal Google-105 (GP-497-00-US) 5583 82402 7590 11/13/2012 Straub & Pokotylo 788 Shrewsbury Avenue Tinton Falls, NJ 07724 EXAMINER BROWN, ALVIN L ART UNIT PAPER NUMBER 3682 MAIL DATE DELIVERY MODE 11/13/2012 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 SUMIT AGARWAL, BRIAN AXE, DAVID GEHRKING, CHING LAW, ANDREW MAXWELL, GOKUL RAJARAM, and LEORA WISEMAN ____________________ Appeal 2011-005112 Application 11/112,732 Technology Center 3600 ____________________ Before BIBHU R. MOHANTY, MICHAEL W. KIM, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-005112 Application 11/112,732 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 2, 6-9, 11, 12, 14-19, 21, 25-27, 29, 31, 32, and 34-41. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We REVERSE.1 BACKGROUND Appellants’ invention concerns advertising, such as online advertising for example, and particularly concerns helping advertisers to effectively target the presentation of their ads (Spec., para. [0001]). Claim 2, reproduced below, is representative of the subject matter on appeal: 2. A computer-implemented method comprising: a) accepting, by a computer system having at least one computer in a network, one or more keywords input by an advertising user; b) determining, by the computer system, a set of one or more vertical taxonomy categories using at least one of the one or more keywords, wherein each of the vertical taxonomy categories has at least one Web document associated with it, and, wherein the at least one Web document participates in an advertising network; c) presenting, by the computer system, at least one of the set of, one or more determined 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed September 2, 2010) and Reply Brief (“Reply Br.,” filed January 18, 2011), and the Examiner’s Answer (“Ans.,” mailed November 24, 2010). Appeal 2011-005112 Application 11/112,732 3 vertical taxonomy categories to the advertising user as an ad targeting suggestion; d) accepting, by the computer system, an advertiser selection of a suggested vertical taxonomy category; and e) targeting, by the computer system, the serving of an ad of the advertiser to each of the at least one Web document associated with the selected suggested vertical taxonomy category. THE REJECTIONS The following rejections are before us for review: Claims 2, 6, 8, 9, 11-12, 14, 17-19, 21-25, 27, 29, 31-32, 34, and 37- 41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Graham (US 6,804,659 B1, iss. Oct. 12, 2004) in view of Ho (US 2007/0078717, pub. Apr. 5, 2007). Claims 7, 15, 16, 26, 35, and 36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Graham in view of Ho and further in view of Davis (US 2001/0047354 A1, pub. Nov. 29, 2001). ANALYSIS Independent claim 2 and dependent claim 6 We are persuaded of error on the part of the Examiner by Appellants’ argument that neither Graham nor Ho discloses or suggests limitations (b) through (e), as recited in claim 2 (App. Br. 20-29 and Reply Br. 2-5). The Examiner concedes that Graham does not explicitly disclose these limitations, and relies on Ho as disclosing these features (Ans. 4-5 and 9- Appeal 2011-005112 Application 11/112,732 4 12).2 However, we find nothing in the cited paragraphs of Ho, including paragraphs [0109], [0047], and [0217] of provisional application Serial No. 60/656,637, that discloses or suggests the combination of limitations (b) through (e), as recited in claim 2. The Examiner contends that paragraph [0109] of Ho teaches that “a user enters a particular keyword and the system uses said keyword to serve a certain related category of advertisements to the user which has the effect of increasing the usefulness to the user,” and that “Ho’s teaching of advertisements [sic] categories provided to a user is equivalent to Appellant’s [sic] claims of vertical categories being presented to a user” (Ans. 10). Yet even accepting Examiner’s characterization of paragraph [0109] as teaching that a user enters a keyword and the system uses the keyword to serve a related category of advertisements to the user, we agree with Appellants that there is nothing in that paragraph that discloses or suggests “presenting . . . one or more determined vertical taxonomy categories to the advertising user as an ad targeting suggestion; accepting . . . an advertiser selection of a suggested vertical taxonomy category; and targeting . . . the serving of an ad of the advertiser to each of the at least one Web document associated with the selected suggested vertical taxonomy category.” (App. Br. 24 and Reply Br. 5). 2 The Examiner initially cited paragraphs [0036], [0109], [0194], and [0195] of Ho for support (Ans. 4-5). However, in response to Appellants’ argument that paragraphs [0194] and [0195] are not prior art because they are not supported by the provisional application to which Ho claims priority (App. Br. 22-23), the Examiner chose to reference passages “taken solely from the Provisional application in order to prevent further confusion” (Ans. 9). The Examiner thus cited paragraphs [0109], [0047], and [0217] of provisional application Serial No. 60/656,637, as supporting his position. Appeal 2011-005112 Application 11/112,732 5 Ho describes in paragraph [0109] that the web pages at an advertiser’s website can be fetched and analyzed to determine topics, categories, keywords, content, etc., so that the placement of an advertisement can be based at least in part on the topics, categories, keywords, content, etc. to increase the chances of the advertisement being of interest to targeted users. However, paragraph [0109], at best, merely describes that an advertisement is delivered to an end user based on an analysis of the content of an advertiser’s website. The advertisement presented to the end user is not equivalent to the claimed suggested vertical taxonomy category, which is selected by the advertising user from “one or more determined vertical taxonomy categories [presented] to the advertising user as an ad targeting suggestion.” The advertisement presented to the end user also is not used to target “the serving of [another] ad of the advertiser to each of the at least one Web document associated with the selected suggested vertical taxonomy category,” as recited in claim 2. There also is nothing in the other cited portions of Ho on which the Examiner relies that discloses or suggests “presenting . . . one or more determined vertical taxonomy categories to the advertising user as an ad targeting suggestion; accepting . . . an advertiser selection of a suggested vertical taxonomy category; and targeting . . . the serving of an ad of the advertiser to each of the at least one Web document associated with the selected suggested vertical taxonomy category.” Paragraph [0036] of Ho merely describes a seller network, including sellers and supply affiliates who provide or supply sellers for the network, and teaches that a media channel delivering seller listings, advertisements or similar advertising information Appeal 2011-005112 Application 11/112,732 6 to the potential customers can be called a demand site.3 Paragraph [0047] describes that the term “advertisement” may refer to various different forms of presentations to attract attention or patronage, including a listing of identity and contact information (e.g., in a web page, a print media, a telephonic listing service, etc.). And paragraphs [00194] and [00195] of the Ho publication and paragraph [0217] of the provisional application describe conversion rates that are used to judge the effectiveness of particular ads (see Ans. 11). The Examiner has failed to establish a prima facie case of obviousness. Therefore, we will not sustain the Examiner’s rejection of claim 2 under 35 U.S.C. § 103. We also will not sustain the Examiner’s rejection of dependent claim 6. Independent claims 8, 21, 27, 40, and 41 and dependent claims 9-19, 25, 26, 29, 31, 32, and 34-39 Independent claims 8, 21, 27, 40, and 41 include language substantially similar to the language of claim 2. Therefore, we will not sustain the Examiner’s rejection of claims 8, 21, 27, 40, and 41 for the same reasons as set forth above with respect to claim 2. We also will not sustain the Examiner’s rejection of dependent claims 9-19, 25, 26, 29, 31, 32, and 34-39. 3 Paragraphs [0036], [0047], and [0109] are identically disclosed in the Ho publication and the provisional application. Appeal 2011-005112 Application 11/112,732 7 DECISION The Examiner’s rejection of claims 2, 6-9, 11, 12, 14-19, 21, 25-27, 29, 31, 32, and 34-41 under 35 U.S.C. § 103(a) is reversed. REVERSED Klh