Ex Parte Bauman et al

Patent Trial and Appeal BoardSep 2, 2014

11539109 (P.T.A.B. Sep. 2, 2014)

1 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHANNON P. BAUMAN, KEITH SCHMIDT, and DOMINIC PREUSS ____________ Appeal 2012-009587 Application 11/539,109 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1, 6-10, 21, 22, 26, 27 and 35-44 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were presented on August 19, 2014. SUMMARY OF THE DECISION We REVERSE. Appeal 2012-009587 Application 11/539,109 THE INVENTION The Appellants’ claimed invention is directed to location based, content targeted online advertising (Spec. [0006]). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method comprising: [1] receiving, by a server system, an ad request including data identifying a referring web page that, among other content, includes a link to a target web page; [2] using, by the server system, the data identifying the referring web page to retrieve content of the referring web page; [3] determining (a) an ad context from the retrieved content of the referring web page and (b) a geographic region from the retrieved content of the referring web page; [4] selecting an advertisement based on the ad context and the geographic region; [5] generating a map of at least a portion of the geographic region, the map including a marker for identifying a location in the geographic region that is associated with the advertisement; and [6] providing for display on the target web page the map and the advertisement selected based on the ad context and the geographic region. THE REJECTIONS The following rejections are before us for review: 1. Claims 1, 6-8, 21, 22, 26, 27 and 35-44 are rejected under 35 U.S.C. § 103(a) as unpatentable over Anderson (US 2004/0093327 A1, pub. May 13, 2004), Dean (2004/0059708 A1, pub. Mar. 25, 2004), Sullivan (2005/0076097 A1, Apr. 7, 2005), and Schultz (2003/0061211 A1, pub. Mar. 27, 2003). Appeal 2012-009587 Application 11/539,109 2. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Anderson, Sullivan, Schultz, and Altberg (US 7,120,235 B2, Oct. 10, 2006). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence1. ANALYSIS The Appellants first argue that the rejection of claim 1 is improper because the combination fails to suggest the recited claim limitation for “receiving…an ad request including data identifying a referring web page that, among other content, includes a link to a target web page” (Br. 5). The Appellants also further argue that rejection of claim 1 is improper because the cited combination of all the references would not have been obvious (Br. 6-7). In contrast, the Examiner has determined that rejection is proper (Ans. 4-10, 17-26). We agree with the Appellants. Initially, we note that claim limitation [1] requires in part “receiving…an ad request…identifying a referring web page that, among other content, includes a link to a target web page”. The cited rejection of record cites to this claim limitation as being suggested by Anderson (which for example discloses an ad consumer 130 at para. 33) and Sullivan (which for example discloses a link to a web page at paras. 8-12). 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2012-009587 Application 11/539,109 However, Sullivan’s links to webpages are not related to an ad request, but rather alternate referrer pages (see Abstract). Here, it is not clear that the cited combination of these Anderson and Sullivan would have been obvious to meet the cited claim limitation. Regardless, the rejection of record also requires the further modification of Anderson and Sullivan to also incorporate the teaching of Dean to teach geographic regions in the ads and Shultz to bring in the teaching of maps into the rejected claim. Further, the claim makes specific distinctions about the referring web page including a link to the target web page requiring modification in a specific manner. Here, the rejection of record combining specific elements of Anderson, Dean, Sullivan, and Schultz lacks an articulated reasoning with rational underpinnings to meet the limitations of claim 1 in the manner claimed without impermissible hindsight. For these reasons the rejection of claim 1 and its dependent claims is not sustained. The other independent claims contain limitations similar to those addressed above and the rejection of these claims is not sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims as listed in the Rejection section above. DECISION The Examiner’s rejection of claims 1, 6-10, 21, 22, 26, 27 and 35-44 is not sustained. Appeal 2012-009587 Application 11/539,109 REVERSED tkl