Ex Parte Mehta et al

Patent Trial and Appeal BoardSep 17, 2012

10648599 (P.T.A.B. Sep. 17, 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. 10/648,599 08/25/2003 Bhavesh Mehta 50269-0558 4272 73066 7590 09/17/2012 HICKMAN PALERMO TRUONG BECKER BINGHAM WONG/Yahoo! 1 Almaden Boulevard Floor 12 San Jose, CA 95113 EXAMINER STAMBER, ERIC W ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 09/17/2012 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 1 ___________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte BHAVESH MEHTA and MICHAEL D. BIGBY 7 ___________ 8 9 Appeal 2011-000718 10 Application 10/648,599 11 Technology Center 3600 12 ___________ 13 14 15 Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 16 MEREDITH C. PETRAVICK, Administrative Patent Judges. 17 18 FETTING, Administrative Patent Judge. 19 20 21 DECISION ON APPEAL 22 23 Appeal 2011-000718 Application 10/648,599 2 STATEMENT OF THE CASE1 1 Bhavesh Mehta and Michael D. Bigby (Appellants) seek review under 2 35 U.S.C. § 134 (2002) of a final rejection of claims 21-28 and 30-37, the 3 only claims pending in the application on appeal. We have jurisdiction over 4 the appeal pursuant to 35 U.S.C. § 6(b). 5 The Appellants invented a way of delivering advertisements with 6 electronic content provided over a network by selecting among 7 advertisements that are competing for a slot associated with electronic 8 content that is to be delivered over a network. (Specification para. [0001]). 9 An understanding of the invention can be derived from a reading of 10 exemplary claim 21, which is reproduced below (bracketed matter and some 11 paragraphing added). 12 21. A method 13 for determining which advertisements to include 14 with electronic content 15 delivered to users over a network, 16 the method comprising the steps of: 17 [1] after accepting a first contract 18 with a first advertiser, 19 accepting a second contract 20 with a second advertiser; 21 [2] wherein the delivery obligations associated with the second 22 contract are such that 23 fulfillment of the second contract 24 would likely prevent the delivery obligations 25 associated with the first contract 26 from being fulfilled; 27 28 29 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed May 13, 2010) and Reply Brief (“Reply Br.,” filed September 21, 2010), and the Examiner’s Answer (“Ans.,” mailed July 27, 2010). Appeal 2011-000718 Application 10/648,599 3 [3] storing data 1 that indicates 2 delivery criteria 3 and 4 delivery obligations 5 for each of a plurality of contracts, 6 wherein each contract is associated 7 with an advertiser of a plurality of 8 advertisers, 9 wherein the plurality of contracts 10 includes the first contract and the 11 second contract; 12 [4] wherein the plurality of advertisers includes 13 the first advertiser 14 and 15 the second advertiser; 16 [5] wherein each contract 17 of the plurality of contracts 18 is associated with 19 a separate advertisement 20 of a plurality of advertisements; 21 [6] after the plurality of contracts have been formed, 22 receiving, 23 from a user, 24 a request 25 to provide over said network 26 a piece of electronic content 27 that includes a slot for an 28 advertisement; 29 [7] wherein the piece of electronic content has a subject; 30 [8] wherein the subject of the piece of electronic content 31 is an attribute 32 of the slot 33 that is included in the piece of electronic 34 content; 35 [9] in response to receiving the request: 36 [10] reading said data 37 to determine delivery criteria 38 associated with the plurality of contracts; 39 Appeal 2011-000718 Application 10/648,599 4 [11] comparing slot attributes 1 of said slot 2 in the requested electronic content 3 with delivery criteria 4 of said plurality of contracts 5 to determine a subset 6 of said plurality of advertisements 7 which qualify for inclusion in said 8 slot, 9 wherein the subject of the piece of electronic 10 content 11 is one of the slot attributes compared with 12 the delivery criteria, 13 [12] wherein both 14 a first advertisement associated with the first 15 contract 16 and 17 a second advertisement associated with the second 18 contract 19 qualify for inclusion in said slot, 20 [13] wherein the second contract is associated with 21 a behindness value 22 that is currently greater than 23 a behindness value 24 associated with the first contract, 25 [14] wherein the behindness value of each contract 26 reflects how far behind a content provider is 27 on satisfying the delivery obligations associated 28 with each contract; 29 and 30 [15] from said subset of advertisements, 31 selecting said first advertisement 32 to include in the slot 33 based, at least in part, 34 on the first contract having been 35 formed before the second contract; 36 [16] inserting said first advertisement into the slot 37 to create a modified piece of electronic content; 38 Appeal 2011-000718 Application 10/648,599 5 [17] delivering, 1 as a response to the request, 2 the modified piece of electronic content 3 to the user; 4 [18] wherein the steps of 5 receiving, reading, comparing, selecting, inserting, and 6 delivering 7 are performed on one or more computing devices. 8 9 The Examiner relies upon the following prior art: 10 Carruthers US 2002/0128904 Al Sep. 12, 2002 11 Claims 21-28 and 30-37 stand rejected under 35 U.S.C. § 103(a) as 12 unpatentable over Carruthers. 13 ISSUES 14 The issues of obviousness turn primarily on whether Carruthers 15 describes selecting an ad to insert in a page based on the subject of the 16 content the ad is inserted in. 17 FACTS PERTINENT TO THE ISSUES 18 The following enumerated Findings of Fact (FF) are believed to be 19 supported by a preponderance of the evidence. 20 Facts Related to the Prior Art 21 Carruthers 22 01. Carruthers is directed to managing the delivery of content (such as 23 advertisements) to online users and, more particularly, to a method 24 and system for scheduling targeted content delivery. Carruthers, 25 para. [0002]. 26 02. Carruthers describes scheduling targeted content delivery to 27 online users using operations research and yield management 28 Appeal 2011-000718 Application 10/648,599 6 techniques to forecast the availability of user screen real estate 1 (i.e., inventory), optimize the use of surplus inventory, and 2 generate on-demand selective content delivery schedules to 3 transmit content to the users. Carruthers, para. [0007]. 4 03. Carruthers’ scheduler system reviews new advertising campaigns 5 proposed by advertisers and predicts whether campaign objectives 6 are achievable in view of forecasted inventory. This generates a 7 master delivery plan based on expected values to fulfill advertiser 8 contracts and optimize usage of surplus inventory. The plan is 9 periodically modified based on delivery feedback information. 10 The system also dynamically generates individual user schedules 11 on user login. Carruthers, para. [0008]. 12 04. U.S. patent application Ser. No. 09/558,755 filed Apr. 21, 2000 13 and entitled "Method And System For Web User Profiling And 14 Selective Content Delivery" is expressly incorporated by 15 reference. That application discloses a method and system for 16 profiling online users (who are also referred to herein as clients or 17 subscribers) based on their observed surfing habits and for 18 selectively delivering content, e.g., advertising, to the users based 19 on their individual profiles. Carruthers, [0014]. 20 05. Carruthers is directed to optimizing content delivery to online 21 users and can be implemented in a content delivery system such 22 as, e.g., that disclosed in the above-mentioned application Ser. No. 23 09/558,755. Carruthers, para. [0015]. 24 06. FIG. 1 illustrates a general representative network that includes 25 client machines operated by various individual users that connect 26 Appeal 2011-000718 Application 10/648,599 7 to multiple servers via the Internet or Intranet. The Web servers 1 operate so-called "Web sites" and support files in the form of 2 documents and pages. A network path to a Web site generated by 3 the server is identified by a Uniform Resource Locator (URL). 4 Carruthers, para. [0016]. 5 07. The Inventory Manager constructs a delivery plan for all approved 6 campaigns. For each subscriber on user login, the On-Demand 7 scheduler constructs an individual delivery schedule. 8 Advertisements are transmitted to users based on their individual 9 delivery schedules. The system reports advertisement delivery 10 feedback to the Delivery Manager, which is used to update the 11 master delivery plan. Carruthers, para. [0026]. 12 08. The Inventory Manager constructs the master delivery plan on a 13 periodic basis, based on the calculated goals of each of the active 14 advertising campaigns. The plan specifies a prioritized master list 15 of advertisements, which is sent to the On-Demand Scheduler at 16 each POP server. The prioritized content list identifies the order 17 in which advertisements are to be displayed. The order is based 18 preferably both upon priority and some weighting mechanism that 19 indicates how many impressions are needed by each campaign. 20 Carruthers, para. [0034]. 21 09. The Delivery Manager can reorder or reprioritize the master list of 22 scheduled advertisements based upon delivery feedback data and 23 queuing logic/algorithms. For example, if the goal for a given 24 campaign is to evenly distribute an advertisement over the course 25 of the campaign length, the advertisement can be moved down in 26 Appeal 2011-000718 Application 10/648,599 8 the queue of advertisements to be displayed if it gets ahead of its 1 daily goals. Similarly, if an advertisement gets behind in meeting 2 its goals, it may be automatically promoted in priority. If an 3 advertisement exceeds its daily goal it can be effectively shut off 4 by being placed at the very end of the queue. Carruthers, para. 5 [0035]. 6 10. The scheduler system is capable of delivering `instant` 7 advertisements (or other content) to subscribers. These are 8 advertisements that are delivered to users if they perform some 9 given action, e.g., enter a particular keyword in a search engine 10 query or enter a particular URL address. The system can preempt 11 the normal queue of ordered advertisements in an individual 12 schedule with an instant advertisement when needed. The system 13 allows the percentage of time that instant advertisements can 14 preempt the normal queue to be configurable in order to reduce 15 errors in calculations made by the Capacity Forecaster. 16 Carruthers, para. [0076]. 17 ANALYSIS 18 This is the second time this application has come before the Board. 19 Although the same art is now applied as before, the claims at issue are 20 substantially different, rendering analysis based on the amendments 21 unproductive. Appellants summarize what they see as missing from the art 22 at Appeal Brief 5-6: 23 1) Accepting a second contract after accepting a first contract 24 even though fulfillment of the second contract would likely 25 prevent the delivery obligations of the first contract from being 26 fulfilled; 27 Appeal 2011-000718 Application 10/648,599 9 2) Selecting a first advertisement instead of a second 1 advertisement even though the second advertisement is "more 2 behind" than the first advertisement; 3 4 3) The time of contract formation is a factor in determining 5 which advertisement to select for display; 6 7 4) An advertisement is selected, from among a plurality of 8 advertisements, in response to a user request for electronic 9 content; 10 11 5) User-requested electronic content includes a slot into which 12 an advertisement is to be placed; 13 14 6) The slot includes slot attributes and the slot attributes are 15 compared with the delivery criteria associated with multiple 16 contracts; 17 18 7) The subject of the requested electronic content is one of the 19 slot attributes compared with the delivery criteria; 20 21 8) An advertisement is inserted into the slot to create a modified 22 piece of electronic content; and 23 24 9) The modified piece of electronic content is delivered to the 25 user as a response to the initial request. 26 27 Argument (7) is dispositive, directed to newly added limitations [7], [8], 28 and [11]. The Examiner does not provide a response (Answer 11), but 29 instead directs us to the rejection analysis (Answer 5-6). The Examiner here 30 found that 31 because the user profile of Carruthers et al includes 32 the subject/category for the page content currently 33 being requested/browsed, the targeted banner 34 advertisement insertion into the surplus web page 35 36 Appeal 2011-000718 Application 10/648,599 10 space therefore meets applicant's [sic] claimed slot 1 attributes corresponding to the content subject. 2 Ans. 6. 3 4 As Appellants point out, this is incorrect. Carruthers’ user profile 5 does not include any data regarding the page requested. The Examiner, 6 apparently sensing this, then posits the predictability of relying on the 7 current page to select an advertisement. Id. But, again as Appellants point 8 out, Carruthers makes no disclosure that would suggest doing so, and 9 Carruthers’ reliance on a master delivery plan would suggest that deviating 10 from that plan based on actual content of delivered pages would be 11 detrimental. The Examiner has not provided reasoning with rational 12 underpinning to add selection criteria regarding web page content to 13 Carruthers. While it is certainly known to do so in other contexts, it is 14 unclear why Carruthers would have added these criteria. 15 16 CONCLUSIONS OF LAW 17 The rejection of claims 21-28 and 30-37 under 35 U.S.C. § 103(a) as 18 unpatentable over Carruthers is improper. 19 20 DECISION 21 The rejection of claims 21-28 and 30-37 is reversed. 22 23 REVERSED 24 25 Klh 26