Ex Parte Nelson et alDownload PDFPatent Trial and Appeal BoardApr 28, 201510390570 (P.T.A.B. Apr. 28, 2015) Copy Citation 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. 10/390,570 03/13/2003 Lance Nelson 60201-0015 3918 106753 7590 04/28/2015 Hickman Palermo Becker Bingham / Apollo 1 Almaden Boulevard, Floor 12 San Jose, CA 95113 EXAMINER BOSWELL, BETH V ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 04/28/2015 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 LANCE NELSON, RYAN PENNER, MICHAEL RAMIREZ, and BRETT MELTON ___________ Appeal 2012–005051 Application 10/390,570 Technology Center 3600 ___________ Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and JAMES A. WORTH, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 2 Lance Nelson, Ryan Penner, Michael Ramirez, and Brett Melton (Appellants) seek review under 35 U.S.C. § 134 of a Final rejection of claims 1–8, 11, 12, 14–22, 26, 29, and 31, the only claims pending in the 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,†filed June 15, 2011) and Reply Brief (“Reply Br.,†filed October 31, 2011), and the Examiner’s Answer (“Ans.,†mailed August 31, 2011). 2 According to Appellants, “[t]he real party in interest is Aptimus, Inc., the assignee of record, which is a wholly owned subsidiary of Apollo Group, Inc.†(App. Br. 1). Appeal 2012-005051 Application 10/390,570 2 application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellants invented automating the placement of online offers for consumers (Specification 1:7–9). 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 computer implemented method of placing an offer on a web page, the method comprising: [1] obtaining placement data of a web page for an offer placement, including placement information for a slot on the web page; [2] using the placement data to identify a plurality of offers that are associated with a plurality of initial placement values, each offer having (a) offer information corresponding to said placement information and (b) an initial placement value for said offer placement; [3] wherein each offer of the plurality of offers is associated with a distinct initial placement value; [4] generating a plurality of random factors for the plurality of offers, wherein a corresponding random factor is independently generated for each offer; Appeal 2012-005051 Application 10/390,570 3 [5] for each of the plurality of offers, generating a randomized placement value based on (a) the initial placement value of the offer and (b) the random factor generated for the offer; [6] determining that a particular offer of the plurality of offers has a highest randomized placement value of the plurality of offers; [7] wherein the particular offer does not have the highest initial placement value of the plurality of offers; [8] selecting the particular offer from the plurality of offers based on the particular offer having the highest randomized placement value of the plurality of offers; and [9] placing the particular offer on the slot on the web page; [10] wherein the method is performed by one or more computing devices. The Examiner relies upon the following prior art: Capek US 6,026,369 Feb. 15, 2000 Plotnick US 2002/0178447 A1 Nov. 28, 2002 McElfresh US 6,907,566 B1 Jun. 14, 2005 Hamor US 6,976,003 B1 Dec. 13, 2005 Claims 1–8, 11, 12, 14, 19, 20, 26, and 29 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Capek, Plotnick, and Official Notice. Appeal 2012-005051 Application 10/390,570 4 Claims 15–18, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Capek, Plotnick, McElfresh, and Official Notice. Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Capek, Plotnick, Hamor, and Official Notice. ISSUES The issues of obviousness turn primarily on whether the Examiner found why one would have applied the noticed randomization to the recited placement values and selected the highest random value that was not the highest non-random value. 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 Capek 01. Capek is directed to distributing program material, possibly representing advertising placements, to network access providers whose clients satisfy profile criteria. Capek 1:6–9. 02. Capek describes locating by access provider those clients which fit a model profile defined in a placement request from an advertiser; distributing to access provider nodes (insertion points) program material placement requests for execution by the latter nodes; determining the number of clients at an access point which fit a Appeal 2012-005051 Application 10/390,570 5 model profile defined in a placement request; allocating the number of advertisings or insertions among a number of access providers. Capek 2:2–13. 03. Summary information is transmitted to a control distribution node from a number of access provider nodes. The cumulative summary information is used by this control distribution node to both: (a) determine which access provider nodes have customers with a target profile specified in a placement request from, for example, an advertiser; and (b) to allocate to some or all of the access providers a desired subset of placements (placement requests). Capek 2:14–22. 04. Capek distributes advertisements (or other insertions or modifications to the basic distributed program material) from a small number of “central sites†to a large number of distribution or insert points. Once the allocation process is completed and the allocated placement requests are sent to the access providers, no further interaction between the access providers and the control distribution node or among the access providers themselves is necessary to deliver the desired number of placements to the clients of the access providers. Capek uses a data base describing the customers of that insertion point from a targeting point of view information in summary form to determine which access points are potentially appropriate to carry (deliver) a particular ad, and then passes a detailed query to each insertion point to determine more precisely the make up of the potential audience. Based on the results of these processes, it then allocates to a collection of Appeal 2012-005051 Application 10/390,570 6 insert points each placement request, and appropriately adjusts the intended delivery quantity, thereby effectively allocating a placement request to a number of insertion point for execution. Capek 2:23–44. 05. At T1 the arrival of a placement request from an advertiser initiates a process, whose goal is to determine which access providers are candidates to fulfill the placement request. The stored summary information is matched against the specifications in the placement request. If the stored summary information at the control distribution node indicates that a particular access provider node has little or no customers in the specified geographic area, then the latter access provider nodes will be excluded as candidates for fulfilling the placement request. Now suppose that process determines that the customers of access provider 3 do not satisfy the placement request. Then at T2, a placement query is sent to access providers 1, 2, and 4, in order to determine how many customers or clients of the candidate access providers fill the original placement request. In response to the latter placement query, each access provider determines how many of its customers meet the specifications in the placement request. Capek 3:9–35. Plotnick 06. Plotnick is directed to dynamically presenting ads to subscribers based on the subscribers interactions to previous ads. Ads are selected from the ad queue stored in a personal video recorder (PVR) and the selection is behavioral in nature. That is, Appeal 2012-005051 Application 10/390,570 7 depending on how the subscriber reacts (or interacts) to the ads presented to them determines what ads are displayed to the subscriber (behavioral targeting). The reactions (or interactions) to the ads may include viewing the ads, skipping the ads, fast forwarding the ads, changing the channel, viewing an alternative ad, requesting more information about the product, service or company in the ad. Plotnick para. 35. 07. Plotnick’s placement of the advertisers in the queue may be random, may be based on all the different criteria provided for each advertiser, may be based on a formula, or some combination thereof. The ads need not be new ads each time, some or all of the ad types may have the same ads. The only ad type that will have a new ad is if the ad type was displayed the previous time. Plotnick para. 95. ANALYSIS We are persuaded by the Appellants’ argument that the Official Notice is dubious, because while it is undeniably true, it does not in any way support the proposition for which it is cited. Of course computer programmers know how to generate random numbers. That knowledge has no bearing on whether it would be obvious build a system that: “for each of the plurality of offers, generat[es] a randomized placement value based on (a) the initial placement value of the offer and (b) the random factor generated for the offer.†App. Br. 10. The Examiner took official notice of the notoriety of using random numbers and also applied Plotnick as showing the use of randomization in advertiser queue placement. The claim however applies a Appeal 2012-005051 Application 10/390,570 8 random factor to a placement value and then looks for the highest new randomized placement value that was not the highest before randomization. See Claim 1 and App. Br. 10–13. The Examiner found that randomization was widely known and then found that it could be combined with known techniques to yield the recited claim. Ans. 21–26. Essentially, the Examiner found this was a combination of known elements. The Examiner appears to be using the reasoning exemplified in MPEP § 2143(I.A) viz., combining prior art elements according to known methods to yield predictable results. This section makes several caveats that there must be some reason articulated for the combination. Almost every invention is a combination of familiar elements to some degree. It cannot be sufficient to simply say the elements are already known themselves. There must be some reason articulated to combine them. “[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.†KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In KSR, the invention simply combined two elements of an accelerator, each already described as desirable with an accelerator pedal. The Examiner has made no similar finding of commonality of context in a randomization of values and computing placement values for selection. While Plotnick is arguably in a similar larger context with its randomization of queue placement, this is still not the specific context recited in the claim of a placement value whose position changes after randomization. We are left without knowing why one of ordinary skill would have applied a Appeal 2012-005051 Application 10/390,570 9 randomization to placement values in the references other than simply to modify queue advertiser positions. CONCLUSIONS OF LAW The rejection of claims 1–8, 11, 12, 14, 19, 20, 26, and 29 under 35 U.S.C. § 103(a) as unpatentable over Capek, Plotnick, and Official Notice is improper. The rejection of claims 15–18, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over Capek, Plotnick, McElfresh, and Official Notice is improper. The rejection of claim 31 under 35 U.S.C. § 103(a) as unpatentable over Capek, Plotnick, Hamor, and Official Notice is improper. DECISION The rejection of claims 1–8, 11, 12, 14–22, 26, 29, and 31 is reversed. REVERSED rvb Copy with citationCopy as parenthetical citation