Ex Parte Nelson et al

Patent Trial and Appeal Board

Apr 28, 2015

10390570 (P.T.A.B. Apr. 28, 2015)

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).
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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;
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[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.
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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
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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
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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,
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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
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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
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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