Ex Parte Nishar et al

Patent Trial and Appeal BoardOct 30, 2012

11170727 (P.T.A.B. Oct. 30, 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. 11/170,727 06/29/2005 Dipchand Nishar GOOGLE 3.0-102 3258 78792 7590 10/31/2012 GOOGLE Lerner, David, Littenberg, Krumholz & Mentlik, LLP 600 South Avenue West Westfield, NJ 07090 EXAMINER GOLDMAN, MICHAEL H ART UNIT PAPER NUMBER 3682 MAIL DATE DELIVERY MODE 10/31/2012 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 DIPCHAND NISHAR and ROBERT J. STETS ____________ Appeal 2010-009225 Application 11/170,727 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. MOHANTY, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009225 Application 11/170,727 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1 to 14, 17, 18 and 21 to 24. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Claim 1 is illustrative: 1. A computer-implemented method for controlling a review of advertisements, the method comprising: a) accepting, with a computer system including at least one computer on a network, information about an advertisement; b) determining, with the computer system, a revenue generation value using the accepted information; c) determining, with the computer system, a score for the advertisement using the determined revenue generation value; and d) controlling, with the computer system, a review of the advertisement using at least the determined score, wherein controlling a review of the advertisement includes at least one of (A) prioritizing a manual review of the advertisement, and (B) selecting one of a plurality of review protocols. Appellants appeal the following rejections: 1. Claims 1 to 3, 7, 10 to 12, 17, 18, 21, 23, and 24 under 35 U.S.C. § 103(a) as unpatentable over Lipsky (US 7,031,932 B1, iss. Apr. 18, 2006) and Marquardt (US 2006/0069613 A1, pub. Mar. 30, 2006). Appeal 2010-009225 Application 11/170,727 3 2. Claims 4 to 6 under 35 U.S.C. § 103(a) as unpatentable over Lipsky, Marquardt, and Krikler (US 7,328,164 B2, iss. Feb. 5, 2008). 3. Claims 8, 9, 13, 14, and 22 under 35 U.S.C. § 103(a) as unpatentable over Lipsky, Marquardt, and Agarwal (US 7,533,090 B2, iss. May 12, 2009). ANALYSIS The Appellants argue that a person of ordinary skill in the art would not have combined the teachings of Lipsky and Marquardt in the manner proposed by the Examiner. We agree. We find that the Lipsky is a computer-implemented method for dynamically optimizing the presentation of advertising messages (col.1, ll. 1 to 3). While an advertising campaign is conducted, statistics indicating the level of performance of each message, placement and cost package of the advertisement is maintained (col. 2, ll. 48 to 50). After the campaign has been conducted for a period of time, the performance of each message, placement and cost package is compared and a scored to arrive at a score for relative performance. Based on the scores, resources are reallocated (col, 2, ll. 51 to 61). We find that Marquardt disclose a system for automated and manual content verification of proposed Internet advertisements (para. [0001]). Marquardt discloses that publishers want to ensure that users do not view advertisement with inappropriate or irrelevant content (para. [0009]). Publishers must choose between manually reviewing all the ads prior to the ads going live and manually reviewing all the ads after the ads have been Appeal 2010-009225 Application 11/170,727 4 shown (para. [0010]). Marquardt discloses a method in which the trustworthiness and the expected traffic of the advertisements is used to determine which advertisements to manually review prior to the advertisements going live to thereby avoid reviewing all advertisement (para. [0012]). As Lipsky discloses a system to determine the performance of advertisements after they have run for a period of time, and Marquardt discloses a system to determine which advertisements to review for content before the advertisements go live, we agree with the Appellants that the references are not properly combined. In this regard, it is not clear why a person of ordinary skill in the art would be motivated to review the performance of only some of the advertisements in Lipsky since Lipsky is directed to determining the relative performance of advertisements. It would seem that reviewing only some of the advertisements would reduce the accuracy of the relative performance assessment. The Examiner’s reason for the combination of Lipsky and Marquardt “in order to meet imposed subjective and objective preferences such as performance scores and content preferences thereby minimizing the number of manual reviews” does not address why a person of ordinary skill in the art would be motivated to modify Lipsky as proposed by the Examiner. In addition, as the Examiner has not directed our attention to a disclosure in Lipsky of manual reviews, it is unclear why a person of ordinary skill in the art would be motivated to minimize them. Appeal 2010-009225 Application 11/170,727 5 When the claimed subject matter involves “more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement,” then an apparent reason to combine the known elements in the fashion claimed must be shown. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 401 (2007). The Court explained: Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. See KSR, 550 U.S. at 418. The Court noted that “[t]o facilitate review, this analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’”). The Examiner has failed to set forth a reason with a rational underpinning as to why one of ordinary skill in the art would have been led to control the review of the performance of the advertisements disclosed in Lipsky. As such, we conclude the Appellants have shown that the Examiner erred. Appeal 2010-009225 Application 11/170,727 6 DECISION We reverse the decision of the Examiner. REVERSED hh