Ex Parte Smith et al

Patent Trial and Appeal Board

Nov 5, 2013

11743103 (P.T.A.B. Nov. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEITH SMITH, DANIEL TODD, YORK BAUR,
TODD SAWICKI, WILLIAM K. MCGRAW, and KEN SMITH
____________________

Appeal 2011-010829
Application 11/743,103
Technology Center 3600
____________________

Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-010829
Application 11/743,103

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3, 5-10, and 15-20. We have jurisdiction under
35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM-IN-PART.1

BACKGROUND
Appellants’ invention relates to a system for providing digital content
and advertisements to users (Spec., para. [0025]).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
l. A system for providing digital content and
advertisements to users, the system comprising:
an automated, self-service advertiser interface for
advertisers, wherein the advertiser interface is used by the
advertisers to provide digital advertisements, and wherein the
advertisers provide compensation based on presenting the
digital advertisements to the users;
an automated, self-service content-provider interface for
providers of digital content, wherein the content-provider
interface is used by the providers of digital content to provide
content to the users, wherein the digital content is visual
content, audio content, audio-visual content, or an application,
and wherein the providers of digital content receive a first
portion of the advertiser-provided compensation based on
access of the digital content by the users;

1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
February 10, 2011) and Reply Brief (“Reply Br.,” filed June 10, 2011) and
the Examiner’s Answer (“Ans.,” mailed April 13, 2011).
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a publisher interface for publishers of the digital content,
wherein the publisher interface is configured to provide the
publishers with access to the digital content or to links for
accessing the digital content, wherein the publisher provides at
least one user interface for the users to access the content, and
wherein the publishers receive a second portion of the
advertiser-provided compensation based on access of the
provided digital content by the users;
an automated, self-service user interface for the users of
the digital content, wherein the user interface is configured to
provide users with access to view or listen to the digital content;
and,
at least one central server coupled among the advertiser,
content-provider, publisher, and user interfaces, wherein the
central server is configured to:
have a content database to store or access the
digital content as well as content providers’ account
information, and have an advertisement database to store
the advertisements that at least includes advertisers’
account information, advertiser-provided compensation,
the advertisements or links to the advertisements,
provide the digital content and the advertisements
to the users,
receive the advertiser-provided compensation from
the advertisers, and
provide the first and second portions of the
advertiser-provided compensation to the publishers and
the content providers, respectively,
wherein the advertiser interface is configured to
permit each of the advertisers to specify at least one
category for each of its digital advertisements and at least
one target associated with each of its digital
advertisements, and each advertiser may specify one or
more targeting criteria, including but not limited to
keywords, to be associated with each of its
advertisements, and
wherein the publisher interface is configured to
allow publishers to browse or search for digital content.

Appeal 2011-010829
Application 11/743,103

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THE REJECTIONS
The following rejections are before us for review:
Claims 1, 3, 5-8, 10, and 15-20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Dedrick (US 5,752,238, iss. May 12, 1998).
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dedrick in view of Official Notice.

ANALYSIS
Anticipation
Appellants argue claims 1, 3, 5-8, 10, and 15-20 as a group with
respect to the Examiner’s rejection of the claims under 35 U.S.C. § 102(b)
(App. Br. 11-18). We find the claim language of independent claim 15
substantially different from that of independent claims 1 and 18; therefore,
we will address independent claim 15 and its dependent claims, i.e.,
claims 16 and 17, separately.
Independent claims 1 and 18 and dependent claims 3, 5-8, 10, 19 and 20
We select claim 1 as representative of the group consisting of
claims 1, 3, 5-8, 10, and 18-20. The remaining claims stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
We are persuaded that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(b) by Appellants’ argument that Dedrick fails to teach that
the content provider receives a first portion of the advertiser-provided
compensation and the publishers receive a second portion of the advertiser-
provided compensation based on access of the provided digital content by
the users, i.e., that the central server is configured to “provide the first and
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second portions of the advertiser-provided compensation to the publishers
and the content providers, respectively,” as recited in claim 1.
The Examiner maintains that the rejection is proper, and directs our
attention to column 11, lines 39-45 and column 14, lines 58-64 of Dedrick as
teaching that advertiser-provided compensation, i.e., the advertising fee, can
be credited to the accounts of the user, the publisher, or both (Ans. 12).
The Examiner acknowledges that Dedrick “does not explicitly disclose that
the metering server [which the Examiner compares to the claimed “content
provider” (see, e.g., Ans. 10-11)] and/or clearinghouse server retains any of
the advertising fee while processing the transaction (debiting and crediting
the appropriate accounts)” (Ans. 12-13), and asserts that
it would have been obvious to additional credit one or both with
such processing fees in the same manner as a coupon
clearinghouse receives a processing fee when clearing coupons
between merchants and advertisers and, thus “the clearinghouse
server 20 can replace the conventional billing system between
advertisers and publishers that is present in traditional
newspaper advertising” as discussed by Dedrick (column 14,
lines 64-67).
(Ans. 13). Yet claim 1 is not rejected as obvious over Dedrick; instead, the
Examiner has rejected claim 1 as anticipated by Dedrick.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987). The “absence from the reference of any claimed element
negates anticipation.” See, e.g., Kloster Speedsteel AB v. Crucible, Inc., 793
F.2d 1565, 1571 (Fed. Cir. 1986).
The Examiner has admitted that the argued feature is not expressly
disclosed by Dedrick, and the Examiner has not provided any evidence
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and/or technical reasoning to establish that the feature is inherently disclosed
by Dedrick, i.e., evidence and/or technical reasoning that makes “clear that
the missing descriptive matter is necessarily present in the thing described in
the reference, and that it would be so recognized by persons of ordinary
skill.” See Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed.Cir.1991).
Therefore, we will not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 102(b). For the same reasons, we also will not sustain the
Examiner’s rejection of claims 3, 5-8, and 10, which depend from claim 1.
Claim 18 includes language substantially similar to the language of
claim 1. Therefore, we will not sustain the Examiner’s rejection of claim 18,
and claims 19 and 20, which depend from claim 18, under 35 U.S.C.
§ 102(b) for the same reasons as set forth above with respect to claim 1.
Independent claim15 and dependent claims 16 and 17
Claim 15 is directed to a computer-readable medium carrying
instructions for a method to permit a publisher to readily provide digital
content and advertisements to multiple, geographically distributed client
computers via a public computer network, and recites that the method
comprises, inter alia, “providing a central server coupled among (1) an
advertiser interface, (2) a content-provider interface, (3) a publisher
interface, and (4) a user interface.”
We are not persuaded that the Examiner erred in rejecting claim 15
under 35 U.S.C. § 102(b) by Appellants’ argument that Dedrick fails to
teach separate advertiser, content-provider, publisher, and user interfaces
(App. Br. 14-16 and Reply Br. 2-5 and 9). Instead, we agree with and adopt
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the Examiner’s response to Appellants’ argument, as set forth at pages 10-12
of the Answer.
Therefore, we will sustain the Examiner’s rejection of claim 15 under
35 U.S.C. § 102(b). We also will sustain the Examiner’s rejection of
dependent claims 16 and 17, which were not separately argued.
Obviousness
Dependent claim 9
Claim 9 depends from independent claim 1; as such, claim 9 includes
all of the limitations of the independent claim, including that the central
server is configured to “provide the first and second portions of the
advertiser-provided compensation to the publishers and the content
providers, respectively.” The Examiner acknowledges that Dedrick fails to
disclose that advertiser-provided compensation is provided to the content
providers (Ans. 12-13), and the Examiner has provided no articulated
reasoning with rational underpinnings for modifying Dedrick to meet this
claim limitation without impermissible hindsight.
The Examiner has, thus, failed to establish a prima facie case of
obviousness with respect to claim 9. Therefore, we will not sustain the
rejection of claim 9 under 35 U.S.C. § 103.

DECISION
The Examiner’s rejection of claims 1, 3, 5-8, 10, and 18-20 under
35 U.S.C. § 102(b) is reversed.
The Examiner’s rejection of claims 15-17 under 35 U.S.C. § 102(b) is
affirmed.
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The Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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