Ex Parte Steelberg et al

Patent Trial and Appeal BoardDec 15, 2017

13015758 (P.T.A.B. Dec. 15, 2017)

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. 13/015,758 01/28/2011 Ryan Steelberg VTONE.003.X15 3223 95508 7590 One LLP 4000 MacArthur Blvd. East Tower, Suite 500 Newport Beach, CA 92660 12/19/2017 EXAMINER KUDDUS, DANIEL A ART UNIT PAPER NUMBER 2154 NOTIFICATION DATE DELIVERY MODE 12/19/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): IPdocke ting @ onellp. com onellpdocketing @ onellp. com P AIRgroup @ onellp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYAN STEELBERG and CHAD STEELBERG Appeal 2017-007139 Application No. 13/015,7581 Technology Center 2100 Before JOHN A. JEFFERY, MARC S. HOFF, and SCOTT E. BAIN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of claims 1, 3, and 5—7. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellants’ invention is a method of creating and delivering an on- demand audio asset, such as an advertisement, to a social network website. Steps include accessing a central processing environment, requesting at least one recording of at least a portion of an audio transmission, generating at least one audio asset, adding the audio asset to a pool of related assets stored 1 The real party in interest is Veritone, Inc. Appeal 2017-007139 Application No. 13/015,758 in a vault connected to the central processing environment, selecting the generated audio asset and at least one other related asset from the pool to form a creative. The method the requests delivery of the creative to another communication device, and delivers the creative to said other communication device. See Abstract. Claim 1 is exemplary of the claims on appeal: 1. A method for delivery of an advertisement to a social network web site, comprising: creating by a member of the social network web site, using an advertising system in data communication with the social network web site, a post to the social network web site of information regarding a product or service as an advertisement, with an endorsement of the advertised product or service from the member to the followers, and an address link correspondent to a location in a computing memory of the advertising system, wherein: the information posted is provided by a seller of the product or service and stored in an advertisement database; the location in the computer memory contains a media asset relevant to the product or service in association with the information of the product or service in the advertisement database; and providing the information, the endorsement, and the address link to the followers of the member in the social network web site via a computerized telecommunications network, wherein the social network web site is responsive to verifying a total number of the followers of the member by accessing and crawling an account of the member on the social network web site, and wherein the member of the social network web site is paid by the advertising system for providing the posted information, the endorsement, and the address link to the followers of the member. 2 Appeal 2017-007139 Application No. 13/015,758 Claims 1, 3, and 5—7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Kublickis2 and Marchese3. Throughout this decision, we make reference to the Appeal Brief (“App. Br.,” filed Nov. 30, 2016) and the Examiner’s Answer (“Ans.,” mailed Jan. 26, 2017) for their respective details. ISSUE Does the combination of Kublickis and Marchese teach or suggest a social network web site that is responsive to verifying a total number of the followers of the member by accessing and crawling an account of the member on the social network web site? ANALYSIS Claims 1,3, and 5 Independent claim 1, the sole independent claim under appeal, recites a method for delivery of an advertisement to a social network web site including, inter alia, “wherein the social network web site is responsive to verifying a total number of the followers of the member by accessing and crawling an account of the member on the social network web site.” Appellants state that paragraphs 95, 100, and 105 of the Specification support this subject matter. While these paragraphs may not explicitly set forth the entity that is tasked with the function of “verifying a total number of followers of the member,” there is disclosure that there are limitations on what an influencer may do (e.g. endorse a product or service, post 2 US 2007/0067297 Al, published Mar. 22, 2007 3 US 2008/0033776 Al, published Feb. 7, 2008 3 Appeal 2017-007139 Application No. 13/015,758 information) based upon the total number of followers of that influencer. See Spec. 1100. The Examiner suggests an interpretation of the phrase “total number of the followers” as meaning simply “some plurality of users,” or “other users.” See Ans. 5. Reading the phrase “verifying a total number of the followers” in combination with the Specification’s disclosure that certain activities are limited to influencers having sufficient followers, we cannot agree with the Examiner’s interpretation. See Spec. 195, 100, 105. We find that the phrase should be construed to mean making a quantitative determination of the number of followers of an influencer or other account holder. The Examiner, after admitting that Kublickis does not explicitly teach verifying a total number of followers, finds that Marchese teaches this limitation. Ans. 4. The Examiner relies on paragraphs 13—14, 53—54, and 65 of Marchese in support of this finding. Ans. 4—5. We do not agree with the Examiner’s finding. Paragraphs 13 and 14 provide a general overview of the invention and are of no specific relevance to verification of the total number of followers. Paragraph 53 of Marchese discloses requiring verification of identity for anyone who wishes to become a social publisher on the BAC social network. “[T]he membership qualification module 210 may utilize the information to verify the existence of the social publisher by running a credit check or some other type of verification algorithm.” Marchese 153. Paragraph 54 discusses presenting various incentives to make prospective members more willing to provide their verification data. Paragraph 65 discusses the campaign creation/management module. 4 Appeal 2017-007139 Application No. 13/015,758 We find, in agreement with Appellants, that “nowhere does Marchese teach or suggest verifying the [total] number of followers of a member.” App. Br. 11. We agree with Appellants that Marchese discloses verifying an identity, which “is simply not the same as verifying the number of follower (sic) of a member.” App. Br. 11. At most, Marchese discloses “verifying the existence of the publisher.” App. Br. 12 (emphasis removed). We find that the combination of Kublickis and Marchese does not disclose all the elements of the invention recited in independent claim 1. We do not sustain the Examiner’s § 103(a) rejection of claims 1, 3, and 5.4 Claims 6 and 7 Claims 6 and 7 depend from independent claim 1. As discussed supra, we find that the combination of Kublickis and Marchese does not disclose all the limitations of independent claim 1. Therefore, we do not sustain the § 103(a) rejection of dependent claims 6 and 7 over Kublickis and Marchese, for the same reasons expressed supra with respect to independent claim 1. CONCLUSION The combination of Kublickis and Marchese does not disclose or suggest a social network web site that is responsive to verifying a total number of the followers of the member by accessing and crawling an account of the member on the social network web site. 4 In the event of further proceedings, the Examiner may wish to consider whether “wherein the social network web site is responsive to verifying a total number of the followers of the member by accessing and crawling an account of the member on the social network web site” is subject to multiple interpretations, and as such whether a rejection of the claims for indefmiteness under § 112 would be appropriate. 5 Appeal 2017-007139 Application No. 13/015,758 ORDER The Examiner’s decision to reject claims 1,3, and 5—7 under 35 U.S.C. § 103(a) is reversed. REVERSED 6