UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. Ex parte NICK NYHAN; and RONIT AVIV

Transcription

1

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICK NYHAN; and RONIT AVIV Appeal Technology Center 3600 Before, HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. 134 of the Examiner s final rejection of claims 1, 3, 5 7, 9 17, 21, 26 28, and Claims 8, and are objected to. We have jurisdiction under 35 U.S.C. 6(b). A telephonic hearing was held on November 15, We AFFIRM IN PART. SUMMARY OF DECISION 1 Appellants identify Dynamic Logic, Inc.as the real party in interest. Br. 1.

3 THE INVENTION Appellants claim on-line advertising and, more particularly, to soliciting computer users to take on-line surveys. appeal. Claim 1 reproduced below, is representative of the subject matter on 1. A method for conducting an on-line survey in association with presentation of an on-line advertisement by a browser client, the method comprising: receiving, by a user computer hosting the browser client, a web page configured to display an on-line advertisement; issuing, by the user computer in association with processing the received web page, a request to an ad server, for a block of data comprising computer-readable instructions for presenting the on-line advertisement via the browser client; sending, by the ad server in response to the issued request from the user computer, the block of data including computerreadable instructions for presenting the on-line advertisement and the block of data further including additional computerreadable instructions that facilitate decision-making steps for determining whether to present an on-line survey solicitation via the browser client, wherein acceptance of the on-line survey solicitation by the user results in presentation of an on-line survey via the browser client; accessing, on the user computer, a timestamp value indicative of a period of time that has passed since the on-line survey solicitation was previously presented by the browser client; and 2

4 executing the additional computer-readable instructions if the timestamp value indicates passage of a period of time satisfying a prescribed wait period between consecutive presentations of the on-line survey solicitation by the browser client on the user computer. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Smith US 2002/ Al Sep. 12, 2002 de Ment US 6,728,755 B1 Apr. 27, 2004 Winn US 6,901,424 B1 May 31, 2005 The following rejections are before us for review. Claims 1, 3, 5 7, 11 17, 26 27, and 33 are rejected under 35 U.S.C. 103(a) as being unpatentable over Smith in view of de Ment. Claims 9, 10, 21 and are rejected under 35 U.S.C. 103(a) as being unpatentable over Smith in view of de Ment and in further view of Winn. the Answer. servlet 116. FINDINGS OF FACT 1. We adopt the Examiner s findings as set forth on pages 5 20 of 2. Figure 1 of de Mint is shown below illustrating the pop-up 3

5 Figure 1 of de Mint is shown above illustrating the pop-up servlet de Mint discloses, [a]t decision step 216, the routine determines whether or not the user has seen the particular survey within the last six months. This involves initially checking to see whether the user has a cookie corresponding to the pop-up survey routine. Col. 4, ll de Mint discloses that,... if it is determined that the user has been presented with the survey in the last six months, then again, the routine returns a value at step 210 indicating that the survey is not to be popped. Col. 4, ll Smith discloses that [a]ccording to another aspect, the set of one or more screening questions is generated based on the target participation criteria that is associated with one or more active surveys

6 ANALYSIS 35 U.S.C. 103(a) REJECTION Appellants argue claims 1 and 13 as a group. We select claim 1 as the representative claim for this group, and the remaining independent claim 13 stands or falls with claim C.F.R (c)(1)(vii) (2011). claim 1. For the reasons that follow, we sustain the Examiner s rejection of Claim 1 recites, in pertinent part, the step of, issuing, by the user computer in association with processing the received web page, a request to an ad server, for a block of data comprising computer readable instructions for presenting the on-line advertisement via the browser. Concerning this limitation Appellants argue that The Final Office Action has thus relied upon de Ment's general statement of "any action" to support the specific on-line advertisement delivery mechanism recited in Appellants' "issuing" step. Moreover, Appellants' claimed "issuing" step is directed to how an on-line ad block is initially requested, not how a popup survey routine is commenced (as described in cols. 3, 11 and of de Ment cited in the Final Office Action). (Appeal Br. 10). We disagree with Appellants because we find with the Examiner that an action commenced on the part of the user in de Ment in association with processing the received web page, constitutes issuing a request as required by the claims. (Answer 6). Our review of de Ment at Column 3, lines reveals that the pop-up routine is invoked in response to the user initiating execution of the web tool. We thus agree with the Examiner that action taken by the user using the web tool that causes the response by the 5

7 pop up routine, is taken by an ad server as a request for a block of data comprising computer readable instructions for presenting the on-line advertisement via the browser, because of the cause and effect nature of the response. Claim 1 also recites in pertinent part, sending, by the ad server in response to the issued request from the user computer, the block of data including computerreadable instructions for presenting the on-line advertisement and the block of data further including additional computerreadable instructions that facilitate decision-making steps for determining whether to present an on-line survey solicitation via the browser client, wherein acceptance of the on-line survey solicitation by the user results in presentation of an on-line survey via the browser client. Concerning this sending step, Appellants argue that: Appellants first note that the sending step is performed by the ad server in response to the issuing step that, as explained above, is not described in either Smith or de Ment. For at least this reason alone, the sending step is not disclosed by either Smith or de Ment. (Appeal Br. 11). Appellants argument is not persuasive as to error in the rejection because Appellants have not explained why sending the additional computer-readable instructions that facilitate decision making steps by a server is not obvious over the manner by which the pop up survey is accomplished in de Mint. According to Figure 1 of de Mint, the system includes a pop-up survey servlet and associated program 117 which are in communication with the web user via the Internet 105. (FF. 2). Thus, we find that de Mint discloses all the elements which are recited in the method step including computer-readable instructions that facilitate decision-making 6

8 steps for determining whether to present an on-line survey solicitation via the browser client. (FF. 3). While de Mint is silent as to from where these instructions are executed (server side or user computer side), we find that the mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). The issue is whether the difference between the prior art and the subject matter in question is a differen[ce] sufficient to render the claimed subject matter unobvious to one skilled in the applicable art. Dann, 425 U.S. at 228 (citation omitted) (finding system for automatic record keeping of bank checks and deposits obvious in view of nature of extensive use of data processing systems in banking industry and closely analogous patent for an automatic data processing system used in a large business organization for keeping and updating system transaction files for each department of the organization). We also disagree with Appellants that it would not have been obvious to modify Smith in view of de Ment, since Smith does not express any need to limit the quantity/frequency of survey solicitations presented to users. (Appeal Br. 12) This is because we find that Smith does actually use screening questions based on the target participation criteria that is associated with one or more active surveys (FF. 5), which suggests limiting of the surveys to applicable people. Appellants also argue that, Appellants initially note that de Ment tracks when a survey was last taken by a user not (as claimed) when a survey solicitation was last presented. If anything, the combination of Smith and de Ment results in a system where timestamps are used to enforce a minimum wait period between taking a survey. (Appeal Br. 13). 7

9 We disagree with Appellants that the difference constitutes error in the rejection because setting a metric to one of last taken or last presented is deemed to be no more than a matter of obvious design choice for a person with ordinary skill in the art depending on what the designer seeks to accomplish using the time marker. See, In re Hopkins, 342 F2d 1010, 1015 (CCPA 1965). We also disagree with Appellants that it is not necessary (or even desirable) for a timestamp (such as de Ment's) to be used in association with Smith's presentation of a survey. (Appeal Br. 13) because the use of the de Mint timestamp would not prohibit the determination of whether a user has, or has not, taken a survey. Rather, the modification would beneficially add to the information about when the involved user took the survey thereby enhancing further analysis of the gathered data. Appellants arguments to independent claim 17 are addressed supra concerning (FF. 3). We also affirm the rejections of dependent claims 3, 5, 12, 14, 16, 26, 27 and 33 since Appellants have not challenged such with any reasonable specificity (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)). Claim 6. We disagree with Appellants that the combination fails to disclose that the timestamp value indicates that the on-line survey solicitation was presented by the browser client (Appeal Br ) because first, we find with the Examiner that a timestamp is at least inherently associated with a cookie in de Mint in order to determine the age of the cookie. (Answer 9, (FF. 3,4)). That said, we find that the timestamp in de Mint being explicitly 8

10 disclosed as meaning that the survey was presented, hence meets the requirement for a solicitation. (FF. 3, 4) Claims 7 and 15 Appellants arguments to claims 7 and 15 fail from the outset because they are not based on limitations appearing in the claims and are not commensurate with the broader scope of these claims which do not require previously presented, but declined, presentations of survey solicitations. (Appeal Br. 15). In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Claim 11 We also disagree with Appellants argument that, Neither Smith nor de Ment discloses linking the survey questions to a product or service advertised in the on-line advertisement provided in the block of data downloaded from the ad server (Appeal Br. 15) because the content of the questions cannot distinguish over the prior art because such content is discernable only to the human mind.... ; see In re Lowry, 32 F.3d 1579, 1583 (Fed.Cir.1994) (describing printed matter as useful and intelligible only to the human mind ) (quoting In re Bernhart,. 417 F.2d 1395, 1399 (CCPA 1969)). See also, In re Xiao, WL , at *3 4 (Fed. Cir. 2011) (Non-precedential). Thus, non-functional descriptive material, being useful and intelligible only to the human mind, is given no patentable weight. See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Claims 9-10, 21 and We will not sustain the rejection of dependent claim 9 for the reasons set forth on page 16 of the Appeal Brief. But, because the scope of claim 9 is narrower than that of the remaining claims grouped by the Appellants (claim 9 requires a look up table whereas none of the remaining grouped claims 9

11 require a look up table), we will sustain the rejection of claims 10, 21 and and adopt the Examiner s findings as proper for them claims as set forth on pages of the Appeal Brief. Claim 32 We will not sustain the rejection of claim 32 because we do not find where in the Examiner s findings that the prior art discloses explicitly or by making it obvious, appending a random number to a URL used by a browser. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1, 3, 5 7, 10 17, 21, 26 31, and 33 under 35 U.S.C We conclude the Examiner did err in rejecting claims 9 and 32 under 35 U.S.C DECISION No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R (a). See 37 C.F.R (a)(1)(iv). AFFIRMED-IN-PART Klh 10