Ex parte Perttunen
| Decision Date | 31 January 2006 |
| Docket Number | 013,Application 09/629,Appeal 2005-1633 |
| Parties | Ex parte CARY D. PERTTUNEN |
| Court | Patent Trial and Appeal Board |
This Opinion is Not binding Precedent of the Board.
ON BRIEF
Before GROSS, BLANKENSHIP, and NAPPI, Administrative Patent Judges.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims 10-14, 16-27, 29-37 and 39-44.
We reverse.
The invention is directed to a method for relating advertiser-usable variables with particular hyperlinks returned in Internet searches. Claim 36 is reproduced below.
The examiner relies on the following references:
Merriman et al. (Merriman)
5, 948, 061
Sep. 7, 1999 (filed Oct. 29, 1996)
Culliss
6, 078, 916
Jun. 20, 2000 (filed Mar. 12, 1998)
Davis et al. (Davis)
US 6, 269, 361 B1
Jul. 31, 2001 (filed May 28, 1999)
Cohn et al. (Cohn)
US 6, 308, 202 B1
Oct. 23, 2001 (filed Sep. 8, 1998)
"Netscape's Communicator third party cookie option foiled" (cookiecentral), available at http://www.cookiecentral.com/dsc3.htm (Jun. 22 2005).[1]
Claims 10-12, 14, 16-25, 27, 29-36, and 39-41 stand rejected under 35 U.S.C. § 103 as being unpatentable over Cullis and Cohn.
Claims 13 and 26 stand rejected under 35 U.S.C. § 103 as being unpatentable over Cullis, Cohn, and Merriman.
Claim 37 stands rejected under 35 U.S.C. § 103 as being unpatentable over Cullis, Cohn, and Davis.
Claims 42-44 stand rejected under 35 U.S.C. § 103 as being unpatentable over Cullis, Cohn, and cookiecentral.
The examiner has withdrawn a rejection of claims 36, 37, and 39-41 under 35 U.S.C. § 102 as being anticipated by Cullis.
Claims 1-9 and 38 have been canceled. Claims 15, 28, and 45 have been withdrawn from consideration.
We refer to the Final Rejection (mailed Aug. 9, 2004) and the Examiner's Answer (mailed Dec. 29, 2004) for a statement of the examiner's position and to the Brief (filed Oct. 13, 2004) and the Reply Brief (filed Jan. 12, 2005) for appellant's position with respect to the claims which stand rejected.
OPINIONAt the outset, we note that the scanned copy of the instant specification in the USPTO image file wrapper is replete with underlining and extraneous marks that were apparently reproduced from the paper file wrapper. To avoid errors in the text of any patent that may issue from the instant application, we recommend (but do not require) that appellant file a substitute specification. See 37 CFR § 1.125; Manual of Patent Examining Procedure § 608.01(q).
The statement of the rejection of instant, independent claim 10 (Answer at 3-4) does not relate all limitations of the claim to the teachings of the references. However, the rejection concludes that it would have been obvious to have included advertising with the system of Cullis, as Cohn "teaches the idea of showing ads based upon the selected link URL." (Id. at 4) The rejection thus appears to hold that Cullis teaches all the limitations of claim 10, except for the inclusion of "advertising."
We agree with appellant, for substantially the reasons expressed in the Brief, that the examiner has failed to set forth a prima facie case for obviousness with respect to the subject matter as a whole of claim 10. We do not find the various teachings in Cullis that are implied by the rejection. For example, the rejection submits that Cullis teaches that "search activity history can be stored as cookies," referring to column 29, lines 22 through 30 of the reference. (Answer at 3.) Cullis teaches in the relevant section that "cookies" may contain key terms and/or key term groupings and scores for certain articles as a result of a user's search activity. The cookies could be periodically downloaded to a central location, where the data may be used in organizing the articles for future searches. The section does not describe, however, storing the "specific link information" in the cookies. Even assuming that such is "inherently" required, as alleged by the rejection, the teaching is not commensurate with the claim 10 requirement of "storing the first advertiser-usable variable and the second advertiser-usable variable in at least one cookie. . . ." In particular, we find no suggestion for storing advertiser-usable variables, as claimed, as part of the search activity history as taught by Cullis. In our view, such a combination could only result from an improper hindsight reconstruction of the invention.
Independent claim 23 contains limitations similar to those of claim 10. Claim 23 requires, however, storage of the advertiser-usable variables in a database of an advertisement server node. The statement of the rejection of claim 23 (Answer at 4) rests on the finding of a suggestion for (first) storing the variables in cookies at the client node, which is a finding that is unsupported by the applied references.
The additional references applied against dependent claims 13, 26, and 42 through 44 do not remedy the deficiencies in the rejection against base claims 10 and 23. We thus do not sustain the § 103 rejection of claims 10-14, 16-27, 29-35, and 42-44.
Instant claim 36 recites, "targeting an advertisement to a particular numerical range of one or more positions in browsing sequences of Web resources. . . ." We note that a "browsing sequence" of Web resources, in view of pages 9, 18, and 19 of the specification, may be defined by a unary tree (wherein each internal node of the tree...
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