Ex Parte Balestrieri et alDownload PDFPatent Trial and Appeal BoardJun 23, 201612815732 (P.T.A.B. Jun. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/815,732 06/15/2010 Filippo Balestrieri 56436 7590 06/27/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 82263383 1988 EXAMINER NETZLOFF, ERIC R ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 06/27/2016 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): hpe.ip.mail@hpe.com mkraft@hpe.com chris.mania@hpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FILIPPO BALESTRIERI, ENIS KAYIS, and SHY AM SUNDAR RAJARAM Appeal2013-007179 Application 12/815,732 1 Technology Center 3600 Before: HUBERT C. LORIN, ANTON W. PETTING, and MATTHEWS. MEYERS, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Filippo Balestrieri, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner's Final rejection of claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE. 1 The Appellants identify Hewlett-Packard Development Company, LP, as the real party in interest. App. Br. 3. Appeal2013-007179 Application 12/815,732 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A targeted advertising method, comprising: surveying, by a computing device, potential customers to ascertain a price sensitivity and a likelihood of the potential customers purchasing products and observing particular websites; clustering, by a computing device, the potential customers according to product clusters based on the likelihood of purchasing the products; clustering, by a computing device, potential customers of each product cluster in terms of browsing behavior according to one or more website clusters based on the likelihood of the potential customers of each product cluster to observe the particular websites; designing, by a computing device, an advertisement for a respective one of the particular websites corresponding to a particular website cluster and product cluster to include at least one product corresponding to a particular product cluster which is promotionally- priced bas"ed on the price sensitivity of potential customers of a particular website cluster; and modifying, by a computing device, an electronic display of the respective one of the particular websites to include the designed advertisement. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Kowalchuk et al. US 2002/0010620 Al Jan.24,2002 (hereinafter "Kowalchuk") Zellner et al. US 2006/0149637 Al Jul. 6, 2006 (hereinafter "Zellner") Wnek US 2006/0242140 Al Oct. 26, 2006 2 Appeal2013-007179 Application 12/815,732 Madhaven et al. US 2009/0055254 Al (hereinafter "Madhavan") Utter et al. US 2009/0271255 Al (hereinafter "Utter") Peles et al. US 2011/0196690 Al (hereinafter et al. "Peles") The following rejections are before us for review: Feb.26,2009 Oct. 29, 2009 Aug. 11, 2011 1. Claims 3 and 8 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. 2. Claims 6, 14, and 15 are rejected under 35 U.S.C. §102(e) as being anticipated by Utter. 3. Claims 1, 4, and 5 are rejected under 35 U.S.C. §103(a) as being unpatentable over Utter and Kowalchuk. 4. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Utter, Kowalchuk, and Madhaven. 5. Claim 3 is rejected under 35 U.S.C. §103(a) as being unpatentable over Utter, Kowalchuk, Madhaven, and Peles. 6. Claim 7 is rejected under 35 U.S.C. §103(a) as being unpatentable over Utter and Madhaven. 7. Claim 8 is rejected under 35 U.S.C. §103(a) as being unpatentable over Utter, Madhaven, and Peles. 8. Claims 9 and 10 are rejected under 35 U.S.C. §103(a) as being unpatentable over Utter, Madhaven, Peles, and Zellner. 9. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zellner. IO.Claim 13 is rejected under 35 U.S.C. §103(a) as being unpatentable over Utter and Wnek. 3 Appeal2013-007179 Application 12/815,732 ISSUES Did the Examiner err in rejecting claims 2, 3, 7 and 8 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement? Did the Examiner err in rejecting claims 6, 14, and 15 under 35 U.S.C. § 102( e) as being anticipated by Utter? Did the Examiner err in rejecting claims 1, 4, and 5 as being unpatentable over Utter and Kowalchuk; 2 as being unpatentable over Utter, Kowalchuk, and Madhaven; 3 as being unpatentable over Utter, Kowalchuk, Madhaven, and Peles; 7 as being unpatentable over Utter and Madhaven; 8 as being unpatentable over Utter, Madhaven, and Peles; 9 and 10 as being unpatentable over Utter, Madhaven, Peles, and Zellner; 11 and 12 as being unpatentable over Utter and Zellner; and, 13 as being unpatentable over Utter and Wnek under 35 U.S.C. §103(a) respectively? ANALYSIS The rejection of claims 3 and 8 under 35 US.C. §112,first paragraph, as failing to comply with the enablement requirement. The posture of this rejection is unclear. It does not appear in the Non- Final Rejection (mailed Apr. 26, 2012). It first appears in the Final Rejection (mailed Sept. 7, 2012 (page 2)), although not as a new ground of rejection. The Appellants responded to it via the Amendment After Final (filed Oct. 30, 2012) but the Advisory Action (mailed Nov. 16, 2012) provides no indication that the response was reviewed and the rejection nevertheless maintained (in contrast to the express indication that the prior art rejections are maintained). The Appellants apparently believed that the absence of such an indication in the Advisory Action meant the rejection 4 Appeal2013-007179 Application 12/815,732 was withdrawn and so the Appeal Brief (filed Jan. 28, 2013) does not address it. See Reply Brief (filed May 8, 2013). The Examiner's Answer (mailed Mar. 28, 2013) however repeats the rejection as originally presented in the Final Rejection, leading the Appellants to take the view that the rejection is a new ground of rejection. See Reply Brief 4. We will not attempt to clarify the posture of the rejection because it fails to present a prima facie case in the first instance. The statement of the rejection in both the Final Rejection and Answer is worded as a rejection under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. A Specification is not enabling if a person of ordinary skill in the art would be unable to practice the invention without "undue experimentation." In re Wands, 858 F.2d 731, 737. Factors relevant to a determination of whether undue experimentation would be necessary include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, ( 6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Id. The initial burden is on the Examiner to set forth "a reasonable explanation" of why the Examiner believes a person of ordinary skill in the art, given what the Specification discloses, would be unable to practice the invention without "undue experimentation." See In re Wright, 999 F.2d 1557, 1561---62 (Fed. Cir. 1993). That has not been done here. Claims 3 and 8 further limit the advertisement to a banner ad and define the landing page to which the banner ad is linked as being selected "based on the location of the banner ad within [a particular website]." The Examiner finds that "[t]he applicant discloses at i-fl9 [of the Specification] 5 Appeal2013-007179 Application 12/815,732 that differently placed banner ads may lead to different landing pages and at i-f37 the applicant discloses that the price is shown on the landing page." Answer 3. According to the Examiner, "[ m ]erely stating that some people may use an ad differently does not teach how to select the landing page." Answer 4. However we do to see why the Examiner believes a person of ordinary skill in the art, given what the Specification discloses, would be unable to provide a banner ad linked to a landing page selected "based on the location of the banner ad within [a particular website]," as claims 3 and 8 require, without "undue experimentation." A prima facie case that claims 3 and 8 fail to comply with the enablement requirement of§ 112(a) has not been made out in the first instance. Accordingly, the rejection is not sustained. The rejection of claims 6, 14, and 15 under 35 US.C. §102(e) as being anticipated by Utter. A central issue is whether the clustering steps of independent claim 6 is described in Utter. There is no dispute that the claim term "cluster" is not explicitly recited in Utter. In that regard, the Examiner has equated the clustering as claimed to Utter' s classification technique; to wit, Utter discloses surveying value cost propositions about future purchases, and Utter discloses collecting additional intelligence about the user, such as browser history. Utter uses the customer value proposition to find the market segment interested in the product. Utter then adjusts this segment based on browsing history. Finally, Utter designs advertising for the market segment based on this latent demand for the market segment. Clearly, this latent demand is based on the customer's expressed interested in the product and the customer web browser history, which means the market segment is the same set of users as the applicant's nested cluster, which was based on user's interested in the product that are also likely to visit the website. 6 Appeal2013-007179 Application 12/815,732 The applicant's nesting clustering is equivalent to a process that targets advertising to users based on multiple criteria, such as filtering, categorizing, refining, grouping, adjusting and/or segmenting. In both Utter and the applicant's case, the result of the process creates an advertisement for a set of users that are interested in the product and visit the website. Examiner respectfully asserts that the applicant's process adjusts data sets which is no different than what is typically done. Typically, users are clustered by some attribute and those attributes are correlated to infer relationships between the clusters for the purpose of presenting an advertisement. The applicant's cluster is merely a market segment because the applicant starts with all the users in the world, then segments the group to those users interested in a product and then segments that group further to just those users that visit specific websites. The applicant then presents an ad. Answer 5---6. The difficulty with the analysis is that it does not fully address what is claimed. Claim 6 calls for a plurality of product clusters - each product cluster corresponding to a product classification. Potential customers of a product cluster having indicated a preference for purchasing products of the corresponding product classification are clustered into the plurality of product clusters. The cluster of potential customers of a product cluster are further clustered into website clusters based on likelihood of potential customers of the product cluster to observe particular websites. The Examiner has equated aggregation of users based on cost value propositions to the product clustering as claimed. See Final Rejection 5, citing para. 64 of Utter. But all that Utter describes is that the cost value proposition relates to a commercial transaction, including data such as commercial transaction product price point, sensitivity to price and time, preferred shipping mechanism( s ), contractor reputation, supply chain utilized by contractor, and so on. See Utter abstract, for example. Utter fails 7 Appeal2013-007179 Application 12/815,732 to describe, expressly or inherently, how the cost value proposition relates to purchasing products and classifying customers based on product clusters. Utter also describes aggregation of users based on intelligence and supplemental data (see paras. 37 and 66 as cited in the Final Rejection, page 6). But we fail to see how this the further clustering into website clusters based on likelihood of potential customers of the product cluster to observe particular websites as claimed reads on Utter' s aggregation of users based on intelligence and supplemental data as the Examiner has argued. Utter does not cluster potential customers based on the commercial transaction data and further cluster based on internet browsing data. Rather, Utter creates another market segment by inferring a value-cost proposition using the intelligence and supplemental data. Utter describes creating multiple market segments, one based on commercial transaction data and another based on internet browsing data. However, as the Appellants have persuasively argued (see App. Br. 12), this is different from what the Appellants have claimed, which involves clustering potential customers based on products and then clustering further based on the likelihood of potential customers of each product cluster visiting particular websites. A prima facie case of anticipation for the subject matter of claim 6 has not been made out in the first instance by a preponderance of the evidence. Accordingly, the rejection is not sustained. Claim 14 depends from claim 6 and the rejection of claim 14 is not sustained for the same reasons. Claim 15, which includes the same clustering limitations as those discussed, was rejected for the same reasons as used in rejecting claim 6. See Final Rejection 9--11. Accordingly, the rejection of claim 15 is not sustained for the same reasons. 8 Appeal2013-007179 Application 12/815,732 The rejection of claims 1, 4, and 5 under 35 USC §103(a) as being unpatentable over Utter and Kowalchuk. Claim 1 includes the same clustering limitations as those discussed above with respect to claim 6. The Examiner makes the same findings - that Utter describes said limitations. For the reasons already discussed, we do not find that Utter describes said limitations. Accordingly, a prima facie case of obviousness has not been made out in the first instance by a preponderance of the evidence. According, the rejection of claim 1 is not sustained. Claims 4 and 5 depend from claim 1 and their rejection is not sustained for the same reasons. The rejection of claim 2 under 35 USC §103(a) as being unpatentable over Utter, Kowalchuk, and Madhaven. The rejection of claim 3 is rejected under 35 USC §103(a) as being unpatentable over Utter, Kowalchuk, Madhaven, and Peles. The rejection of claim 7 under 35 USC §103(a) as being unpatentable over Utter and Madhaven. The rejection of claim 8 is rejected under 35 USC §103(a) as being unpatentable over Utter, Madhaven, and Peles. The rejection of claims 9 and 10 under 35 USC §103(a) as being unpatentable over Utter, Madhaven, Peles, and Zellner. The rejection of claims 11and12 under 35 USC §103(a) as being unpatentable over Zellner. The rejection of claim 13 under 35 USC §103(a) as being unpatentable over Utter and Wnek. 9 Appeal2013-007179 Application 12/815,732 These rejections of claims that depend from independent claims whose rejections we have not sustained are also not sustained for the same reasons. CONCLUSIONS The rejection of claims 3 and 8 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement is reversed. The rejection of claims 6, 14, and 15 under 35 U.S.C. §102(e) as being anticipated by Utter is reversed. The rejection of claims 1, 4, and 5 under 35 U.S.C. §103(a) as being unpatentable over Utter and Kowalchuk is reversed. The rejection of claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Utter, Kowalchuk, and Madhaven is reversed. The rejection of claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Utter, Kowalchuk, Madhaven, and Peles is reversed. The rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Utter and Madhaven is reversed. The rejection of claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Utter, Madhaven, and Peles is reversed. The rejection of claims 9 and 10 under 35 U.S.C. § 103(a) as being unpatentable over Utter, Madhaven, Peles, and Zellner is reversed. The rejection of claims 11and12 under 35 U.S.C. §103(a) as being unpatentable over Zellner is reversed. The rejection of claim 13 under 35 U.S.C. § 103(a) as being unpatentable over Utter and Wnek is reversed. 10 Appeal2013-007179 Application 12/815,732 DECISION The decision of the Examiner to reject claims 1-15 is reversed. REVERSED 11 Copy with citationCopy as parenthetical citation