Ex Parte Bove et al

Board of Patent Appeals and Interferences

Mar 28, 2011

09777492 (B.P.A.I. Mar. 28, 2011)

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.
09/777,492 02/05/2001 Stephen B. Bove 773919-0511 8359
27910 7590 03/29/2011
STINSON MORRISON HECKER LLP
ATTN: PATENT GROUP
1201 WALNUT STREET, SUITE 2900
KANSAS CITY, MO 64106-2150
EXAMINER
CHENCINSKI, SIEGFRIED E
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
03/29/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEPHEN B. BOVE, MARTY C. FRAME, MICHAEL A.
KALOUSEK, NANCY B. LEHRER, NATASHA N. MACPHERSON,
MARIA VERONICA PENNINGTON, ANIL K. PALAT, and STUART
WOLFF
____________________

Appeal 2009-011254
Application 09/777,492
Technology Center 3600
____________________

Before: MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011254
Application 09/777,492

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 (2002) from the
Examiner’s non-final rejection of claims 1-25. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
We AFFIRM.

THE CLAIMED INVENTION
Appellants claim a system, method, and medium for generating and
managing anonymous leads to assist in the buying and selling of goods
and/or services (Specification 1:¶1). Claim 1 is illustrative of the claimed
subject matter:
1. A computer-implemented method for generating anonymous
leads from anonymously submitted database search criteria,
comprising:
(a) maintaining a prospect database identifying device-
identifying information and corresponding prospect information
comprising:
(i) prospect-identifying information,
(ii) anonymously submitted search criteria, and;
(iii) search information corresponding to said search criteria;
(b) transmitting said prospect information to a business expert
in a prospect presentation, wherein the prospect presentation is
designed to enable generation of a proposal, and wherein the
prospect information does not include the device identifying
information from a prospect; and
(c) transmitting said proposal to a device associated with the
prospect for which the proposal is generated.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Walker
Dahod
Flight.
Liu.
US 5,794,207
US 6,574,608 B1
US 6,662,199 B1
US 6,839,680 B1
Aug. 11, 1998
Jun. 3, 2003
Dec. 9, 2003
Jan. 4, 2005
Wilkins US 6,868,389 B1 Mar. 15, 2005
Walker US 2002/0169626 A1 Nov. 14, 2002

REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1, 3, 5-9, 10, 12-16 and 18-20 under 35
U.S.C. 103(a) as unpatentable over Dahod and Wilkins.
The Examiner rejected claims 2, 11, and 17 under 35 U.S.C. § 103(a)
over Dahod, Wilkins, and Liu.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) over Dahod,
Wilkins, and Walker ‘207.
The Examiner rejected claims 21-23 under 35 U.S.C. § 103(a) over
Dahod and Walker ‘626.
The Examiner rejected claims 24 and 25 under 35 U.S.C. § 103(a)
over Dahod, Walker ‘626, and Flight.

ISSUES
Did the Examiner err in rejecting claims 1, 3, 5-9, 10, 12-16 and 18-
20 under 35 U.S.C. § 103(a) over Dahod and Wilkins as disclosing
anonymously submitted search criteria, since Dahod discloses that user
registration may use a fictional username to protect anonymity?
Did the Examiner err in rejecting claims 21-25 under 35 U.S.C.
§ 103(a) over Dahad and Walker ‘626 as disclosing search criteria stored
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without a requirement of user registration since Walker requires merchant
registration?
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification does not define or describe the term anonymously.
2. The ordinary and customary definition of the term anonymous, as defined
by Merriam Webster’s Collegiate Dictionary (10th ed.), is: “not named
or identified.”
3. The Specification describes that “‘prospect’ means a record, either
localized or distributed, containing data, which includes information
regarding a consumer’s [(i.e. search-requestor’s)] needs/preferences.”
(Specification 5:27-29).
4. Dahod discloses that anonymity can be preserved because “[t]he system
preferably allows the username entered by the buyer to be fictional to
protect anonymity.” (Col. 5 ll. 16-18).
5. Dahod discloses receiving from a potential buyer a description of a
product or service desired, and “storing said description in a searchable
database indexed by category and keywords; and receiving from a
potential seller a category and/or keyword for a product or service as
criteria to search the searchable database; and wherein making said
description available comprises making descriptions that match the
criteria available to the potential seller. (Claim 65).
6. Wilkins discloses that the purpose of the cookie is “to record user
preferences or browsing history.” (Col. 2 ll. 33-34).
7. Although Wilkins discloses that “online behavior can be tracked, and
often linked to a person’s name, home address, and telephone number,
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databases containing both online and offline behavior data are being
collected” (Col. 2 ll. 48-52), it does not tie linking of personal identity
to the use of the cookie.
8. The Specification describes that the “term ‘user’ is used herein to refer
both to consumers (i.e. search-requesters) and business experts.”
(Specification 7 ¶34).
9. The Specification describes by example that “[f]or an unregistered
consumer, the user identifier is equivalent to a device identifier and is
used as such.” (Specification 8 ¶36).
10. The Specification describes by example that a business expert must log
in to the system, and if the business expert is not a registered user,
“control passes to step 404. In step 404, a response is sent, which causes
a registration screen to be displayed.” (Specification 19 ¶¶92-93).

ANALYSIS
Claims 1, 3-8, 9, 10, 12-15, 16, and 18-20
The rejections are affirmed as to claims 1, 3-8, 9, 10, 12-15, 16, and
18-20. We note that the Appellants argue independent claims 1, 9, and 16
together as a group. (App. Br. 15-17). Correspondingly, we select
representative claim 1 to decide the appeal of these claims. Appellants do
not provide a substantive argument as to the separate patentability of claims
3-8, 10, 12-15, and 18-20 that depend from claims 1, 9, and 16. Therefore,
claims 3-10, 12-16, and 18-20 fall with claim 1. See,
37 C.F.R. § 41.37(c)(1)(vii) (2004).
Appellants argue anonymity in the claims not disclosed by the
references, stating:
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That anonymity extends even to the provider of the lead
generation system who is ‘unable to identify the consumer’ (see
paragraph [14] of present application). Dahod et al., on the
other hand, requires registration of buyers and sellers and the
submission of personal, identifying information which
eventually is exchanged once a deal is reached between the
buyer and the seller.
(Appeal Br. 15).
We disagree with Appellants for the following reasons.
Claim 1 recites, in pertinent part, corresponding prospect information
comprising: (i) prospect-identifying information, (ii) anonymously submitted
search criteria.
We find the term anonymously is not defined or described in the
Specification (FF 1). We thus rely on the ordinary and customary meaning
of “anonymous,” which is, “not named or identified” (FF 2).
The Specification describes that a prospect is a record tied to a search
request and the data thereof is limited to a search requestor’s
needs/preferences information (FF 3). We thus interpret prospect data to be
limited to these items, without individual identification.
We further find that Dahod discloses registering a user using a
fictional user-created username (FF 4). As such, Dahod discloses not
identify the true user and thus preserves the anonymity of the user and the
corresponding search criteria, as required by the claims. Since we find that
Dahod discloses the claim features, Wilkins is cumulative.
Appellants also argue, Wilkins’ use of “user-identifying cookies
(where ‘on line behavior can be tracked and often linked to a person's name,
home address, and telephone number ...’ see Wilkins et al., Col. 2, lines 49-
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51)” teaches away from the anonymous lead generation system claimed.
(Appeal Br. 16).
We are not persuaded by Appellants’ argument because although
Wilkins discloses that online behavior can be tracked, and often linked to a
person’s name, home address, and telephone number, Wilkins does not tie
linking of personal identity to the use of the cookie (FF 7). This is
consistent with Wilkins disclosing the limited purpose of the cookie is “to
record user preferences or browsing history.” (FF 6).
Claims 21-23
We affirm the rejection of claims 21-23. Appellants do not provide a
substantive argument as to the separate patentability of claims 22-23 that
depend from claim 21, therefore we address only claim 21. Claims 22 and
23 fall with claim 21. See, 37 C.F.R. § 41.37(c)(1)(vii) (2004).
Independent claim 21 recites, in pertinent part, whereby search
criteria is stored in association with search-requestor information without a
requirement of user registration.
Appellants argue:
As discussed above, the buyer-driven system of Dahod et al.
teaches away from a non-registration system, and specifically
requires users to register in order to receive proposals from the
system (see Dahod et al., column 5, lines 7-21. Similar to
Dahod et a1., Walker et al. requires that merchants register in
the system with their contact information (see FIG. 9, and
paragraph [0062] of Walker et al.).
(Appeal Br. 18).
We disagree with Appellants for the following reasons.
We find the Specification states that the term user refers to two types
of users: search-requesters and business experts (FF 8). Appellants’
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Summary of Claimed Subject Matter (Appeal Br. 9) states that in the case of
a search-requester, the user may operate without registration, since the user’s
device identifier is used as a user identifier (FF 9). The Specification only
calls for registration in the case of a business expert who must log into the
system (FF 10). We therefore interpret the claim term user registration to
refer only to registration for a business expert user, and not a search-
requester, which is what occurs in Walker1.
Appellants also argue “claim 21 of the present application requires
storing search criteria in association with search-requester information.
Neither Dahod et al. nor Walker et al., nor their combination, make any
teaching, suggestion, or disclosure of storing such search criteria.” (Appeal
Br. 19).
We are not persuaded by Appellants' argument because we find
Dahod stores search criteria acquired from consumers for later use by
merchants to identify prospects (FF 5).
Claims 2, 11, and 17
Appellants argue claims 2, 11, and 17 are not obvious for the reasons
stated at claim 1. Since we find no error in the Examiner’s rejection of
claim 1, we affirm the rejections of claims 2, 11, and 17 for the same reasons
set forth at claim 1.
Claim 4
Appellants argue claim 4 is not obvious for the reasons stated at claim
1. Since we find no error in the Examiner’s rejection of claim 1, we affirm
the rejection of claim 4 for the same reasons set forth at claim 1.

1 The Examiner’s found that Walker does not require consumer/search-
requester user registration, but only business users. (Answer 10).
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Claims 24 and 25
Appellants argue claims 24 and 25 are not obvious for the reasons
stated at claim 21. Since we find no error in the Examiner’s rejection of
claim 21, we affirm the rejection of claims 24 and 25 for the same reasons
set forth at claim 21.

CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1, 3, 5-9, 10, 12-16 and
18-20 under 35 U.S.C. 103(a) as unpatentable over Dahod and Wilkins.
The Examiner did not err in rejecting claims 2, 11, and 17 under 35
U.S.C. § 103(a) over Dahod, Wilkins, and Liu.
The Examiner did not err in rejecting claim 4 under 35 U.S.C. §
103(a) over Dahod, Wilkins, and Walker ‘207.
The Examiner did not err in rejecting claims 21-23 under 35 U.S.C. §
103(a) over Dahod and Walker ‘626.
The Examiner did not err in rejecting claims 24 and 25 under 35
U.S.C. § 103(a) over Dahod, Walker ‘626, and Flight.

DECISION
The Examiner’s rejection of claims 1-25 under 35 U.S.C. § 103(a) is
AFFIRMED.

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) (2010).

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Application 09/777,492

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AFFIRMED

MP

STINSON MORRISON HECKER LLP
ATTN: PATENT GROUP
1201 WALNUT STREET, SUITE 2900
KANSAS CITY MO 64106-2150