Ex Parte DhamodharanDownload PDFPatent Trial and Appeal BoardJun 16, 201712185332 (P.T.A.B. Jun. 16, 2017) Copy Citation 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. 12/185,332 08/04/2008 Rajasekaran Dhamodharan P-14140US/119945-141400US 9159 95352 7590 06/20/2017 Greenberg Traurig, LLP (VISA) Intellectual Property Department 77 West Wacker Drive, Suite 3100 Chicago, IL 60601 EXAMINER BERONA, KIMBERLY SUE ART UNIT PAPER NUMBER 3665 NOTIFICATION DATE DELIVERY MODE 06/20/2017 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): clairt@gtlaw.com rupickd@gtlaw.com gtipmail @ gtlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAJASEKARAN DHAMODHARAN Appeal 2015-002984 Application 12/185,332 Technology Center 3600 Before ANTON W. FETTING, JAMES A. WORTH, and ROBERT J. SILVERMAN, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-002984 Application 12/185,332 STATEMENT OF THE CASE1 Rajasekaran Dhamodharan (“Appellant”) seeks review under 35 U.S.C. § 134 of a final rejection of claims 38, 41, 42, 44-46, 49, 50, 52— 55, and 57, the only claims pending in the application on appeal.2 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a form of real time marketing of goods and services using behavioral targeted advertising techniques. Specification para. 1. An understanding of the invention can be derived from a reading of exemplary claim 57, which is reproduced below (bracketed matter and some paragraphing added). 57. A method, comprising: [1] processing, by a transaction processor, a plurality of transactions for goods or services between merchants and a consumer to provide an account transaction history for an account associated with the consumer, wherein each of the transactions is executed by a portable consumer device of the consumer; [2] receiving, by the transaction processor, a request from a content provider for an advertisement, 1 Our decision will make reference to the Appellant’s Appeal Brief (“App Br.,” filed May 28, 2014) and Reply Brief (“Reply Br.,” filed January 16, 2015), and the Examiner’s Answer (“Ans.,” mailed November 18, 2014), and Final Action (“Final Act.,” mailed January 28, 2014). 2 Although the Final Action also includes claims 43 and 51, these claims were canceled in an amendment filed May 27, 2014, and the cancellation was entered by the Examiner (Ans. 9). 2 Appeal 2015-002984 Application 12/185,332 wherein the advertisement is to be targeted to the consumer, and wherein the consumer has requested content from the content provider; [3] obtaining, by the transaction processor, via a computing device, a spending profile for the consumer using the account, wherein the obtaining the spending profile comprises accessing the account transaction history, and deriving the spending profile from the account transaction history; [4] selecting, by the transaction processor, via the computing device, a first advertisement from an advertisement database, wherein the first advertisement is selected for the consumer based on the spending profile; and [5] sending the first advertisement to the content provider, [6] wherein the first advertisement is to be included in a page to be sent for display on the portable consumer device, and [7] wherein the content provider is to fit the first advertisement and the requested content to the page, and deliver the page to the portable consumer device. The Examiner relies upon the following prior art: Sosa US 2002/0095387 A1 July 18, 2002 Inoue US 2004/0054577 A1 Mar. 18,2004 3 Appeal 2015-002984 Application 12/185,332 Ives US 2007/0067267 A1 Mar. 22,2007 Lovett US 2008/0126261 A1 May 29, 2008 Fisher US 2012/0150601 A1 June 14, 2012 Claims 38, 41, 44, 46, 49, 53, 54, and 57 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ives, Lovett, and Sosa. Claims 42 and 50 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ives, Lovett, Sosa, and Inoue. Claims 45, 52, and 55 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ives, Lovett, Sosa, and Fisher.3 ISSUES The issues of obviousness turn primarily on whether it was predictable for a content provider to defer to the ad provider to look up the pertinent audience attributes. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. 3 A rejection of claims 43 and 54 under 35 U.S.C. § 112, fourth paragraph was withdrawn. Ans. 9. 4 Appeal 2015-002984 Application 12/185,332 Facts Related to the Prior Art Ives 01. Ives is directed to managing the display of sponsored links together with search results in a search engine system. Ives, para. 1. 02. Ives describes a need for improved techniques for presenting advertising (and other material), in particular in association with search results, on a wireless mobile communication device. Ives, para. 8. Lovett 03. Lovett is directed to cashless vending systems and processes. Lovett, para. 2. 04. Lovett describes a prospective customer first establishing an account with a payment processing center (PPC). When the customer uses the cell phone to purchase a product from the vending machine, an encrypted copy of the transaction is stored in the vending machine and in the cell phone. When the vendor stocks the machine, the vendor may read the memory of the vending machine and download all cell phone transaction information to a storage device. The vendor then takes the transaction information to a warehouse, where the transaction information is loaded onto a computer and communicated to the payment processing center. The payment processing center may then apply the transaction information to the account. Lovett, para. 48. 5 Appeal 2015-002984 Application 12/185,332 05. Lovett describes the vending company gathering spending pattern data on the customer and sending the customer advertisements and special offers, such as discount coupons that may be used as payment or part payment through the system. Lovett, para. 70. Sosa 06. Sosa is directed to enabling purchase transactions employing cash accounts in exchange for online portals for marketing. Sosa, para. 3. ANALYSIS The independent claims are drawn to the conventional use of a server to supply ads to content providers, but turns the selection process on its head by having the server find the pertinent selection criteria instead of the content supplier providing the criteria. The issue is whether it was predictable for a content provider to defer to the ad provider to look up the pertinent audience attributes. The Examiner’s rejections do not provide sufficient evidence to show this was predictable. Appellant couches this issue in the argument that the equivalents of the recited transaction processor and content provider in the art are the same entities. App. Br. 9. The Examiner responds that the search engine in Ives is mapped to the recited content provider and pretty much everything else (transaction processor/merchant/distributor of advertisements) is mapped to the recited transaction processor. Ans. 10. The Examiner bases the plural such mapping to the recited transaction processor on the examples cited in 6 Appeal 2015-002984 Application 12/185,332 the instant Specification. Appellant properly explains that this is a misunderstanding of the Specification. Reply Br. 4. The Specification says that a transaction processor might be a payment transaction handler (Spec., para. 30) or might be a distributor of advertisements that has access to a payment transaction handler (Spec., para. 33). The Examiner takes this to mean the transaction processor may be mapped to the combination of a merchant and distributor of advertisements without showing the distributor of advertisements that has access to a payment transaction handler. This is logical error. Perhaps seeing the weakness in this reasoning, the Examiner goes on to find that Lovett describes the same party sending advertisements to a customer based on transactions. Final Act. 14. The Examiner finds this is an example of a transaction processor choosing advertisements. Final Act. 14. We agree. The problem for the Examiner is that the claims do not recite the same entity requesting the ad and accessing the transactions; the recited content provider requesting the advertisements is separate from the transaction processor. In Lovett, the party requesting the ad has the criteria for advertisement selection, whereas in the instant claims, that party does not. The Examiner provided no articulated reasoning for why one of ordinary skill would have thought to have the search engine in Ives poll the party selling a product. Instead, the Examiner found this was a combination of known elements. Final Act. 14. The Examiner appears to be using the reasoning exemplified in MPEP §2141(111. A) viz., combining prior art elements according to known methods to yield predictable results. This section along with section 2143, 7 Appeal 2015-002984 Application 12/185,332 makes several caveats that there must be some reason articulated for the combination. Almost every invention is a combination of familiar elements to some degree. It is insufficient to simply say the elements are already known themselves. There must be some reason articulated to combine them. “[I]t can be important to identity a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In KSR, the invention simply combined two elements of an accelerator, each already described as desirable with an accelerator pedal. The Examiner has made no similar finding of commonality of context in a paired versus unitary party sharing in the prior art. Instead, the Examiner finds that in hindsight, the combination provides predictable results. This is equivalent to a conclusory statement that the answer to the key issue in the patentability determination is that a combination whose results were predictable once the combination was suggested is itself unpatentable. CONCLUSIONS OF LAW The rejection of claims 38, 41, 44, 46, 49, 53, 54, and 57 under 35 U.S.C. § 103(a) as unpatentable over Ives, Lovett, and Sosa is improper. The rejection of claims 42 and 50 under 35 U.S.C. § 103(a) as unpatentable over Ives, Lovett, Sosa, and Inoue is improper. The rejection of claims 45, 52, and 55 under 35 U.S.C. § 103(a) as unpatentable over Ives, Lovett, Sosa, and Fisher is improper. 8 Appeal 2015-002984 Application 12/185,332 DECISION The rejection of claims 38, 41, 42, 44-46, 49, 50, 52—55, and 57 is reversed. REVERSED 9 Copy with citationCopy as parenthetical citation