Ex Parte Engstrom

Board of Patent Appeals and Interferences

Mar 29, 2007

09817837 (B.P.A.I. Mar. 29, 2007)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte G. ERIC ENGSTROM
___________

Appeal 2006-2236
Application 09/817,837
Technology Center 3600
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Decided: March 29, 2007
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Before MURRIEL E. CRAWFORD, STUART S. LEVY, and ROBERT E.
NAPPI, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This appeal involves claims 45 to 68, the only claims pending in this
application. Claims 1 to 44 have been cancelled. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b) (2002).
The claims are directed to a method of operation performed by a device.
Claim 45 is illustrative:
Appeal 2006-2236
Application 09/817,837
45. A method of operation, performed by a device, comprising:
receiving by the device, from a first server of a first service provider, a
request for registration information for a user of the device, the registration
information requested including one or more personality characteristics;
generating by the device, or the device causing a second server of a second
service provider to provide, a personality profile to portray a desired persona,
based at least in part on a service provided by the first service provider, the second
service provider providing a personality service; and
transmitting by the device, or the device causing the second server to
transmit, the personality profile to the first server to respond to the request.

The Examiner relies on the following prior art references to show
unpatentability:
Jenkins 6,285,983 B1 Sep. 4, 2001
The rejection as presented by the Examiner is as follows:

Claims 45 through 68 are rejected under 35 U.S.C. § 102(e) as being anticipated
by Jenkins.
ISSUE
The sole issue for our determination is whether Jenkins discloses a device
which receives a request for registration information from a first service provider
and generates a personality profile based in part on the service provided by the first
service provider.
FINDINGS OF FACT
Appellant’s invention is directed to a device 104 that receives requests for
registration information from a first service provider 102. The registration
information relates to a client 117 (specification p. 8). The device 104 generates a
personality profile. The client can tailor the specific personality profiles based on
the service provided. In this regard, the specification discloses:
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Application 09/817,837
. . . if a user would like to receive further advertisements
and solicitations from the golf web site . . .the user may
choose to submit (i.e. during registration) a personality
profile tailored to contain personality characteristics
associated with golf [Specification p. 11-12]

In addition, the personality profile may portray an infinite number personalities or
personas for a single user(Specification p. 10).
Jenkins discloses a system which includes a device 22 that receives data
from a repository 15 which includes data sets 40 that includes data representing
individual consumer’s 10 buying habits, web browsing habits and household
income (col. 4, ll. 53 to 58). The data preferably includes unique identifier
information such as name, phone number, email address or any other suitable
identifier (col. 4, ll. 51 to 54). This data is abstracted to create uniformly
formatted individual records 52 (col. 4, ll. 58 to 61; Figure 1).
The device 22 does not generate personality profiles based on a service
provided by a first service provider. Rather, device 22 collects and stores data on
individual consumers. Such data is not based on a service provided.
The Jenkins system also includes a marketing server 24 which includes a
consumer class database 60 comprised of the consumer class records 62 generated
by market server 24 by abstracting the individual records 52 on device 22. The
individual records are abstracted by removing identification information (col. 5, ll.
6 to 12). The marketers, 30 may create marketing profiles 72 in marketing profiles
database for querying the class data file 60. Jenkins discloses that consumer
behavior data is collected (col. 4, ll.36) and that marketers develop marketing
profiles describing a group of individuals with similar behavior characteristics
(such as might indicate potential buyers of sports cars) (col. 3, lines 50-55). From
the description of developing profiles based on behavior characteristics, we find
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Application 09/817,837
that Jenkins generates a personality profile for a group of users, based in part on
cookie files on a customers computer (4, ll. 39-41. Jenkins additionally discloses
that the marketing profiles, for example, may include mortgage refinance factors or
likely pet bird purchase factors (col. 5, ll. 24 to 27).
While marketing profiles are created on the marketing server 24, Jenkins
does not disclose that marketing server 24 receives a request for registration
information from either device 22 or marketers 30. Rather, marketing server 24
receives individual records 52 from device 22 and provides access to its data base
to marketers 30.

ANALYSIS
As Jenkins does not disclose a device that receives a request for registration
information and generates a personality profile based on a service provided by a
service provider, the subject matter of claims 45 to 68 is not disclosed in Jenkins.
As Jenkins does not disclose a device that generates a personality profile to
portray a desired persona based on a service provided by a service provider, this
subject matter that is recited in claims 45 to 51 is not disclosed in Jenkins.
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Application 09/817,837

CONCLUSION/ORDER
Appellants have shown that the examiner erred in holding that Jenkins
discloses a device that receives a request for registration information and generates
a personality profile based on the service provided by a service provider.
The decision of the examiner is reversed.
REVERSED

JRG
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Application 09/817,837
SCHWABE, WILLIAMSON & WYATT, P.C.
PACWEST CENTER, SUITE 1900
1211 SW FIFTH AVENUE
PORTLAND, OR 97204

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